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Complainant Must Hold a Trademark in His/Her Personal Name to Succeed in a UDRP Proceeding

Celebrities whose names are source indicators have common law trademark rights, thus standing under the Policy to capture corresponding domain names, while those who are simply rich and famous do not. Do not, that is, unless the given name is the functional equivalent of a generic affix to a trademarked family name. This dichotomy is illustrated in a pair of cases decided by the same Panel, Vanisha Mittal v. info@setrillonario.com, D2010-0810 (WIPO August 8, 2010) and ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, Aditya Mittal v. All Illumination, Vanisha Mittal, info@setrillonario.com, DME2010-0006 (WIPO July 30, 2010). The Complainant was unsuccessful in the first because her celebrity was not a source indicator, but successful as a Joint Complainant with the trademark holder in the second.

Vanisha Mittal is celebrated as the daughter of a rich father with extensive industrial and commercial holdings in India and Europe. There are trademark registrations for MITTAL; none for “Vanisha Mittal.” The consensus holds that “[w]ithout any evidence that the Complainant holds some specific right as licensee of a ‘Mittal’ trademark, the license argument must fail.” A similar finding was made in Birgit Rausing, AB Tetra Pak v. Darren Morgan, D2008-0212 (WIPO April 5, 2008) in which the Panel noted that Birgit Rausing “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.”

“Celebrity status, on its own” (notes the Panel in Vanisha Mittal) “does not provide a complainant with rights in a trademark or service mark, which is the bottom line requirement for a complainant to satisfy paragraph 4(a)(i) of the Policy” The sole exception to personal name exclusion from UDRP protection is for founders who are in the scrum of business associated with their entrepreneurial enterprises. In Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005), for example, the Panel stated that the problem “eventually… come[s] down to whether the evidence establishes [a] sufficient … nexus between the name itself and its use and association in trade and commerce.” He provided a list of guidelines to establish whether there was proof of such a nexus.

No such nexus existed with Vanisha Mittal; her membership on the Board of Directors for Mittal does not qualify. “The Panel has been told almost nothing about the Complainant, and it is only possible to infer from the Respondent’s various website postings that she is a celebrity in some parts of the world, and that she celebrated a lavish and expensive wedding.” On the other hand, the trademark holder, ArcelorMittal does have standing. The Panel explains that

While the Respondent has used the names of two members of the Mittal family in the Domain Names, it appears to the Panel that the primary target was probably the company ArcelorMittal. First, the <arcelormittal.me> Domain Name is identical to that company’s international trademark registration. Secondly, the adityamittal website contains substantial material relating to ArcelorMittal and its operations, and the <vanishamittal.me> Domain Name resolves to a website at which ArcelorMittal’s corporate logo has been reproduced. The use of that corporate logo suggests to the Panel that the intention was probably to “bait” ArcelorMittal rather than Vanisha Mittal herself.

Since the Respondent’s primary purpose in registering the domain name was to sell it to the trademark holder (he boasted that fact) “for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name” he was “caught [noted the Panel] by paragraph 4(b)(i) of the Policy.” Hoisted, that is, by his own petard.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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