A Better UDRP Standard For Personal Names

The Uniform Domain Name Dispute Resolution Policy (the "UDRP" or the "Policy") frequently provides a welcome remedy for those trademark owners who fall victim to cybersquatters. But the UDRP is not so kind to individuals whose personal names are similarly targeted. UDRP decisions almost always require that an individual demonstrate commercial success in his or her personal name before ordering transfer of a domain name incorporating that personal name.

Imagine the different fates of our fictional characters, the sports hero, "Brute Force" and the environmental activist, "Leafy Greene." Brute plays center for a professional basketball team. Win or lose, this towering figure's name is in the papers throughout the season. He appears on cereal boxes and he endorses athletic shoes for a handsome fee. In a word, "Brute Force" is a commercial success. Under the UDRP, Brute can, very likely, protect the use of his name against cybersquatters who register the likes of "bruteforce.com", "who register the likes of "bruteforce.com", "bruteforce.online", and "who register the likes of "bruteforce.com", "bruteforce.online", and "bruteforce.basketball."

Leafy Greene, the CEO of a non-profit forestry protection organization, will not fare so well against cybersquatters under the Policy, despite her notoriety, her TV appearances on nature shows, her many public lectures, and favorable press on her activities. She is well-schooled on tree diseases and often serves as an expert witness in environmental cases. She has even started a foundation to help troubled youth by engaging young people in environmental projects. But she doesn't sponsor or endorse any products or receive any compensation from her many environmental activities. If cybersquatters seize "leafygreene.org", "leafegreene.net", and "leafygreene.xxx", she might well be out of luck in invoking the UDRP.

This article examines the standards that tribunals administering the UDRP, principally, the World Intellectual Property Organization ("WIPO") and the National Arbitration Forum ("NAF") apply to personal name cases such as Brute's and Leafy's fictional cases. It highlights inconsistencies in the personal name scenarios and the panelists' struggles with drawing the line at where personalities may or may not prevail. It then argues for a more generous application of those standards to protect the rights of individuals in their names. This more "lenient" standard would be consistent with the Policy's mandate that the UDRP should be available as a lower cost alternative to those seeking to redress the wrongs brought about by cybersquatters without engaging in expensive court litigation. It would also construe the meaning of "trademarks or service marks" more liberally in the context of personal names to encompass non-commercial services rendered for the public good, particularly in obvious situations of cybersquatting.

THE CURRENT VIEW: LIMITED PROTECTION FOR PERSONAL NAMES

Unlike a case under the Anti-Cybersquatting Consumer Protection Act (the "ACPA")1, which may entail protracted litigation, a UDRP case is a streamlined administrative proceeding, involving only the filing of a complaint and, should the registrant so choose, a response. It is thus an attractive option for brand owners who care only about reclaiming their marks from cybersquatters, rather than making a monetary recovery, which may be available under the ACPA.2

Section 4(a) of the UDRP exacts a three-part test that a complainant must satisfy to prevail: (i) the domain name at issue must be "identical or confusingly similar to a trademark or service mark in which the complainant has rights"; (ii) the domain name registrant must not hold rights or legitimate interests in the domain name; and (iii) the registrant must have registered, and be using, the domain name in bad faith.3 (Emphasis added.). The Policy thus does not expressly contemplate relief for claimants seeking to protect their personal names, as opposed to their brand names.

Decisions applying the Policy do, however, generally afford relief to those claimants who make commercial use of their personal names, on the theory that this use establishes their trademark or service mark rights in their names. Specifically, entertainers, authors, athletes and other celebrities who make money off of their personal names have typically been accorded protection, with panels regarding their personal names, if unregistered, as common law marks.

The WIPO Overview 2.04 also reflects this limited view of an individual's right to redress for the unauthorized registration and use of his or her personal name as a domain name:

While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required. . . . However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.5

(Emphasis added.).

The "Commercial Use" Standard in Practice The General Distinction Between Commercial and Non-Commercial Use

Many "personal name" cases have turned on whether or not the domain name complainant has made commercial use of his or her name. Some cases draw an express distinction between situations in which the complainant performs services for a fee—or endorses products—and those in which he or she does not.

For example, in Jay Leno v. Garrison Hintz, Case No. D2009-0569 (June 26, 2009), the panel found that entertainer Jay Leno had presented solid evidence of common law rights in his name based on his alleged "success and fame as an comedian, entertainer, author and television personality" and thus awarded him transfer of the domain name "weeknightswithjayleno.com." The panel observed that, in general, "in cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services." (Emphasis added.). See also Dustin N. Diamond v. Max Goldberg, NAF Claim No. FA0402000237446 (Apr. 5, 2004) (complainant who appeared in "numerous television shows and motion pictures" and sold instructional chess video established rights in personal name).

Likewise, in Arthur Golden v. Galileo Asesores S.L., Case No. D2006-1215 (Dec. 15, 2006), the panelist ordered transfer of "arthurgolden.com" and "Likewise, in Arthur Golden v. Galileo Asesores S.L., Case No. D2006-1215 (Dec. 15, 2006), the panelist ordered transfer of "arthurgolden.com" and "arthurgolden.net" to author Arthur Golden, who penned the best-selling novel, Memoirs of a Geisha. The panelist wrote that, on the evidence "the name Arthur Golden is associated with the literary products of the Complainant. These facts are sufficient to establish common law rights in the name ARTHUR GOLDEN. In fact, it is precisely the famous nature of the Complainant's name which is the probable cause of the registration of the domain names by the Respondent."

So, too, UDRP panels have applied this reasoning in the sports context to the "Brute Forces" of the world. For example, in ordering transfer of "danmarino.com" to professional quarterback Dan Marino, the arbitrator stressed that the sports hero had "spent 17 years as the quarterback for the Miami Dolphins, has been a sports commentator, has acted in movies and has been recognized for community service", all evidence sufficient to establish his common law rights in "Dan Marino" as a mark. Daniel C. Marino, Jr. v. Video Images Prods., WIPO Case No. D2000-0598 (Aug. 2, 2000). See also Dirk Nowitzki v. Happy Bulldawg Entertainment, NAF Claim No. FA1107001400861 (Sept. 8, 2011) (concluding that basketball star had established rights in his...