Summary and implications

Boris Johnson, the Mayor of London, has succeeded in winning back the domain name.

The Mayor filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP). He succeeded despite the WIPO Panellist finding he had no trade mark rights in “Boris” or “Back Boris” and that he could only establish trade mark rights in “Boris Johnson”.

Mr Johnson does not own any registered trade marks and had to rely on unregistered trade mark rights. The decision emphasises the difficulties faced by a complainant in such circumstances, particularly when they are seeking to rely on rights in a personal name.  

Background and facts of the case  

Mr Johnson made significant use of the domain name in connection with his 2008 mayoral campaign, but failed to renew it in 2010. On its expiry, the respondent to the complaint registered the domain name.  

The WIPO Panellist found that:  

  • Mr Johnson could not establish unregistered trade mark rights in “Boris” or “Back Boris” because those names had only been used in relation to his candidacy for mayor. This was not use in connection with the offering for sale of goods or services in a way that would give rise to trade mark rights. In other words, there had been no commercial exploitation of “Boris” or “Back Boris”;
  • Although Mr Johnson is engaged in commercial transactions that could give rise to trade mark rights (e.g. as a journalist, author and after-dinner speaker), he always used his full name “Boris Johnson”. Mr Johnson could therefore only establish unregistered trade mark rights in “Boris Johnson”;  
  • In what he admitted was a finely balanced decision, the domain name was confusingly similar to the “Boris Johnson” trade mark. There was sufficient evidence that a relevant section of the public would associate the domain name with Mr Johnson.  

The Panellist was able to deal with the other questions arising under the UDRP relatively swiftly.

The domain name took web users to a website which contained search links, including one for “political book publishing companies”. A user clicking on a link was directed to pages featuring pay-per-click advertising. The Panellist found that the book publishing link took unfair advantage of Mr Johnson's trade mark rights and that the respondent had, for commercial gain, sought to confuse web users so that those searching for Mr Johnson would mistakenly reach a pay-per-click website. This meant that the respondent could not establish any rights or legitimate interests in the domain name and that it had been registered and used in bad faith.

Mr Johnson is in illustrious company. Others who have succeeded in domain name complaints include Julia Roberts and Nicole Kidman. However, without registered trade mark protection, it is important for “celebrities” to remember that it is not enough simply to assert that they are famous.  

Such complainants will need to prove that they have used their name for commercial purposes in order to establish the necessary trade mark rights in their personal name. For example, Vanisha Mittal of the Mittal steel empire failed in her complaint against . The WIPO Panellist found that there was nothing to establish that her personal name had become distinctive of any particular goods or services and that she therefore did not own any relevant trade mark rights.