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Prominent Business Persons and Domain Names

It is a general principle in UDRP jurisprudence (as it is under trademark law) that personal names are not registrable as trademarks, so it follows that a person has no right to a domain name corresponding to his or her name unless the name has acquired distinctiveness by being used in commerce and is recognized by consumers as a source of goods or services. More of this in Common Law Right of Celebrities in their Names, here. The “Lidia” in LGMB Holding LLC v. yang liu, FA1507001627997 (Forum August 19, 2015) had the right idea, “Ms. Lidia Matticchio Bastianich is an Emmy-award winning public television host, bestselling cookbook author, restaurateur (including several restaurants that bear her first name) and owner of a flourishing food and entertainment business,” ). Business entrepreneurs may be well and widely known but their prominence in their places of work or communities is not the issue in determining whether the domain name was registered in bad faith.

When it comes to personal names what is protected is frequently misunderstood. There is no right to own the domain name corresponding to one’s own name unless the name has acquired distinctiveness by being in the market and is recognized by consumers as a source of goods or services. The “Lidia” in LGMB Holding LLC v. yang liu, FA1507001627997 (Forum August 19, 2015) had the right idea, “Ms. Lidia Matticchio Bastianich is an Emmy- award-winning public television host, best-selling cookbook author, restaurateur (including several restaurants that bear her first name) and owner of a flourishing food and entertainment business,” ). Business entrepreneurs may be well and widely known but their prominence in their places of work or communities is not the issue in determining whether the domain name was registered in bad faith.

Business people of the Bloomberg and Trump varieties, and we should add “Lidia” early on realized that their personal names could have value beyond their business ventures and they registered themselves at the USPTO (or other national registries) as soon as their names acquired distinctiveness in the market.

This was foresightful because by the mid-2000s, and it’s more than obvious today, domain name entrepreneurs have vacuumed the public domain of every dictionary word and variant together with appropriate adverbs and adjectives as well as databases of given and surnames in an attempt to anticipate every possible future use by businesses and businessmen looking for appropriate domain names, but there is still creativity in rendering the spelling of one’s name: not “Lydia” but “Lidia.”

Given the volume of domain names being offered for sale it’s highly likely there’s been a decrease in creativity; so that instead of deep-thinking over the problem it’s easier to pick something up at the supermarket, which is what resellers have become! The difficulty with this way of doing things is that ultimately businesses have to match their choices of domain names with corresponding signifiers that will qualify for trademark registration and be something more than just functional elements on the Internet. (This, too, has resulted in frustration, which is seen in the number of dishonest proceedings claiming bad faith measured from renewal of registration for corresponding domain names predating trademark acquisition).

Trademarks can be owned, but in a more literal sense domain names are “held” for a stipulated period, and if not renewed can be lost. To take a recent example, the Complainant in Ramsey Mankarious v. Stanley Pace, D2015-1100 (WIPO August 11, 2015) is a prominent businessman. He was the registered holder of <mankarious> for 15 years before inadvertent lapse of registration, subsequently picked up by a domain name holder who specializes in personal names. One can understand the prominent business person’s frustration but to have held a domain name is not enough to claim a right to it unless it is also a trademark.

The Respondent in the Mankarious dispute was quite open about its business model; it owns over 10,000 surnames. The Complainant claim that “[g]iven [his] significant reputation in the name ‘Mankarious’, there is no believable or realistic reason for the Respondent’s registration or use of the disputed domain name other than to take advantage of the Complainant’s established reputation” clearly misses the mark unless the Complainant is the only Mankarious, which is unlikely even though he may be the only Mankarious who would have an interest in “leasing” it to conduct his business. In any event, the Panel rejected the complaint because the Complainant “does not actually use his/her name as an identifier for the business engaged in, which . . . is insufficient to constitute unregistered trade mark rights.” (I suspect Mr. Mankarious could have presented a more robust narrative).

What Mankarious illustrates is that anyone can register a personal name that is not h/her own and hold it against another person who claims the registration cybersquats on h/her name. The fact is, and this has been hammered in by a good number of Panels over the years, it is not unlawful to sell, lease, and monetize domain names any more than it is for common words and descriptive phrases, except where there is intentional infringement. To lose a person name domain by inadvertence to renew unless there’s proof of common law rights there is no remedy under the UDRP, although there may be under the ACPA. (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).

However, under the UDRP the first to the registrar (lapse or not in registration which was Mankarious’ downfall) has the better right, unless there is a stronger narrative about the name than simply being a personal name; example, another recent case, Leland Turner v. joseph derer, FA1505001618086 (Nat. Arb. Forum June 25, 2015). In this dispute there was priority in being known by the name and using it in commerce.

But, if that were not the case a claim for the domain name would be fruitless unless (as it happens under certain circumstances) there is evidence the domain name was acquired for the specific purpose of taking advantage of an unregistered trademark, which not infrequently happens but requires proof of priority of use in commerce before the holder has registered the domain name as in the “Lidia” and Leland Turner disputes.

The sole sweet spot in all this that there are numerous examples of priority in commerce with unregistered rights particularly involving individual entertainers, athletes, authors, fashion designers, etc. whose prominence grows over the course of time and are unlikely to have registered their names with the USPTO but nevertheless have come to have protectable rights under the UDRP. This is the one area in which unregistered rights are more likely to be recognized.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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