Personal names and the UDRP: where do we stand in 2023?
Introduction
The Uniform Domain Name Dispute Resolution Policy (UDRP) is a quick and efficient mechanism for resolving domain name disputes that has been in place since 1999.
The UDRP comes with two major caveats: first, it applies only to cases of cybersquatting or “deliberate, bad faith abusive registrations” and second, it is limited to trademarks and service marks and does not apply to other IP rights (e.g. geographical indications, etc.).
The UDRP does not protect personal names as such. However, if a personal name is protected as a trademark, then the UDRP can help.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), the most comprehensive guide on the UDRP application and case law (but it is limited to WIPO cases only and does not include cases from other UDRP providers) states that “the UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce… where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services…” ?it becomes an unregistered trademark and is enough to satisfy a standing requirement (section 1.5.2 of WIPO Overview 3.0). Having just a famous or well-known personal name is not sufficient.
In this article I will discuss UDRP cases involving personal names and unregistered marks in 2023 to see current UDRP trends.
2023 UDRP cases: major trends
While WIPO Overview 3.0 is somewhat strict on personal names that are not registered as trademarks, UDRP cases in the year 2023 demonstrate that the trend goes more in favor of complainants.
1.???? Overall UDRP Panels in 2023 were ready to recognize unregistered (common) law trademark rights over personal names. Among celebrities who succeeded are a well-known director Roman Polanski, see Roman Polanski v. Matan Uziel, WIPO Case No. D2022-4360, <imetpolanski. com>: “it is conventional for the director of films of the kind made by the Complainant to be identified by name in the credits…The number of films the Complainant has made over his long career and the large number of prestigious? awards he has received, including Academy Awards and Cesar awards, demonstrate an international reputation in his name…” (the complaint failed on other grounds); Robert Caro, a well-known journalist, author, and writer, see Robert Caro v. seoforlyfe seoforlyfe, Claim Number: FA2304002041748: “Complainant is a legendary author and historian offering his services under the ROBERT CARO mark since the 1970s.? Complainant’s work, using the ROBERT CARO mark, has gained significant recognition and accolades and his books have generated considerable sale” and a “social media personality” Jaspreet “Jas” Mathur (12 million “Instagram” followers), see Jaspreet “Jas” Mathur v. Noah Mills, WIPO Case No. D2023-2929, <jasmathur. com>: “the? Complainant has been recognized in the media as an entrepreneur behind several business ventures, particularly in the wellness industry, as well as the CEO of Limitless X. This impression is borne out by the Complainant’s social media, which clearly indicates a commercial cachet associated with the Complainant’s personal name…”.
UDRP Panels in 2023 were generally inclined to find common law trademark rights in cases where Complainants demonstrated some level of fame or success in any industry, see e.g. CAC-UDRP-105526, < nazansaatci. com>: “The Complainant as a performer being a Turkish actress and known for her performances in Tokat?i, ?lümsüz and Hulchal and the second runner-up in Miss Asia Pacific beauty pageant in 1983, has amassed over 600 audio recordings of fairy voices and nearly 300 video recordings of different fairy appearances since 2018…; Jessica Queller v. Damma Laima / APT, Claim Number: FA2301002027196, <jessicaqueller. com>: “Complainant asserts common law trademark rights in JESSICA QUELLER based upon her longstanding use thereof in connection with Complainant's activities as an author, producer, actress, and women's health advocate… In the Panel's view, Complainant has provided sufficient evidence of use and recognition to support her unchallenged claim of common law rights…” and a designer and entrepreneur Paul Loebach in Paul Loebach v. Nanci Nette, Claim Number: FA2302002031225, <paulloebach. com>.
