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Protection of Personal Names in Domain Names

David Pecker is the chairman of American Media, Inc., publisher of, among others, National Enquirer and Weekly World News. 'Mr. Ferris' registered the domain name DAVIDPECKER.COM, had a PPC company host it, where it was keyed to ads for porn, because, according to the registrant, the word PECKER was in the domain name. Mr. Pecker brought a UDRP.

Although 'Mr. Ferris' (as he is identified in the decision) did not seem (to me) that he could establish a bona fide intent to use the name in conenction with an offering of goods or services, and altohugh there seemed to be plausible evidence of bad faith, the UDRP was denied. Complainant could not establish rights in his name as a trademark:

"A number of disputes under the Policy have involved personal names, as here, and the panels' decisions have been mixed on the issue of whether the complainants have rights in the names. See, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (finding common law rights in "Tom Cruise"); and The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184 (finding no rights in "Jerry Falwell").

Indeed, the issue of rights in personal names has generated enough cases and raised enough questions that the matter has been addressed by the "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", which states: "While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name." "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", paragraph 1.6, "http://arbiter.wipo.int/domains/search/overview/index.html" (visited January 15, 2007).

. . .

In this case, Complainant has provided no evidence of his rights in the Disputed Domain Name other than broad assertions that he "is known nationally and internationally by the name David Pecker and his high profile name is linked inextricably with AMI and is cited frequently by the media", and an affidavit from AMI's assistant general counsel that Complainant "possesses a strong common law service mark in his name by virtue of his position as being one of the leaders in the publishing industry… David Pecker's personal fame and reputation have caused his name, as a leader in the publishing industry and as Chairman and CEO of AMI, to acquire a secondary meaning in the industry. Complainant's name is used to promote AMI and the public understands his name as referring to AMI". While these statements may well be true, it is nevertheless incumbent on a complainant, except in the most obvious cases, to provide evidence in support of a claim to rights in a personal name for the purposes of the Policy. . . . It is also unclear to the Panel on the evidence provided whether, as required by the Policy in such cases, Mr. Pecker "has ever used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services". Joacim Bruus-Jensen v. John Adamsen, WIPO Case No. D2004-0458.

. . .

In light of the above, the Panel is not convinced, based on the limited record before it, that Complainant has established rights in the name "David Pecker" for the purpose of this proceeding. Therefore, the Panel finds that Complainant has not succeeded in proving the first element of the Policy.

[HOWEVER]

Complainant's lack of success in this proceeding in proving its rights in the name "David Pecker" does not necessarily mean that Complainant has no remedy. "He may have claims under the Anticybersquatting Consumer Protection Act ('ACPA'), which expressly provides for protection of personal names, or perhaps his actions lie in tort. Complainant is free to pursue his claims in U.S. courts." The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184.

Note: Complainant has indicated he is considering an ACPA proceeding

Comment: Entertainers usually fare better in UDRPs than well-known executives, as it tends to be easer for them to show, in the absence of a registration, that their names function as common law trademarks for the entertainment services they provide. That should be some comfort for PETER O'TOOLE.

By Martin Schwimmer, Attorney. More blog posts from Martin Schwimmer can also be read here.

Related topics: Cybercrime, Cybersquatting, DNS, Domain Names, Law

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Comments

Re: Protection of Personal Names in Domain Names Dave Zan  –  Feb 10, 2007 2:44 AM PST

How...entertaining. :)

Well, looks like he prefers to be "principled" rather than pragmatic. I'll be darned if he loses this case.

Re: Protection of Personal Names in Domain Names Ronaldo Cardonetti  –  Feb 22, 2007 7:02 AM PST

During the past 12 years the Internet in Brazil is being controlled by a fairly small group of people calling themselves CGI.br "Comite Gestor da Internet do Brasil" which main goal is profiting and getting benefits for themselves. ICANN charges about US$0.25 to process a registration for each domain meanwhile in Brazil CGI charges US$ 45.00 back in 1999, US$37.00 in 2002 and today this fee is about US$14.00 a year for each ccTLD domain registration. Some high ranking legislators declared CGI.br group as nonexistent and unconstitutional in fact they are considered to be just like a fake company which does not have a federal tax id # therefore can not operate legally.

