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Personal Names Not Protected

UDRP’s limited jurisdiction extends to personal names only if they qualify as trademarks. Some attempt has been made to justify widening the included class but the argument in its favor has failed to persuade other panelists and the consensus remains undisturbed. If the personal name is not in commerce as the source of goods or services the complainant has no remedy under the UDRP [Philippe Pierre Dauman v. Dinner Business, D2013-1255 (WIPO September 6, 2013)], but he or she may have recourse under statutory law. 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 (1)(A), now 15 U.S.C. 8131 (Cyberpiracy protections for individuals). [Randazza v. Cox, 2:12-cv-02040 (D. Nevada) (granting temporary injunction and ordering the domain names transferred to plaintiff)].

Excluded from protection are living persons whose reputations may be based on commercial undertakings and who may even be engaged in the figurative scrum of their businesses or professions, but whose names are not associated as source indicators for goods or services in a trademark sense. This rule applies however extraordinary the individual’s contribution is to business, science, politics, the professions and the academy. [Sir Peter Scott v. Dr. Howard Fredrics, D2009-0276 (WIPO May 1, 2009) (“There is no evidence that the Complainant has commercially exploited his name in trade, for example as an author or broadcaster to a sufficient extent for it to constitute a ‘brand’).] The WIPO Report recognizes 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 of the Second WIPO Internet Domain Name Process, paragraph 199.

Among the earliest decisions Panelists have granted unregistered trademark status to celebrities and personalities in the fields of sports, entertainment, culture and media whose names are branded by their contributions. This list of protected persons extends to eponymous founders of businesses, but not necessarily to non-marquee founders. [Decisions collected Thomas Pritzker, The Pritzker Organization, LLC v. Richard Brown, D2009-0911 (WIPO October 12, 2009)]. It does not include distinguished employees [Jonathan Ive v. Harry Jones, D2009-0301 (WIPO May 5, 2009)] or law partners [Gregg M. Mashberg v. Crystal Cox, D2011-0677 (WIPO June 30, 2011), Allen Fagin v. Crystal Cox, D2011-0678 (WIPO June 30, 2011), Joseph Leccese v. Crystal Cox, D2011-0679 (WIPO June 30, 2011) (“The evidence in th[ese] case[s] falls short. The record[s] before the Panel[s] suggest[] that Complainant[s] [are] highly respected, prominent lawyer[s] who [are] partner[s] with a major law firm. There is insufficient evidence here that Complainant[s] market[] or provide[] services independently of the Proskauer law firm. Rather, it appears that the Proskauer firm is the platform on which Complainant[s] provide[] [their] legal services)].

The Philippe Pierre Dauman in the case of that name is president and chief executive officer of Viacom, Inc. It can be said of him that while he is engaged in the entertainment business he is not an entertainer. Cases cited in support of an unregistered mark are applicable to complainants using their names as identifiers of goods or services rather than their fame. An actor, author, performer, sports star or other person whose livelihood turns on personal recognition meets this criterion almost by definition. “The interested public buys a book because it’s written by [a brand author], admission to a movie because [a noted actor] is performing, or a football jersey because it bears [the athlete’s] number.” Businessmen and women managers and executives will not find a receptive panelist under the UDRP.

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