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Surnames of Historical Personalities Adopted as Trademarks

Personal and surnames are not protected under the UDRP unless their owners can demonstrate their names are associated in the marketplace as sources of goods or services. Personalities in sports, entertainment and the arts have generally succeeded in capturing infringing domain names, but business people have been rejected – Israel Harold Asper v. Communication X Inc., D2001-0540 (WIPO June 11, 2001 – although as I pointed out in the Note for September 23, 2009, there is emerging a more expansive view for entrepreneurs associated with business ventures even if not named after them, Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005).

In contrast, names of personalities plucked out of the history book and adopted as trademarks are not treated under the surname rule. It has been transformed into a symbol. The question turns on whether the complainant can carry the burden of demonstrating recognition of the symbol in the marketplace sufficient for the Panel to conclude that the respondent had actual notice of the trademark’s existence. This was the issue in Churchill Insurance Co., Ltd. v. Churchhill financial Services, Ltd., FA 0906001270466 (Nat. Arb. Forum September 1, 2009) (U.K. Complainant; Respondent resides in the Cayman Islands) in which the complaint was denied because “Churchill” was not transformed in all markets. It was a symbol for one and an historical personality only for another because of its limited market range. However, no such conclusion could be drawn from adoption by General Motors of the surname of Antoine de la Mothe Cadillac, the French Governor and founder of Detroit. The Complainant in General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd., D2009-1781(WIPO February 10, 2010) demonstrated that its trademark CADILLAC has migrated from automobiles to luxury goods and golf courses. Like ROLLS ROYCE the CADILLAC trademark denotes superlative quality. It is irrelevant that the trademark registrant appropriated the name of a former president, governor or cultural figure if the respondent is using the domain name in a trademark sense.

The Respondent in General Motors nevertheless denies that its choice of <> is in any way a violation of the Policy because “[i]n China, the Trade Mark is only registered and used by the Complainant in respect of automobiles and automobile manufacturing… The Complainant’s international Class 28 registration for the Trade Mark does not cover golf-related products.” This argument perpetuates a misunderstanding of the UDRP and of trademark law. It is not the Class that necessarily defines a holder’s exclusive rights to a registered trademark, but the likelihood that consumers will be misled by the use of a name identical or confusingly similar to the trademark into believing that the website is sponsored by the trademark holder. In any event, the Complainant in General Motors demonstrated that it uses CADILLAC in its golf related ventures and that the Respondent was piggybacking on the association of the trademark.

Levine Samuel, LLP. <>
Gerald M. Levine <>

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