Allegations of Cybersquatting of Personal Names

The Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet Domain Name System, dated September 3, 2001 concludes that “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks,” Paragraph 179.  Despite the exclusion, UDRP Panels recognize unregistered trademarks for persons whose names have come to signify sources of goods or services.  This generally favors movie stars, athletes, authors, etc. who are brands in themselves, but not businessmen and women, who although well known, do not qualify for trademark. Being famous or being a member of a famous family does not qualify for an unregistered trademark.

The situation is similar under U.S. trademark law: surnames as such are not registrable as trademarks unless they have achieved acquired distinctiveness.  However, in legislating the Anticybersquatting Consumer Protection Act(ACPA) Congress included a remedy for cyberpiracy of personal names that do not qualify for trademark protection, formerly codified at 15 U.S.C. 1129 (1)(A), now 15 U.S.C. 8131 (Cyberpiracy protections for individuals).  The provision reads:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person. (Emphasis added).

Section 8131 is justified for the reasons explained by Senator Orrin Hatch

As with trademark cybersquatting, cybersquatting of personal names poses similar threats to consumers and e-commerce in that it causes confusion as to the source or sponsorship of goods or services, including confusion as to the sponsorship or affiliation of websites bearing individuals’ names. In addition, more and more people are being harmed by people who register other people[‘]s names and hold them out for sale for huge sums of money or use them for various nefarious purposes.

Litigation invoking Section 8131 has been sparse.  There have been less than a handful of cases.  The most recent comes from the Southern District of New York, Bogoni v. Gopez, 840 F. Supp. 2d 694 (2011). The Court filed an opinion on December 28, 2011 granting summary judgment in plaintiff’s favor; and, just recently in September 2012 the court filed a decision on plaintiff’s application for attorney’s fees.  The facts are exotic. The defendant is plaintiff’s divorced wife. The Court noted that the “matter is one of a series of domestic disputes between” the parties.”

Of the few unreported cases three found in favor of plaintiff and one dismissed the claim for cybersquatting.  Bogoni followed the reasoning in an unreported case from the Middle District of Florida, Salle v. Meadows, 6:07-cv-1089-Orl-31 (August 6, 2007).  In that case, the defendant admitted that he purchased the domain name and attempted to sell it to the plaintiff for $9,500, but justified his conduct on the grounds that plaintiff was indebted to him in that amount.  He claimed that he had no intent to profit when he registered the domain name, because he merely attempted to recover money that he was owed. The court rejected this defense.  It held that “cyber-extortion is not a permissible way of recovering a debt” and ordered the domain name transferred.

In the one reported case, Schmidheiny v. Weber, 319 F.3d 581, 66 U.S.P.Q.2d 1062 (3d Cir. 2003) the court rejected defendant’s argument that because the domain name, <schmidheiny.com> was originally registered before the enactment of the ACPA and the statute is not retroactive the plaintiff failed to state an actionable claim under Section 8131.  The court disagreed in a decision that has wider application than to cybersquatting of personal names:

We hold that the word “registration” includes a new contract at a different registrar and to a different registrant. In this case … that occurs after the effective date of the Anti-cybersquatting Act. To conclude otherwise would permit the domain names of living persons to be sold and purchased without the living persons’ consent, ad infinitum, so long as the name was first registered before the effective date of the Act. We do not believe that this is the correct construction of the Anti-cybersquatting Act.

Interestingly, UDRP Panels came even earlier to the same conclusion on the general proposition that registration was not limited to “original registration.” Dixons Group Plc v Abu Abdullah, D2000-1406 (WIPO January 18, 2001) (“Although the Respondent is not the original registrant of the Domain Name, he should be treated as having “registered” the Domain name in bad faith in addition to having ‘used’ it in bad faith, given that the offending use so closely followed the acquisition of the Domain Name.”).

In the one case in which the court ruled against plaintiff on the cybersquatting claim for failing to state a claim, Carl v. Cotty Vivant Marchisio & Lauzeral, et al., 409 Fed.Appx. 628 (4th Cir. 2010) the appellate panel agreed with the district court that defendant a French law firm had no “specific intent to profit” from the domain registration, thus there was no violation of Section 8131.  Rather, its “intent” was “a desire to avenge a[] [perceived] insult” which the court on the basis of the content posted on the website held was actionable for defamation, not cybersquatting.  The 4th Circuit affirmed judgment dismissing the Section 8131 claim and awarding damages for defamation but remanded to the district court to consider the issue of punitive damages.  According to the reasoning in Carl the “intent to profit” element of proof for a Section 8131 rests on the defendant’s expectations of a pecuniary, benefit not a psychological surge from registering the domain name.  In the court’s view:

The statute’s language is specific, and while the defendants may have been attempting to profit, they did not do so in the means specified in the statute.

While avenging a perceived insult may be a form of profiting it is not sufficient for a Section 8131 remedy because it was not defendant’s intent to “sell[] the domain name for financial gain to that person or any third party.”

California has a robust antipiracy statute protecting personal names at Cal. Bus. & Prof. Code § 17525.  New York has a similar but less robust statute at General Business Law § 148. As far as I have been able to discover, there are no reported cases under either statute.

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