In the recent decision of Margaret C. Whitman v. Domains For Sale (WIPO Case No. D2008-1534, December 1, 2008), a single member panel was faced with a determination over five (5) disputed domains, including www.megwhitmanforgovernor.com, www.megwhitman2010.com, www.meg2010.com, www.whitmanforgovernor.com, and www.whitman2010.com. Complainant is most notably known as the President of eBay from 1998-2008. Respondent failed to provide a response.
The Panel began by reviewing the three part ICANN/UDRP test, specifically, the first prong dealing with whether or not the domain was identical or confusingly similar to a trademark which Complainant has rights to. The Panel began its discussion reviewing whether or not Complainant had any identifiable trademark rights. Complainant does not have a federal trademark registrations so a determination of common law rights is necessary.
The panel explained:
As noted by the Panel in Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, in cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in the marketing of the complainant’s own goods or services.
The Panel further noted:
Merely having a “famous” name is not sufficient to establish common law trademark or service mark rights in the name. The Policy itself inherently makes a distinction between the protection afforded trademark rights and rights arising under the law of publicity …Under the law of publicity, as recognized in virtually all United States jurisdictions, well known individuals have the right to control commercial exploitation of their names and likenesses. To be entitled to protection under the Policy, however, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant’s personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source. (Citations omitted)
The Panel noted that fame alone is not sufficient to establish trademark rights and determined that Complainant was not a source indicator to a segment of the relevant buying public. The Panel found there was insufficient evidence demonstrating Complainant’s personal name had acquired secondary meaning.
Ultimately, the Panel ruled that Complainant had failed to satisfy the first part of the test and therefore DENIED the request for transfer.