I have already written about the issues created by the Uniform Domain Name Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA) in the article entitled “Domain Name Disputes-An Update.” This article is a further update related to the specific issues dealing with domains that are registered using names of celebrities.
The Julia Roberts Case
In this matter, the complainant was the famous actress and the respondent was the owner of the domain “juliaroberts.com.” It is relevant that this domain owner was also the owner of many other domains using the names of celebrities and that he had put the domain in question, juliaroberts.com, up for auction. As you will see, these are factors that weigh in the determination of whether or not a registrant has acted in “bad faith,” a legal requirement for decisions under both the UDRP and the ACPA.
The issues under the UDRP were:
1. whether the domain was identical to that of the actress’s name;Clearly the condition under 1 was satisfied but the real issue in the case was whether or not the actress had any trademark rights in her name. She did not have a registered United States trademark (which is not required under the UDRP but is required under the ACPA) but alleged instead that she had common law trademark rights because her name had acquired a “secondary meaning.” Secondary meaning is a legal term that means that even if a name (whether a personal name as in this instance or a product or service name) or a design is not a registered mark that the public has come to associate that name or design with a particular person or company or goods or services. This term is usually applied in situations where the mark or claimed rights have been in use for a period of time and have been widely disseminated and used in such a way so as to create this reference in the minds of the public. If the claimant establishes this “secondary meaning” the issue then is whether the use by another in a particular context would be likely to cause confusion in the minds of the public that a particular use is related to the owner of the secondary meaning (referred to as “passing off”).
2. whether the actress had a trademark or trademark rights in her name;
3. whether the domain owner had any legitimate rights to the domain name; and
4. whether the use by the domain owner was in bad faith.
For the purposes of this case, the issue was whether or not when someone hears the name “Julia Roberts” or in this instance logs onto a site juliaroberts.com that that person identifies that name or site with the person of the actress and whether the use by the respondent of a domain with that name would be likely to confuse the public into believing that the actress was somehow related to the particular usage of the name or this domain.
The administrative panel quickly decided that Julia Roberts possessed the requisite secondary meaning in her name. They found that there was an identification in the minds of the public between the actual name and the person of the actress. Thus, they concluded, she possessed “trademark rights” even if no actual registered mark.
The next issue was whether the domain owner had any legitimate rights to the name for the purposes of the site or whether the site was put up and fell within the scope of “fair use.” (see “Trademark Law: An Overview”) The panel noted that there was nothing on the site that initially related to the actress (i.e. it was not a fan site or anything of that nature) nor did the site otherwise fall within the “fair use,” legitimate uses such as a parody site. There have been other cases where a celebrity filed a claim against a domain owner under the same theory as Ms. Roberts but did not prevail because the site owner had the same name as that of the celebrity and/or was using the site for legitimate purposes related to the domain owner’s business or the like. In this instance however, the panel found that the domain was established solely for the purpose of selling it to the actress or others and that the respondent had established a “pattern of conduct” by registering many other such domains and as such, the conduct of the respondent constituted the requisite bad faith.
They ordered the domain transferred to Julia Roberts. These panel decisions are not final and it is left to the parties to pursue further remedies, as the domain owner has indicated he would.
The Jimi Hendrix Case
In this arbitration, the estate of Jimi Hendrix brought the action under the UDRP against a domain name owner of “jimihendrix.com” which, in this instance was registered to The Jimi Hendrix Fan Club. The panel noted that the domain owner was also the owner of an extensive number of other celebrity and “vanity” domains including “elvispresley.com,” “jethrotull.com” and the like and had offered to sell the jimihendrix.com domain for a million dollars. Note that these are the same factors considered by the panel in the Roberts matter.
The panel also discussed whether or not the domain owner had any legitimate rights to use the name, such as because it was his name, or because he had a legitimate business purpose or, as it found, that the only purpose was to sell the domain to the estate or deprive the estate from using the domain. In this regard, the panel noted that there was no registration in the state of Florida (where the respondent resided) for “The Jimi Hendrix Fan Club” and that the web site was not a true “fan club” site but was merely for the purpose of selling domains. If the site was being operated by a legitimate fan club, the question of fair use and bad faith would have been much cloudier and in such circumstances, having fan club site might be deemed a legitimate use. In this instance, however, no such fan club site existed in this case, at least not prior to the complaint being filed.
The estate was the owner of both the common law trademark rights (i.e. the secondary meaning as noted above) but also several registered trademarks for both the name “Jimi Hendrix” as well as certain design marks, although none of these registrations were for categories that would include web site usage.
One of the issues the panel discussed was whether or not “jimihendrix.com” was confusingly similar to “jimihendrix,” the latter being the estate’s marks. The panel noted that the decisions about this issue do not consider the top level domain (.com in this instance) but merely the secondary level domain (the “jimihendrix” portion) and in that regard, the use of this secondary level domain was identical to that of both the registered and common law trademarks.
The panel concluded that the domain was registered and was being used in “bad faith” and thus ordered it transferred to the estate.
Both the UDRP and the ACPA have greatly extended the power of owners of rights in both registered and common law trademarks to prevent usurpation of those rights by the registration of domains. Prior to the adoption of that policy and passage of that legislation, trademark owners had to resort to either filing an expensive civil litigation to protect their rights or filing a complaint with the domain registrar which then might put the domain on “hold” which meant that neither the rights claimant nor the domain owner could use it. The effect of these new remedies is to end up having the domain actually transferred to the rights owner should it prevail.
As to the argument that such legislation interferes with the “everything is free on the Internet” or that intellectual property laws deprive others of their freedom of “speech,” the answer is “absolutely correct!” But the first amendment is not absolute and there are always balances to be struck. There are laws dealing with libel and slander and the rights of creators to protect their property. The law always makes choices and the idea that others should be free to steal that property simply because it is a product of the mind rather than being real or personal property is unacceptable.
Thus is the Internet becoming less of a frontier each day. And this is essential if it is to survive since without law, money will not flow into the technology and it would collapse of its own lack of success. (Read “Electronic Rights.”)
That benefits no one.
© 2000 Ivan Hoffman