2008.01.04

Personal and Proper Names Protected Under Anti-Cybersquatting Act

1ese1The Lanham Act has protected trademarks in the United States for a very long time.  Our domain name attorneys often receive questions from clients about personal name protection in cyberspace. The Wikipedia definition of 'personal name' states "A personal name is the proper name identifying an individual person. It is nearly universal for a human person to have a name." And yes, personal names are specifically protected from cybersquatting under the Anti-Cybersquatting Consumer Protection Act (ACPA)

If you have a trademark or cybersquatting issue you may contact one of our trademark and cybersquatting attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Salle v. Meadows, 2007 U.S. Dist. LEXIS 92343 (UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA, ORLANDO DIVISION).  Domain registrant attempted to sell a domain subject to Plaintiff's trademark for an inflated price.  The Court held that that inflating a domain name price in an attempt to sell it to the person whose name was registered will not defeat a bad faith argument.
 
This case arose under the Anti-Cybersquatting provisions of the Lanham Act, specifically 15 U.S.C. §§ 1125 (d) and 1129(1)(A). First, Plaintiff sought relief under, 15 U.S.C. § 1129, which states that:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

Defendant admitted that he purchased the domain name www.BrianSalle.com for less than $ 10.00 and attempted to sell it to Plaintiff for $ 9,500. However, Defendant argued that he had no intent to profit when he registered the domain name, because he merely attempted to recover money that he was owed by Plaintiff. Plaintiff argued that this distinction is irrelevant, particularly because the debt alleged by Defendant is actually owed by a corporate entity, not Plaintiff.

While the issue of whether Plaintiff actually owed Defendant $ 9,500 was in dispute, the debt issue was not material because cyber-extortion is not a permissible way to recover a debt. Therefore, this Court found that Plaintiff was entitled to summary judgment in his favor with regard to his claim under 15 U.S.C. § 1129.

Plaintiff also sought relief under 15 U.S.C. § 1125(d), the general Lanham Act provision, which states that:

    A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person -

    (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

    (ii) registers, traffics in, or uses a domain name that -

    (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

    (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

    (III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code. 15 U.S.C. § 1125(d)(1)(A).

The parties disputed the meaning of the statement "a personal name which is protected as a mark under this section". Defendant argued that this is a restrictive clause, indicating that § 1125(d) applies only to personal names that have trademark protection under the Lanham Act, while Plaintiff argued that this is an unrestrictive clause, indicating that all personal names are protected as trademarks under this section. This Court rejected the "all personal names" argument by plaintiff', ruling that trademark status was critical to success.

Because Plaintiff failed to establish that his name was worthy of trademark protection (ie sufficiently famous) summary judgment was denied on the Lanham Act trademark claims.  Thus, plaintiff was granted summary judgment on his ACPA claims and had summary judgment entered against him on the Lanham Act claims.

COMMENTS

Personal names and domain names are both protected by various laws. Don't let a squatter tarnish your reputation

When they ask you to pay $3,000 to get your trademark protected domain back, it seems just like domain extortion. I'd rather pay a lawyer double that to preclude the domain thieves from benefiting.

One correspondent pointed out that the language of section 3002(b)(1) of the ACPA provides relief from the misuse of personal names as domain names. That language establishes civil liability when any person registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with specific intent to profit from such a name by selling the domain name for financial gain. However, as the correspondent noted, no cases have been reported under section 3002(b). Thus, it is too early to determine how effective this section will be in providing protection for personal names that are not marks. Another respondent made the following detailed suggestions for changes to the ACPA: (1) clarify that its provisions apply to the personal names of politicians, (2) clarify that the failure to give adequate and correct contact information in the application for the domain name could result in transfer of the domain name, (3)provide protection for the names of deceased celebrities, (4) provide that the fame of the celebrity could be a factor to be considered in an action against a cybersquatter, and (5) provide that where the domain name registrant can
show no actual interest or rights in the celebrity name, there would be a presumption of bad
faith.

Cybersquatting is illegal. Someone stole/hijacked/cybersquatted Dereko Entertainment's original domain. Only visit Dereko Entertainment official site: www.dereko.tv

There are so many squatted celebrity names it is incredible. Most celebrities and other famous names don't realize that they can fight back under the UDRP and ACPA.

It is good to hear that personal names are protected against cybersquatting. I take it that more unique or famous names get greater trademark proteciton?

Registration of celebrity domain names is also illegal if you are trying to financially benefit by some elses fame.

Famous celebrities are protected from unlawful domain registrations by the UDRP and ACPA. Celebrity protection is important. You don't want your famous name linked with ad pages or pornography.

Typo-squatting and cybersquatting on celebrity names seems to be a growing problem. Too often the celebrity or famous person does not even realize that their rights are being violated. Famous names are popular for domain registration because they generate so much direct navigation traffic. Celebrities often do not understand that there are laws to protect them against this activity, or fail to appreciate how damaging these web sites can be to their image and reputation.

All too often celebrities are cybersquatted. Be it a sports star, a singer, or a movie icon, these individuals have rights that must be protected. Establishing trademark rights in famous persons is usually easier than in the everyday joe. A celebrity is constantly in the public eye and needs to ensure an attorney can protect his or her interests and intellectual property. It seems natural that trademark law would favor famous people since cybersquatters tend to go after valuable domains. An attorney can protect a celebrity's name and go after the cybersquatters who are trying to capitalize from and/or harm it.

Meadows argued that in trying to sell the domain name and thus recover money owed to him, he was not trying to profit, and therefore not liable under §1129. Despite some dispute over whether the debt was actually owed and to whom, the court ruled in Salle’s favor. “[C]yber-extortion is not a permissible way to recover a debt,” the court warned.

If a domain name is registered prior to a person becoming "sufficiently famous", is the domain name owner allowed to maintain ownership once that person does become famous?

Is it only an issue if that domain name is then sold?

Can a domain name that generates a revenue be maintained?

How is this issue addressed when ten people have the same name say John Doe. Which John Doe will get the domain if all claim it is theirs?

So the issue arises whe the person tries to gain profit from that name..

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