Unless personal names have trademark status they are not protected under the Policy. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their professions. A particularly good example of this is Jonathan Ive v. Harry Jones, D2009-0301 (WIPO May 5, 2009). Mr. Ive is evidently famous for his contributions to products manufactured by Apple Inc., but he admitted that he was a “a very private person. My reputation has been established by the work I do, not through self-publicity.” The public does not associate Mr. Ive’s name with any goods or services even if some may recognize his contributions. Protected are eponymous founders of businesses, successful authors or sports and entertainment personalities and celebrities in various commercial enterprises. Merely being famous in society does not support a trademark.
However, the class of persons entitled to protection expanded under Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005) to include those described as the alter egos and driving forces behind successful companies. The decision represented a change in how certain individuals were to be regarded. The Chung Panel offered a six-part test. A complainant’s personal names do not necessarily have to be incorporated into the names of their businesses but the individual and/or the company must have a demonstrable interest in protecting the name for commercial use. In essence these additions to the class are celebrities in their niches – even though not in the same league as movie stars and athletes who may be universally recognized by the public. I have noted previously that a number of 2009 decisions have approved the analysis in Chung. The change has not yet expanded to include chief executives (as distinguished from eponymous founders and driving forces) of major corporations, Margaret C. Whitman v. Domains For Sale, D2008-1534 (WIPO December 1, 2008) (former chief executive of eBay), although in her case the disputed domain name anticipated her running for governor of California.
The latest decision in this class is Kishore Biyani v. Ronak Shah, D2009-1284 (WIPO November 19, 2009). “Kishore Biyani is CEO of Future Group of Companies which deals in number of fields like consumer finance, capital, insurance, laser entertainment, brand development, retail real estate development, retail media and logistics, etc.” His “name keeps on appearing now and then in various newspapers and web articles.” It has “been used extensively in the media and Internet [and the] companies promoted by him are identified and associated with his name.” Ergo, he “has acquired an unregistered trademark right for the purpose of paragraph 4 (a) (i) of the policy.”
These decisions are a far distance from early cases involving distinguished businessmen such as Israel Harold Asper v. Communication X Inc., D2001-0540 [WIPO June 11, 2001]) and “Ted Turner” (R.E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, D2002-0251 [WIPO July 4, 2002]), complaints in both of which were denied for lack of trademark. An early case also denied protection to Bruce Springsteen, Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 (WIPO January 25, 2001) (denied over a strong dissent), although later repudiated. Performers and published authors and others in entertainment, sports etc. were thereafter quickly recognized as having unregistered trademark rights based on their exposure in the public arena.