At the top of WIPO's list of the most cybersquatted trademarks for 2015 (issued on March 18, 2016) is "Hugo Boss" with 62 complaints. The report also reveals that the fashion industry led other commercial sectors with 10% of complainant activity. Not surprisingly, in this sector companies (couturiers extending their services to the general public) are branded with the personal names of their founders. Why any registrant would intentionally target well-known personal names in the fashion industry is a mystery because there's no future in it. In fact, complaints are never answered and always successful.
It should be obvious that the more distinctive the personal name, the likelier it will be found to be cybersquatting. But beyond the fashion industry there is a good bit of activity with personal names, given names, surnames, and stage names that have been lawfully used or monetized by the first to register. This is because names by which persons are identified are mostly generic unless they have become, like HUGO BOSS, distinctive in a trademark sense.
Complaints about personal names (or one or the other element of them) come up with some regularity. They either succeed because there's no possible defense to the registration; or fail because there's no possible claim. It's also possible for a Panel to get it wrong. I want to briefly look at two recent decisions, Victor Topa v. Whoisguard Protected / "Victor Topa", D2015-2209 (WIPO February 15, 2016) (<victortopa.com>) and Rentsch Partner AG v. Domain Hostmaster, Whois Privacy Services Pty Ltd., Customer ID 78529104178955 / Stanley Pace, D2015-2302 (WIPO March 8, 2016) (<rentsch.com>), but to preface my comments by looking back on how Panels assess personal names (or their elements) claimed as trademarks.
At the top of protected names are celebrities whose names are associated with an assortment of goods or services, from athletes, actors, and authors to entertainers and entrepreneurs. They fare better whether or not they have registered trademarks. The greater the celebrity, the easier for them to establish unregistered rights to their names and to succeed in UDRP proceedings. Celebrities with registered trademarks have no problem at all in passing the paragraph 4(a)(i) test. KHLOE KARDASHIAN is an example on par with HUGO BOSS, as in Khloe Kardashian Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, D2015-1113 (WIPO August 14, 2015) (<khloe kardashian.com>). But, Ms. Kardashian hasn't sued the registrant of for the simple reason that she is not the only "Khloe" in the world. Unregistered personal names of celebrities are discussed in an earlier essay, Common Law Right of Celebrities to their Names.
Law firms have also been successful in shutting down cybersquatters, Taylor Wessing LLP v. Peter Smith, D2015-0701 (WIPO May 28, 2015) (<taylorwessing.lawyer>) as have distinguished attorneys who offer legal services through law firms named after them, Adam Leitman Bailey v. Erwin Rohman, D2013-1090 (WIPO August 9, 2013) ("The Complainant submits that the law firm Adam Leitman Bailey, P.C. is also sufficiently associated with the Complainant's personal name."); also McKool Smith, P.C. v. Chelsea Davis, FA1311001529145 (Nat. Arb. Forum December 30, 2013) (<mckoolsmith.xxx>). But law firm partners do not qualify for standing — Gregg M. Mashberg v. Crystal Cox, D2011-0677 (WIPO June 30, 2011) — for the same reason that businessmen and women (even though they may be celebrities in their fields) are excluded, namely their names are not registrable as trademarks.
Among the excluded are complainants unable to marshal the necessary proof of cybersquatting even if they are able to establish trademark rights. A classic example of this class is Ramsey Mankarious v. Stanley Pace, D2015-1100 (WIPO August 11, 2015) in which Complainant having allowed his registration for to lapse discovered to his dismay that he had no actionable claim against a Respondent who inventories domain names composed of family surnames. Mankarious is more fully discussed in an earlier essay, here. Had Respondent registered <given name+surname.com> there may have been a different result (if complainant has standing), but limited to the surname these complainants have no remedy — unless of course the content of the website to which the domain name resolves implicates the registrant as a cybersquatter (again assuming complainant has standing).
Which brings me to Victor Topa and Rentsch Partner (same Respondent as in <mankarious.com> but different counsel). Both Victor Topa and Rentsch Partner allege infringement but Victor Topa has the more challenging problem in that he claims to have unregistered rights, while RENTSCH PARTNER is a registered mark. The first failed to persuade on the paragraph 4(a)(i) requirement (a questionable call, I think) and the second failed on the paragraph 4(a)(ii) requirement (although the Panel extended its assessment into paragraph 4(b)(iii) to cover all bases). For the reasons discussed below it's easier to understand why the law firm of Rentsch Partner failed.
