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.

 

[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]

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

 

[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.

 

[mr-x]

Good decision. Bad faith registration and use.

 

[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.

 

[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.

 

[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

 

[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.

 

[bhartzer]

In this case, it looks like it was all about 'bad faith and use' of the domain. If they hadn't put up a site, it would have been less of an issue. There are probably a lot of "george pataki"s in the world.

It's extremely difficult to get a trademark on a personal name (just ask any IP attorney). The only one that I know of, however, is Billy Joel, and it's owned by William Joel. He's been able to get the TM since Billy Joel has been his "stage name".

 

[lock]

https://splc.org/how-to-respond-to-auto-generated-copyright-infringement-notices/
People also ask
What is a copyright infringement bot?
These bots indiscriminately generate infringement notices and send them to any website that hosts the copyrighted material, often demanding hundreds or thousands of dollars for each infringement. To many, these demands are intimidating and seem to come out of nowhere.

As a domainer i am all for domainers right of first in best dressed but there is also playing with fire.

 

[topdom]

Deserved to be lost because of impersonating (copying stuff from the old site.., if correct).
if "domain only": gray area.

 

[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.

 

[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.

 

[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.

 

[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?"

 

[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.

 

[lock]

I don't understand what do you want from me.
I expressed my opinion which exactly says that all these kinds of claims are nonsense.
The domain was registered by Nissan family, so the Nissan company has no rights to it.

Scenario. Nissan company tries to claim rights even though Nissan family registered it.
Scenario. Pataki family are claiming the domain could be used to represent them in a negative nature. Unless changed own name to fight it.
Scenario. Porn site uses exact persons name in a description gets a load of traffic then a lawsuit.
You don't need to only breach a trademark but follow the entire law there isn't one rule.

 

[frank-germany]

Every law can be stupid and nonsense.

that maybe right
but still it's the wrong approach

you will lose

 

[maya-zir]

Ask Mr. Nisan's relatives what a name is worth and TM through use.

A TM is worth zilch if not used.

Mr Nissan still owns his domain

 

[jhm]

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?

The name in question is a very specific name, and would be an extraordinary coincidence for you to just "like it", in the eyes of a court

I am no legal expert, so I do have my share of naivety on this. However, a case like this would be very conclusive. IMO

 

[mr-x]

Mr Nissan still owns his domain

Mr. Nissan passed away. His family owns the name, with limited rights. If that name had belonged to Bob Smith, Nisan Corp would now own it.