How to defend against opportunists in the arena of personal names and unregistered rights

Oct 11, 2021, 15:36 PM

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This article was first published in the World Trademark Review magazine on 7 October 2021.

On 11 September 2021, Emma Raducanu became the first British female player to win the US Open in 44 years. Her success quickly attracted attention worldwide, not least within the trademark world as her unexpected triumph has sparked a rush of people trying to unfairly capitalise on her fame.

A first UK trademark application was filed on 12 September 2021, and later withdrawn. Five days after her win, another UK application was filed for EMMA RADUCANU STYLE in classes covering sports bags, watches, eyewear and cars.

In the internet world, domain registrations containing the tennis player’s name spiked. Some of the most recent registrations include ‘emmaraducanu.org’, ‘emmaraducanu.info’ and ‘emmaraducanu.club’, all listed for sale at $1 million (likely by the same registrant).

This sudden interest in Raducanu’s personal name is likely to continue to grow as the tennis player is expected to become a sports star and secure deals with several famous brands.

As Raducanu is yet to file a trademark application for her name, the path to protecting her name online and recovering infringing domain names will be more challenging but not impossible. Under the UDRP, some provisions exist regarding the issue of rights in a personal name.

The UDRP view on rights in a personal name

Any personal name that has been registered as a trademark will provide standing for a complainant to file a UDRP case. However, the UDRP does not explicitly provide standing for unregistered personal names.

To assert rights in a personal name that has not been secured as a trademark, the complainant must prove that the name is being used as a trademark-like identifier in commerce. Only if the name has become a distinctive identifier for the complainant’s goods/services, can the complainant establish unregistered or common law rights (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Guideline 1.5).

Very early on, the UDRP dealt with the issue of personal names in domain names. The ‘juliaroberts.com’ case (WIPO D2000-0210) was significant for establishing the elements of a celebrity UDRP complaint. But more importantly, it was the first UDRP decision to recognise common law rights in a person’s name. The three-member panel in the case held that:

Complainant asserted common law trademark rights in her name. The Panel further decided that registration of her name as a registered trademark or service mark was not necessary and that the name “Julia Roberts” has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.

The panel further cited another UDRP decision, which relied on English law and found that common law rights can exist in an author’s name. In this case, the panel found that the complainant had proved common law rights and therefore held sufficient rights to ground an action for passing off (WIPO Case No. D2000-0235).

The Report of the Second WIPO Internet Domain Name Process, dated 3 September 2001, also discussed in length the legal protection given to personal names. This helped build the consensus view when assessing personal names’ rights under the UDRP, which panels have since followed. However, in more than 20 years since the UDRP was created, many complainants have failed to prove rights in their personal names.

Overcoming difficulties in proving unregistered rights in a personal name

One of the main reasons that complainants fail to prove unregistered rights in a name is the lack of evidence submitted to show that the name functions as a trademark. The more famous the name, the easier this should be to prove. However, fame alone is not enough to overcome the first element. Merely relying on having a famous name, if not combined with evidence of it being used commercially, will result in failure. Clear targeting (bad-faith intent) will also not suffice.

For example, in the case of Israel Harold Asper v Communication X Inc (WIPO Case D2001-0540), the complainant Israel Asper, a lawyer and businessman also known as Izzy Asper, failed to overcome the hurdle of the first element. The panel stated in the decision that there was no evidence that the complainant ever used his personal name to merchandise, or in any other commercial promotion of goods/services, or even intended to do so. The panel further added:

While, therefore, this Panel has no doubt that the Complainant, known as Izzy Asper, has a deservedly famous name and that this attribute may provide him with a remedy in a national court for an alleged improper use of his name, the present Policy and Rules which bind this Panel do not permit a finding that he has rights in a trademark or service mark of such a nature.

This precedent highlights the need for complainants to choose the appropriate dispute resolution mechanism and not overlook the first UDRP element. Complainants must use their name commercially and provide evidence of such use, as mere assertions are not accepted under the UDRP. Evidence ranges from consumer, media or industry recognition to duration and nature of use of the name in commerce. The public must recognise the name as a symbol that distinguishes the goods/services from those of others.

Since the first UDRP decisions, many well-known personalities and other sports celebrities have recovered domain names infringing on their name. For instance, in Jorge Lorenzo Guerrero v Cent & Ment Comunicació SL (WIPO Case D2009-0725), the panel reaffirmed that names of professional athletes are capable of being trademarks when they have acquired an obvious notoriety and “unequivocally identify their holders in the development of their commercial or professional activities”.

Comment

Until a famous person secures a registered trademark in their name, the only way to recover infringing domain names is to prove unregistered or common law rights in their name. Rising stars, like Emma Raducanu, will likely secure trademarks in the upcoming weeks or months, but until then, they should proactively protect their names online.

When possible, one should register a domain defensively. For example, in June 2021, Prince Harry and Meghan Markle secured some domain names for their daughter Lilibet Diana the day she was born and two days before the public announcement. Those domain names were registered to prevent third parties from taking advantage of her name in a commercial manner.

Finally, brand enforcement remains the best course of action to tackle cybersquatting – as long as a complainant has enough evidence to show their unregistered or common law rights in their name.