Oakland pitcher wins 'BarryZito.com', Giambi brothers strike out
Major League baseball pitcher Barry Zito has scored a victory under the Uniform Domain Name Dispute Resolution Policy (UDRP) as the National Arbitration Forum (NAF) ordered the transfer of the domain name 'BarryZito.com' to the ace hurler. Baseball brothers Jason and Jeremy Giambi did not enjoy similar success, becoming the first sports personalities to lose under the UDRP.
Zito, the Oakland Athletics' top draft pick in 1999 and a 2002 All-Star, filed a complaint against the registrant of 'BarryZito.com', who maintained on his website a banner advertisement and links to other commercial sites. Panellist Tyrus Atkinson Jr found that Zito had acquired common law trademark rights in his own name by virtue of his status as a well-known Major League baseball player, and that his name represented the possibility of significant value in endorsements. Atkinson was persuaded by the evidence that Zito acquired national fame with regard to baseball, noting that he is regularly featured on national broadcasting syndicates and is frequently interviewed on the Internet and television.
In another NAF case, New York Yankees slugger Jason Giambi and his brother Jeremy, an outfielder for the Philadelphia Phillies, sought the transfer of the domain name 'Giambi.com' from a registrant in California. Jason was the American League Most Valuable Player in 2000.
Panellist R Glen Ayers found that the Giambi brothers had no rights in the surname Giambi, stating succinctly that "the findings in this case are simple". The registrant of the domain name had argued that any common law trademark rights would apply only to a combination of their given names and surnames. The registrant also argued that neither player was particularly well-known when he registered the domain name in 1999, but Ayers declined to discuss the popularity of either player. Ayers also found no evidence of bad faith.
The decision in the Barry Zito Case is representative of the enormous success sports personalities have had under the UDRP, winning 19 out of the 20 cases that have been filed. Had one of the Giambi brothers filed a complaint against 'JasonGiambi.com' or 'JeremyGiambi.com', it is likely that sports personalities would still have a perfect record. The clear message for athletes and entertainers is to pursue enforcement of trademark rights against domain names containing their full name rather than surname only.
James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP and Steven Patrick Shaw, Georgetown University Law Center, Washington DC
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