WIPO rules that Elvis impersonator can keep domain name
An Elvis Presley impersonator who uses the stage name Johnny Blaze will be able to keep the domain name 'JohnnyBlaze.com' that a marketer of sportswear says it should own. The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre held in AST Sportswear Inc v Steven R Hyken that a registrant of a domain name may have a legitimate right to the domain name even if he is not the trademark owner.
AST Sportswear, which had registered the trademark JOHNNY BLAZE for a brand of clothing, filed the action seeking transfer of the domain name.
WIPO applies the Uniform Domain Name Dispute Resolution Policy, which requires that in order to prevail in a cybersquatting dispute, the complainant must establish three elements:
- the domain name must be identical or confusingly similar to the complainant's trademark;
- the respondent must have no legitimate interest in the domain name; and
- the domain name must have been registered in bad faith.
The arbitrator found that AST Sportswear has rights in JONNY BLAZE since it is the registered owner of the mark in many jurisdictions, including the United States, Canada, Australia, Norway and Germany.
However, the decision focused primarily on the second element - whether Hyken has a legitimate interest in the name. The arbitrator found that Hyken does indeed have a legitimate interest because he appeared on television in 'The Gong Show' in both 1977 and 1988 under the stage name Johnny Blaze, and he registered the name with the American Federation of Television and Radio Artists.
Because Hyken was found to have a legitimate interest in the name, despite the fact that the domain name is not used for anything related to his stage name, the arbitrator did not need to consider the issue of bad faith.
Margo Miller, Covington & Burling, London
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