Author(s): Stephanie Paul
Recently, actor Morgan Freeman won the rights to use the domain name www.morganfreeman.com, which was being illegally used by the company Mighty LLC. Freeman had applied last year to the US Patent and Trademark Office to trademark his name, when he found out that Mighty LLC was using his domain name “in bad faith to divert Internet traffic to a commercial search engine.” Ultimately, the arbitrators for the World Intellectual Property Organization (WIPO), the intellectual property arm of the United Nations, agreed with Freeman and determined that Freeman’s illustrious career made his name sufficiently recognizable in the entertainment and movie spheres.
In the always evolving electronic age, many famous personalities are using trademark law to protect the use of their name over the Internet. Trademark law, which prevents confusion between certain goods or services by indicating the source of the trademark, also allows someone to recover a domain name containing their trademark.
A trademark is a word, phrase, symbol or design, or a combination of them, that identifies and distinguishes the source of a trademark. Names of people and companies, business logos and symbols, and particular sounds can all be trademarked. Everything from Julia Roberts’ name, the Nike “swoosh,” and the NBC chimes are registered with the U.S. Patent and Trademark Office. Trademarks identify a product, service, person or thing from others in the same field, and trademark infringement has, and always will be, a serious offense.
What’s in a Name
Anyone can register a domain name for a few dollars, which has led to the abundance of “cybersquatters.” Cybersquatters are people who register domain names that are identical or similar to well-known marks, and then try to sell the domain to the mark owner for an inflated sum of money. This has been done to everyone from Julia Roberts and Bruce Springsteen to the organization PETA and the financial institution Paine Webber.
To protect trademark owners from cybersquatting, Congress passed and President Clinton signed into law the Anti-Cybersquatting Consumer Protection Act in November, 1999. Under the Act, a trademark owner can sue to collect damages and recover a domain name from a person who, with a bad faith intent to profit, registered a domain name that is identical or similar to a distinctive or famous trademark.
The Internet Corporation for Assigned Names and Numbers (ICANN) was also established around this time, which authorized a supervisor of domain name registrations, and adopted an on-line arbitration system for resolving domain name disputes.
Proving Cybersquatter Infringement
In order to have a domain name canceled or transferred to the trademark owner under law, the owner must prove that:
(1) the domain name is identical or confusingly similar to the trademark;
(2) the registrant has no right or legitimate interest in the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Several celebrities have been successful in getting their domain name from cybersquatters under ICANN, including Nicole Kidman, Julia Roberts and Venus and Serena Williams. Others have not been as successful, like Sting and Bruce Springsteen. However, registering a trademark to a name will provide added protection against cybersquatters trying to benefit financially from an already well-known domain name.
Should I Trademark My Name?
Trademark infringement existed before the Internet, but the ease of registering domain names has increased the challenges of trademark rights. Because anyone from high school students to multi-million dollar corporations can register domain names at little expense, it may be a good idea to register your name if you feel it could be threatened by a cybersquatter.
This is especially true for people whose names are also their profession, like actors, car dealers, even fashion designers. Designer Ralph Lauren has had his name trademarked since 1972 for added protection. Fashion designer Donna Karan found her trademark useful when she fell victim to a dispute over her name. A man unknown to her, Richard Wilson, had registered the domain name www.dkny.biz. Karan had already owned www.dkny.com and www.donnakaran.com, and filed suit with the WIPO stating Wilson registered the domain name in bad faith. The WIPO panel agreed with Karan, requiring the domain name to be transferred from Wilson to The Donna Karan Company.
How to Trademark a Name
Anyone whose name also identifies a business or profession should consider trademarking their actual name. If you are considering establishing a trademark for your name, you should first perform a trademark search with LegalZoom or by going to the U.S. Patent and Trademark Office’s (USPTO) Web site at www.uspto.gov , to determine if it is claimed as a mark by someone else. The USPTO reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration.
Please note, if you do not register your name you can still use a mark you have adopted to identify the source of your goods and/or services. Anytime you claim rights to a mark, you may use the “TM” (trademark) or “SM” (service mark) symbol, regardless of whether you filed an application with the USPTO. But, registering your mark will offer you added protection under Trademark Law, including giving you the ability to bring action in court concerning the mark, and obtaining registration in foreign countries. The mark ® can only be used after the mark is actually registered with the USPTO.
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