Ted Turner loses claim for 'tedturner.com'

Turner Movie Classics, Turner Network Television and Turner Broadcasting System are all immediately recognizable as media properties either founded or owned by entrepreneur Ted Turner. He is also well known for his philanthropy, for organizing the Pan-American games, for his ownership of the Atlanta Braves and for his marriage and divorce from movie star Jane Fonda. In 1991 he was Time magazine's Man of the Year.

But all that branding, all those good works and all that notoriety is not enough to give Turner a common law trademark right in his own name, based on the recent ruling by a three-person panel of the World Intellectual Property Organization (WIPO)
in RE Ted Turner and Ted Turner Film Properties v Mazen Fahmi.

The holding by the split panel means that Turner cannot, at least through the WIPO Arbitration and Mediation Centre, force respondent Mazen Fahmi to turn over the rights to the domain name 'tedturner.com'. The decision suggested to Turner that he pursue his complaint in another venue, such as a US court, because the Uniform Domain Name Dispute Resolution Policy (UDRP) does not offer a remedy.

In 1999 Fahmi, a Canadian technology student, claimed to have registered the domain name as part of an academic paper to be called, "You may not build an empire like Ted Turner's but you may still own a castle". Having failed to get 'castle.com', Fahmi chose instead to register 'tedturner.com'. Turner filed to register his name as a trademark in November 2001 having used 'Turner' on various properties and 'Ted Turner' as part of Ted Turner Film Properties.

To prevail, the panel said Turner had to meet the burden set forth in the UDRP, namely that:

• the domain named registered by Fahmi is identical or confusingly similar to a trademark or service mark in which Turner has rights;
  
  
• Fahmi has no legitimate rights or interests in respect of the domain name; and
  
  
• the domain name was registered and is being used in bad faith.

The panel held that despite Turner's worldwide fame, he could not satisfy the first of the three-prong test because:

"there is insufficient evidence that his personal name has been used commercially as a trademark to promote goods and services, other than the incorporation of 'Ted Turner' into the name 'TTFP' ['Ted Turner Film Properties']."

The panel held that inclusion of 'Turner' alone in his many media properties was not enough to make 'Ted Turner' a trademark at common law. The panel also held that because Turner filed a trademark application after Fahmi had registered the domain name, Turner could not claim prior use.

Does a complainant, then, need to use his or her full name in business before the WIPO panel considers it a common law trademark? Such a view would indicate that others who have built businesses around their names would be at risk having used only their surnames.

The panel distinguished the many cases in which celebrities and other famous individuals have prevailed, ignoring Turner's celebrity and notoriety. Instead the panel relied on Asper v Communication X Inc in which a Canadian businessman lost because he did not use his own name to market his goods and services. Asper cites examples of Henry Luce, the founder of Time magazine, and Rupert Murdoch, head of News Corporation. The panel ignored the fact that Turner is not in the same category as Asper, Luce or Murdoch; he has repeatedly used his name to promote his goods and services, albeit not his entire name.

The decision serves as a cautionary note to individuals who believe their names carry value independent of the businesses they operate; secure all domain registrations that include the name at issue and take the small, inexpensive measure of trademark registration to protect the name.

John J Dieffenbach, Kaye Scholer LLP, New York