Archive for January, 2009

Meg Whitman Unable to Establish Common Law Rights in her Name

Thursday, January 15th, 2009

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.comwww.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.

Larry Flynt Won’t Let His Name Be Exploited

Wednesday, January 14th, 2009

In the recent decision of Larry Flynt and LFP Casino IP and LFP Internet Group LLC v. Valery Nikiforov (Nat. Arb. Forum 1225389, November 24, 2008), a single member panel was faced with a dispute over www.laryflynt.com. For those of you who aren’t aware, he is the well known publisher of Hustler Magazine since the 1970’s. The decision explained that he does not own a trademark registration for his name but does offer a blog available at www.larryflynt.com, offers his main business at www.hustler.com and has several other registrations which incorporate his name.    

In examining the three part test provided by ICANN under the UDRP, the Panel first reviewed whether the domain was identical of confusingly similar. The Panel correctly noted though that the Complainant must first show that it has rights to the mark included in the disputed domain. “As Complainant has been famous since the early 1970s as the publisher of Hustler Magazine and as the subject of the movie The People versus Larry Flynt, the Panel finds that Complainant has common law rights to the LARRY FLYNT mark pursuant to Policy ¶ 4(a)(i)…In addition, the fact that Complainant has registered other marks that include the LARRY FLYNT mark suggest that Complainant has an interest and rights in the mark.”

The Panel then was required to assess whether the disputed domain was identical or confusingly similar. The Panel noted:

Respondent’s <laryflynt.com> domain name is confusingly similar to Complainant’s LARRY FLYNT mark because Respondent’s domain name incorporates the dominant features of Complainant’s mark, omitting one letter “r” and adding the generic top-level domain “.com.”  The Panel finds that such a minor misspelling and the addition of a generic top-level domain does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). 

The Panel found that the disputed domain was identical or confusingly similar and thus moved onto the next part of the test, namely whether the Respondent had any rights or legitimate interests in the domain. The Panel noted that the initial burden is on the Complainant but once a prima facie case is shown that burden shifts to the Respondent. The panel explained that since the Respondent did not respond to the complaint, a presumption is applied that Respondent has no rights or legitimate interests. However, the Panel went further and stated:

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <laryflynt.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the LARRY FLYNT mark, and the WHOIS information identifies Respondent as “Valery Nikiforov.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii)….Respondent is using the <laryflynt.com> domain name to resolve to an adult entertainment website not affiliated with Complainant’s business.  Respondent’s use of a domain name that is confusingly similar to Complainant’s LARRY FLYNT mark to redirect Internet users to a competing website is not a bona fide offering of goods or services under Policy ¶ (4)(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

The Panel found in favor of Complainant on the second prong as well and moved onto the last part of the test, namely, whether the Respondent registered and used the domain in bad faith. The Panel explained:

Respondent’s use of Complainant’s LARRY FLYNT mark in the <laryflynt.com> domain name to redirect Internet users to competing adult-entertainment sites suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business.  The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii)…Under Policy ¶ 4(b)(iv), Respondent is acting in bad faith when using a confusingly similar domain name to attract Internet users for commercial gain.  In this case, Respondent is using the <laryflynt.com> domain name to attract users to an adult-orientated website in competition to Complainant’s business.  The Panel infers that Respondent is after commercial gain through advertisements which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and that Respondent has sought to profit from this confusion through click-through fees. 

Ultimately the Panel ruled in favor of Complainant and agreed to TRANSFER the disputed domain.

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