Celebrities can and sometimes do register their personal names as trademarks for use in commerce. By way of registration as a trademark, celebrities are able to protect their personal names that are used in an infringing Internet domain name. Notable examples include UDRP proceedings instituted by Madonna (relying on a US trademark registered for entertainment services and related goods), Sofia Vergara (relying on a US trademark registered for fashion items and entertainment services), Paris Hilton, Victoria and David Beckham, all relying on registered trademarks, to name just a few.
Nevertheless, show biz celebrities and other type of famous persons can resort to UDRP even if they do not have a registered trademark in their name, if certain conditions are met.
Background
As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for the solving of disputes concerning abusive registration of Internet domain names.
To succeed in a UDRP complaint, a trademark owner must prove three cumulative conditions, the first one being that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. To comply with this condition, the complainant must hold rights in a trademark and the domain name at issue must be identical or confusingly similar to the trademark rights which had been proven.
According to the case law developed under the UDRP, the first limb of the above first condition is proven when the trademark rights are registered or acquired by use in commerce. To prove that trademark rights have been acquired by use in commerce, the complainant must prove that the name has become a distinctive sign associated with the complainant or its services.
In a previous post I touch upon the applicable law when panels assess whether the complainant has common law rights (including in a personal name).
In this post I will address few recent UDRP cases with emphasis on the panel’s assessment on the evidence submitted by the complainants to prove acquired distinctiveness.
Recent UDRP Cases
Personal name of political personalities
In a recent case (WIPO case no. D2022-0036), Emmanuel Macron, the President of France, filed a complaint to recoup the Internet domain name <emmanuel-macron.com> which was used to redirect to the website of a politique opponent.
To prove the first requirement of the first element (i.e. rights in a trademark), the complainant relied on unregistered trademark rights in his personal name.
The panel observed that the use of the name “Emmanuel Macron” by the complainant is not limited to his political activities. Notably, the panel took into account the fact that the complainant has published a certain number of books under his name and offered these for sale. Given such commercial use of the name “Emmanuel Macron”, the panel concluded that the complainant has established unregistered trademark rights in his name for the purposes of the UDRP. The case, like other cases concerning personal names, also brings to the attention an interesting discussion about the so-called “gripe cases” and when criticism websites might support a finding of legitimate interests for the respondents (an issue that I will touch upon in a subsequent post).
In another recent case, the complainant, George Pataki, a political leader, consultant and published author, filed a UDRP complaint against the registrant of the domain name <georgepataki.com>. The domain name was used to resolve to a website reproducing much of the material that had been previously displayed on the complainant’s website.
The complainant asserted common law rights in his name, in particular because he used the website at the disputed domain name (which he owned until inadvertently allowed to lapse) from 1977 through 2018 to promote his speaking engagements and publications. The panel considered the evidence to be sufficient to establish common law trademark rights in his name.
Personal name of showbiz celebrity
In a recent case, the complainant, Julia Haart, a US celebrity and television personality, filed a UDRP complaint to recoup the domain names <juliahaart.com>, <juliahaartofficial.com>, and <officialjuliahaart.com>, which were used to host PPC links or a disparaging article about the complainant.
To prove the first element of the UDRP, the complainant relied on unregistered trademark rights in her personal name.
The panel found that “[t]he evidence submitted on behalf of Complainant is substantial in both quantity and quality and a strong argument has been advanced to show that Complainant has acquired trademark rights in her own name.”
According to the decision in this case, the evidence showed that the complainant proved she founded a prestigious shoe company in 2013, she had a role as a fashion director since 2016, ownership of a talent and fashion agency since 2019, and starred in various TV shows and on talk shows since at least 2017. The evidence provided by the complainant included IMDB listings of TV shows she has starred in, an IMDB profile of herself, articles about her publicity, announcements for her 2021 TV show, her Wikipedia page.
The evidence in the above case allowed the panel to conclude that “the complainant has used her name in her various businesses and in trade and commerce and thus it can be said without doubt that her name is recognized widely as being the source of the goods and services provided under that name”, therefore the complainant has established her common law trademark rights in her personal name for the purposes of the Policy.
Similar cases previously solved under the UDRP where panels have found common law trademark rights include cases involving the personal names of Jim Carrey, Julia Roberts, Larry King, Scarlett Johansson, to name just a few.
Comment
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (now at its third edition: WIPO Overview 3.0),
“1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.”
“[r]elevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)” Section 1.3 of WIPO Overview 3.0.
As the complainant has the burden of proof, if he or she relies on unregistered trademark rights, evidence must be submitted to sustain the allegation. The onus on the complainant to present evidence of secondary meaning is greater if the trademark is not inherently distinctive. The above cases are examples of what panels accept as evidence of common law trademark rights.
In other instances the allegation that personal names have become a distinctive identifier were rejected by UDRP panels.
As such, when assessing claims of unregistered trademark rights, UDRP panels consider that merely having a famous name is not of itself sufficient to establish unregistered rights. In this respect, section 1.5.2 of the WIPO Overview 3.0 provides that “[m]erely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.”
Applying the above principles, panels have rejected claims of unregistered trademark rights in names of political persons that failed to prove they were using their names other than for political activities. Nevertheless, claims for unregistered trademark rights have been upheld where, in addition to political activities, the complainant has proven use in commerce of their personal name, for example as journalist, author, and after-dinner speaker/entertainer, like in the UDRP case where unregistered trademark rights in the name of Boris Johnson (the mayor of London at the time) were claimed.
Also, in a recent case, the complainant alleged common law trademark rights in the personal name of their CEO, providing evidence of his personal business profile and arguing that he tripled the group’s revenues and was ranked as the world’s 6th best performing CEO by Harvard Business Review in 2017. The panel considered that while “[t]here can be no doubt that Martin Bouygues is an internationally well-known business executive, the Panel is not persuaded that Mr Bouygues’ personal name has been “used in commerce as a distinctive identifier of the Complainants’ goods or services”.
Final Remarks
Personal names can be protected under the UDRP either if registered or if protected by use in commerce. If they rely on unregistered trademark rights, complainants should prove that their names have become a distinctive identifier in commerce to comply with the first element of the UDRP. In other words, as held by UDRP panels, complainants should prove that they have used their personal name as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in the marketing of his or her own goods or services. The personal name should be used in such a manner that a relevant segment of the public comes to recognize the name as a symbol that distinguishes his or her goods and services from those of others.