Complainant in Rentsch Partner rests its case on the domain name being "identical to the characteristics of the founder's family name." This is true, and the Panel deemed it sufficient to satisfy the confusing similarity element of paragraph 4(a)(i) of the Policy — as opposed to the Panel in Mankarious that rejected Complainant's claim of trademark right because "[although he] has always provided his services in his capacity as an executive of various investment firms, none of [them] were named after him." However, passing the paragraph 4(a)(i) test only grants complainant standing to maintain the proceeding; it's not a predictor of success.
The Panel's assessment is largely based on the generic character of the surname and Respondent's known business model:
In this case, the Disputed Domain Name consists of a common German surname "Rentsch" and the pay-per-click links are related to generic job searching websites. Considering this against the background of the Respondent's apparent business in acquiring and using domain names for business purposes over the years, and that there is no evidence of the Respondent intentionally targeting the Complainant and/or its business in using the Disputed Domain Name (in particular, the Panel notes that the Complainant has provided little evidence of the reputation of its mark outside of Switzerland, and Rentsch is a common surname in Germany, Switzerland, and parts of Eastern Europe), the Panel considers the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Which, of course, means that Respondent does have rights or legitimate interests. Rentsch Partner would have been a different case if Respondent had registered <rentschpartner.com> or <rentsch.partners> (the approved new domain name extension is in the plural).
In contrast to the assessment in Rentsch Partner in which the Panel's both explained what the law is and accurately applied it the Panel's assessment in Victor Topa is less convincing and (in my view) wrongly decided by rejecting unregistered rights where it could also have been found that Complainant made it, but barely. It is true that the evidentiary requirements for proving unregistered trademarks are more demanding, but as high as the bar is, it is not so high as to deny standing when the totality of the circumstances are taken into account. These circumstances include the fact that "at the time of the rendering of this decision, they redirect to the websites 'www.victortopa.com' (in the English language) and 'www.victortopa.md' (in the Romanian language), the content of which pretends to have been launched by Complainant himself, but has not been authorized by the latter at all." Clearly, something nefarious is going on here; suggested but not pursued because of the rejection of standing.
Respondent did not appear so there was no explanation for its having registered domain names whose content makes specific reference to Complainant. Complainant alleged that he performed
consulting services in his personal name in the civil aviation business on a regular basis and that he, therefore, constantly uses his personal name for commercial and trade purposes. Complainant claims that he has been recognized under his personal name in the business and trade world for many years and that he enjoys a public reputation and is well known and respected as a professional consultant in the aviation industry, receiving requests for the provision of his services on a frequent basis.
However, the Panel found the evidence originally presented with the complaint and responses to a Rule 12 Order insufficient to establish the Complainant's credentials:
Ordinarily, individuals demonstrating unregistered trademark rights in their personal names would produce unsolicited third party documentation in form of press cuttings, (independent) invoices, etc. demonstrating third party awareness of their names as trademarks. Here, Complainant did not submit any such evidence of e.g., Complainant's appearance on TV or in any other mass media (newspapers, Internet, etc.) or of any advertisement undertaken in relation to Complainant's consulting services rendered under his personal name. Also, Complainant did not discuss e.g., Complainant's professional background or give any detailed information on his doing business apart from the presentation of the blank contractual framework thereto.
In drafting the complaint and responding to the Rule 12 Order there is no doubt that Complainant was inadequately represented by counsel in failing to marshal evidence supporting the narrative, but this inadequacy was compounded by the Panel's overly constrictive view as to what constitutes sufficient proof of an unregistered trademark. This is the kind of case that calls for the Panel to assess the second and third requirements because in this record, as already noted, there are factual circumstances that support abusive registration (a term that can be found in both the WIPO Final Report and the ICANN implementing document) which is a more inclusive term than cybersquatting.
Having said this, however, Victor Topa is a cautionary warning to complainants of unregistered personal names about UDRP's evidentiary requirements. If they believe they have a claim they cannot be half-hearted about the narrative or the supporting evidence because the inference from lack of evidence is that a party has none!
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP