National Arbitration Forum orders SteveJobs.com to be transferred.
The company filed a cybersquatting complaint with National Arbitration Forum arguing that the South Korean registrant of SteveJobs.com was cybersquatting by owning the domain name. It was registered back in 1999.
The South Korean man argued he’d been going by the name Steve Jobs Kim since 1999. Indeed, the website archives show that the domain name has included that name on the website at times. But the panel viewed this as a ruse and ordered that the domain name be transferred.
A three-person National Arbitration Forum panel wrote:
The Panel finds that Internet users who are directed to the disputed domain name’s resolved website are likely to believe that they have successfully accessed a website related to, or authorized by, Steve Jobs or his successors. Once on the site, viewers are presented with the option to contact [email protected] for consulting services as well as with links relaying technology news. Confusion as to whether the domain, website or its services are related to, or authorized by, Steve Jobs or his successors, likely causes engagement with the owner of the website and email account. The Panel agrees that such a use of the disputed domain name, to lure consumers and solicit business, constitutes bad faith use…
It has been a very long time since I have commented on a case. Now comes SteveJobs.com.
While I have generally held Panelist Brown in respect, this decision troubles me deeply. In terms of trademark, it is a case of attempting to shove a round peg into a square hole and ignoring the many gap. Although the outcome is perhaps the result of an inexperienced foreign Respondent, I would have expected such an experience panelist to dig further and not rely on the mis-application of a single overly expansive (and oft criticized) default case which the panelist himself decided back in 2005.
By way of background, my search for the Claimant dug up several addresses in Palo Alto. These appeared to be a registered address and not active business locations. I did not find any website that was related to the Claimant. A reverse WHOIS search at DomainTools did not show that Claimant had any registered domain names. In short, I found no evidence that Claimant really existed, let alone that it had used the asserted trademark in any manner whatsoever.
The WIPO TMDM trademark site shows 66 registered trademarks for “Steve Jobs”, 19 of which are registered by third parties unrelated to Mr. Jobs. Indeed, the 1st registration listed was filed in France on September 2011 by Yohann Uzan. There was one US registration but it included “Steve Jobs” in a laundry list of famous names.
Claimant’s earliest trademark registration was in 2018 (it has since filed numerous registrations in different jurisdictions), all of which are outside of the US. I could not see any registration documentation that made a “first-use” claim that predated the 2018 application.
Mr. Brown concludes that a common law right had been established as of 1999, thus pre-dating the domain registration. The conclusion is based on the following:
Complainant contends that the name STEVE JOBS has also acquired strong common law trademark rights. The commercial community and international public identify Mr. Jobs as the alter ego of Apple. As CEO, Chairman and advisor to Apple for decades and the renowned visionary behind the company’s creations, Mr. Jobs became inseparably intertwined with the company’s successes and failures. Compl. Ex.E shows Steve Jobs’ connection to Apple and public perception, connecting Mr. Jobs to the successes and failures of the company.
Respondent rebuts that common law trademark rights in a person’s name needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name is insufficient to establish trademark rights in a person’s name.
Complainant states that Steve Job’s personal name has taken on such a cachet that it has become a trademark. See Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005). It further submits a screenshot of an archived news and media database showing the STEVE JOBS name linked to Apple over 10,000 times in articles across the globe prior to December 21, 1999, the date of Respondent’s registration for the domain (Compl. Ex. H), including in Asia at least 1,247 times prior to the same date, displayed in Compl. Ex. I. After founding Apple, Mr. Jobs served in executive, leadership and chief advisory roles at Apple for about 24 years total. Mr. Jobs supervised the rollout of successful Apple products such as the iPod, Apple iTunes Store, iPhone and iPad, and, at times, successfully requested that efforts on certain products be halted or discontinued to allow the company to focus on more promising endeavors (Compl. Ex. E). Complainant also submits Compl. Ex. F: a few awards and recognitions Mr. Jobs received during and after his lifetime for the contributions, he, through Apple, made to the technology industry as a whole, as well as Apple’s recognition for the same. In 2002, Apple was awarded the Technical Grammy Award for its technical contributions to the music industry. See Compl. Ex. F. Complainant, which is solely owned by Mr. Jobs’ widow, Mrs. Jobs, is the owner of the rights in the STEVE JOBS trademark and has an interest in protecting the STEVE JOBS name from commercial use.
