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Relief Denied to Personal Name of Danish Businessman

Mark Partridge

Danish businessman Joacim Bruus-Jensen challenged the domain name www.joacimbruus-jensen.com in ICANN UDRP proceeding. He failed to prove enforceable trademark rights in his name and was denied relief in this decision by Panelist Derek Minus. Joacim Bruus-Jensen v. John Adamsen, Case No. D2004-0458 (WIPO Sept.29, 2004).

The case should be considered before seeking to use the ICANN UDRP to take action based on the personal name of a business executive. Relief is possible but requires proof that the personal name has been used in commerce to establish common law rights as a trademark.

The Panel states in part:

[T]here is no evidence that the Complainant has acquired such rights in his use of his name through any special trade usage. The cases relied on by the Complainant, namely, WIPO Case No. D2002-1180, Sibyl Avery Jackson v. Jan Teluch and WIPO Case No. D2000-0210, Julia Fiona Roberts v. Russell Boyd are easily distinguished. In the first matter the Panel accepted that the evidence established that Sibyl Avery Jackson "uses her name in the creation, promotion and, commercial exploitation of her work and that name identifies the work to customers." The second matter involved the famous, Oscar winning, American actress, Julia Roberts. The Panel decided that registration of her name as a trademark or service mark was not necessary as the name "'Julia Roberts' has sufficient secondary association with [the] Complainant that common law trademark rights do exist under United States trademark law."

In WIPO Case No. D2001-0540, Israel Harold Asper v. Communication X Inc., a leading decision on the registration of a domain name of a famous person's name by someone unconnected with that person, it was said by the Panel that:

"There are two dominant concerns inducing the protection of marks. The first is the protection of consumers who associate the name with goods and services of a known source and quality. The second is to preserve the value of goodwill built up over time by the owner of the mark. In the case of those (primarily entertainers and professional athletes) who sell their goodwill to others in the marketing of goods and services not directly associated with the holder, the first rationale, above, is likely to be dominant. This is much less likely to be the case with other personal name marks, particularly those, which have not obtained a secondary meaning. It is the view of this Panel that the name of the Complainant falls within the latter category."

In Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858 and Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, the Panels found that trade names or marks that have, through usage, become distinctive of the users' goods or services in commerce may be protectable as they have acquired a "secondary meaning." In the former case, it said: "A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization."

This is not the case here. There is no information available to the Panel that the Complainant has acquired such a secondary meaning in his personal name as a reference to a particular source or organization. This is also clear from the fact that the Complainant chose to register, some two years before the Respondent registered the contested names, the domain names and for use by his companies. The Complainant's web sites located at "www.jbjgroup.dk" and "www.jbjinvest.dk" offer only the same animated graphic of the company logo and its address and contact details. No information about the company's primary business activities or services is provided.

By Mark Partridge, Managing Partner at Partridge IP Law
Related topics: DNS, Domain Names, ICANN, Law, UDRP
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