Planned Parenthood president has no rights in her name

International

In Planned Parenthood Federation of America Inc v Hoffman, a World Intellectual Property Organization (WIPO) panel has denied a complaint filed by Gloria Feldt, the president of Planned Parenthood, against California resident Chris Hoffman over his registration and use of the domain name 'GloriaFeldt.com'. The panel ruled that Feldt failed to show that her name (i) had been used in connection with the commercial offering of goods or services, or (ii) has acquired secondary meaning as the source of goods or services.

Planned Parenthood is a not-for-profit corporation dedicated to reproductive health care services. Feldt is well known as a spokesperson for women's reproductive rights. She is often invited to speak on this subject at universities and on television and news shows, and has written a book concerning her work.

Feldt initiated proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the transfer of 'GloriaFeldt.com' when she discovered that Hoffman had registered the domain name to host a website containing statements critical of Planned Parenthood. She alleged that her activities and notoriety gave rise to common law service mark rights in her name.

In dismissing Feldt's complaint, the panel referred to the Report of the Second WIPO Internet Domain Name Process, which provides that:

"[p]ersons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations."

The panel pointed out that the narrow scope of the policy in relation to personal names is "frustrating to some" and remarked that "[f]ortunately, in the United States, such frustrated parties can seek relief under the Anti-cybersquatting Consumer Protection Act".

For discussion of other UDRP cases involving the issue of common law rights in personal names, see Country music star wins personal name case, NBA star scores in celebrity cybersquatting case, Author succeeds in obtaining 'michaelcrichton.com' and Albert Einstein's heir loses domain name dispute.

Lynda Zadra-Symes, Knobbe Martens Olson & Bear LLP, Newport Beach

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