Hi! Thanks for such a very interesting question.
Before we start, please take note of the important disclaimer below.
That the answers provided here are general information and does not
replace the advice given by a legal professional. Please consult a
lawyer before proceeding with any action.
The law it seems isn?t very consistent on this yet. But unless you are
a celebrity or you use your name as part of a trademark on a product
or service mark for your business then it will be an uphill climb for
you.
The World Intellectual Property Organization (WIPO) provides a good
primer on the protection of personal names and also its use as a
domain name in certain circumstances.
GENERAL PROTECTION OF NAMES:
?The personal name is a difficult subject to treat. There is
considerable diversity around the world in the way in which it is
formulated and presented. These formulations and presentations (for
example, which name, family or given, comes first, or whether the name
consists of these two elements at all) are usually the result of the
historical and cultural traditions of particular societies. Many
sensitivities, including religious, political, historical, cultural
and psychological, are touched by the subject of personal names.?
?Personal names are rarely protected as such by the law. Their
protection is usually a part of a broader legal principle or policy of
which the misuse of personal names constitutes only one means of
violation. Other means of violation include misuse of a person?s
likeness, image or voice.?
?The status of the personal name as a potential asset may be secured
through the registration of a trademark (or service mark). Most
national laws, and the Agreement on Trade-Related Aspects of
Intellectual Property Rights (the TRIPS Agreement),[163] explicitly
recognize that personal names are eligible for registration as
trademarks. While personal names are eligible for registration as
trademarks, however, like any sign for which trademark registration is
sought, they must be distinctive in order to be valid trademarks.
Distinctiveness can be inherent, or can be acquired through use which
causes consumers to identify the name with a particular source of
goods or services.?
PERSONAL NAMES PROTECTION IF USE AS A DOMAIN NAME:
?As mentioned above, personal names may, in appropriate circumstances,
be registered as trademarks and, in practice, many are. The
protection of personal names as trademarks has provided a basis for
the application of the Uniform Domain Name Dispute Resolution Policy
(UDRP) to the protection of personal names against deliberate, bad
faith registration as domain names in the gTLDs.
?It is recalled that the UDRP provides that three conditions must be
satisfied in order to establish that a domain name registration is
abusive and that the complainant is entitled to relief:?
?(i) the domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has rights;?
?(ii) the registrant of the domain name has no rights or legitimate
interests in respect of the domain name; and?
?(iii) the domain name has been registered and is being used in bad faith.?
Please remember the three conditions mentioned above because they will
be the basis of further discussions.
?THE RECOGNITION OF RIGHTS AND THE USE OF NAMES
IN THE INTERNET DOMAIN NAME SYSTEM?
http://wipo2.wipo.int/process2/report/html/report.html
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Cases:
I mentioned earlier that unless you trademarked your name then it can
be protected if someone uses it as a domain name without your consent.
The next document also mentions that you can get a trademark if your
name has a special meaning attached to it like a particular good. (Ex.
Eric?s Orange Juice.)
?In general, under the U.S. trademark law, personal names require
proof of secondary meaning in order to be registered as trademarks.
The Lanham (Trademark) Act of 1946, as amended, provides that: ?No
trademark by which the goods of the applicant may be distinguished
from the goods of others shall be refused registration on the
principal register on account of its nature unless it... (c) consists
of or comprises a name, portrait, or signature identifying a
particular living individual except by his written consent...?.?
?Thus, a mark that consists of or comprises (whether consisting solely
of, or having incorporated in the mark) a name, portrait or signature
that identifies a particular living individual may only be registered
if the mark serves as an indicator of the source of goods or services
rather than as merely descriptive of the goods or services. Personal
names under the Federal trademark law can be analogized to descriptive
terms, terms that generally do not point to a single source for goods
or services and can only be registered and protected as trademarks
when the term(s) acquire secondary meaning.?
?REPORT TO CONGRESS: The Anticybersquatting Consumer Protection Act of 1999,
section 3006 concerning the abusive registration of domain names.?
http://www.uspto.gov/web/offices/dcom/olia/tmcybpiracy/repcongress.pdf
An illustration of such concept from these three cases involving the
same parties in their dispute for the use of the name ?foyle? in
particular domain names. The cases were decided by the WIPO. I also
said earlier that the legalities concerning the use of personal names
in domain names are still quite murky and such was evidenced by these
cases. In the first two cases, the complainant won while on the third
time, he lost.
?ADMINISTRATIVE PANEL DECISION: W. & G. Foyle Limited v. Foyle?s Books
Limited Case No. D2000-1544?
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1544.html
?ADMINISTRATIVE PANEL DECISION: W. & G. Foyle Limited v. Robert G. Foyle
Case No. D2000-1543?