2.???? UDRP Panels in 2023 also found common law trademark rights in cases where evidence did not seem to be the most convincing yet there was targeting by Respondent and intent to take some advantage of Complainant’s name, see e.g. CIIDRC decision in <stevezinck. com>, where Complainant was an entrepreneur and consultant, the Panel seemed to struggle with limited evidence but found in favor of Complainant: “Whilst the Panel does not necessarily agree with this narrow test (as provided in 1.5 of WIPO Overview 3.0) and would, on the contrary, be willing to consider a more liberal but reasoned standard for personal names under the UDRP… the Complainant in this case has failed to argue a case on that basis… Nonetheless, the Panel has considerable sympathy for the Complainant’s rather uncomfortable position in this case…” and George E. Bulkeley v. li qiang / yoofa technology limited, Claim Number: FA2304002039428, <kellybulkeley. org>, Complainant was an author having various books and other publications: “Although primary evidence in support of claims is always preferable, under the present circumstances where Complainant has provided secondary evidence, such as lists and links, which are supported by a signed declaration, and where the Respondent has not objected to Complainant’s evidence or assertions, the Panel is prepared to accept such submissions at face value…”. ?In <cormney. com> (see Tyler Cormney v. Uri Blackman, WIPO Case No. D2023-2199), Complainant, an individual “advising applicants to “top-ranked business schools”, failed to provide “evidence of the volume of sales or advertising under the claimed CORMNEY common law mark”. However, there was evidence of ongoing business under that name and TYLER CORMNEY since at least 2006 with substantial industry recognition in a particular market niche, and that evidence was enough to establish common law trademark.
3.???? In some cases, Complainants previously owned disputed domain names but allowed them to lapse, e.g. <paulloebach. com>, <robertcaro. com>, <kellybulkeley. org> and <danieltobok. com> (Complainant was an “internationally recognized cybersecurity and digital forensics expert whose name is widely known within that sphere of commercial activity”). ?
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4.???? Based on my own research, the only 2 (two) cases in 2023 where Complainant failed to prove common law trademark rights in his/her personal name are the <izzyyetnikoff. com> decision by CIIDRC Panelist, Izzy Yetnikoff vs. 1337 Services LLC, where Complainant, a US attorney, submitted “only a trademark application for “IZZYYETNIKOFF. COM” before the USPTO, filed after the registration of the disputed domain name and? after the Complaint was presented to CIIDRC” and “documents relating to the registration of Complainant’s law firm called Yetnikoff Law Offices, PLLC ". The Panel denied with reference to 1.3. and 1.5.2 of WIPO Overview 3.0, noting that “the evidence submitted by Complainant is not enough to grant unregistered? or common law rights pertaining to the name Izzy Yetnikof” and WIPO decision in <<peterchhuom. com>, et, "Tiffany Chhuom, PLLC d/b/a Ethtech, Tiffany Chhuom, Peter Chhuom v. J S", WIPO Case No. D2023-2930 where the Panel found that "There is insufficient evidence in the record that the personal names “Tiffany Chhuom” and “Peter Chhuom” have become distinctive identifiers of their claimed services. The evidence does not show use of the names “Tiffany Chhuom” or “Peter Chhuom” on a level that would establish trademark rights or show that these names enjoy widespread recognition even in their claimed fields"
WIPO Panel in <danielimhof. com> found common law TM rights of Complainant, a senior executive employed by a Swiss bank (but not a business owner), and noted that: “The Complainant’s evidence establishes that the Complainant’s name enjoys strong recognition in his industry and the Respondent has clearly targeted the Complainant’s mark, which supports the Complainant’s contention that his mark has achieved significance as a source identifier...”
Conclusion:
-?????? UDRP decisions in 2023 involving personal names prove that panels tend to be more generous to complainants who did not register their names as trademarks and relied on common law TM. It appears that if Complainant provides some proof of fame/reputation of her/his name and demonstrates targeting, she/he succeeds even if such evidence is limited and even if Complainant may not be a business owner.
-?????? Combination of sec. 1.3 and 1.5.2 of WIPO Overview 3.0 seems to indicate that UDRP panels are likely to support complainants if they provide some limited proof of the personal name being used as a “trademark-like identifier” (see 1.5.2) as long as it is obvious that respondent “have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used)” (see 1.3).
-?????? Current trends demonstrate that establishing common law TM rights over personal names appears to be easier than establishing common law rights over other names/signs.
We will see what the year 2024 will bring.
List of 2023 UDRP decisions discussed in this article:
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