Having a famous name is insufficient to show unregistered trademark rights
In Bond v Information360 Limited (Case D2007-1081, August 30 2007), a World Intellectual Property Organization (WIPO) administrative panel has rejected the complaint of Alan Bond, a well-known Australian businessman, against the registration of the domain names 'alanbond.net' and 'alanbond.tv'.
The decision highlights the scope of protection provided to famous (and, arguably, infamous) people in respect of their names under the WIPO Uniform Domain Name Dispute Resolution Policy (UDRP).
The panel had been provided with the following information concerning Bond:
- He is a well-known businessman;
- He became a national hero in the 1970s in Australia after sponsoring and winning challenges for the Americas Cup;
- In 1978, he was nominated 'Australian of the year';
- Following the collapse of the Bond Corporation, he was jailed for fraud in May 1992, but the conviction was quashed in November of that year;
- He was again jailed for fraud in 1996 and released in 2000; and
- Since 2000, he has been heavily involved in "a number of entrepreneurial enterprises".
Personal names that have been trademarked are protected under the UDRP. Bond had not registered his name as a trademark and thus had to establish that he had acquired common law rights in his name as a trademark. Where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. However, the name in question must actually be used in trade or commerce; merely having a famous name is not necessarily sufficient to show unregistered trademark rights.
In WIPO domain name cases where a famous individual has been successful, the complainant either used his/her personal name as a marketable commodity (eg, by allowing his/her name or image to be used for a fee, to promote someone else's goods or services, or for direct commercial purposes in the marketing of his/her own goods and services).
In the case at hand, none of the information on Bond was supported by documentation. Therefore, no evidence demonstrated how Bond's name was used or the extent of the use of the name. The panel accepted that Bond is a well-known Australian businessman, but having a famous name does not in itself equate to unregistered trademark rights in respect of that name. Accordingly, Bond failed to satisfy the panel that the domain names in question were identical or confusingly similar to a trademark or service mark in which he had rights.
Julian Gyngell, Julian Gyngell, Wahroonga
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