Most domainers are pretty confused on the question of when is a person name, domain name fair game and when is the domain protected by WIPO/UDRP rulings.

Thomas Pritzker filed a WIPO for the domain tpritzker.com

Although you may have never heard of Thomas Pritzker, he is a pretty successful guy, to say the least,  described in the ruling as “a prominent businessman, the Chairman and CEO of The Pritzker Organization LLC, Chairman of Global Hyatt Corporation, Chairman of Marmon Holdings, Inc. and Chairman of the Art Institute of Chicago.

The sole panelist in ruling against Mr. Pritzker laid out a pretty detailed explanation of the state of the law regarding if a person is entitled to a domain name of a “famous” person.

Basically the ruling says that to be protected the person must have established a “common law trademark rights in his name”.

This decision goes through many of the cases involving famous people and pretty clearly lays out who is and who is not going to be awarded his domain, in a WIPO action.

I think its something you should all read through:

“””Recently, a line of cases has set out a new test, a kind of facts and circumstance test as to whether an individual’s name should be protected, even though that name has not been used in trade or commerce as a trademark or service mark. The lead case is Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 and concerned the domain names <chungmongku.com> and <chungmongku.net>. In that case the Complainants were the Chairman and Chief Executive Officer of Hyundai Motor Company and the company itself.

In finding that the individual had protectible rights in his name, the panel first reproduced in full Section 1.6 of the WIPO Overview set out above, then stated: “From this summary it may be deduced that the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet² that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in commerce.”

I””n performing its analysis of whether the complainant has common law rights in a trademark, the panel performs a “nexus analysis” between the personal name and its use and association in commerce, analyzing such factors as “the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and or the company has a demonstrable interest in protecting the individual’s name for commercial use.” Factors considered in its analysis of whether common law trademark rights exist include the state of mind and the conduct of the respondent:”””

“This conclusion is reinforced by the inference that the Respondent must have been of the same opinion when he registered the domain names. He registered both domain names using Mr. Chung’s name. He did not register them using Hyundai’s name. The only inference open is that he did this because he knew that people looking for a website on Hyundai were just as likely to look for it under Mr. Chung’s name as under Hyundai’s name. Indeed, having registered two domain names under Mr. Chung’s name and none under Hyundai’s name, he must be taken to have believed that people were more likely to look for Hyundai under Mr. Chung’s name than under Hyundai’s name.

Moreover, the Respondent can hardly be heard to say that the Complainants do not have a commercial interest in Mr. Chung’s name when he took aim at Hyundai by registering two domain names in Mr. Chung’s name.

As in the Marty Roberts Case, the Respondent has also directed the use of the name ‘. precisely at the market for Complainant’s services. . .’, being in the present case potential buyers of Hyundai motor vehicles.”

“””But respondent’s state of mind and conduct are not at issue in the first prong of the UDRP analysis, whether the domain name at issue is confusingly similar to a trademark in which the complainant has rights. They may come into play in the second prong of the analysis, and they assuredly are the subject of the third prong of the analysis. But they have no place in a determination of whether the complainant has common law rights in a trademark. Nowhere does the panel discuss whether the name has been used in commerce as a trademark or service mark such that the name has acquired sufficient secondary meaning to designate it as the source of the goods or service with which it is associated.

Subsequent decisions have cited Chung, Mong Koo with approval and have abandoned the common law trademark analysis to focus on the fame of the individual and his importance to his company and his reputation in the industry. See, e.g., Soin International, LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, WIPO Case No. D2007-0094 and Kotak Mahindra Bank Limited v. Richard Brown, WIPO Case No. D2008-0243. In the present case, Complainant has cited this line of cases to the panel in support of its case.”””

4. Paragraph 4(a)(i) of the Policy

Paragraph 4(a)(i) of the Policy sets out the first of the three prongs that a complainant must prove in order to be entitled to relief under the Policy. Paragraph 4(a)(i) of the Policy requires the complainant to prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights. It does not refer to a nexus between the personal name and its use in trade and commerce. It does not refer to the respondent’s state of mind. It does not refer to the respondent’s conduct. It does not refer to the respondent at all.

It does say that the complainant must prove that the complainant has rights in a trademark or service mark and that the domain name at issue is confusingly similar or identical to that trademark or service mark.

5. To Be Protected Under the UDRP, Personal Names Must Be Used as a Trademark or Service Mark

The panel believes that the Chung, Mong Koo line of cases creates a special exception for prominent business persons from the requirement that a personal name must be used as a trademark or service mark to be entitled to protection under the UDRP. The panel believes that such an exception is inconsistent with the WIPO Internet Domain Name Processes and their recommendations, with the WIPO Overview, with the majority view of panelists, and with paragraph 4(a)(i).

