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May 17, 2017

A Better UDRP Standard for Personal Names: Part 2

Law360

In the first part of this series, we examined the present state of decisions under the Uniform Domain Name Dispute Resolution Policy concerning claims that a domain name infringes an individual's rights in his or her personal name. Although these decisions present some inconsistencies, most require claimants to demonstrate that they have used their personal names in connection with marketing commercial goods or services to prove that they have protectable rights in their names. In this second and final part of this series, we argue that this standard is too narrow and should be expanded to protect other well-known individuals who have developed goodwill and secondary meaning in their names through noncommercial activities.

A Call for an Expanded Standard

The More "Generous" Standard for Personal Names

The current standard embraced by virtually all UDRP cases — that the claimant must show commercial use of her personal name to succeed — is simply too stringent. As demonstrated above, most cases brought by prominent persons who do not market products or services in their own names, including those in the nonprofit field, do not result in the transfer of domain names incorporating their own names. This may be so, even where the complainant can show that she engages in philanthropic activities in her name, or lectures or performs public service in her name. See Planned Parenthood Federation of America Inc. v. Chris Hoffman, WIPO Case No. D2002-1073 (Feb. 21, 2003). Indeed, even in cases where the complainant's personal name was also included in the name of his company, or in his or her public service works, many — such as the "Izzy" Aspers of the world or the fictional "Leafy Greene" — do not succeed in establishing rights in their personal name.

No one would argue with an individual's right to register his or her name as part of a domain name. Why, then, should he or she be barred from protecting that name, simply because he or she is not using it to reap financial gain? As a policy matter, there is something inherently inequitable about the heightened domain name protection afforded persons who reap commercial success from their names, as compared to those who have engaged in useful business or other visible endeavors, including non-profit activities for the public good, under their names.

The call for an expanded view would extend protection in personal name cases to those individuals who use their names prominently in, and gain public recognition for, highly visible ventures, even if they do not entail commercial success. Principal among these would be nonprofit uses of a person's name. Thus, an "Izzy" Asper establishing a well-known Jewish community campus, and engaging in philanthropic activities, in his name, or "Leafy Greene," providing environmental preservation information on the website "leafygreene.com," and engaging prominently as an activist to save the forests, under her name, would succeed in pursuing cybersquatters.

This is not to say that a claimant would succeed simply by arguing that he or she runs a nonprofit or otherwise engages in work for the public good. A claimant would still have to show prominent use of his or her name in connection with a publicly recognized activity. Evidence such as news reports and press releases featuring the claimant leading the activity or nonprofit organization, and describing the organization's services, may suffice, as would social media recognition for the claimant involved in the nonprofit's or other public work's activities. In other words, gone would be the sharp commercial/noncommercial distinction in situations where the domain name complainant can otherwise show public recognition for himself or herself and the cause under his or her name.

To those that say an individual should, instead, invoke any protections that the right of publicity laws, unfair competition laws (or even the anticybersquatting laws) may afford, should not be the answer. Pursuing either of these routes — at least under U.S. law — would require engaging in litigation that may be protracted, time-consuming and costly.

This has been true for plaintiffs who have filed Anticybersquatting Consumer Protection Act complaints based on the use of their personal names in domain names. See, e.g., Bogoni v. Gomez, 11-CV-08093 (S.D.N.Y. 2011). In Bogoni, a successful real estate developer brought an ACPA claim in federal district court in New York against the registrant of two domain names incorporating the developer's exact first and last names, "paulbogoni.com" and "paulbogoni.org." While Paul Bogoni eventually won a default judgment, he did so only after a year of litigating against a pro se defendant who, it is apparent, overly escalated the cost of litigation. In his motion for attorneys' fees in that case, Bogoni stated that he had paid his lawyers more than $70,000 to litigate the case — well in excess of the amount that an average UDRP proceeding would entail.

The same is true in the corporate context. For example, in Newport News Holdings Corp. v. Virtual City Vision Inc., Docket No. 4:08-cv-00019 (E.D. Va. 2008), the plaintiff brought a claim under the Anticybersquatting Consumer Protection Act of the Lanham Act, the federal Trademark Act, based on the defendant's use of the plaintiffs' "Newport News" mark in the domain name "newportnews.com." Unlike a UDRP proceeding, this federal court action was lengthy and therefore costly. Plaintiff filed its complaint in the United States District Court for the Eastern District of Virginia in February 2008; the trial court's judgment for the plaintiff was confirmed on appeal to the Fourth Circuit three years later, in 2011 — and after hundreds of docket filings in the trial court, including numerous motions relating to registering the trial court's order in foreign jurisdictions.

Indeed, these time-consuming, costly litigations are precisely the disadvantages that the UDRP are designed to address, particularly where it is the reclamation of the domain names, not a monetary award, that is most important to the complainant. This has been true since WIPO's infancy. See Final Report of the First WIPO Internet Domain Name Process, at ¶¶ 148–151 (April 30, 1999). This report summarized the work of the "WIPO Process," a yearslong review of the relationship between the domain name system and intellectual property, and reflected the input of a myriad of governments, professional associations, and corporations worldwide. Emphasizing the "several limitations" of court litigation in addressing domain name disputes, the WIPO report observed: "[T] the cost of litigation stands in stark contrast to the cost of obtaining a domain name registration." Id. ¶ 149.” To this purpose, the WIPO report recommended: "The [domain name dispute resolution] procedure should permit the parties to resolve a dispute expeditiously and at a low cost." Id. at 150(i).

