Domain Names of Well-Known People

An arbitrator under the WIPO domain name dispute resolution policy has held that Meg Whitman, CEO of eBay for ten years, has no remedy against someone who registered several domain names relating to a possible attempt by Ms Whitman to run for governor of California in 2010. The report on OutLaw.com has a link to the decision itself.

Some of the domains were megwhitmanforgovernor.com and meg2010.com.

The essence of the decision is that Ms Whitman did not have a custom of commercial use of her name and thus had not established a ‘common law trademark’ in it. Mere fame was not enough to protect the name under the UDRP.

Is this a reasonable result? Can one not argue that Ms Whitman has been deprived of real value by these registrations, and that the registrant can have had very little likely good faith motive for creating them? At the time of the decision, the sites using the names had ‘for sale’ indicators on them…

It is said that domain names are not the same as trademarks, in that they can be used for many reasons besides indicating the origin of goods and services described on the website with which the name is used. Some of the non-trademark uses can be fan sites, critical sites, general commentary sites, literary sites and probably just pure coincidence sites.

If this is true, then is it fair to limit a complainant to making arguments that can be supported under the law of trademarks?

Would the Canadian DRP produce the same result? I recall Anne McClellan, when she was Deputy Prime Minister, having trouble with someone who had registered a site under her name. I forget what happened to her complaint.

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Comments

  1. Here is the decision on Anne McLellan’s ICANN Domain Name Dispute.

    The domain names that included her name were turned over to her as they had been registered in bad faith.

    The Respondent Has Registered and Used the Domain Names In Bad Faith

    ICANN UDRP Policy 4(b) sets forth examples of circumstances that shall constitute evidence of bad faith:

    B. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

    (i) …

    (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

    (iii) …

    (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

    Thanks for this interesting post.

  2. Both the cited provisions refer to the complainant’s “mark”. The essence of the Whitman decision that led off this discussion was that Ms Whitman’s name was not a mark, in law, as she did not make commercial use of it. Being well known as a business figure did not constitute sufficient commercial use to give her a defensible interest in her name as a domain name.

    How Ms McLelland succeeded is anyone’s guess, under those circumstances.

    The Canadian DRP is no different from the Uniform DRP on this point.

  3. The man who registered the domains has said that had she simply made a direct (and one can assume, polite) request for him to release the names to her, he likely would have done so.

    Needless to say, she could have purchased the whole lot of them for a mere fraction of the amount she’ll end up paying in legal fees by the time this is all said and done. Shame on her.

  4. I am less quick than Peter Egan to condemn Ms Whitman or other well-known people who find their names used by others for domain names – and not for matters relating to the person. (I have no objection in principle to ‘…sucks.com’ sites.) There are so many possible useful variants of one’s name that it’s very hard to register domains in all of them, on spec in this case that she might decide to run for governor or make some other Internet-worthy use of it.

    On the other hand, there is no conceivable excuse for the registrant – on the very best interpretation, he’s showing off his prescience that she was going to want them. ‘Aren’t I clever, I thought of it before she did.’ Otherwise he’s either looking to sell the names to the nominee, or he’s looking to sell them to her critics. Either way, between tacky and sleazy, and a strong case can be made for an economical remedy short of yielding to the extortion.

    Query: in Canada, would registering a domain name – especially but not necessarily in the .ca domain, so long as the registrant is in Canada – that is the name of a person be a use of that person’s personal information, to the point of being prohibited by PIPEDA or provincial privacy laws? I suppose the person opposed to the registration would have to show that the registration was done for commercial purposes (potential sale to the nominee would qualify, I expect) and not for artistic or journalistic purposes (like an article on how hopping mad the nominees get at such a stunt..).

    Would the complainant have to prove that it was HER or HIS name that was used for the domain name, and not some other person with the same name? I think Ms Whitman would have been able to meet that test.

  5. Hon. Min. Jason Kenney, who is making headlines daily these past few weeks on a variety of subjects, once commented on former Liberal MP Don Boudria when his name was registered by an antagonistic party:

    Mr. Jason Kenney (Calgary Southeast, CPC): Mr. Speaker, the only additional element that the hon. member has brought to the Chair’s attention relates to a matter which is in no way, shape or form within the purview of this House or your honour and it never has been, and hopefully never will be, that is to say, the registration of domain names on the World Wide Web.
    I understand my hon. friend opposite is learned with respect to parliamentary procedure but I must infer from his remarks that he is stupefiedly ignorant about the commercial practices on the Internet.
    ¹ (1510)

    The Speaker: Honestly, the hon. member for Calgary Southeast need not suggest that any hon. member of this House is ignorant.

    Mr. Jason Kenney: Mr. Speaker, of the Internet.

    The Speaker: That does not make it better. He could say that he has perhaps missed the point or something. We do not need to use this kind of language.
    I would urge the hon. member to show some restraint.

    Mr. Jason Kenney: Mr. Speaker, let me be clear. I did not mean ignorant in the pejorative sense but in an objective sense that the member apparently does not understand the process by which domain names are registered on the Internet.

    Canadian comedian Rick Mercer found this characterization rather inflammatory. He retaliated – by registering jasonkenney.org, which he alternatively pointed at a number of different sites, starting with the Marxist Leninist party of Canada.