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Domain Name Disputes Over Celebrity Names
By Ivan Hoffman

Summary: Celebrities are taking advantage of a new dispute procedure and trademark law to fight cybersquatters. In two early cases, the celebrities have won. This article explains what happened in those cases and what domain name registrants should consider before registering celebrity domain names.

Author: The author of this article, Ivan Hoffman, practices intellectual property law in Santa Monica, California. His experience includes Internet law, publishing law, trademark law and recording and music law, and he maintains his own web site at www.ivanhoffman.com. He is licensed to practice law in the state of California. E-mail: ivan@ivanhoffman.com.

The Julia Roberts Case

There have been a number of cases dealing with sites using the names of celebrities as their second-level domain. Although there is nothing carved in stone about the outcome of such disputes, two cases are helpful in understanding the issues faced under the Uniform Domain Name Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA).

In a matter involving Julia Roberts, the complainant was the famous actress and the respondent was the owner of the domain "juliaroberts.com." It is relevant that this domain owner was also the owner of many other domains using the names of celebrities and that he had put the domain in question, juliaroberts.com, up for auction. As you will see, these are factors that weigh in the determination of whether a registrant has acted in "bad faith," a legal requirement for decisions under both the UDRP and the ACPA.

The issues under the UDRP were:

whether the domain was identical to that of the actress's name;
whether the actress had a trademark or trademark rights in her name;
whether the domain owner had any legitimate rights to the domain name; and
whether the use by the domain owner was in bad faith.

Clearly the condition under the first factor was satisfied, but the real issue in the case was whether the actress had any trademark rights in her name. She did not have a registered United States trademark (which is not required under the UDRP but is required under the ACPA) but alleged instead that she had common law trademark rights because her name had acquired a "secondary meaning." Secondary meaning is a legal term meaning that although a name (whether a personal name as in this instance or a product or service name) or a design is not a registered mark, the public has come to associate that name or design with a particular person or company or goods or services. This term is usually applied in situations where the mark or claimed rights have been in use for a period of time and have been widely disseminated and used in such a way so as to create this reference in the minds of the public. If the claimant establishes this "secondary meaning," the issue then is whether the use by another in a particular context would be likely to cause confusion in the minds of the public that a particular use is related to the owner of the secondary meaning (referred to as "passing off").

For the purposes of this case, the issue was whether -- when someone hears the name "Julia Roberts" or, in this instance, logs onto a site juliaroberts.com -- that person identifies that name or site with the person of the actress and whether the use by the respondent of a domain with that name would be likely to confuse the public into believing that the actress was somehow related to the particular usage of the name or this domain.

The administrative panel quickly decided that Julia Roberts possessed the requisite secondary meaning in her name. The panel members found that there was an identification in the minds of the public between the actual name and the person of the actress. Thus, they concluded, she possessed "trademark rights" even if she had no actual registered mark.

The next issue was whether the domain owner had any legitimate rights to the name for the purposes of the site or whether the site was put up and fell within the scope of "fair use." The panel noted that there was nothing on the site that initially related to the actress (that is, it was not a fan site or anything of that nature), nor did the site otherwise fall within the "fair use" legitimate uses such as a parody site. There have been other cases where a celebrity filed a claim against a domain owner under the same theory as Ms. Roberts but did not prevail because the site owner had the same name as that of the celebrity and/or was using the site for legitimate purposes related to the domain name owner's business or the like. In this instance, however, the panel found that the domain name was established solely for the purpose of selling it to the actress or others and that the respondent had established a "pattern of conduct" by registering many other such domains and as such, the conduct of the respondent constituted the requisite bad faith.

The panel ordered the domain transferred to Julia Roberts. These panel decisions are not final, and it is left to the parties to pursue further remedies, as the domain owner has indicated he would.

The Jimi Hendrix Case

In another arbitration case, the estate of Jimi Hendrix brought the action under the UDRP against a domain name owner of "jimihendrix.com" which was registered to The Jimi Hendrix Fan Club. The panel noted that the domain name owner was also the owner of an extensive number of other celebrity and "vanity" domains including "elvispresley.com," "jethrotull.com" and the like and had offered to sell the jimihendrix.com domain for $1 million. Note that these are the same factors considered by the panel in the Roberts matter.

The panel also discussed whether the domain owner had any legitimate rights to use the name, such as because it was his name, or because he had a legitimate business purpose or, as it found, that the only purpose was to sell the domain to the estate or deprive the estate from using the domain. In this regard, the panel noted that there was no registration in the state of Florida (where the respondent resided) for "The Jimi Hendrix Fan Club" and that the web site was not a true "fan club" site but was merely for the purpose of selling domains. If the site was being operated by a legitimate fan club, the question of fair use and bad faith would have been much cloudier and in such circumstances, having a fan club site might be deemed a legitimate use. In this instance, however, no such fan club site existed in this case, at least not prior to the complaint being filed.

The estate was the owner of both the common law trademark rights (that is, the secondary meaning as noted above), but also several registered trademarks for both the name "Jimi Hendrix" as well as certain design marks, although none of these registrations were for categories that would include web site usage.

One of the issues the panel discussed was whether "jimihendrix.com" was confusingly similar to "jimihendrix," the latter being the estate's marks. The panel noted that the decisions about this issue do not consider the top-level domain (".com," in this instance) but merely the second-level domain (the "jimihendrix" portion) and in that regard, the use of this second-level domain was identical to that of both the registered and common law trademarks.

The panel concluded that the domain was registered and was being used in "bad faith" and thus ordered it transferred to the estate.

Conclusion

Both the UDRP and the ACPA have greatly extended the power of owners of rights in registered and common law trademarks to prevent usurpation of those rights by the registration of domain names. Prior to the adoption of the UDRP and passage of the ACPA, trademark owners had to resort to either filing an expensive civil litigation to protect their rights or filing a complaint with the domain registrar, which then might put the domain on "hold" (which meant that neither the rights claimant nor the domain owner could use it). The effect of these new remedies is to end up having the domain actually transferred to the rights owner should it prevail.

As to the argument that such legislation interferes with the "everything is free on the Internet" or that intellectual property laws deprive others of their freedom of "speech," the answer is "absolutely correct!" But the First Amendment is not absolute, and there are always balances to be struck. There are laws dealing with libel and slander and the rights of creators to protect their property. The law always makes choices and the idea that others should be free to steal that property simply because it is a product of the mind rather than being real or personal property is unacceptable.

Thus the Internet is becoming less of a frontier each day. And this is essential if it is to survive, because without law, money will not flow into the technology and it would collapse of its own lack of success. That benefits no one.