Returning a Name to Its Rightful Owner

By Eric Ruder¹

Despite the prevalence of speculators who register domain names consisting of personal names (mainly those of celebrities), a method has not yet been devised to prevent this specific behavior.  Several commentators have proposed a change in the rules to enable the protection of publicity rights to be added to the protection of trademarks and service marks.  However, as more decisions are rendered under the Uniform Domain Name Dispute Resolution Policy² (UDRP), which protects trademarks and service marks, the emerging pattern in numerous arbitrations is the protection of celebrities' names, but not the names of less famous people.  Given the fact that most celebrities arbitrating against parties using such celebrity's name in a domain name are victorious, it appears that the current system is adequate and no change in the rules is warranted.

Cybersquatters, who acquire domain names in the hopes of reaping profits for their sale to others with a more vested interest in those names, have been a common gadfly since the advent of Internet domain name registration.  Initially, the sole legal recourse for owners of the actual trademarks or names that were registered by such speculators was the costly and time-consuming route of litigation to get a court order directing transfer of such domain name to the plaintiff.³  However, in 1999, with the promulgation of the UDRP rules and procedures, a powerful tool was added to the options available to trademark owners.  The UDRP is incorporated by reference into a domain name registrant's Registration Agreement,⁴ which must be agreed to in order to register a domain name.  The UDRP now allows owners to file simple pleadings via email and hard copy with the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center, and, without the need for any appearance in person, receive a rendered decision several months later.  The decision is simply whether the domain name or names is to be transferred to the complainant or whether it is to remain with the original registrant.⁵  Under these rules, a complainant must prove all of the following three elements in order to receive a finding in its favor, "(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;⁶ (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith."⁷  WIPO's jurisdiction in these matters reaches to the DNS system, so that it can order the transfer of a domain name from one party to another, without the approval or consent of the current holder of such domain name.

The initial hurdle to be overcome by a person attempting to receive the transfer of a domain name which mirrors his or her personal name is the first element, the fact that the Complainant must have rights in a trademark or service mark.  From the beginning, the WIPO arbitration panels interpreted the UDRP's rules as not requiring formal registration of the marks, but instead allowed for common law rights to a particular mark.⁸  Ruling otherwise would have disqualified most celebrities from bringing an action under the UDRP, as most celebrities do not have registered marks in their names.  With one or two notable exceptions,⁹ in nearly all subsequent cases involving celebrities, the personal names were found by the relevant WIPO arbitration panel to be considered trademarks and service marks because of the renown and good will such celebrity had generated during the course of his or her professional career.¹⁰  This hurdle, however, has proven much harder for non-performers, such as Ted Turner, who lost his arbitration 2-1 on the basis of not having established trademark or service mark rights in his name.¹¹  Presumably, non-celebrities would have no chance of establishing such rights in their names and would not be able to use the UDRP process to attempt to compel transfer of someone's registration back to the complainant.

For this reason, one commentator¹² has suggested modification of the existing UDRP framework to accommodate publicity rights, in addition to the existing trademark formulation, while another, writing prior to the creation of the UDRP system, suggested empowering courts to adjudicate domain name disputes involving celebrity names.¹³  Publicity rights, which protect an individual's right to determine the commercial exploitation of his or her identity,¹⁴ unlike trademarks or service marks, are unrelated to the usage of one's name in connection with products or services and vary from state-to-state.  In a forthcoming law review article,¹⁵ Professor Jacqueline Lipton argues for a Personal Domain Name Dispute Resolution Policy (PDRP) structured like the existing UDRP.  However, in place of the three-prong test described above, Professor Lipton advocates that the PDRP would require a showing that (i) the domain name corresponds to the complainant's actual name; (ii) that the registrant has no legitimate interest in the name; and (iii) the registrant has registered or used the domain name for an unauthorized commercial purpose.¹⁶  In the event that the registrant has the same name as the complainant, the fact that the registrant got the domain first would control, provided the registrant had a legitimate interest in his or her online usage of the domain.¹⁷  Professor Lipton also argues that a PDRP would not apply to the name of someone who is deceased, because publicity rights relate to the individual person, and are not an absolute property right which may be passed down to one's decedents.¹⁸

Although Professor Lipton's proposal for the establishment of a PDRP has some merits, in the case of celebrities, it is arguable if it is necessary.  With the exception of the Anna Nicole Smith case¹⁹ (in which complainant had merely asserted, but was unable to prove, bad faith, and had previously refused to settle the domain name dispute by allowing transfer of the domain at no cost) and the Bruce Springsteen case²⁰ (which later WIPO arbitration panels questioned and did not use as precedent²¹), the vast majority of cases brought under the UDRP found in favor of the complainant and required transfer of the disputed domain name from the registrant to the named celebrity.  This was true for movie actors,²² singers,²³ sports figures,²⁴ politicians,²⁵ authors,²⁶ models ²⁷ and celebrity chefs.²⁸  In each of the previously-cited cases, the relevant panels, either convened by WIPO or by the National Arbitration Forum, found trademark rights in the named persons (even though not registered), lack of legitimate interests by the current holders of the domain and bad faith.²⁹  Admittedly, the Ted Turner case described above was not the ideal result, but the fact is that Ted Turner Enterprises now owns the domain www.tedturner.com, presumably after successful litigation or the threat of litigation.³⁰

In summary, Professor Lipton's article is extremely detailed, but not terribly convincing, given that the UDRP system currently seems to offer strong protection to those whose name would be taken by cybersquatters for profit.  With the quick, inexpensive procedure enacted by ICANN, and the established precedents of the past eight years, celebrities can feel confident in the protection they are afforded under the current guidelines.  The incidence of cybersquatting of the names of non-celebrity, while problematic, does not occur frequently enough to warrant a complete change in the regulatory framework, along the lines that Professor Lipton is suggesting.

Networking and Storage

© 2008 The Beanstalk Group