Holders of trademarks composed of given or surnames compete for space and attention with persons who are known by those names. On the silly side of the ledger are respondents who successfully claim to be known by their nicknames, such as “Penguin” and “Jollibee” who are found to have legitimate interests (if not rights) superior to the more well known (internationally in the case of the first) complainants. Conventionally, however, names are treated no differently than generic words. Competing for space and attention with a trademark holder to use one’s own name for one’s own project does not rise to an infringement.

This is even more so where use of a country code extension such as “.us” is limited to certain classes of registrants. The Respondent in Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi, FA1005001323771 (Nat. Arb. Forum June 23, 2010) showed not only that as a “Grazia” she was entitled to her choice of <grazia.us> but that the Complainant, an Italian woman’s magazine has no nexus with the United States even though it holds a United States trademark for GRAZIA. The rules promulgated by the designated registrar for “.us” TLDs (Neustar, Inc.) require registrants for usTLDs to have a substantial nexus with the United States. The Respondent pointed out that the mark is not immediately associated with the Complainant in any event since it is multiply registered in a variety of Classes.

Under the terms of the “.us” TLD, a foreign entity or organization must “certify” that it has a “bona fide presence in the United States” on the basis of “real and substantial lawful connections with, or lawful activities in, the United States of America.” The Respondent contended that this requirement “is intended to ensure that only those individuals or organizations that have a substantive lawful connection to the United States are permitted to register for usTLD domain names.” The Respondent further contended that the Complainant is

neither a U.S. citizen, nor a resident or domicile of the U.S. It is not a U.S. entity or organization and has no ‘bona fide’ presence in the U.S. Thus, any attempt by Complainant to register a usTLD would be deceptive to consumers. Complainant seeks to achieve through this proceeding what it could not legitimately achieve through the registration process. That is improper and illegitimate.

The Complainant contended that the Respondent was “leveraging on [its] reputation.” Generally, this is a potent argument, but here the Panel did not penalize the Respondent for having her website parked with links to fashion magazines. That piece of evidence is offset by another, that she presented strong evidence of demonstrable preparations for the website dedicated to food reporting [paragraph 4(c)(i) of the Policy.] In addition, the Panel found “through Respondent’s use of her name in reference to her journalistic activities and projects that Respondent has become commonly known by the disputed domain name,” a defense under paragraph 4(c)(ii).

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