What if you personal or business name happens to be the same as a famous brand?
This is what happened to Grazia Solazzi who had UDRP proceedings brought against her by the holder of the trade mark ‘GRAZIA’ used by an Italian publishing company in association with a famous Italian Woman’s Magazine. [ See Arnoldo Mondadori Editore v. Grazia Solazzi.]
Grazia Solazzi may not be as famous as Julia Roberts or Madonna, however similar issues have arisen for famous persons and celebrities entangled in domain name disputes.
Arbitrators have entertained numerous ownership disputes involving domain names registered using the names of famous persons who assert trade mark rights in their name Entertainers, authors, politicians, businessmen and sports persons have brought cases before the UDRP alleging that domain names have been registered which are either identical or confusingly similar to their personal names.
These high profile figures have had varying success in establishing entitlements to their own names. Julia Roberts, Madonna, Sting, Bruce Springsteen, Madonna, Ted Turner, Nicole Kidman and Bill Clinton have been amongst some of the celebrities who have found themselves in a similar situation to Grazia. (See Bruce Springsteen v Jeff Burgar and Bruce Springsteen Club, Pierce Brosnan v. Network Operations Center, Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”)
A complainant doesn’t have to formally register their name as trademark to have trade mark rights in it. Unregistered names of well known individuals can be proven to have trade mark status by virtue of being well known through prior use.
Julia Roberts had little difficulty in recovering her domain name in Julia Fiona Roberts v. Russell Boyd however other celebrities such as Ted Turner havn’t been able to demonstrate that they have any trade mark rights in their name. (See R.E. Ted Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi.)
Even though Ted Turner is a well known personality, he failed to establish that his personal name, as distinct from Turner Broadcasting, had been used commercially to promote goods or services.
Bill Clinton didn’t have any difficulty in establishing common law trade marks in his name when he brought a UDRP complaint to recover the domain names williamclinton.com, williamjclinton.com and presidentbillclinton.com. The domain name Registrant, called ‘Web of Deception’ had forwarded the domain names to the Republican National Committee’s (RNC) web site. (See William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception).
Clinton argued, albeit unsuccessfully that the names were registered and used by the domain name holder in bad faith. He argued that the forwarding of the domains to the RNC site might confuse people into thinking that he had become a Republican was rejected.
UDRP panellists have shown they are more ready to find the existence of trade mark rights in unregistered names of famous people where both the parties and Panellists are from common law countries where trade marks are recognised by establishing reputation.
People who have gained acclaim and eminence can be in a vulnerable position in trying to have domain names cancelled as demonstrated by the above two cases.
This is particularly the case where they havn’t registered their name as a trade mark or profited from it in trade or commerce. They may not be able to avail themselves of the UDRP rules to protect their names against abusive registrations by cybersquatters.
However, although the UDRP rules may not necessarily afford them protection, the Anti-Cybersquatting Consumer Protection Act 1999 US (ACPA) may now afford an avenue for them to recover their name by bringing court proceedings.
The auDRP domain rules in Australia add an extra layer of protection for famous individuals, as the rules differ slightly from the UDRP rules. In Australia the trade mark owner only has to show that the domain name has been registered in bad faith, whereas under the UDRP rules the Complainant is required to prove the domain name was both registered and used in bad faith.
The cases which prove most difficult for celebrities and brand owners are those involving famous persons or brands which are generic names such as the name ‘Sting’ used by the pop singer Gordon Sumner, being a generic name and a word commonly used in the english language.
In the Sting case (Gordon Sumner p/k/a Sting v Michael Urvan), the Respondent provided evidence of his legitimate interests in the disputed domain name by producing copies of various emails prior to the commencement of the dispute disclosing the username, nickname, screen name under which he had registered for internet gaming either consisting of the word STING or including the word as a component of it. He was also using the player name STING.
Although the Respondent wasn’t able to establish he had an exclusive right to the word STING, as it was indistinctive and generic, the Panel accepted that he didn’t have a bad faith intent when registering it. Famous persons like Sting who use nicknames or music bands whose names have a commonly accepted meaning in any language are at a greater risk of being unable to protect their names in UDRP proceedings.
The fact that these names or trade marks aren’t distinctive enough places an additional burden on them to adduce evidence that their names have acquired sufficient secondary meaning to give them an exclusive monopoly over that term.
In Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi, self-proclaimed freelance writer and Italian cook Grazia Solazzi registered the name grazia.us, as she said this was her first name.
She claimed she had used it in connection with her journalistic writings of Italian cuisine since 1994, and at the time of registering it had no idea that it was identical to the renowned Community Trade Mark and US registered trade mark ‘GRAZIA’ used by the Complainant for it’s women’s magazine.
Grazia claimed she didn’t register the domain name with any intent to divert customers away from the trade mark owner, rather because many famous cooks and chefs had achieved popular acclaim and notoriety through the use of their first names. Furthermore, she claimed that her full name is difficult to spell and would have been too difficult for non-Italians to remember.
She claimed she registered the domain name as one of several possible sites for a website she was in the process of developing which would be devoted to food, cooking and related topics featuring articles written by her. Arnoldo Mondadori Editore S.p.A, an Italian publishing company, brought UDRP proceedings seeking the transfer of the usTLD to them
Even though they had registered trademarks which were identical to the domain name in dispute, the National Arbitration Forum who heard the dispute recognised that the Complainant didn’t have exclusive rights in the name “grazia” being a highly generic term and a common name in Italy, the US and other countries.
Additionally evidence showed that the word “grazia,” and its foreign translations are being used by many other companies to identify their goods and services. There are a number of US registered trade marks for the word Grazia in connection with everything from chocolate to wine and financial services.
Neither did the Complainant Italian publishing company, headquartered in Italy, use the equivalent domain name grazia.it in it’s home country, rather they had registered and used graziamagazine.it instead. Furthermore, it neither published an American version of it’s Italian magazine nor even had an entitlement under the usTLD domain registrant rules to the domain name grazia.us, as the entity lacked a connnection or presence in the US.
In a rather bold claim, the complainant went so far as to assert that the Complainant had no legitimate right in the word Grazia just because it happened to correspond to her first name!
The term grazia (meaning grace in english) is common and generic and it was accepted that the Complainant didn’t have an exclusive monopoly over the use of the term over the internet. Having concluded that the Respondent had a legitimate right to the domain name and hadn’t registered it in bad faith, the Panellist ruled that Grazzia was entitled to keep her domain name.
With respect to first names like Grazia, which are common words, it can be difficult for a Respondent to assert exclusive rights in such words to the extent of asserting exclusive rights over them. Therefore anybody with a legitimate reason can potentially register them providing they can demonstrate a right to them by showing a bona fide offering of goods or services and an absence of bad faith.
The fact that the mark ‘grazia’ was the Respondent’s real first name, and a name she had used in her trade, gave Grazia an entitlement to the domain name. This was despite the fact that some of her activities may have appeared slightly suspicious to a domainer, such as her ownership of thirty two domain names connected with her email address.
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