Voltaire once said, “What a heavy burden is a name that has become too famous.” For those whose personal names have ended up as unauthorized domain names, that sentiment is all too true. However, the law provides recourse for this type of injury.
The World Intellectual Property Office (“WIPO”), through its Uniform Dispute Resolution Policy (the “UDRP”) arbitration process, provides the necessary legal help. The UDRP handles domain name disputes between complainants (for example, Jim Carrey, Beyoncé Knowles, and Julia Roberts) and the registrants of the unauthorized domain names.
Here’s WIPO’s current consensus view on the protection of personal names appropriated as domain names: “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.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Para 1.6, available at http://www.wipo.int/amc/en/domains/search/overview/
The most important point to keep in mind is that “The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP.” Id. For more information on the UDRP process, and relevant decisions, please go to: http://www.wipo.int/amc/en/domains/ or contact a MLG attorney.