The Panel observes that the name ‘Steve Jobs’ has satisfied the factors to consider when determining whether a name has acquired common law trademark protection in the case Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005), namely: (i) the extent to which the commercial community identifies the individual with the company; (ii) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company; (iii) the extent of the personal ownership of the company by the individual; (iv) the degree of personal control that the individual exercises over the enterprise; (v) the extent to which the individual is identified with any major achievements of the enterprise; and (vi) whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.
The above is largely based upon the outcome of the Chung, Mong Koo and Hyundai Motor Company case, a default UDRP that Brown decided in 2005. I have difficulties in awarding precedent status to default cases. However, the problem does not rest on that alone.
None of the facts in the Chung case are present here. In the Chung case, the evidence showed that the phrase was understood in a trademark context because: (1) Hyundai had itself used the phrase “Chung Mong Koo” in a trademark capacity, AND (2) The respondent itself used the domain to specifically target Hyundai car owners. No such evidence was cited in the present case.
While Steven Jobs is linked to Apple, there is no evidence that Apple made efforts to sell its products using the Steve Jobs name. As my memory serves, Mr. Jobs was a great CEO and spokesperson for Apple products (as well as those of NexT and Pixar). However, the decision makes no reference to Mr. Jobs (or Apple, NexT, or Pixar) having sold any products or services under his own name.
The WIPO index cites a number of cases dealing with celebrity claims. Perhaps the most well-reasoned statement was made by the 3-,member panel in Dr. Michael Crichton v. In Stealth Mode D2002-0874 :
In light of the Second WIPO Domain Name Process, it is clear that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and/or services, i.e. common law trademark rights: The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030; R.E. Ted Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251.
To establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Upon such proof, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services: Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA0205000114437.
WIPO Index 1.6 specifically uses the Crichton language stating that finding a common law right in a personal name requires either (1) proof of use of the person’s name as a distinctive identifier of goods or services offered under that name ; or (2) proof of passing-off – making misrepresentations to the public in the context of trade.
Panelist Brown seems to have ignored these lessons. He has single-handedly expanded well-reasoned limitations to extend to famous CEOs and the like. What makes the instant Steve Jobs case more egregious in my opinion is that panelist Brown has done this without citing relevant authority other than his own default case in Chung. He has seemingly ignored all of the conditions noted in Index 1.6.
The Chung decision has been regularly criticized, and with good reason. Applying it in this case completely ignores the fact that mere celebrity as a business personality is regarded insufficient to obtain the remedy under the Policy. The essential analysis is whether the celebrity has used his/her personal name in a manner that shows or establishes trademark or service mark rights. This requires that the celebrity use the mark in a commercial context as a trademark – in other words as an indication of the source of goods or services.
The Jobs decision provides no evidence showing that Steve Jobs was used as “a distinctive identifier of goods/services offered under that name”. Nor does it reference passing-off. While Mr. Jobs was certainly a famous CEO and Apple spokesperson, Apple did not sell “Steve Jobs” products/services. Nor did Mr. Jobs. Unlike other cases, such as those involving famous authors, there was no reference to any books or movies Mr. Jobs may have authored. The cited facts are a far cry from those of the Crichton case. Indeed, they do not even approach those referenced in Mr. Brown’s default case in Chung.
Also troubling to me was the complete absence of any reference as to exactly how the Claimant came to hold any of the asserted pre-1999 common law trademark rights. Claimant was formed in 2015. The Delaware records do not disclose ownership. Brown’s decision makes no reference to Claimant’s history. Nor does Panelist Brown make reference to how a company formed in 2015 could have succeeded to supposed common law trademark rights that pre-existed the domain registration in 1999. To hold such rights they would have had to be assigned by the owner. Who would have been the owner?
While it could have originally been Mr. Jobs (and after his death, his estate), such is contradicted by Browns reason for the trademark’s existence. In the decision, panelist Brown cites only to Apple:
The commercial community and international public identify Mr. Jobs as the alter ego of Apple.
