In this Traverse Cybersquatting Law Radio interview, Attorney John Di Giacomo discuses cybersquatting on celebrity names, also known as celebrity cybersquatting. John explains the different methods domainers use in order to profit from the bad faith registration and use of domain names containing celebrity names. Listen or read the complete transcript below:
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Damien Allen: Good afternoon, and welcome to Cybersquatting Law Radio. My name is Damien Allen, and joining me today on the telephone is John Di Giacomo, attorney with Traverse Legal, PLC. Good afternoon, and welcome to the program, John.
John Di Giacomo: Hey Damien, thanks for having me.
John Di Giacomo: Well, celebrity cybersquatting is really the bad faith registration of a domain name or another source indicating symbol or name that contains a celebrity’s name. So, for example, when I say other source indicating name, I mean really a facebook vanity URLs or Twitter names or a domain name that contains a celebrity’s name.
Damien Allen: Why would somebody want to cybersquat on a celebrity’s name?
John Di Giacomo: Well, it’s difficult to say. There are a lot of situations where cybersquatting on a celebrity’s name can be a very lucrative business. Essentially, a domainer can register a celebrity’s name within a domain name and then serve pay-per-click ads and use traffic associated with that celebrity’s name to essentially gather money from the clicking through of pay-per-click ads. So, in a sense, it’s essentially trading off of a celebrity’s powerful name in order to gain money.
Damien Allen: Are there cases where celebrities lose the opportunity to use their own name if they wanted to set up their own personal site?
John Di Giacomo: There have been cases where celebrities have lost their name and have been able to, I guess, use other sites. One of my favorite examples is really Kevin Smith. He’s one of my favorite directors; he also runs a podcast. Kevin Smith had a problem where he could not register his own name, not because somebody was cybersquatting on his name, but really because Kevin Smith is a pretty common name. He ended up having to register ThatKevinSmith as opposed to Kevin Smith on Twitter. There are situations, as well, where celebrity’s names are not as distinctive as they would like them to be, somewhat like Kevin Smith, but in the case of Sting, Sting lost a WIPO action under the Uniform Domain Name Dispute Resolution Policy simply because sting is a common word.
Damien Allen: What can celebrities do to recover their domain names if something like this has happened?
John Di Giacomo: Well, there are really two avenues of attack to recover a domain name when you are a celebrity. There is first the UDRP, which is the Uniform Domain Name Dispute Resolution Policy. And the UDRP is essentially a contract that every registrant of a domain name agrees to, and it contains an arbitration provision that prohibits the abuse of registration of domain names. So, the difficulty under the UDRP with a celebrity name is that a celebrity name has to act as a trademark. The problem here is really that celebrities very rarely register their names as trademarks. The ultimate question is going to be whether or not that name functions as a mark, meaning does the name function as an indicator of source of goods or services or are they simply using it as a personal name. The example I used before, Kevin Smith, is Kevin Smith using it to indicate the source of his movie products or his podcast products or is he using it simply because he is Kevin Smith. It’s a denotative use versus an indication of source. Under the UDRP a domain has to be registered and used in bad faith, so that’s a difficult hurdle to meet as well. There have been a number of cases where people have lost their cybersquatting lawsuits, extremely famous people. Bruce Springsteen has lost one. Like I said before, Sting has lost one. But there are other cases where celebrities win, such as Tom Cruise who won a WIPO suit under the UDRP. Under the UDRP it is very difficult to advise clients how their cases are going to come out simply because it’s an arbitration proceeding, it’s fairly arbitrary. So, really what we recommend is the Anticybersquatting Consumer Protection Act. And really what that is is a federal law, it’s located within the Lanham Act, which is the trademark statute in the United States, and it actually has a specific provision that prohibits the use of a name in a domain name that causes a likelihood of confusion. The name has to, again, act as a mark, but the ACPA has that specific provision relating to names. So, if somebody registers a domain name that contains a celebrity’s name that’s identical or confusingly similar to that celebrity’s name, so , for example, a typosquat what we call a typosquat which would be a short typographical error of a celebrity’s name, then that party can seek up to $100,000 per domain name and a recovery of the domain name. There’s also one little provision that’s located within that statute that’s kind of helpful to an attorney and to a celebrity, and that is that if the opposing party is located overseas and you simply can’t get personal jurisdiction over them, you can get In Rem jurisdiction in the domain name itself, and that would be located in the Eastern District of Virginia.
Damien Allen: Is this a problem that seems to be on the uprise? Is there a lot of cases like this that are going on?
John Di Giacomo: There are, and we see a lot of it in practice. We’ll often get that extremely ambiguous call from a representative for a celebrity who never really wants to give their name and often has an agent call us, but, even in the media, there’s been a lot of coverage of certain cybersquatting lawsuits relating to celebrity names. Most recently an NBA star, Chris Bosh from the Toronto Raptors, filed a lawsuit under the Anticybersquatting Consumer Protection Act against a known domainer, and he essentially won 800 cybersquatted domain names. The reason he won those domains was because the cybersquatter could not pay the $120,000 judgment, so Chris Bosh levied on those domain names, took them, and, I guess in a sense, gracefully gave them back to their rightful owners. I’m sure he sold many of the generic ones, but we see this a lot. It’ s a new phenomenon, and celebrities would be well-advised to protect their names.
Damien Allen: Are there any pre-emptive actions that celebrities can take to prevent against cybersquatting on their names?
John Di Giacomo: Well, really, there are a couple ways to deal with this type of problem. The first and foremost I would say is defensive registration. Again, I’ll use the Kevin Smith example. Not a celebrity issue, but he has a podcast called smodcast, and he failed to register smodcast.com prior to starting his podcast, he lost that. He essentially had to buy that domain name from a domainer simply because he didn’t think ahead. And with celebrity names that’s the same case. I would say buy your domain name as soon as you get the inkling that you are going to be a celebrity. It sounds vain, but in a way it’s an extremely smart business practice. The other way to deal with this problem would be a cybersquatting report. A reasonable domain name attorney can create a cybersquatting report, which will essentially consist of a check of domain names out there that are identical or confusingly similar to your name, as well as domain names that trade off of your name through typosquatting, so, typographical errors, again, of your domain name. Another way to deal with this would be domain name and trademark monitoring. So, if you register your name or even if you don’t register your name, there are a number of databases that we can indicate signals telling a party that this name is now being used in commerce by another party.
Damien Allen: Thank you very much for joining us today, John, and explaining celebrity cybersquatting to us.
John Di Giacomo: No problem. Thanks for having me, Damien.
Damien Allen: You’ve been listening to Cybersquatting Law Radio. My name is Damien Allen. Everybody have a great afternoon.
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