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Surname Trademarks and Rights to Corresponding Domain Names

Surnames may qualify as trademarks, but to the extent they are common (and provided that there is no intent to take advantage of the complainant or its trademark) they share with trademark owners the right to use them in domain names. Ordinarily, surnames are treated no differently than generic words. (Surnames qua surnames are not registrable as trademarks, §1052(e)(4) of the Trademark Act). Merely competing for space and attention with a trademark holder to use one’s own name for one’s own Internet presence does not rise to an infringement. A respondent has a right to a “domain name [that] reflects [his] initials [and his] … first and middle name, combined with [his] entire last name,” Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001) (<>). In Modefine the Respondent is an individual with his own website and obviously not competing with the fashion house “Georgio Armani.” He is not a domainer, but domainer companies are not excluded from holding common surnames for offering services other than websites although websites are the prevalent use for domain names.

Non website uses qualifying as bona fide offerings under paragraph 4(c)(i) of the Policy include e-mail, FTP and hosting services. In Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, D2000-0161 (WIPO May 12, 2000) (<>, the Panel stated that “[w]e do not accept that the Complainant’s contention that registration of a domain name which is only to be used for [e-mail and file transfer operations] is in some way improper and constitutes bad faith”). The proposition is also expressed in a number of early cases that established the principle, Coltec North Carolina Inc. v. United Business Machines, Inc., D2001-0577 (WIPO June 6, 2001); Government of Canada v. David Bedford a.k.a., D2001-0470 (WIPO June 30, 2001); and Innotek, Inc. v. Sierra Innotek, D2002-0072 (WIPO April 22, 2002) (3-member Panel) (“FTP and Email are legitimate commercial uses and the lack of a formal website page does not detract from these real and viable commercial uses.”). The first two cases granted the complaint; in Innotek the complaint was denied. The Panel in Government of Canada held that “Domain names may be acquired simply for the purpose for using them as an e-mail address or as other Internet uses such as ftp–however, this last point is on the topic of the legitimate use that a purchaser may ultimately make of a domain name.” Note the proviso that it depends on the use that a respondent makes of the domain name.

None of these cases involved surnames, but the principle is accepted by consensus that a name identical or confusingly similar to a trademark can be used legitimately for services other than websites. The most recent example of an e-mail service is Marden Group B.V. v., D2011-1061 (WIPO August 24, 2011) (<>). The Respondent who has been challenged in a number of UDRP complaints (generally unsuccessfully) by holders of surname trademarks appears to be the premier company offering surname services. It was also recently successful in a civil lawsuit in Ontario on a procedural question that established that domain names are personal property, Tucows.Com Co. V. Lojas Renner S.A., 2011 ONCA 548 (Court of Appeal for Ontario) (defendant owns the trademark RENNER registered in Argentina), discussed in my Note of August 17, 2011.

The Marden Panel stated that it “accepts that the provision of such personalised email, blogging and webhosting services in connection with a domain name would provide a respondent with a legitimate interest in that domain name if this is its sole usage.” The proviso “if this is its sole usage” (as noted above also in the Government of Canada) is important because ordinarily content gives a lie to the respondent’s alleged good faith intent. Although the Marden Complainant alleged that prior to the filing of the complaint Respondent used the domain name to generate pay-per-click revenue, it was short on evidence that the links had any relation to the goods or services Complainant offered. A complainant establishes bad faith use by showing that a domainer respondent is diverting Internet users to a website offering links to goods or services competing with it, but not otherwise. A finding of bad faith use would only result if the links were “in a connection to goods or services competitive with those of the rights holder or … based on trade mark value” otherwise the existence of links per se would not “override the legitimate interest already established.”

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