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famous name question

Located in Legal Discussion, started by vincew, Jun 21, 2016

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  1. vincew

    vincew Established Member

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    Let's say you owned a domain that was a variation of a very famous actor's name. For example, let's say you owned DionardoLeCaprio.com or DinardoLeoCaprio.com or DicaproLeonardio.com.

    Complicating matters, let's say there was an actor with very minor fame using one of these names. So, for example, let's say there's an actor named Dionardo LeCaprio. Let's say they have never been sued by Leonardo DiCaprio.

    Do you think you would be sued by Leonardo DiCaprio or possibly even Dionardo LeCaprio for owning DionardoLeCaprio.com?

    I'm considering registering such a name (it has nothing to do with Leonardo DiCaprio, I just used him as an example) and don't want to be sued.
     
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  2. archers

    archers Account Closed (Disallowed)

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    If the person registering the name has similar name with variation. He has complete right to register the name...

    Or say if there is another individual in the world with the name 'Leonardo DiCaprio', even this other person has legal right to register and own LeonardoDiCaprio.com and actor cannot claim any rights over it !

    This has been proven in many UDRPs involving personal names... as one of the UDRP condition under clause 4(c)(ii) as to 'legitimate interest' states:

    "(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;"

    This will prove legitimate interest in favor of the Domain Registrant !

    P.S. Above, I am assuming the other person has similar name, else it is calling for trouble and the actors has legal rights to pursue any legal action otherwise.
     
  3. vincew

    vincew Established Member

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    Thanks archers.

    I should've mentioned that my name is totally different than all the names I mentioned in my first post, I couldn't use that as a defense.

    I'm mostly wondering whether I could register a name similar to a famous person's name (but not the same name) and not have to defend it. I'd be registering the dotcom version of the less famous person's name and as far as I know the famous person has never sued the less famous person for using a variation of the famous person's name.
     
  4. archers

    archers Account Closed (Disallowed)

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    In an UDRP, for any one to show rights in a personal name... the following is the most relevant from the WIPO Overview 2.0 (http://www.wipo.int/amc/en/domains/search/overview2.0/#16)

    1.6 Can a complainant show UDRP-relevant rights in a personal name?

    Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.

    Relevant decisions:

    Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, <juliaroberts.com>, Transfer
    Jeanette Winterson v. Mark Hogarth
    , WIPO Case No. D2000-0235, <jeanettewinterson.com> inter alia, Transfer
    Dr. Michael Crichton v. In Stealth Mode
    , WIPO Case No. D2002-0874, <michael-crichton.com>, Transfer
    Tom Cruise v. Network Operations Center / Alberta Hot Rods
    , WIPO Case No. D2006-0560, <tomcruise.com>, Transfer
    Arthur Golden v. Galileo Asesores S.L.
    , WIPO Case No. D2006-1215, <arthurgolden.com> inter alia, Transfer
    Jim Carrey v. BWI Domains
    , WIPO Case No. D2009-0563, <jimcarrey.com>, Transfer
    Jay Leno v. Garrison Hintz,
    WIPO Case No. D2009-0569, <weeknightswithjayleno.com>, Transfer
    Geri Halliwell v. Rampe Purda/Privacy-Protect.org
    , WIPO Case No. D2010-1419, <gerihalliwell.com>, Transfer
    Beyoncé Knowles v. Sonny Ahuja
    , WIPO Case No. D2010-1431, <beyoncefragrance.com>, Transfer
     
  5. vincew

    vincew Established Member

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    Yes but would the plaintiffs have won if the domains were RoliaJuberts.com, CrichaelMichton.com, LayJeno.com, LeyJano.com, HeriGalliwell.com, HariGelliwell.com, HalliGeriwell.com, etc. if the defendants were named Robert Smith, Dennis Jones, Beth Johnson, etc and not Rolia Juberts, Lay Jeno, Hari Gelliwell, etc?
     
  6. archers

    archers Account Closed (Disallowed)

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    Yes Celebrity plaintiff would win, if the Celebrity name has been used in a trade or commerce. Like Jay Leno can always claim Domain Name, based upon the goodwill he has earned through jay Leno Show. And the right can be claimed over similar domain names as well, in line with examples you have provided.
     
  7. Kate

    Kate Domainosaurus Rex VIP ★★★★★★★★★★

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    Why register such a domain ?
     
  8. vincew

    vincew Established Member

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    Someone who isn't very famous (presumably they're making a little money and they do have a little notoriety) has a name that is a variation of someone really famous and rich. They absolutely used the really famous person's name to create their own name. They never registered "theirnamevariation.com", I was just considering registering it because it's really cool. I don't know, maybe they'd come after me if I regged it instead of the really famous person.

    By the way, and this is significant, the really famous person does not own "theirname.com" (their name spelled correctly with a dotcom at the end). They tried to WIPO it and lost! And the person who owns it does not have the same name, he didn't win because his name was the same as the celeb's!
     
  9. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    ...none of which answers the simple question of "why?"

    I mean, here's a great question - If I cut my ears off, do you know where can I find a pair of eyeglasses that stay on my head?
     
  10. briguy

    briguy Guru In Remission! VIP ★★★★★★★★★★

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    maybe think outside the box...get contacts?

    So trying to understand this thread..I
    cant register Lay Jeno even if it my cats name and I only post cats pics..

    Seriously..JayLenoFanSite (example) is acceptable?
     
  11. vincew

    vincew Established Member

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    Why? Like I said, "because it's really cool", it's arguably the best example of such a name. It's a frivolous, fun sort of thing not related to business all that much although it might make a few $$$ too. It's not like I'm going to put up a porn site on the domain or pretend I'm somebody I'm not, I would probably just use it for email - innocent stuff basically.

    As far as your second question is concerned, amazingly, you'd invent the world's first hair-extension eyewear.
     
  12. hxp

    hxp SuperDuperUltraRarePremiumHolographic Member VIP

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    I say reg it, come back and tell us the name, and maybe you'll get some better answers.

    Most registrars will allow a grace delete/refund within 24-72 hours of registering a name (make sure with your provider though!), so you can give it back if it turns out to be a terrible mistake...

    Overall, I don't think you have much to lose (or gain) by registering a name like that.

    Cheers! :)
     

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