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1543.html
?ADMINISTRATIVE PANEL DECISION: W. & G. Foyle Limited v. Robert G. Foyle
Case No. D2002-0039?
http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0039.html
If you are a celebrity meanwhile then even if you didn?t trademarked
your name it is deemed as automatically protected as can be seen from
these landmark cases for the actress Julia Roberts and for musician
Jimi Hendrix.
Julia Roberts:
?For the purposes of this case, the issue was whether -- when someone
hears the name "Julia Roberts" or, in this instance, logs onto a site
juliaroberts.com -- that person identifies that name or site with the
person of the actress and whether the use by the respondent of a
domain with that name would be likely to confuse the public into
believing that the actress was somehow related to the particular usage
of the name or this domain.?
?The administrative panel quickly decided that Julia Roberts possessed
the requisite secondary meaning in her name. The panel members found
that there was an identification in the minds of the public between
the actual name and the person of the actress. Thus, they concluded,
she possessed "trademark rights" even if she had no actual registered
mark.?
Jimi Hendrix:
?One of the issues the panel discussed was whether "jimihendrix.com"
was confusingly similar to "jimihendrix," the latter being the
estate's marks. The panel noted that the decisions about this issue do
not consider the top-level domain (".com," in this instance) but
merely the second-level domain (the "jimihendrix" portion) and in that
regard, the use of this second-level domain was identical to that of
both the registered and common law trademarks.?
?The panel concluded that the domain was registered and was being used
in "bad faith" and thus ordered it transferred to the estate.?
?Domain Name Disputes Over Celebrity Names?
http://www.gigalaw.com/articles/2000-all/hoffman-2000-09-all.html
If you want to see other cases of this nature that was decided by
WIPO, here is a list.
?Indicative List of WIPO Cases Involving Personal Names Registered as Domain Names?
http://wipo2.wipo.int/process2/report/html/annex6.html
The case number has no clickable links. One way to go about this is to
copy the case number and paste it on the search box in this link
(http://www.wipo.int/search/en/)
-------------------------------------
Settling the dispute:
In case you answered in the affirmative as regards to being a
celebrity or using your name for a business then the next articles
will provide you with an idea on how to proceed.
?On the battlefield between trademark owners and alleged
cybersquatters, one of the accepted rules of engagement in recent
years has been that most domain name disputes would be resolved
according to the Uniform Domain Name Dispute Resolution Policy (UDRP),
an administrative policy created by the Internet Corporation for
Assigned Names and Numbers (ICANN).?
??if unsuccessful trademark owners wanted to go further and start a
court case, either in conjunction with or after, a UDRP proceeding,
they could, either under the Anticybersquatting Consumer Protection
Act (ACPA) or under other trademark or unfair competition statutes and
court precedents. Some have chosen this dual-track course, but most
haven't.?
?The Relationship Between the Domain Dispute Policy and the Anticybersquatting Act?
http://www.gigalaw.com/articles/2002-all/hollander-2002-05-all.html
?Companies that do bring a court action must present legal arguments
on why a domain name registered to someone else should be cancelled or
transferred to an organization who wasn't fast enough to register the
name first. Historically, these arguments were based on trademark law
or dilution laws (which are discussed in more detail on the BitLaw
section on trademarks on the Internet). It was sometimes difficult to
present a strong case under the traditional principals of trademark
law, especially when the party seeking to obtain a domain name either
could not prove a likelihood of confusion (which is required under
trademark law) or was a famous individual who never technically
established trademark rights in their name.?
?In response to intense lobbying from trademark owners and famous
individuals, Congress passed the Anticybersquatting Consumer
Protection Act in November of 1999. This act made it easier for
individuals and companies to take over domain names that are
confusingly similar to their names or valid trademarks. To do so,
however, they must establish that the domain name holder acted in bad
faith.?
?The best alternative to pursuing a domain name dispute through the
courts is to take advantage of the domain name dispute policies that
have been developed by the organizations that assign domain names.
Disputes prior to December of 1999 were handled under the domain name
dispute policy created by NSI.
Under this much maligned policy, NSI created a procedure under which a
third-party can challenge the right of a domain name owner to use a
particular domain name. If the challenge were successful, the domain
name would be suspended. This policy only protected parties that had a
nationally registered trademark identical to another party's second
level domain name (i.e., Microsoft in "www.microsoft.com").?
?Domain Name Disputes?
http://www.bitlaw.com/internet/domain.html#disputes
Search terms used:
?domain name? disputes ?personal names? surnames
I hope these links would help you in your research. Before rating this
answer, please ask for a clarification if you have a question or if
you would need further information.
Thanks for visiting us.
Regards,
Easterangel-ga
Google Answers Researcher |