The typical cases in which individuals have been found to have a common law trademark or service mark in their personal names involve authors and celebrities: Julia Fiona Roberts v. Russel Boyd, WIPO Case No. D2000-0210 (actor); Cho Yong Pil v. ImageLand, Inc., WIO Case No. D2000-0229 (pop music star); Jeannete Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (author); Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 (author); Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (author); Experience Hendrix LLC v. Denny Hammerton and The Jimi Hendrix Fan Club, WIPO Case No. D2000-0364 (estate of deceased rock musician); Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598 (NFL quarterback); Nik Carter v. The Afternoon Fiasco, WIPO Case No. D2000-0658 (radio broadcaster); Helen Folsade Adu known as SADE v. Quantum Computer Services Inc., WIPO Case No. D2000-0794 (singer/songwriter); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and ‘Maddona.com’, WIPO Case No. D2000-0847 (singer, performer, actor); Isabelle Adjani v. Second Orbit, WIPO Case No. D2000-0867 (actor); Jules I. Kendall v. Donald Mayer Re dkipkendall.com, WIPO Case No. D2000-0868 (professional golfer); Jaap Stam v. Oliver Cohen, WIPO Case No. D2000-1061 (professional footballer); Pierre van Hooijdonk v. S.B. Tait, WIPO Case No. D2000-1068 (professional footballer); Julie Brown v. Julie Brown Club, WIPO Case No. D2000-1628 (actor, script writer, producer of music videos); Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy, WIPO Case No. D2000-1673 (professional tennis players); Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838 (pop singer and performer); Margaret Drabble v. Old barn Studios Limited, WIPO Case No. D2001-0209; Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874 (author and screenwriter); Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248 (author). In every instance the personal name was used in connection with the services or goods produced by the individual, and in many cases the commercial value of the personal names were confirmed by their use in advertising or endorsements. These are clear examples of personal names being used as a trademark or service mark to designate the source of the services or goods produced by the individuals.

In the context of religious and business personages, the Panel believes that the two examples which follow perform the proper analysis to determine whether the personal name is being used as a common law trademark. First, in The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184, the domain names at issue were <jerryfalwell.com> and <jerryfallwell.com>. While recognizing that Reverend Falwell was a well known public figure, the panel nonetheless found that he had no common law trademark rights in his personal name:

“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services. The dissent notes that this failure is attributable not only to Dr. Falwell, but to The Liberty Alliance as well. There are many well-known ministers, religious figures, and academics. Are their sermons or lectures to be considered commercial goods? Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use as a trademark. On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the ‘Second WIPO Report’). In that report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. ‘Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society.’ Second WIPO Report, paragraph 199.

Complainant is careful to avoid any suggestion that he has exploited his name for ‘materialistic’ or ‘commercial’ purposes. Complainant is an educator and religious minister. He has used his name to advance his views as to morality and religion. That Complainant has acquired a certain fame in the United States is without question. However, this kind of fame is not cognizable under the Policy. See, e.g., Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030 (April 11, 2002).”

The second example is the case of Wal-Mart Stores, Inc. and Mrs. Helen Walton v. Bestinfo/DavidWebb, WIPO Case No. D2005-0086. In that case the domain name at issue was <samwalton.com>. The name corresponded to the personal name of the founder of Wal-Mart, the largest retailer in the world. The case was brought in the name both of his widow and of the corporate entity which he founded. Without even the shadow of a doubt, in business circles generally and in the retail industry specifically Sam Walton was famous. However the panel analyzed the case without regard to his fame or cachet and did not perform a facts and circumstances analysis to see whether there was a nexus between Sam Walton’s personal name and its use and association in trade and commerce or whether the state of mind or the conduct of the respondent confirmed that analysis. Rather, the panel performed the analysis that was called for by the WIPO processes and by paragraph 4(a)(i): whether the domain name at issue is identical or confusingly similar to “a trademark or service mark in which the complainant has rights”. (Emphasis added). In finding that the complainant corporation had common law trademark rights in the Sam Walton name, the panel cited evidence that the complainant corporation had been using the SAM WALTON mark for toy trucks that it marketed and that the Sam Walton name, philosophy, and signature were used in connection with and on the SAM’S CHOICE line of groceries which complainant sold. Thus the SAM WALTON mark served as a designation of source of goods and therefore it had acquired secondary meaning.

This is the analysis contemplated by the WIPO processes, the majority of the decisions in this area, and paragraph 4(a0(1) of the Policy. Accordingly, the Panel finds that Complainant in the present case has failed to establish that there are common law trademark rights in the name T. Pritzker or Thomas Pritzker.

Having so found, it is unnecessary to address the issues of rights or legitimate interests and bad faith.””””