legal First name / last name registrations risky, as GeorgePataki.com case proves

[Acroplex]

If you register or acquire domain names that match the first name / last name combination of people, living or dead, you are taking a big risk.

In particular, famous people with unique names can rely on common law rights to prove that they utilized their full name as a personal brand, even if they don't explicitly own a registered trademark.

In the case of the domain GeorgePataki.com, the ensuing UDRP reclaimed the asset on behalf of the Complainant, former NY governor George Pataki. The Respondent (ab)used the domain and passed off as the rightful owner, among other factors leading to the Complaint.

More details about the decision.

 

[Daniel Owens]

Yeah, that is really fried unfair but then again I guess they consider it kind of like squatting.

 

[jhm]

Hmm, interesting these cases with "human names". Thanks for the share

As far as I'm concerned...the names of humans is a grey area. With respect to A class celebrities, I could understand more. Take a hypothetical case: Someone that isn't as well known sues for their full name, but may have a thin chance of winning. Yet someone pretty well known (a former governor)...a fair chance of winning, so he takes it on. General reasoning: The well known guy has more to lose. What if the lesser known guy has lots of money...would that result in more to lose? Regardless of him not being a public figure. I can only assume it depends on a case by case basis. I don't have a leg to stand on, regarding my legal view

 

[Acroplex]

Every UDRP case is different and as I'm not a lawyer I simply attempt to analyze the findings. That being said, the risk of getting hit with a UDRP increases when the name/brand reflects a living (perhaps even deceased) person's identity. Abusing the domain for nefarious purposes increases the risk even more. If that were not the case we'd all be going through the White Pages and registering the .com

 

[Etim Abasiama]

So what if some other guy comes out with same FNLN maybe older(older means he has the name b4 him) will the former governor also relinquish the name?

It's called oppression in my language, no two ways about this. For instance, My name is Abas yet I don't have abas // com. Am I the only person bearing the name, hell NO.

The former governor wasn't and isn't the only person bearing the name so why is he the only one to file a law suit to claim the name?

I see no justification here at all..

Answer: Bcos he knows the corrupt system will get it for him instead of going to buy it.

#Corruption

 

[Etim Abasiama]

Hmm, interesting these cases with "human names". Thanks for the share

As far as I'm concerned...the names of humans is a grey area. With respect to A class celebrities, I could understand more. Take a hypothetical case: Someone that isn't as well known sues for their full name, but may have a thin chance of winning. Yet someone pretty well known (a former governor)...a fair chance of winning, so he takes it on. General reasoning: The well known guy has more to lose. What if the lesser known guy has lots of money...would that result in more to lose? Regardless of him not being a public figure. I can only assume it depends on a case by case basis. I don't have a leg to stand on, regarding my legal view

Bcos he was a former governor, no trade mark or whatsoever. Just bcos he was a former governor is enough trade mark already. Mtchwwwww

 

[Acroplex]

Yes, the former NY governor is the only George Pataki. And if your name is Etim Abasiama better grab the .com before some domain "investor" decides it's ok to squat on such personal brands.

 

[mr-x]

Good decision. Bad faith registration and use.

 

[mr-x]

Bcos he was a former governor, no trade mark or whatsoever. Just bcos he was a former governor is enough trade mark already. Mtchwwwww

From what I've been told, common law trademarks are created by use. When a trademark is registered, second most important question is the "first use date" .

of course, my opinion is worth what you paid for it.

 

[bmugford]

There is a difference between BobSmith.com and GeorgePataki.com.

One has thousands of potential end users. The other has one specific one, which was targeted.

BobSmith.com would exist without any specific person. GeorgePataki.com would not.

Brad

 

[bmugford]

In the case of the domain GeorgePataki.com, the ensuing UDRP reclaimed the asset on behalf of the Complainant, former NY governor George Pataki. The Respondent (ab)used the domain and passed off as the rightful owner, among other factors leading to the Complaint.

It boils down to this -

1.) The name was unique aka there is no legit reason to own it.

2.) It was targeting a well known person.

3.) It was being used in bad faith.

The decision is correct, but only applies to these set of circumstances.

Brad

 

[Acroplex]

I cannot argue on the legal aspect of the "worthiness" of each point, because every UDRP case is unique. Naturally, past decisions also weigh on how panelists deliver their decision, once these similarities are apparent.

The Respondent in this case took a big gamble: Picked a domain on the drop that not only matched a political figure's name, it was theirs to begin with. And then he made it look as if the domain was still theirs.

The case is important in showing how using one's personal brand and name commercially can establish common law rights, in my opinion. By registering a domain that matches a person's name you can't predict the impact their established common law rights will have in a UDRP. So this case isn't exactly narrow - it's just a perfectly defended case that should raise an alarm against such pickups/registrations.

