While Bruce, Venus, and Serena were out making their fame, someone else was stealing it online. They all had to fight for their name under the UDRP when it was abused online through a hijacked domain name.
Rolling Stone magazine called Springsteen “the embodiment of rock & roll,” yet the majority of a threemember panel of arbitrators questioned whether his name was distinctive enough to merit common law trademark rights to identify his performance services. The real reason he lost, however, was because, under the limited evidence he presented, the majority of the three judges thought he hadn’t proved that the alleged fan website did him any harm or would confuse fans. That means that fans would continue to search and arrive at brucespringsteen.com in the belief that they were at an official site.
Serena, arguably the greatest female tennis player ever, faced similar risks, but was able to shut down venusandserenawilliams.com (and avoid paying the hijacker’s $1,000,000 asking price) only because her opponent was incompetent. She wasn’t a lawyer, represented herself, and presented a poor case with contradictory and false evidence. All this enabled Serena to win on all three sets of UDRP requirements, without any more evidence of common law trademark rights than Springsteen.
Bruce Springsteen’s case
Although the average American probably considers the guy who wrote Born in the U.S.A. among the most famous people on the planet, the UDRP is a unique and sometimes misunderstood procedure. It is also subject to decision makers from all over the world who may not be as familiar with a US celebrity, so the evidence must be fully presented with nothing left to chance.
Bruce, represented by fine lawyers, never imagined that two of the three judges would allow an owner of 1500 celebrity names to keep brucespringsteen.com.
According to the judges, Bruce failed to prove that pointing brucespringsteen.com to one of the celebrity1000.com fan sites was “illegitimate use” because it didn’t convey the degree of harm that would have been recognized if it had instead pointed to links to pornography or other “regrettable material.” (The dissent pointed out that that wasn’t the standard, but Bruce still lost.)
The Williams sisters’ case
After Venus Williams won her first Grand Slam tournament, and it was clear that her sister Serena was also destined for greatness, the sisters discovered that a “domain troll” had purchased venusandserenawilliams.com, and was offering it for sale for $1,000,000.
In response, they filed a UDRP complaint, fully expecting that it was obvious that someone else couldn’t use their names and trade on their celebrity.
Fortunately, the domain troll submitted no evidence that she intended to use the URL in conjunction with the putative sports consultancy referenced on the “under construction” website. Otherwise, had the sports consultancy website been constructed for legitimate purposes relative to their tennis careers, the sisters may well have faced similar challenges as did Bruce Springsteen.
There’s only one domain that’s you.
Domain names are unique – there is only one in a given .com that exactly matches a legendary name. And that’s not all. Today there are hundreds of new dot-com substitutes, including those for over 165 countries (e.g., .ru for Russia) and some in foreign characters used in written Arabic, Chinese, Russian and Hindi.
Reputations change online at the speed of light.
Today more than ever, your reputation is everything: past, present and future. And your online reputation travels at the speed of light.
If you are an athlete, musician, or actor whose reputation has reached or is approaching the horizon of “celebrity,” you must constantly secure and protect what has taken you a lifetime to distinguish: your name. If you don’t exploit the value of your name, someone else will.
There is a rising tide of people actively speculating on your reputation, or worse, already abusing it to pretend they are you, associated with you, or sponsored by you. Once you approach a Q-rating level of fame, make sure you’re the first to register your trademark rights and fight against those who would impersonate you to monetize your name and talent.
More than filling out forms.
Protecting your name against spoofing, phishing, fake fan sites, infringing, and cybersquatting takes more than just filling out forms and waiting for computers to search for danger using AI and algorithms. It takes the one thing the machines don’t have and never will: judgment.
You can’t just know the law. You have to know how you will be judged by it. Machines can’t tell you whether the fight is worth it. Trusted counsel can.
Machines can’t predict differences in result based on when, where and by whom you may be judged, and which options could change the result. We’re talking about the dedicated professional legal judgment and the strategic insights of an experienced legal eye.
The challenge of online reputation protection requires a modern lawyer with years of experience in both Intellectual Property Law and Internet technology. To maintain your reputation today requires vigilance and active participation by you, your agent, and those who have the same seasoned judgment earned in their field that you’ve earned in yours.