Given this statement, the “owner” of the common law rights would logically be Apple because it was Apple’s commercial activities that had been supposedly promoted. It would be counter-intuitive to believe that Mr. Jobs, by acting as an Apple spokesperson and CEO would be able to claim common law trademark rights in his name in association with Apple. Remember, Mr. Jobs was an employee of Apple. Thus, his activities as an employee were legally for the benefit of his employer – Apple. It would seem that any common law rights are associated with (and owned by) Apple, not the Steve Jobs estate.
This brings me to a more glaring error. In Chung both the individual AND Hyundai were claimants. This was true with all other cases (that I found) citing Chung with approval; the UDRP claimant was either the entity to which the individual was “extricable linked” or both the individual and the company. I have not found a case in which the individual alone was the claimant. This makes sense given the comments above – which justifies the “trademark” on the commercial activities of the company for whom the famous person worked. Here, Apple was not a claimant.
While the Steve Jobs estate may have retained publicity rights (which could arguably have been assigned to Claimant), publicity rights alone do not satisfy the UDRP’s requirement for a trademark. The decision makes no reference to ‘passing off” in the context of establishing trademark rights.
The panelists seem to have confused fame with trademark status. The simple fact that Steve Jobs was famous is insufficient to award trademark rights.
I am also troubled by Brown’s treatment of legitimate interest and bad faith. Claimant argued that Respondent’s use was “diversionary”, using the asserted trademark to divert users to Respondent’s website containing links unrelated to the trademark. Respondent provided evidence showing that the domain had been registered and held by the respondent since December 1999. Respondent stated he was known as “Steve Jobs Kim”. During this time the domain was used for a variety of purposes. From 2005 through 2009 it was used in PPC. For most of 2012 it was used as a jobs platform (displaying the banner phrase “Steve Jobs Kim”). From 2016 through now it was used as a community portal for the respondent (again displaying the banner phrase “Steve Jobs Kim Job Site”).
Brown ignored the use by focusing on the supposed common law rights:
The Panel cannot find any evidence that Respondent began to use the name ‘Steve Jobs’ as his nick name prior to December 21, 1999, the date of registration for the disputed domain name.
But even if the common law rights existed, and even if they were owned by Claimant, Brown’s finding is non-sensical. The Claimant admitted that the use was non-conflicting (the site “contained hyperlinks to content unrelated to Steve Jobs”). There is no evidence that Respondent’s site conflicted with the asserted trademark or evidenced passing off. Complainant argued that Respondent had not developed rights in “Steve Jobs”, even though screenshots.com shows it was used as “Steve Jobs Kim” and “Steve Jobs Kim Jobs Site” since 2012. The mere existence of a trademark cannot defeat legitimate interests in a domain name when the evidence shows the absence of conflict. If it were otherwise then the 2nd and 3rd elements of the UDTP would be meaningless drivel.
When it comes to legitimate interest, the Respondent’s burden is merely to show “plausible, non-infringing explanation for choosing and registering the domain name.” (Telephone and Data Systems, Inc. v. Protected Domain Services / Daniel Wang, D2011-0435 (WIPO 2011))
The Telephone & Data panel also confirmed that a respondent’s rights or legitimate interests are not measured with respect to the interests of the Complainant or any third party. “Complainant’s registration of the CHOICE trademark does not give Complainant unfettered rights to use the name. Trademark ownership confers no absolute monopoly on a word or symbol.” (Id; citing Jeffrey S. Thompson d/b/a The Wedding Planner v. Wedding Channel.com, lnc. D2002-0086 (WIPO 2002).
“Trademark rights are not coextensive with rights to a domain name and thus trademark holders do not have the absolute right to reflect their mark in a domain name.” Goldberg & Osborne v. The Advisory Board Forum, Inc., D2001-0711 (WIPO 2001).
The UDRP does not support a balancing of which party has a “better” right. Respondent must prevail if it has established a “potentially legitimate interest in the disputed domain name and Complainant has been unable to prove that such interest is illegitimate.” (Borges, S.A., Tanio, S.A.U. v. James English, D2007- 0477 (WIPO 2007; Choice Courier Systems, Inc. v. William H. Kirkendale, D2002-0483 (WIPO 2002)).
