1 - 1 - THE ARBITRATION OF CELEBRITY DOMAIN NAME DISPUTES BY THE HONOURABLE NEIL BROWN QC 1 The Problem You would think that celebrities, being what they are, would be keen to register their names as domain names, set up their own websites and use the websites to promote themselves. Some do, but others seem to have been slow off the mark, only to find that someone else has got up earlier and in effect stolen their name, registered it as a domain name and used the domain name to set up an unauthorized website. Of course, it can be worse than that: the domain name is sometimes linked directly to a pornography website or used as a bait to attract internet users who are then switched to a website selling anything form Viagra to Pacific cruises 2. This, of course, can give the celebrity a bad name or even a worse name than he or she had previously. Or he or she could just be made a figure of fun: see for instance the unfortunate events recounted in David Pecker v. Mr. Ferris , WIPO Case No. D2006-1514. Mr. David Pecker, apart from having an interesting surname, is Chairman and CEO of American Media, Inc (AMI) the publisher of several prominent lifestyle magazines. One can readily understand Mr. Pecker’s concern about not only having his name used as domain name without his permission, but more particularly about its being linked to a pornography site and hence linked in the public mind with pornography itself. It actually became worse in Mr. Pecker’s case than for other 1 The Hon Neil Brown QC FCIArb is an international and domestic arbitrator and mediator who practices in Australia and London. He is on several panels for the arbitration of domain name disputes in Europe, the US, Asia and Australia, has arbitrated many disputes and has written and lectured on this subject. For more details visit www.neilbrownqc.com. 2 See, as a recent example of this practice, Nick Cannon v. Nikolay Zuyev , WIPO Case No. D2007-0870. 2 - 2 - celebrities, for he attracted a lot of media attention when he brought the claim to retrieve the name, but lost the case. There are other problems that arise in the case of celebrity domain names and they vary from case to case, depending on the celebrity, how the celebrity’s name came to used in a domain name, the use to which the domain name is being put and the various defences or excuses used by the party who registered the name to try to hold onto the name and defeat the celebrity’s claim. Let me give a few examples of the categories of problem that arise before we look in more detail at the issues that arise and how they have been resolved. Madonna, The Rolling Stones and Pele One of the early cases was Madonna’s Case , Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com ", WIPO Case No. D2000- 0847, where <madonna.com> 3 was registered by a cybersquatter and linked initially to a pornographic site, although it was later used to advance the Respondent, Mr. Parisi’s, dispute with Madonna. This is an early illustration of the problems facing celebrities and the unauthorised use of their names in domain names and websites: the celebrity does not have access to the domain name or the opportunity to use the domain name as he or she wants and, moreover, if the domain name is then linked to a pornography site, it undoubtedly disparages the celebrity’s name, even where, in Madonna’s Case itself, the respondent argued that Madonna did not have much of a name to disparage. However, Madonna was successful and had the domain name transferred to her. In Mick Jagger’s Case , Mick Jagger v. Denny Hammerton , NAF Case No: FA0007000095261 , the domain name <mickjagger.com> was also linked to a pornography site, enabling the panelist 4 to find in Mr. Jagger’s favour and say: 3 In this article, domain names are identified in this fashion as that is the way they are set out in decisions given by arbitrators or panelists under the Uniform Domain Name Dispute Resolution Policy (UDRP). 4 The arbitrators under the UDRP are known as panelists as they are drawn from a panel or list of arbitrators maintained by each of the providers of dispute resolution services under the UDRP. 3 - 3 - “…By typing in Complainant’s mark with the ".com" suffix, Internet users are taken to a pornographic site, which is in no way associated with Complainant. See Youtv, Inc. v. Alemdar , FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).” In other cases, it is not only the linking of the domain name to a pornography site that concerns the celebrity, but the fact that the domain name is being used for commercial purposes, or, to put it bluntly, to make money on which the celebrity is missing out. In a recent example of this 5, the Brazilian footballer Pele had had three domain names registered that incorporated his name without his permission. One of them, <peletv.com>, went to a website that opened up to a series of websites offering goods and services on football paraphernalia, treatment of football injuries, games, clothing and suchlike, but which then went on to promote Music Downloads, Insurance, Credit Cards, Online Dating and then onto some far more salacious offerings. Pele’s company, as well as being affronted by these indiscretions, was of course missing out on the click- thorough revenue being earned by the site whenever anyone perused it and successfully brought a claim to have the domain name transferred. These three examples are just that, examples of where a prominent name has been taken without authority, used as a domain name for a website associating the celebrity’s name with an activity which reflects adversely on the celebrity, namely pornography, or purely money making through advertising goods and services with the impression that the celebrity is endorsing them. The latter activity is particularly pernicious, as it is not just making the money that is at issue, but the fact that the celebrity is not making it. Sometimes, unauthorized celebrity domain names are linked to websites to which the celebrity simply objects because of the content of the unauthorized website, for example a particularly strident form of animal welfare or conservation. 5 Glory Establishment v. Futbolmasters Ltd , WIPO Case D2007-0439. 4 - 4 - As celebrities generally do not like their names being used in any of these ways and associated with goods, services or causes that they do not approve of, or being used at all in a way that the celebrity cannot control, the following questions arise, which go to the substance of the issue with which we are concerned. Do celebrities have a right to protection of their own name? What can they do to retrieve a domain name if they find it has been taken? Can they sue? Is there any other sort of claim they can bring? What do they have to prove? Will they win? The same questions arise with respect to other unauthorized websites that are simply offensive and expose less salubrious aspects of the celebrities that they would rather remained secret; other websites are just clingingly and embarrassingly sycophantic 6. Then again, although some websites may be sycophantic, the celebrity, despite the disclaimer on the website, is clearly happy to be promoted in the way he or she is presented on the website and does nothing to stop it. For example, you would have to be very naive to believe that www.algore.org , which generously extols the virtues of the former Vice President Gore, was anything other than an official site designed to promote him as a Presidential candidate. Presumably he agrees with it all, as similar promotions are contained on his official website, www.algore.com , although one wonders what he thinks of the low interest loans being promoted on www.algore.net . Other celebrity websites are fairly straightforward, like the English soccer player Wayne Rooney’s site at www.waynerooneyonline.com , which is laudatory without being sycophantic. Likewise, a site put up by one of David Beckham’s fans at www.davidbeckham.ws 7 seems to be tolerated, despite the alarming headline that was on it at one stage, namely: “Posh and Becks Pregnant /Get news & pics of the pregnancy first with our Free Gossip Toolbar!www.Starware.com/Gossip.” 6 See, as one on many examples, the eulogy in the unofficial website of the actor Gary Raymond at www.garyraymond.com describing him as “divinely gifted”. 7 ‘WS’ is the internet country code for Western Samoa and is said to be valuable because some viewers think the letters stand for Web Site. 5 - 5 - Sooner or later, however, money rears its ugly head and one comes across yet another case where a celebrity’s name has been used to make money by pushing one blandishment or another. Thus, in Morgan Freeman v. Mighty LLC , WIPO Case No. D2005-0263, Morgan Freeman’s name was used in a domain name and linked to an entertainment site, apparently not pornographic, but which sold viagra and a few other offerings. Still other celebrity domain names and the websites to which they lead, are what you might call normal deception, where the domain name incorporating the celebrity’s name diverts internet users to a straight out commercial website in the same area of interest as the celebrity whose name has been used, particularly music.