2008 has been fruitful for personal name decisions. As a general rule a person aggrieved by a registrant misappropriating his personal name for use on the Internet cannot look for a quick remedy under the UDRP unless he can bring himself within the rule’s exception. Paragraph 199 of the Second WIPO Report on personal names, tradenames and geographic indicators states that the “UDRP does not provide solace for all those offended sensitivities, nor was it intended to do so, as originally designed.” The unexceptional are “[p]ersons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations.” This pronouncements is not expressly contained in the Policy but is construed as among its foundation principles. Unjust perhaps, but persons who do not use their names in commerce are obliged to seek their remedy in a court of law.
The key phrase excluding persons from coverage is: “who have not profited from their reputation in commerce.” There has to be actual engagement in the marketplace. “To be entitled to protection under the Policy ... a personal name must function as a trademark, and for common law trademark rights to exist, personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source,” Margaret C. Whitman v. Domains For Sale, D2008‑1534 (WIPO December 1, 2008) (former CEO of Ebay). The principle applies regardless of the complainant’s fame in his or her non-commercial activities. Among others excluded are politicians, businessmen and women and entrepreneurs unable to establish any commercial credential. Covered are actors, athletes, artists and authors to name only those whose occupations are classified under the letter “A”. Dead personalities are covered if licensing or other rights are shown to exist . Politicians who are also authors are covered but not philanthropists who may incidentally publish a book.
In many instances, particularly in early cases, but increasingly less so now that names in the marketplace have become recognized as valuable assets and more care is taken with their protection, complainants relied on common law principles to establish their qualification for a UDRP remedy. However, a common law trademark is inchoate; its existence demands concrete proof not mere assertion of a right. Thus, “[a]s the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors [and] actors ... with limited renown in a specific field, the burden of proof on the Complainant increases and the need for clear and convincing evidence becomes paramount,” Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) (<tonysnow.com>). This leads to the further, surely efficacious observation that
[w]ithout such compelling evidence proving the prior right, a Complainant may fall at the first hurdle. Such evidence may also prove crucial at the third hurdle of proving bad faith registration and use in seeking to prove that the personal name in question is known in the jurisdiction where the Respondent is situated, since the Complainant needs to demonstrate that the Respondent was aware of the Complainant at the time of registering the domain name.
Scarlett Johansson had “compelling evidence” in her complaint against Tristan Dare, D2008‑1650 (WIPO December 16, 2008) for <scarlettjohansson.com> to prevail on her claim. “[Her] services as an actress and celebrity promoter are said to have caused the public to associate the expression ‘Scarlett Johansson’ as a service mark under which Ms. Johansson’s services are provided. There was an suggestion of possible extortion:
[The] probable explanation for the “contest” [a double entendre on the website] is that it was launched as some sort of prank, designed to embarrass Ms. Johansson (and possibly to provoke an offer of cash from her to have the “contest” taken down from the Respondent’s website, or for the website itself)....
The 2008 decisions run the gamut from decisions made in defiance of precedent, to those that could have gone either way (depending on the panelist), to those unequivocally on one or the other end of the spectrum. Of the anomalies one involved a politician, Julie Menin v. Peter Gleason c/o Seven Sages, LLC, FA0802001142614 (Nat. Arb. Forum April 2, 2008) whose complaint was granted (unaccountably on the basis of her “experience as a public servant”); and the other an entertainer, Roseanne Barr v. Texas International Property Associates ‑ NA NA, FA0803001155782 (Nat. Arb. Forum May 8, 2008) whose complaint was denied (on no understandable basis whatsoever). Politicians should not be able to shut down websites containing political speech – in essence awarded the equivalent of a permanent injunction – [¶ 4(c)(iii) of the Policy]; and entertainers should be able to prevent registrants from taking advantage of their names [¶ 4(b)(iv) of the Policy].
The “Gene Kelly Trust” succeeded in taking possession of <genekelly.com>, Gene Kelly Image Trust v. BWI Domain Manager, D2008-0342 (WIPO April 22, 2008); but the Complainant in Birgit Rausing, AB Tetra Pak v. Darren Morgan, D2008-0212 (WIPO April 5, 2008) did not for the interesting reason that she “does not appear to have become well-known because she has written books.” Rather, “[s]he was well-known before that, due in part to her membership of the well-known Rausing family.” The Panel concluded that it “does not necessarily follow that every well-known person who writes a book (or any other kind of publication) obtains trademark rights in their name.”
On the border line are politicians who are also lawyers and scholars and entrepreneurs involved in sports but not athletes. Some decisions are not entirely free of suspicion that they are based on a ‘benefit of doubt’ standard. The Complainant in Peter Bober v. National Institute for Mortgage Education, D2008-1668 (WIPO December 15, 2008) is the mayor of the City of Hollywood, Florida as well as a lawyer. He is the author of scholarly articles, but not of commercially successful books. He might have succeeded (according to the Panel) “if he had been offering legal services under the name the Law Offices of Peter Bober” rather than “Bober & Bober, P.A.” “Previous panels have established that community, scientific, and educational uses of an individual’s name, while often admirable, do not per se constitute activities which are protected under the Policy.”
“With respect to individuals prominent in sport, use of one’s name is almost always to some degree commercial,” Allen Stanford v. Krishna Mohunlal, individual, D2008‑1188 (WIPO September 25, 2008) in which the Complainant is described as a “sports figure.” He used his name in promoting “a variant of the traditional game of cricket that he invented and made popular, 20/20 Cricket, including active promotion of a Stanford 20/20 Cricket Tournament, and other use of his name to promote commercial cricket interests.” This, the “Panel believes ... adequately establishes rights in that name sufficient to invoke the Policy.”
When it comes to sports, evidence of what a person does for it rather than as a participant in the scrum suggests that all levels of activity qualify as “profit[ing] from their reputation in commerce.” Being in the scrum of business, however, does not qualify. Panelists are in agreement that men and women who are not eponymous founders of their businesses cannot succeed, are not covered however extraordinary their contribution to the businesses in which they are associated. Margaret C. Whitman, supra. Similarly with entrepreneurs without name recognition nationally or unable to assembly proof, such as the Complainant in Laughton Marketing LLC v. Boris Soposki, D2008‑0718 (WIPO July 17, 2008). He was unsuccessful because he “merely asserted service mark rights and has not provided any supporting evidence of Complainant’s use of the alleged mark in commerce.... The Panel does not have an evidentiary basis from which it might conclude that Complainant has rights in 'Laughton Marketing' as a service mark.”
On the whole, however, the decisions conformed to expectations. Generally, personal name complainants succeed when they have registered trademarks, or are famous or well known actors, artists, athletes and authors; less likely to succeed if relying on unregistered rights unless they can demonstrate that their names have acquired secondary meaning in the marketplace for goods or services; and unlikely to succeed if it is not they but their companies that own famous trademarks .