I have similar issues with the decision when it comes to bad faith. Brown concluded that Respondent must have had knowledge of Claimant’s trademark rights because it registered the domain name only 2 years after Mr. Job’s reconnected with Apple, which “made it possible that Apple enjoyed resurgence on an unprecedented scale and ultimately became one of the most valuable U.S. companies in history”. Mr. Brown is thus concluding that the asserted mark became famous less than 2 years of his rejoining Apple. In reality Apple continued to suffer under Mr. Jobs. Its public stock price was less than $0.25/share (yes, 25 cents) until 2006 when it reached a whopping $10.46/share (Apple Historical Stock Prices). Most would say that Apple became successful only with the much later release of the IPhone.
While Brown references Respondent’s use of the email address [email protected] and offering consulting services and links relaying technology news, it must be remembered that Mr. Jobs died in 2011. Last time I checked it was difficult for a dead person to either use email or provide consulting services. While the registered trademarks cover a laundry list of products and services, none of those registered trademarks existed when Respondent registered the domain (or began using publicizing the email, consulting services or technology news). And of course, nothing in the decision links the supposed common law trademark rights to emailing, consulting or providing technology news.
I must say that panelist Brown seems to have lost his way. His decisions, once well-reasoned, are becoming more erratic and he seems to have developed a far encompassing view of trademark rights which does not seem to be supported by the vast history of UDRP precedent.
I can only hope that this Respondent pursues his remedies under the ACPA.
Paul Keating
Wow, that’s about $2,000 worth of free legal work and maybe more, I’m guessing, which you just contributed free of charge to the domain community, Paul. Thank you very much.
Nevertheless, I would prefer to see the community and ICA take a much more radical stance – against the whole concept of cybersquatting, which I think is invalid. I think the whole notion that any entity should have a right to any domain in an extension which is open to public registration is an unwarranted expansion of trademark rights, which ICANN and various governments adopted in the 1990s out of either foolishness or corrpution.
The most intelligent quote I see in your response is:
“Trademark rights are not coextensive with rights to a domain name and thus trademark holders do not have the absolute right to reflect their mark in a domain name.”
My point is that any domain can potentially be used in a way which is not likely to create confusion in peoples’ minds with regard to the source of goods, service or ideas – and even if a domain is used in such a way there’s no reason a trademark holder should have a right to the domain, only to government action to stop the infringement and award compensation for damages.
The idea that even strong mark holders should have a right to domains which include the mark is a violation of reasonable freedom and not in the public interest, imo. It has resulted in countless hours of proceedings in which entities have sought to usurp domains, in most cases successfully, with very debatable decisions, like this one, occurring frequently and with many, if not most, proceedings being initiated by companies with a somewhat weak mark, which could be trademarked by other companies in other lines of business.
So I think domain investors, especially, should be focused, at least as a long-term goal, on the complete eradication of all proceedings in which entities try to usurp the domain of another.
Right now it’s risky to anyone to buy any domain without conducting an international trademark search to see if a mark has been granted since the domain was registered – now that the UDRP panels have decided that a change of ownership resets the clock for branding someone a cybersquatter.
We need to put these people in their place, imo, and arguing with them at the level of whether their unfair laws and regulations have truly been violated should only be a small part of our response.
So I think domain investors, especially, should be focused, at least as a long-term goal, on the complete eradication of all proceedings in which entities try to usurp the domain of another
NEVER going to happen.
Just wait till I’m elected President 🙂
The domain has yet to transfer which suggests that the decision is being disputed:
Domain Name: STEVEJOBS.COM
Registry Domain ID: 15756152_DOMAIN_COM-VRSN
Registrar WHOIS Server: whois.inames.co.kr
Registrar URL: http://www.inames.co.kr
Updated Date: 2019-09-16T08:12:19Z
Creation Date: 1999-12-21T11:43:54Z
Registry Expiry Date: 2020-12-21T11:43:54Z
Registrar: Inames Co., Ltd.