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Injunctive Relief Against Domain Name Registrants for Unauthorized Registration of Personal Name

Unless personal names have achieved trademark status they are not protected under the UDRP and there can be no injunctive relief against domain name registrants.  It may be abusive but it is not actionable. 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 which states: “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks,” Paragraph 179. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their businesses or professions. This rule applies however extraordinary the individual’s contribution is to business, science, politics, the professions and the academy. The WIPO Report states that it 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.” Report paragraph 199.

In contrast, the Lanham Act provides a remedy for cyberpiracy of personal names that do not qualify for trademark protection, formerly codified at 15 U.S.C. 1129, now 15 U.S.C. 8131 (Cyberpiracy protections for individuals). Explaining the necessity for the provision, Senator Hatch, noted

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 or money or use them for various nefarious purposes.

There have been a couple of reported cases and several unreported. In one of the reported cases the court granted an injunction, Schmidheiny v. Weber, 319 F.3d 581, 66 U.S.P.Q.2d 1062 (3d Cir. 2003), and in the other it denied it, Carl v. BernardJCarl.com, 662 F. Supp. 2d 487 (E.D. Va. 2009), aff’d 409 F. App’x 628, 630 (4th Cir. 2010) (per curium) (unpublished). In Schmidheiny, the court based its conclusion on a consideration of factors including the defendants’ past similar behavior, the short time-lapse between registration and offer for sale, and the placement of the domain names “for auction at a price that had no reasonable connection to its value to anyone other than the plaintiff.” 319 F.3d at 628.

In one of the unreported cases from the Middle District of Florida, Salle v. Meadows, 6:07-cv-1089-Orl-31 (August 6, 2007) the court granted a preliminary injunction against defendant who admitted purchasing the domain name and attempting to sell it to the plaintiff for $9500. He claimed he was merely attempting to recover money plaintiff owed him. The court rejected this “defense”: “cyber-extortion is not a permissible way of recovering a debt” and ordered the domain name transferred.

The latest of these cases, unreported from New York has just recently been filed.  In Paul Bogoni v. Vicdania Gomez, 11 Civ. 08093 (S.D.N.Y. December 28, 2011) the court has also granted an injunction. The court found that “defendant purchased [two domain names] – multiple versions of the plaintiff’s real name – for less than twenty dollars in total, and, within several days, posted an offer to sell the Domain Names for $1,000,000 each.” The court concluded that plaintiff stated a claim under § 8131(A) and proceeded to examine whether defendant’s defense under § 8131(B) “remove[d] her from the reach of the ACPA.”

Section 8131(B) requires defendant to prove absence of bad faith. This she was unable to do. The Section reads:

A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially or confusingly similar thereto, shall not be liable under the paragraph if such name is used in, affiliated with, or related to a work of authorship protected under Title 17, including a work made for hire, as defined in section 101 of Title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by contract between the registrant and the named person.

The defendant concocted a set of facts that made it appear as though there was a copyright issue. The court concluded it was a sham, that the registration violated the statute and granted a preliminary injunction enjoining defendant from continuing use of the domain names.

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