Dalí estate wins first '.name' dispute

International

In Fundación Gala-Salvador Dalí v Pascal Leemann-Pluot, World Intellectual Property Organization panellist Andrew F Christie has ordered the cancellation of the domain name 'salvador.dali.name'. This is the first '.name' domain dispute to be decided pursuant to the Eligibility Requirements Dispute Resolution Policy (ERDRP).

The Fundación, originally established by the late Salvador Dalí, commenced the complaint as the intellectual property rights-holder of the Dalí estate on the basis that Leemann-Pluot's registration of the domain name 'salvador.dali.name' did not meet the '.name' eligibility requirements.

The '.name' registration agreement establishes that the registrant must show that the domain name corresponds to:

  • the legal name of the registrant (as an individual);

  • the name of a fictional character in which the registrant has trademark or service mark rights; and/or

  • the name by which the registrant (as an individual) has been commonly known.

The Fundación argued that Leemann-Pluot met none of the eligibility criteria. In the absence of any response from Leemann-Pluot, Christie was obliged to find the complaint successful and ordered the cancellation of the domain name.

The ERDRP was approved by the Internet Corporation for Assigned Names and Numbers on August 1 2002 and although anyone may submit a complaint, very few have been filed since its adoption. However, the importance of this procedure for trademark owners cannot be underestimated and may lead to some interesting disputes involving individuals sharing names with high-profile persons or entities.

Jennifer A Ross-Carrière, Osler Hoskin and Harcourt LLP, Ottawa

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