In some recent UDRP domain-name decisions involving personal names and common-law trademarks, world-renowned fame did not guarantee success in obtaining transfer of domain names associated with the names. Former President Clinton was defeated in a UDRP decision involving three domain names similar or identical with his name, while Tiger Woods went 1-1 in securing domain names matching his children's names.
Former President of the United States William J. Clinton and The William J. Clinton Presidential Foundation brought a UDRP complaint against Web of Deception regarding the domain name registrations for "williamclinton.com", "williamjclinton.com" and "presidentbillclinton.com". Each of these domain names provided direct links to the website for the Republican National Committee. Complainant asserted that he had established common-law trademark rights in his name and its variations. It was also alleged that the Respondent was known to have deliberately registered other domain names of politicians, such as President Obama and Senator John McCain, for various nefarious reasons. Respondent asserted that his registrations and use of the domain names constituted a fair use and were therefore not a use in bad faith. Respondent also claimed that he was working with others to promote the idea that some domain names, including the names of famous places and politicians, deserve protection under federal statutes.
In denying the UDRP claim, the Panelist analyzed the three necessary elements of a UDRP and determined that not all of the elements were supported by the evidence. In assessing whether the domain names were identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Panelist followed the common view of the UDRP policy, in that a trademark registration is unnecessary where Complainant can prove common-law rights by establishing that its mark has acquired secondary meaning. After easily establishing secondary meaning in the WILLIAM CLINTON mark, it was determined that the disputed domain names were confusingly similar to Complainant's mark. The Panelist also determined that the Respondent was not commonly known by the disputed domain names, and that Respondent had no rights or legitimate interest in the domain names. The Panelist opined that the domain names resolving to a website related to the Republican Party were not considered a bona fide offering of goods and services, nor a legitimate noncommercial or fair use.
The decision turned on the last element of a UDRP, as the Panelist decided that Complainant had failed to meet the burden of proof regarding bad-faith registration and use under Policy ¶4(a)(iii). The Panelist noted that the only potentially available claim for bad faith that would apply related to preventing the mark holder from registering the domain, and this element requires a showing of a pattern of conduct. While the Respondent's conduct in registering the names of politicians was considered a pattern, the Panelist summarily determined that the Respondent had adequately rebutted any inference of bad faith. The Panelist further found that the fact the domain names linked to the Republican National Committee website, while possibly giving the impression of an affiliation with its political competitor, was not within the scope of the Policy. The UDRP request for transfer was therefore denied as to all three domain names.
In other recent personal name UDRP cases, Eldrick 'Tiger' Woods attempted to retrieve domain names that matched his minor children's names. While Tiger was able to "birdie" the recovery of the domain name "samalexiswoods.com" in a default UDRP proceeding where the Respondent consented to transfer, he "bogeyed" the UDRP proceeding to transfer the domain name "charlieaxelwoods.com" matching his newborn son's name, Charlie Axel Woods. In each case, Complainant attempted to claim common-law trademark rights based on rights in the TIGER WOODS marks, while also unsuccessfully asserting common-law trademark rights in his newborn children's names.
In the contested UDRP matter, the Respondent had registered the domain name the day after Charlie Axel Woods was born. The Panelist did not reach the issues of rights or legitimate interests, or bad faith registration and use, as the matter was decided based on lack of a trademark or service mark in which Complainant has rights. The key issue was whether the personal name "Charlie Axel Woods" is protectable as a common law trademark or service mark. The Panelist relied on a review of a World Intellectual Property Organization (WIPO) report regarding the Internet Domain Name Process. The report notes that Panel decisions that elected to protect personal names occurred in cases where the law of the particular country recognized the registration of personal names as trademarks or services marks or where countries recognized the common law acquisition of trademarks or service marks through use and the acquisition of a secondary meaning as the source of goods or services.
There is also a split of opinion as to whether the UDRP should be broadened to protect non-commercial uses of personal names. In its advisory report, WIPO has noted that "persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations". Following prior UDRP decision, the Panelist in this case determined that, in a jurisdiction that recognized common law marks, the personal name must be used in connection with a commercial offering of goods and services or that the personal name in question has acquired secondary meaning as the source of such goods or services. Although Tiger Woods attempted to piggyback trademark or service mark rights in his own name, it was determined that his son must have his own rights, as the child's name was not confusingly similar to the TIGER WOODS marks. Since Charlie Axel Woods was a newborn, and no evidence was presented in support of his common law trademark rights, the request to transfer the domain name was denied with no need to consider the other elements of the UDRP policy.
Vol. 53, June 2010