Domain Name Shame

Domain Name Win for the Home Team!!!

Complainant is one of the leading public research universities in the American Southwest and has used the name "Arizona Wildcats" since as early as 1915 in connection with the university and its athletic teams.  Complainant holds federal trademark registrations for the mark "Arizona Wildcats and, since as early as 1950, Complainant has used the "Arizona Wildcats" mark in identifying clothing items and other licensed merchandise.

The disputed domain name, www.arizonawildcats.com, was registered on March 4, 1999 and lead to a site displaying advertising from which web-users may "click through" to various sites, including, for example, NFL and NBA sports sites.

This is a classic case of cybersquatting. Respondent's use of the domain name was simply the use of a famous trade mark to divert traffic to itself for the purposes of raising click-through revenue.  Not surprisingly, the Panel ordered transfer of the disputed domain name to Complainant.  What is surprising is that Complainant has been using the mark for over 90 years yet never registered the domain itself (okay, okay…the Internet did not exist that far back but still….it's been around a long time since and Respondent jumped on it way back in 1999! Complainant, get in the game…).  Arizona Board of Regents on behalf of the University of Arizona v. DNS, Admin, Nevis Domains/Gee Whiz Domains Privacy Service, WIPO Case No. D2008-1543

Domain Name Auction

In this WIPO dispute, the Complainant is Margaret C. Whitman, the President and CEO of eBay, Inc. from March 1998 through March 2008.  Ms. Whitman remains on eBay's Board of Directors and is a stockholder.  The Complainant is described in the Complaint as an Internet pioneer and businessperson whose name is internationally famous and synonymous with the accomplishments of eBay.  The Respondent, Domains For Sale, registered the disputed domain names, www.megwhitmanforgovernor.com, www.megwhitman2010.com, www.meg2010.com, www.whitmanforgovernor.com and www.whitman2010.com, between January 28 and March 28, 2008, at which time there was wide speculation in California and elsewhere that the Complainant would run for election as Governor of California in 2010.

 The Complainant claims common law service mark rights in her personal name 'MEG WHITMAN' due to her fame and achievement, the international recognition and wide publicizing of her fame and achievement and further claims that her fame and achievement are inextricably connected to eBay's commercial success.  The Respondent did not respond to the Complaint. 

Merely having a "famous" name is not sufficient to establish common law trademark or service mark rights in the name.  In cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services.  The law of publicity gives well-known individuals the right to control commercial exploitation of their names and likenesses.  However, for common law trademark rights to exist, the personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source.  In this instance, the Panel was unable to conclude that the Complainant had common law service mark rights in her personal name because she did not provide services to the public under the name 'MEG WHITMAN' as a source-indicator to the segment of the public based on her performance as President and CEO of eBay.  Accordingly, the Panel concluded that the Complainant failed to establish common law service mark rights in her personal name and therefore denied the Complaint.

New Generic Top Level Domain Extensions

There are currently 21 generic top-level domain extensions ("gTLDs") (such as, .com, .net, .info, etc.). However, with over a billion current Internet users and an ever-increasing demand for websites, there exists a need for more domain names.  To address this, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has recently developed guidelines and procedures to allow companies to register new gTLDs.  Under this new program, any applicant can establish a new gTLD of any string up to 64 letters, consisting of anything from an abbreviation, to a trademark, or personal name.  ICANN is still soliciting public comment and objections in anticipation of developing an implementation plan for this new program.  So, applications are unlikely not open until the middle of 2009 at the earliest. 

Participation in the new gTLD process is not for everyone, however, as the costs of establishing and maintaining a new gTLD will likely be quite costly.  Registration of new gTLDs will consist of very high start up and participation expenses of approximately $500,000 in the first year alone, including an application evaluation fee of $185,000, a $75,000 ICANN annual fee and various other costs such as the cost of legal representation, fees to registry providers, and compliance and insurance costs.

The new program does have its advantages, as it will allow trademark owners and companies who use it to their advantage to more efficiently brand their products and open up an unlimited amount of new domain names for users.  However, the program will also be a cause for concern to many trademark owners who now must be extra cautious and vigilant in protecting their marks due to the possibility that third parties may seek to register other companies’ trademarks as gTLD domains.  In turn, however, similar to the domain name dispute process already in use, WIPO will administer a process for objecting to new gTLDs available to trademark owners who believe their rights are being infringed upon.