The UDRP was enacted to protect trademark/brand owners from cybersquatters, people who were unfairly using domain names that belonged to their products/services/companies. The UDRP has been invoked successfully to protect personal names, typically where the complainant is a famous celebrity, but several recent complaints have failed because they did not specifically allege, or were unable to show, trademark rights in the names at issue.
A little brief elaboration: a name can be used as a mark, of course. But you have to show that it has been used as a mark. This could be as simple as putting your name on a line of t-shirts, or paper products, or business cards for your maid service. The point is that you must show a connection between the name and the goods or services offered. And, as with unregistered marks, the old problems of sufficiency of the evidence must be overcome.
In one of the cases published this morning, Wernher Pramschufer’s complaint about wernherpramschufer.net failed because he did not show how his name was being used as a mark. The panelist denied the complaint “without prejudice” though, probably believing that Mr. Pramschufer could ultimately show the required evidence but for some reason was unable to do so within the time frame for the UDRP action.
And the trio of Proskauer cases from WIPO earlier this month, the greggmashberg.com, josephleccese.com, and allenfagin.com denials, several partners at the prominent law firm were unable to obtain transfer of domain names being used as gripe sites about them personally, in part because they were unable to show that they had any trademark rights in their names as such, apart from their employment by the prominent Proskauer firm (which was able to show rights in the PROSKAUER mark, but still failed to obtain transfer of proskauerlawfirm.com because of its use as a gripe site).
Contrast this with cases where transfers were ordered, like juliaroberts.com, tommylee.com, and tomcruise.com. In those cases, the individuals were able to show actual rights in their names as marks, typically through the long and public use of their names in connection with their services (acting, music, whatever). But the point remains, under the UDRP a name without something more — some solid evidence of use of the name as a mark — will not satisfy the first prong of the UDRP.
Domain Name: grazia.us
Case: Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi, No. FA 1323771 (Nat’l. Arb. Forum June 23, 2010).
In this action under the usTLD Dispute Resolution Policy (which mirrors the Uniform Domain Name Dispute Resolution Policy), Complainant sought transfer of the Domain Name grazia.us. Complainant, an Italian company, has used the mark GRAZIA for many years in several markets around the world in connection with its fashion magazine.
Respondent registered the Domain Name in 2008, but as of the time of the dispute, had not established a website there. Importantly, though, Respondent’s first name is Grazia. And she was able to demonstrate that she had plans to start a food blog at the domain.
So the Panel denied the complaint. It found that Respondent had rights or legitimate interests in the Domain Name because through the use of her name in reference to her journalistic activities and projects, she had become commonly known by the Domain Name.
The Panel also found that Respondent had made demonstrable preparations to use the Domain Name prior to receiving notice of the dispute, and that such preparations were to use the Domain Name in connection with a bona fide offering of goods or services.
Because Respondent had rights and legitimate interests in the Domain Name, the Panel concluded that she did not register or use it in bad faith. On this point the Panel cited Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name) and Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registrations is not in bad faith.”).
Photo courtesy Flickr user Michelle Chagnon under this Creative Commons license.
