Last night we told you that Adrian Peterson Lost his UDRP on the domain name AdrianPeterson.com.
This morning the decision has been published and it was decided by a one member panel who I think came to a bad decision although Mr. Peterson’s attorney’s maybe to blame as well.
Before reading the decision I assumed The panelist found that the use was a legitimate use as a “fan site”
However the panelist did not decide the case on that issue, instead finding:
“The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. ”
“Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
So Is the panelist saying because the domain doesn’t current resolve then Mr. Peterson isn’t entitled to protection? Did no one do a screenshots.com search on the domain to see the domain was in use with Mr. Peterson picture in his Vikings uniform on a site dedicated to information all about Mr. Peterson.
I don’t know if I can blame what I consider to be a bad decision on the panelist or the attorney who represented Mr Peterson.
I don’t think this is the last of this case we’ll see.
The decision does lay out a lot of other cases involving domain names of famous people so its an interesting decision to read.
Here are the relevant facts and findings:
“The factual findings pertinent to the decision in this case are that Complainant is a player/employee for the Minnesota Vikings and the National Football League and Respondent is the holder of the disputed domain name.”
“Complaint must in order to satisfy paragraph 4(a)(i) of the Policy establish that it has rights in a trademark and demonstrate that the disputed domain name is either identical or confusingly similar to that trademark.”
“For the purposes of paragraph 4(a)(i) a complainant can establish rights in a trademark by providing evidence of either the complainant’s registration of the trademark with a national trademark authority, or by providing evidence of the accrual of so-called common law trademark rights through continuous and ongoing use. In other words, the Policy does not distinguish between registered and unregistered trademark rights ”
“In this case, the Complaint does not explicitly indicate the trademark in which rights are claimed. There is no proof of registered rights and there is none of the normal indicia of use and reputation of a name that might give rise to common law rights.”
“Complainant ostensibly claims rights in the ADRIAN PETERSON name but has provided no evidence with respect to use of that name as a trademark in commerce or otherwise for any period of time. Complainant has provided by way of Exhibit A to the Complaint a screenshot of its football player profile page from <nfl.com> however that alone does not establish continuous use of a mark in commerce for any period of time.”
“Numerous earlier decisions of panels applying this part of the Policy have underscored the requirements to show common law trademark rights in a personal “By way of illustration, Panel refers to Question 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) found at http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#16 which asks: “Can a complainant show UDRP-relevant rights in a personal name?” in answer to which it is said that:
“Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. ”
“While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required”
“A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”
Relevant decisions:
Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, <juliaroberts.com>, Transfer
Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, <jeanettewinterson.com> inter alia, Transfer
Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874, <michael-crichton.com>, Transfer
Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, <tomcruise.com>, Transfer
Arthur Golden v. Galileo Asesores S.L., WIPO Case No. D2006-1215, <arthurgolden.com> inter alia, Transfer
Jim Carrey v. BWI Domains, WIPO Case No. D2009-0563, <jimcarrey.com>, Transfer
Jay Leno v. Garrison Hintz, WIPO Case No. D2009-0569, <weeknightswithjayleno.com>, Transfer
Geri Halliwell v. Rampe Purda/Privacy-Protect.org, WIPO Case No. D2010-1419, <gerihalliwell.com>, Transfer
Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431, <beyoncefragrance.com>, Transfer
“However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
Relevant decisions:
Israel Harold Asper v. Communication X Inc., WIPO Case No.D2001-0540, <izzyasper.com> inter alia, Denial
Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No.D2003-0248, <aboutsrichinmoy.com> inter alia, Transfer
David Pecker v. Mr. Ferris, WIPO Case No.D2006-1514, <davidpecker.com>, Denial
Jacques Chardeau, inter alia v. MindViews, LLC, WIPO Case No.D2008-0778, <caillebotte.com>, Denial
Margaret C. Whitman v. Domains For Sale, WIPO Case No.D2008-1534, <megwhitmanforgovernor.com> inter alia, Denial
Vanisha Mittal v. info@setrillonario.com, WIPO Case No.D2010-0810, <vanishamittal.com>, Denial
“Panel finds that Complainant has not established rights within the meaning of paragraph 4(a)(i) of the Policy and so has failed to establish the first limb of the its case.”
“Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Complaint is dismissed WITHOUT PREJUDICE.”
It is Ordered that the <adrianpeterson.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: August 30, 2012
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ACPA and UDRP have made the .com the only one on the shelf. This is the Panel’s way of suggesting otherwise ?
– and that the Complainant does not have exclusive rights in ADRIANPETERSON as a football player
This is the way it should have always been – but if that would have been the case from the beginning UDRP would not be the machine it is today – and most panels would be looking for work elsewhere.
This is a GREAT decision. Now, if I were the domain OWNER, I would turn that domain into a gay porn site! BOOM!
Hi Mike,
I am not sure what you mean with this:
“So Is the panelist saying because the domain doesn’t current resolve then Mr. Peterson isn’t entitled to protection? Did no one do a screenshots.com search on the domain to see the domain was in use with Mr. Peterson picture in his Vikings uniform on a site dedicated to information all about Mr. Peterson.”
Can you please elaborate?
I wrote a post about this decision too.
I think that the complaint failed in the first element cause the lawyers did no work at all. They had to prove that the player had common law rights in his name and they didn’t even try to prove anything.
I did both a whois search and a screenshot search but results are kind of inconclusive. I am not sure if the domain has changed owners, if it was a true fan sire or not etc. I didn’t bother too much as it was the lawyers job to make the case.
Brian, that’s a good observation. And some people try to infer that .com will lose its place as the ‘domain of choice’ as the new gTLDs come online. But given that .com is so heavily sought after in UDRPs, that doesn’t appear very likely.
Yes Grim – it is not just something any wanker like me pulls out of his ass – the facts speak for themselves:
How many UDRP or ACAP cases have there been where the Complainant goes after a non.com when they do not already own the .com – maybe a handful – switch.net being one of them with extraordinary circumstances.
I do not make the rules – I play by them – and lawyers, panels and courts have made ALL the rules – and even Billions of stupidly invested $$$ in non.coms will not change what the legal profession has burned into the minds of the consumer – .com.
Not to say many of these new non.com registries will be making fortunes off of suckers stupidly trying to suggest otherwise.
“So Is the panelist saying because the domain doesn’t current resolve then Mr. Peterson isn’t entitled to protection?”
No. Whether the Complainaint has proven a trade or service mark has nothing to do with how the domain name is being used.
Being well known does not automatically equate to having a trade or service mark.