In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel denied the transfer of a domain name consisting of a personal name for failure to prove common law or unregistered trade mark rights in the name.
The Complainant was Kait Robinson, a young fashion photographer based in New York. The Complainant claimed that she had continuously used her name and trade mark “Kait Robinson” in connection with the advertising, promotion, and offering of fashion photography since at least 2010.
The Respondent was Nanci Nette, Name Management Group of Los Angeles, who appeared to be in the business of acquiring and managing domain names.
The disputed domain name was <kaitrobinson.com> (the “Domain Name”). It was originally registered to the Complainant, but she allowed it to lapse in early 2015 and it was subsequently acquired by the Respondent using a privacy protection service. The Domain Name was pointing to a parking page containing sponsored links about fashion photography and photographers.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three elements:
- the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
The first requirement under the UDRP exclusively refers to trade marks or service marks and does not expressly make reference to personal names. Therefore the first condition under the UDRP requires a complainant to demonstrate that the personal name in question is protected as a trade mark or a service mark. By far the easiest way to satisfy the first requirement is to submit evidence that the personal name in question is a registered trade mark. However, a complainant may also satisfy this first requirement by submitting evidence that he or she has acquired unregistered or common law trade mark rights in the personal name in question, given that the UDRP does not specify how trade mark rights are acquired but only that the complainant must possess such rights. Such is the consensus view of WIPO panels, as expressed in paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0″), which provides as follows: “Personal names that have been registered as trademarks are generally protected under the UDRP. 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“.
Whilst having a famous name may make it easier for a complainant to demonstrate common law or unregistered trade mark rights, a famous name in itself is not necessarily sufficient to demonstrate unregistered trade mark rights for the purpose of the UDRP. According to the WIPO Overview 2.0, the personal name in question needs to be “used in trade or commerce as an identifier of goods or services“. In order to demonstrate this, a complainant must submit proof of use of the person’s name as a “distinctive identifier of goods or services offered under that name” (paragraph 1.6 of the WIPO Overview 2.0), which often proves difficult for complainants, even if their names are well-known.
In the present case, the Panel found that the Complainant had failed to satisfy the first element of the UDRP. First, there was no evidence that the Complainant’s personal name was registered as a trade mark in the United States. Furthermore, the panel was not persuaded by the evidence provided that the Complainant had established common law or unregistered trade mark rights in her personal name.
The Complainant had alleged that she was a famous American photographer and that she had been featured in numerous publications and advertising campaigns. The Complainant further alleged that she had used the mark “Kait Robinson” for at least five years in connection with fashion photography and as a result had garnered significant recognition by consumers in the field. As evidence, the Complainant submitted three interviews and profiles appearing in online magazines and blogs. However, the Panel was of the view that such evidence was insufficient to establish common law trade mark rights in the Complainant’s personal name for the purpose of paragraph 4(a)(i) of the UDRP: “there is not sufficient evidence that the Complainant is a famous photographer, let alone sufficient evidence that her name has acquired a secondary meaning so as to function as an identifier of any particular goods or services“.
The Panel therefore found that the Complainant failed to satisfy paragraph 4(a)(i) of the UDRP.
Given this, the Panel was not required to examine whether the Complainant had satisfied the second and third requirements under the UDRP. However, the Panel noted that it was “highly doubtful” that the Respondent, who had failed to respond to the Complaint, could claim rights or legitimate interests in the Domain Name and that, based on the record, it may well be the case that the Respondent registered and used the Domain Name in bad faith.
The Panel therefore denied the transfer of the Domain Name to the Complainant.
The protection of personal names has been the subject of much discussion since the inception of the UDRP. The Internet Corporation for Assigned Names and Numbers (ICANN) based the UDRP on the Report on the First WIPO Internet Domain Name Process in 1999, which contained recommendations for resolving domain name disputes and had concluded that it was premature to extend the notion of abusive registration beyond the violation of trade marks and service marks. The Report on the Second WIPO Internet Domain Name Process in 2001 did not alter this position, based on the fact that the international legal framework is not as well developed for personal names as it is for trade marks. There are currently no internationally harmonized norms covering personality rights as such, and consequently a range of legal approaches are deployed to protect personal names at the national level. The Report therefore recommended that no modification be made to the UDRP.
This decision highlights how complainants who wish to recover a domain name consisting of their personal name but who do not have a registered trade mark will generally face difficulties under the UDRP unless they can prove that they have acquired common law or unregistered trade mark rights in their name. Whilst a number of disputes under the UDRP involving personal names have resulted in a transfer of the domain name in question, panels’ decisions have often been inconsistent on the issue of whether complainants have sufficient common law or unregistered trade mark rights, particularly where the personal name in question is not widely known or the person does not offer goods or services under their name (for example because they are a chief executive or a politician). Cases involving personal names are therefore one of the few areas where panels may legitimately hold differing views, which makes it difficult to predict the outcome of a complaint. In such circumstances, complainants may find that it is worth considering obtaining a trade mark registration prior to filing a complaint in order to reduce the risk of denial.
The decision is available here.
First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house