Commercial exploitation needed in personal name case, says panel

International

In a recent World Intellectual Property Organization (WIPO) decision, a three-person panel concluded that the protection of an individual name, no matter how famous, is outside the scope of the Uniform Domain Name Dispute Resolution Policy (UDRP) where the name is not connected with any commercial exploitation by the complainant.

The complainant, Kathleen Kennedy Townsend, is the lieutenant governor of Maryland and a potential candidate for state governor in an election to be held this autumn. (She is also the daughter of the late attorney-general of the United States, Robert F Kennedy.) She has a fundraising committee called 'The Friends of Kathleen Kennedy Townsend' and a website, managed by a group that registered several domains in 2001 which include her name (and variations). During the proceedings, the complainant contended that she has common law trademark rights in her name.

The respondent had also registered several domain names which include Kennedy Townsend's name, none of which were in use. In order to succeed in having the registrant's domain names cancelled or transferred, the complainant had to demonstrate each of the following:

  • that the domain names are identical or confusingly similar to her trademark;

  • that the registrant has no rights or legitimate interest in the domain names; and

  • that the domain names were registered and being used in bad faith.

The respondent alleged that the complaint was not filed in compliance with the UDRP because it failed to describe the goods or services with which the trademark was used. The respondent also argued that the complaint involved personality rights only, and fell outside of the scope of the UDRP.

In the action, the complainant principally relied on the case of Anne McLennan v smartcanuk.com, where the panel found that the complainant had established common law trademark rights in her name sufficient to support a complaint under the UDRP. (Anne McLennan was well known in Canada as a member of Parliament, minister of justice and attorney-general.)

The panel noted, however, that almost one year after the McLennan decision, WIPO issued its Final Report on the Second WIPO Domain Name Process, where it clearly indicated that the policy should be limited to personal names that had been commercially exploited.

In this current decision, the panel held that the complainant did not have trademark rights that were protectable under the UDRP, because she was unable to demonstrate that she had commercially exploited her name. The panel noted, however, that the complainant was not without remedy, as the Anticybersquatting Consumer Protection Act contains express provisions protecting the rights in personal names, and the complainant was free to pursue her claim in the US courts. The panel also noted that the complainant's fundraising committee might have trademark rights in the name that are sufficiently commercial as to entitle the committee to protection under the UDRP.

Michael Andrews, Milton, Geller LLP, Ottawa

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