Surfer Veronica Kay is not famous enough, says NAF panel

A National Arbitration Forum (NAF) panellist's decision in Quiksilver Inc v Official Site Builders has set a high bar for proof of sport-celebrity status. Quiksilver, the well-known surf and snowboard company, filed a Uniform Domain Name Dispute Resolution Policy complaint on behalf of professional surfer Veronica Kay for the transfer of the domain name 'VeronicaKay.com'. Carolyn Johnson rejected the complaint on the grounds that the documents supplied by Quiksilver "do not demonstrate secondary meaning, nor do they establish the value that the name 'Veronica Kay' holds as a trademark".

Official Site Builders had registered the disputed domain name in September 2002 but had never actively used it. Quiksilver, which sponsors Kay, brought proceedings to have the domain name transferred to it. In order to succeed, Quiksilver needed to establish that the name 'Veronica Kay' had achieved secondary meaning, giving Kay common law trademark rights. In an effort to do that, the California-based company submitted articles on Kay that had been published in various magazines and advised that she had been featured on the E! Channel.

Johnson took the position that the exhibits did not establish that the name 'Veronica Kay' had acquired secondary meaning; some of the submissions were merely narratives. Johnson concluded that Quiksilver had not met its burden of establishing that Kay has common law rights in her name, and therefore refused to order that 'VeronicaKay.com' be transferred.

This case is to be contrasted with a number of other NAF proceedings involving the registration of sport personalities' names as domain names, such as 'BarryZito.com' and 'TrotNixon.com' (both Major League Baseball players), and 'KevinGarnett.com' (a National Basketball Association player). In these cases, the panels found that the celebrities had established common law trademark rights in their names. In view of these decisions, it must be assumed that Kay is not a sport celebrity in the broader sense as she is known to a much smaller group of people - surfers - and this alone is not enough to establish that her name has acquired secondary meaning among the public.

For discussion of the cases involving Nixon and Garnett, see Boston Red Sox right-fielder wins 'TrotNixon.com' and NBA star scores in celebrity cybersquatting case.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC

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