By charging these high fees for domain registration their income already passed the 120 million dollars figure. CGI passed a resolution to appoint FAPESP (a foundation which is sponsored by the state of São Paulo) to be the government body responsible to collect the payment however the terms of the payment are quite confusing since FAPESP cannot receive money from the public the payment is disguised as an anonymous donation since FAPESP is not obligated by Brazilian law to identify each company paying for this so called public service therefore no state or federal taxes are collected and no receipt is given. Many Internet users in Brazil are calling this practice "extortion" because there are more than 1 million domains registered unless you DONATE to FAPESP you loose your domain registration.

Members of ICANN involved in these schemes;

1- With the help of CGI members Mr. Demi Getschko (an official ICANN elected member) opened a non-profit organization named NIC.BR where Mr. Getschko is the owner/director replacing FAPESP and acting as the ONLY official register without the local or federal government offering public bidding for this transferring process to companies and organizations with the same goals to compete of becoming a registrar. In fact these individuals define the rules and fees as CGI and collect the money as NIC.BR. To give you an example just picture members of ICANN in the United States opening a non-profit organization and this same organization would act as a company like Network Solutions defining the rules and fees however these same members collects US$14.000.000.00 a year for domain registration as a non-profit organization.

2- In 1998 Mr. Ivan Moura Campos coordinator of CGI declared many times that CGI paid US$ 30.000.00 to FAPESP monthly for Internet services at the same time CGI collected US$ 1.200.000.00 monthly for domain registration. At the same time Mr. Campos was the president of NIC.BR administrative board in addition Mr. Campos was founder/partner of Akwan/todobr a Internet search engine which was sold to Google for an estimated US$ 25.000.000.00. We all know the secret of a search engine is having access to all domains in the Brazilian registry system to have the most complete content. Hundreds of Brazilians tried without succeeding creating a search engine service like Yahoo/Cade/Google. 280 search engines are still functioning however AKWAN was the ONLY company acquired by a high price in this market. There is almost impossible this things happen in the United States however in Brazil it's happening right now with ICANN members involved in the schemes. Some strange statements like the one made by CGI's president Mr. Raphael Mandarino who said; "The Brazilian ccTLD registry system is one of the best in the world and it's being copied by many countries around the globe, the American model is stupidity as in the US the companies want only to make a profit". As the most democratic country in the world the US has more than 500 accredited domain registers. In Brazil there's only ONE accredited name registro.br acting 10 years as FAPESP and now as NIC.BR

CGI was trying to encourage companies to become accredited registrars by offering them a piece of the action something like 10% meaning US$1.40 (The completely opposite from USA) however only 5 companies decided of becoming accredited registrars and now they are liable for all fees related to eventual legal proceedings pertaining to a dispute of any domain registered by these accredited registrars. In addition Mr. Demi Getschko is updating all information in USA on ICANN contact site from CGI.BR to NIC.BR to trying to make official the private organization NIC.BR which is NOT repeating, is NOT an official public representative. In the 2003 Tunisian ICANN forum CGI.BR performed a survey with a very strange question; Are you in favor of United States controlling the Internet in the world? The answer was obviously NOT.

Unfortunately ICANN is sponsoring Mr. Getschko activities in Brazil by allowing its members under his leadership to practice these kind of wrongdoings creating a negative environment in the Brazilian registry system and penalizing thousands of companies by his anti-democratic practices.

Some legal proceedings in the Brazilian courts;

1- TCU - Tribunal de Contas da Uniao (Brazilian Federal Comptroller) - www.tcu.gov.br lawsuit under file # 012.048/2001-5 TCU against CGI.BR/FAPESP to investigate possible fraud related to undeclared funds collected by registering domains between 2001 and 2005. Because of the delay in investigating possible fraud against public interest almost US$ 175.000.000.00 entered FAPESP as donation collected from domain owners, an illegal practice according to TCU.

2- Federal Police Revenue Division investigating the disappearance of more than US$ 60.000.000.00 of FAPESP funds after probing people's statement about this issue. Police Inquire - Inquerito 147206 Processo 050060353642-0000. Abusando.org welcome any information about CGI.BR/FAPESP/NIC.BR lawsuits and legal disputes filed in Brazil or any other country. Please contact jorgemodesto@abusando.org if you have any question, comment or concern regarding these issues.

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