 

[maya-zir]

so stupid..
what's the next? banning from using specific letters?
maybe I dreamt of naming myself George Pataki and created a blog on this name, so what?
maybe I feel like George Pataki, why some individuals can feel like the opposite sex and we have to respect them, but when I feel like George Pataki (for example), they say it is cybersquatting?

 

[Acroplex]

What exactly is stupid? The decision, or the guy who thought it's ok to benefit from another person's established brand? Pataki has common law trademark rights in his name as an author, speaker, consultant, and attorney. It's easy to "absorb."

It's the same reason that you should not be registering e.g. Microsoft domains: Some company called Microsoft has established a brand and name for itself.

I'm beginning to think domain investors need a crash course in basic UDRP matters once in a while.

 

[maya-zir]

What exactly is stupid? The decision, or the guy who thought it's ok to benefit from another person's established brand? Pataki has common law trademark rights in his name as an author, speaker, consultant, and attorney. It's easy to "absorb."

It's the same reason that you should not be registering e.g. Microsoft domains: Some company called Microsoft has established a brand and name for itself.

I'm beginning to think domain investors need a crash course in basic UDRP matters once in a while.

Domains are like ABC letters, you can reg whatever you want..
I don't see any problem..
You can't have any TM on your name..
But they can block the site if the content is against the exact person who are not the domain owner..
But the domain must be his property

 

[Acroplex]

Oh, what a revelation: Apparently you can have trademark rights in your name, particularly when it was used commercially. Just google "common law rights" if you don't want to believe me.

Law can be complex but as far as domain investing goes, the rules are simple: don't assume that a drop is safe to pick up. When in doubt, consult with an attorney.

 

[maya-zir]

Oh, what a revelation: Apparently you can have trademark rights in your name, particularly when it was used commercially. Just google "common law rights" if you don't want to believe me.

Law can be complex but as far as domain investing goes, the rules are simple: don't assume that a drop is safe to pick up. When in doubt, consult with an attorney.

there are a lot of stupid laws, no need to goggle them.
I expressed my own opinion, that domains are like ABC letters - maybe I like someone and reg his name, so what?

 

[Acroplex]

Go ahead and find out

Most domain investors don't want to waste time and money gambling on potential losses. There are rules in place, no matter how much we want to say it's a free for all, or a gold rush etc. It's not.

 

[maya-zir]

Oh, what a revelation: Apparently you can have trademark rights in your name, particularly when it was used commercially. Just google "common law rights" if you don't want to believe me.

Law can be complex but as far as domain investing goes, the rules are simple: don't assume that a drop is safe to pick up. When in doubt, consult with an attorney.

Btw, my name is TM, and I have no idea how would act Autodesk Maya if one day I decide to use my name + 3d related word.
Ok, this is a different case, but due to common sense, everyone can reg any domain, the problem must be only the website content, and the site can be blocked, that's all... But the domain is the property..

 

[maya-zir]

Go ahead and find out

Most domain investors don't want to waste time and money gambling on potential losses. There are rules in place, no matter how much we want to say it's a free for all, or a gold rush etc. It's not.

Already tried and sold.

 

[Acroplex]

Yes, everyone can register a domain - even if it involves a trademark or a common law mark. And just because you sold one such domain or many doesn't mean you should.

Most people I know would not be in violation of laws they are aware of, despite of their beliefs. In fact, knowingly infringing on a mark is the quickest way to lose a UDRP.

If, however, you want to brag about how you did it, I hear you, but there will be no congratulatory sentiment.

 

[maya-zir]

Yes, everyone can register a domain - even if it involves a trademark or a common law mark. And just because you sold one such domain or many doesn't mean you should.

Most people I know would not be in violation of laws they are aware of, despite of their beliefs. In fact, knowingly infringing on a mark is the quickest way to lose a UDRP.

If, however, you want to brag about how you did it, I hear you, but there will be no congratulatory sentiment.

I told the law is stupid, and any name can't be TM.
I never told reg and sell TM domains.
We talk about the law and not about the domaining tactics.

 

[Acroplex]

How is the law stupid if it's the law?

I didn't create it, simply report on it. It's a set of rules governing the protection of brands such as domains. And the process is outlined and designed over the years to resolve such issues for the party at loss. Why would it be otherwise?

Assuming you are in Canada, would you call the .CA Registry laws and regulations "stupid?"

 

[maya-zir]

Every law can be stupid and nonsense.

 

[Acroplex]

That's an opinion though, not an ability to counter the law.

And if I attempt to sidetrack the law and register a .CA domain all while I am not Canadian, the .CA Registry will soon take it away from me. So knowing the law in advance is an important part of the domain investing game.