In fact, there is already a basis in the U.S. law for this expanded view of affording UDRP protection outside the ambit of commercially successful complainants. As one noted authority explains:

Certain eleemosynary organizations function in commerce and, in form, resemble business enterprises. Such nonprofit organizations and enterprises are equally entitled to protection against unfair competition. The fact that they are nonprofit-seeking ventures, and therefore spared some of the rigors of competition, does not entirely eliminate the element of competition, nor does it disentitle them to protection against the unfair competition of similar organizations."

Louis Altman and Malla Pollack, 1 Callmann on Unfair Competition, Trademarks and Monopolies §1.2 (4th Ed. 2016). Such nonprofit activities should be placed on an even footing in UDRP disputes; in cases involving personal names, there should be no basis, at least as a matter of U.S. trademark law, to limit that category of activities that suffice to demonstrate rights in a personal name to "commercial" activities. Indeed, both the courts and the U.S. Patent and Trademark Office acknowledge that nonprofit entities may develop trademark rights in their names. See, e.g., Am. Diabetes Assoc. v. Nat'l Diabetes Assoc., 681 F. 2d 804 (3d Cir. 1982) (affirming trial court determination that American Diabetes Association had developed secondary meaning, and therefore common law trademark rights, in its trade name); U.S. Registration No. 2976273 for the trademark "Habitat for Humanity."

It is thus a short — and warranted — inferential leap to say that the leaders of such nonprofits and other public works organizations, who names are closely and publicly associated with those organizations, should prevail in UDRP proceedings against those who register and use their names as domain names. To take but one real-life example, "Sidney Kimmel," the noted philanthropist and founder of the "Sidney Kimmel Foundation," a nonprofit dedicated to funding cancer research, should be accorded protection against domain name registrants like Domain Admin/Domains for Sale, which has, in fact, registered "sidneykimmel.com" and pointed this name to a website offering it for sale. This is the right result, regardless of whether or not Kimmel is a celebrity or a "commercial success" offering "Sidney Kimmel" products under his name.

A Heightened Presumption of Bad Faith Registration and Use

Added to this expanded standard would be an added presumption: Where the registrant's domain name is accompanied by disparaging terms or registered in connection with potentially disparaging top-level domains such as ".porn," ".xxx" or ".wtf," this should tip the scales in favor of finding bad faith use and registration.

In our view, there is something unique about a complainant's personal name, and thus about a third party's unauthorized registration of that name. There may be a more forceful argument than in a case involving misappropriation of a brand name (particularly one that is not very distinctive) that the third-party registrant is acting in bad faith in registering others' personal names, particularly when combined with tarnishing or disparaging elements.

Numerous UDRP cases demonstrate the potential for reputational harm — not to mention personal dismay — that can result from refusing to protect individuals whose well-known names are used to point to websites hosting tarnishing content, including pornography. Happily, some individuals so targeted have been found to meet the standard for personal name protection as it currently is written. For instance, the Buddhist monk known as His Holiness Phakchok Rinpoche was able to secure the transfer of the domain name "phakchokrinpoche.com," which had been used to point to a website containing numerous pornographic links, including links that appeared to refer to illegal child pornography. See Tendzin Jigmey Drakpa v. Kim Joe, WIPO Case No. D2006-0328 (June 7, 2006). Critically, the monk could demonstrate that he had used his name to market educational and religious services as well as books, magazines, postcards and brochures, and thus the panel determined that he had developed common law rights in his name.

Others have not been so fortunate. A panel denied relief to the noted publishing executive David Pecker, declining to order the transfer of "davidpecker.com," which was used to point to a domain name parking service hosting links to pornographic websites. David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514 (Jan. 15, 2007). Despite Pecker's submission of evidence that he was CEO of a major publishing company, and that his name was widely known and carried significant goodwill, the panelist found that he had not developed rights in his personal name and denied transfer. Under the new standard proposed here, the businessman may have protected himself through the UDRP from the use of his personal name to promote links to pornographic websites.

So, too, in the notorious case involving the use and registration of Jerry Falwell's name in "jerryfalwell.com" and "jerryfallwell.com," Reverend Falwell did not obtain relief under the UDRP. Instead, finding that Falwell specifically disavowed commercial use of his name, the panel directed Falwell to the ACPA as a possible avenue for relief. Indeed, as the panelist in the Buddhist monk case explained, drawing the commercial/noncommercial line between that case and Falwell's:

[T]he evidence submitted by Complainant thus stands in sharp contrast to the evidence submitted in Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Profile.net, and God.info, WIPO Case No. D2002-0184 (June 3, 2002). In that case, the panel noted that "Complainant is careful to avoid any suggestion that he has exploited his name for "materialistic" or "commercial" purposes. Complainant is an educator and religious minister. He has used his name to advance his views as to morality and religion." Complainant in this case similarly claims to be an educator and religious teacher, but he also claims to have used his name commercially for educational and charitable purposes, and those allegations are sufficient to establish common law trademark rights.

Conclusion

The widely shared view among panelists that public figures may only benefit from the protections of the UDRP if they can demonstrate that they use their names commercially to market products or services leaves too many well-known individuals unprotected from bad faith attempts to capitalize on the goodwill these individuals have developed in their names. Numerous well-known public figures have been unable to succeed in seeking the streamlined, low-cost relief afforded by the UDRP — even in situations where their personal names are being used to host obscene or other offensive content — because they used their names only in connection with providing noncommercial services or doing other "good works." A new approach recognizing the goodwill that such individuals develop in their personal names through these noncommercial activities would prevent others from wrongly capitalizing on that goodwill, without forcing claimants to travel the far longer and costlier path of federal court litigation.

Roberta Horton is a partner and Michael Kientzle is an associate in the Washington, D.C., office of Arnold & Porter Kaye Scholer LLP.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

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