Does your personal name function as a trademark?
Celebrities and well-known people can use the Uniform Domain Name Dispute Resolution Policy to go after cybersquatters who use their names in domain names. But this has limits; the name must function as a common law or unregistered trademark (or be a registered trademark).
This can be difficult to prove, especially if the person filing the dispute is not a major media celebrity.
Consider the case of MaryPfaffko(.)com, in which the Complainant has a long career in wildlife biology and policy. The registrant of the domain name appears to have a personal vendetta against the Complainant.
World Intellectual Property Organization panelist Georges Nahitchevansky found that there wasn’t enough evidence to show that the Complainant has common law trademark rights in the name. He noted that UDRP is limited in scope and that the complaint would be better served in the courts:
The Panel wants to make clear that it takes no pleasure in reaching this decision. Hijacking the name of another for purposes of furthering what appears to be a personal vendetta is likely an abusive practice. However, the scope of the Policy is a narrow one and is meant to provide appropriate relief to a party that has rights in a trademark and not to address matters such as defamation or other torts that are outside the scope of the Policy. Such abusive practices would be better addressed in a court action and not through the UDRP.
Jon Schultz says
I disagree that the concept of “cybersquatting” is valid, that a person or company with a mark should have legal right to domains incorporating the mark.
The basis of trademark law is to prohibit intentional or negligent impersonation, so that: 1) consumers are not deceived as to the source of goods or services; and 2) the reputation of a company isn’t damaged by such impersonation.
If I register Microsoft.whatever, that action doesn’t produce 1 or 2, yet under the draconian ACPA I could be sued for $100,000 and under the UDRP I would be subject to loss of the domain, even though I might be intending to put up a website – which might be an article or book about Microsoft – which would clearly and conspicuously state that I have no affiliation with Microsoft.
If my intention in registering the domain is to hopefully sell the domain to Microsoft – and if I should contact Microsoft offering to sell them the domain for any amount of money – that also does not produce 1 or 2 and thus should not be actionable.
Now if I use the domain in a way which does produce 1 or 2, then there are longstanding trademark laws by which Microsoft can take action to end the infringement and receive monetary compensation for damages suffered, just as they can take action if infringement occurs in a context which does not involve domains. But there is no reason why that should ever involve forfeiture of a domain – unless a monetary judgment is obtained by which the domain is simply considered an asset with an assignable monetary value – as no domain owned by anyone ever, in and of itself, produces 1 or 2 until and unless it is used in an infringing way (if only by the registrar by default after registration, which I think should be prohibited).
So it seems to me there is no valid reason, which is consistent with the basis of trademark law, why a company like Microsoft should have a legal right to Microsoft.whatever, and no valid reason why ICANN should have gone out of its way to establish the UDRP, to make it easy for trademark holders to enforce such a right.
Am I missing something?
Jane Doe says
Part of the issue is also when the trademark owner does not not a valid trademark in the registrants country.
Unless the registrant is misrepresenting themselves as the trademark owner, then how does owning a trademark in one country, but not the the other, supersede the rights of the registrant. (France.com springs to mind here)
John says
Kylie vs. Kylie
Look into it.
As a patriotic American, the answer to that one is crystal clear.