Tiger Woods fails to obtain transfer of 'charlieaxelwoods.com'

On February 8 2009 Tiger Woods and his wife had their second child, Charlie Axel Woods. The birth announcement was widely reported by media outlets worldwide. The next day, Josh Whitford registered the domain name 'charlieaxelwoods.com'. An internet user attempting to access the site 'charlieaxelwoods.com' would be redirected to Whitford’s commercial website (a blog dedicated to unconventional marketing techniques).

Within nine days of registering 'charlieaxelwoods.com', Whitford posted an eBay listing offering to sell the domain name. The listing touted the "chance to own the domain to a future golf legend or use it in some way to extord [sic] the current golf legend for some extra cash". In addition, the WHOIS record for the domain name directed users to the eBay listing. Whitford also sent an email to members of The Tiger Woods Internet Club suggesting that the domain name would be worth millions of dollars in the future.

To prevail on a claim to have a domain name transferred or cancelled, a complainant has the burden of proving the following three elements under the UDRP:

The panel addressed only the first of these three factors. First, the panel found that 'charlieaxelwoods.com' was not confusingly similar to TIGER WOODS, a mark in which Woods indisputably had trademark rights.

The panel then considered whether the name Charlie Axel Woods was protectable as a common law trademark or service mark. Relying on the report of the Second World Intellectual Property Organization Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Name System and subsequent UDRP decisions involving the use of personal names as domain names, the panel held that:

"for a personal name to acquire common law trademark or service mark status, the personal name must be used in connection with the commercial offering of goods or services and must have acquired secondary meaning as the source of such goods or services." 

There was no evidence that the name Charlie Axel Woods had been used in connection with any commercial offering of goods or services or that it had acquired secondary meaning as the source of any goods or services. The panel thus found that Woods did not have trademark or service mark rights in the name Charlie Axel Woods, and, accordingly, denied the request for transfer of the disputed domain name. Because the panel found that Woods had no trademark rights in the name Charlie Axel Woods and that the domain name was not likely to cause confusion with the trademark TIGER WOODS, it was unnecessary to consider the second and third elements of the test.

The decision highlights the difficulties that celebrities have had in preventing third parties from registering their names as domain names. Unless the celebrity’s name is used as a trademark or service mark to indicate the source of products or services, it may be difficult to prevent a third party from registering the name as a domain name.

Susan Progoff and Jaime Orloff, Ropes & Gray LLP, New York