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Evidentiary Burden for Proving Trademark of Personal Name

The Panel in Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) (<tonysnow.com>) stated the proposition in the following way:

As the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors, actors or businessmen 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.

There is a sliding scale, on one end of which celebrities whose talents are offered in the marketplace are privileged. Personal names of artists, performers, musicians, authors and athletes have been found to pass the evidentiary hurdle for common law trademark rights. Others who may be equally celebrated in their non-marketplace fields, have to scramble for trademark recognition. Two cases illustrate the divide, Hill Harper v. Moniker Privacy Services / Domain Administrator, D2010-0225 (WIPO April 14, 2010) and Mr. Cinar Orge Saylan and Mr. Caglayan Orge Saylan v. GKG.NET Domain Proxy Service/The Fact Co., Winston Smith, D2010-0248 (WIPO April 9, 2010). In the first, the Complainant’s activities establish his right to protect his name from commercial exploitation; but not in the second. The difference lies in the reach of their respective names as commodities in the marketplace. The measures of fame and success are pecuniary and material; the helping professions (at least with the Panel in the second case) do not qualify.

Respondents appeared in neither case and in both the domain name resolved to pay-per-click websites. Although “the mere offering of a domain name for sale to the Complainant or to a competitor of the Complainant for more than the out-of pocket costs directly related to the Domain Name does not constitute evidence of both bad faith registration and use within the Policy … [because] paragraph 4(b)(i) … requires the additional showing that this was the Respondent’s primary purpose for registering or acquiring the Domain Name,” an intent, for commercial gain, to attract Internet traffic as a result of confusion between the Domain Name and the Complainant’s mark violates paragraph 4(b)(iv) of the Policy.

Hill Harper is well-known as an actor and author in the United States of America. Dr. Turkan Saylen on the other hand is a non-commodified celebrity. She is “a well-known professor, doctor and humanitarian in Turkey. Dr. Saylan was the founder of the Association for the Support of Contemporary Living, a well-known NGO in Turkey … [who] received the International Gandhi Prize in India … [as well has] won numerous peace awards and other accolades in Turkey.” On top of this she “has also published numerous books, articles and other scholarly works.”

The result is often unexpected and unfair. This was anticipated in the the WIPO Second Report. The Report states at paragraph 179 that “the application of the UDRP to the protection of personal names [should be authorized only] when they constitute trademarks,” Paragraph 179. At 199, the Report goes on to state that this may result in an “injustice” and is undoubtedly an unhappy limitation: “many sensitivities [will be] offended by the unauthorized registration of personal names as domain names” and the “result is that there are some perceived injustices.”

The Panel denied Dr. Saylan common law rights to her name and concluded that “this dispute is better served by being adjudicated by the appropriate authority under Turkish law.” The problem is that the Respondent resides in the U.K. “If anything is clear from the numerous past panel decisions focusing on personal names, it is that the UDRP policy was not intended to provide comprehensive protection to personal names.” It is not absolutely correct that academics celebrated in their fields have been refused protection. In a criticism (alleged fair use) case, the Panel found that the Complainant had common law protection, Joseph Schlessinger, Ph.D. v. PrivacyProtect.org / Harold O Connor, JS Players Association, D2009-0695 (WIPO July 21, 2009). It can be added further that if “anything is clear” a court action in Turkey against a person a continent away to vindicate a reputation and obtain rights over one’s own name is an illusion.

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

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