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The Fate of Business Luminaries in Protecting Their Names

Unless personal names have achieved trademark status, they are not protected under the UDRP. 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.” Paragraph 199. Panelists have been far more accommodating to successful authors, sports and entertainment personalities and celebrities in various commercial enterprises. This list also includes eponymous founders of businesses, but not necessarily founders (although as I point out below there are examples otherwise).

Unfortunately, there is an inconsistency in the jurisprudence on this issue. The reason for excluding business luminaries is discussed in Josh Schachter v. Sue Pearl Wang, FA1108001403527 (Nat. Arb. Forum October 26, 2011). There was no question that Respondent had no right or legitimate interest in the domain name and registered and was using it in bad faith. However, to qualify for a common law trademark “[t]he name must have been used as to identify the source of goods or services, and as a result of such use, must have become distinctive of that source,” citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.7.

The Panel held that Complainant failed despite his business associations and accomplishments:

Complainant is the founder of several technology companies, including del.icio.us, and an investor in and advisor to many other companies. He speaks regularly at conferences, for which he is compensated through a speaker’s bureau. Complainant states that he is “a luminary in the technology industry” and “a pioneer in the social commerce and peer-to-peer internet space.” Complainant claims that he has common-law trademark rights in his name as a result of his fame and professional reputation. He alleges further that the disputed domain name, <joshuaschachter.com>, is identical to his name.

However, the WIPO Overview also notes at paragraph 1.6 that “[a] trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”

Recourse, if at all, must be based upon federal or state law. The Lanham Act grants a cause of action 15 U.S.C. § 1129(1)(A) (transferred to 15 U.S.C. § 8131) (Cyberpiracy protections for individuals):

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

New York has a similar law General Business Law, Art. 9-C,§ 148 (Cyber Piracy Protections; Domain Names). There are no reported cases in New York. In an unreported case from the Middle District of Florida, Salle v. Meadows, 6:07-cv-1089-Orl-31 (August 6, 2007) the court granted a preliminary injunction. Defendant admitted that he purchased the domain name and attempted to sell it to the plaintiff for $9500, but claimed the plaintiff was indebted to him in that amount and had no intent to profit when he registered the domain name, because he merely attempted to recover money that he was owed. The court rejected this “defense”: “cyber-extortion is not a permissible way of recovering a debt” and ordered the domain name transferred.

A number of decisions, however, have diverged from the general rule. Entrepreneurs lacking trademark registration or ineligible for common law trademark have been found to qualify for unregistered rights under UDRP on proof of their association with the businesses they own or manage. But, the cases in which entrepreneurs have succeeded requires them to offer a stronger than usual narrative. Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005) and Kotak Mahindra Bank Limited v. Richard Brown, D2008-0243 (WIPO April 9, 2008). On the “heretical” theory in this cases it appears that Josh Schachter would be eligible given the description of his business activities. The decisions on entrepreneurs are collected in Thomas Pritzker, The Pritzker Organization, LLC v. Richard Brown, D2009-0911 (WIPO October 12, 2009) in which the Panel rejects this construction entirely because it “creates a special exception for prominent business persons from the requirement that a personal name must be used as a trademark or service mark to be entitled to protection under the UDRP.” That view is inconsistent with “the majority view of panelists, and with paragraph 4(a)(i).”

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