What's in a name?

A number of recent cases have highlighted the laws surrounding cybersquatting.

Dawn Osborne examines the possibility that these might lead to a change in the law

High-profile attempts by celebrities such as actress Julia Roberts to reclaim their names from cybersquatters have pushed the Internet Corporation for Assigned Names and Numbers (ICANN) procedure into the headlines once more.'Cybersquatting' is the name given to the practice of registering well-known names as Internet domain names.

The intention may be to sell them at a profit later, or to divert surfers to the cybersquatter's ownWeb site.The press has suggested that the ICANN procedure is being used to create a new personality right and that in the UK this is a radical step forward.

To determine whether this is happening, it is necessary to look at the ICANN decisions that deal with the names of individuals without registered trade marks against the background of existing UK law.Julia Roberts recently successfully reclaimed her name in the dot-com world from an individual from New Jersey, Russell Boyd.

Mr Boyd had registered more than 50 domain names, including other famous names such as 'alpacino.com'.While Mr Boyd admitted that he selected Ms Roberts' name because of her fame, he contested whether she had common law rights in her name.

He contended that he had legitimate rights because of his registration and use of the domain name, and due to his genuine interest in the actress.However, initially the site featured a picture of another woman, Sari Locker, and did not have any content relevance to Ms Roberts until the dispute arose.

The site had also been advertised on the on-line auction site, eBbay.comThe panel had no problem deciding that a trade mark registration was not necessary and that 'Julia Roberts' had sufficient secondary meaning to confer common law trade mark rights under US law.

It said Mr Boyd had not shown a sufficient legitimate interest to own the name and that his registration of many other famous names showed a pattern of such cybersquatting.Taking into account the attempt to sell the name over the Internet by auction, the panel found that the name had been registered and used in bad faith.

An order was made that the name should be transferred back to Julia Roberts.In a similar case, this time in the UK, the novelist Jeanette Winterson succeeded in claiming back her name that had been registered as a .com, .org and .net domain.

The respondent was an individual, Mark Hogarth, a research fellow at Cambridge University.Mr Hogarth had registered the names of about 130 other authors as such domains.

He said his intention was to develop Web sites devoted to the authors with reviews, biographies, details of signings and forthcoming works, and links to booksellers on the Internet.

He said it would be clear that these sites were unofficial.

Mr Hogarth admitted that he had written to about ten authors trying to sell names, but said it was in order to raise capital to get his venture off the ground.

In a telephone conversation with Ms Winterson, Mr Hogarth was alleged to have said he had registered the names to make money, for example by receipt of a share of profits made by selling books through the site.

He had offered to return the .org and .net addresses at cost price, but not the .com address.The panel referred to existing English authorities on cybersquatting and passing off by appropriation of names.

It was noted that in the One in a Million case, the Court of Appeal had held that it could be passing off to register a domain name if members of the public would be confused, when consulting the relevant 'who is' register, into believing that the registrant of the domain name must be associated with the owner of intellectual property rights in the name.Reference was also made to the Glaxo Wellcome case, which involved registration of the name 'Glaxo Wellcome' as a UK company name by an individual unconnected with the merger of the two well-known pharmaceutical companies.The Glaxo Wellcome case is authority for the proposition that in cases of dishonest misappropriation of names in circumstances of extortion, the English courts will use intellectual property rights to assist the true owner of the name, even if the defendant has not been using the wrongly acquired registration in trade.The panel went on to note the historical Uncle Mac, Kojak, Wombles and Abba cases.

In all of these old authorities, the owners of the names had been unable to prevent merchandising of their names on the grounds that they did not trade in the same field as their opponent.

For example, the producers of the television show Kojak did not make his trademark lollipops and the pop group Abba did not make or license clothing.Such decisions have been criticised by rights owners as failing to recognise the realities of the character-merchandising industry and, accordingly, as being out of step with modern practice.

Nevertheless, the panel did not attempt to criticise the reasoning in these authorities, simply stating that passing off cases turned on their facts.

Instead the panel pointed out that it was not in issue in an ICANN dispute whether passing off had occurred, but what was relevant was whether or not Jeanette Winterson owned unregistered trade mark rights in her name (presumably in her field of activity).

It is to be noted that in this case, the respondent did intend to use the name in the field of publishing and therefore to trade in the same field as Ms Winterson.The panel also discussed the recent Elvis case in which the High Court held that the marks 'Elvis' and 'Elvis Presley' could not be registered on the grounds of lack of distinctiveness.

Mr Justice Laddie thought that members of the public would not see the marks as indications of origin, but simply as decorative or fan club type use.

In its analysis of the case, the panel noted that whether the mark was registrable as a trade mark in the UK was irrelevant to whether common law rights existed.The panel thought that the pattern of registration of 130 names and the expressed intention to sell or auction some of them indicated bad faith, and all three Jeanette Winterson addresses were transferred back to the author.Despite press reports to the contrary, the ICANN decisions are unlikely to change the principles of UK law in this area.

It is too early to tell, however, whether the publicity may affect the attitudes of courts when applying existing principles.The decisions may help to get the message over that character merchandising is now big business for celebrities, who are commonly involved in arrangements to license their names in return for licensing royalties.

Some individuals, such as model Cindy Crawford, reportedly make more money from licensing than they do from their perceived core activity.Having said that, there is nothing in the historical decisions such as Elvis, Kojak or Abba which suggests that famous individuals genuinely using their name in relation to certain goods cannot prevent others doing exactly the same thing.

The reality is that in the two ICANN cases discussed above, both domain name registrants registered the domain names concerned with the specific core field of activity of the famous individuals in question in mind.

From this perspective, the decisions are unremarkable.It would have been interesting to consider what would have happened if, say, Mr Boyd had registered juliaroberts.com to sell clocks or something else in a field which would not necessarily be associated with the actress.

It is likely that in the absence of some fairly convincing evidence of good faith - such as the existence of another individual called Julia Roberts who started a business 40 years ago - a respondent may well lose on the grounds that his reason for registration and use of the name stretches credibility.This inevitably gives complainants a practical advantage, and from this point of view, the two new ICANN decisions will be welcome from such celebrities as rock stars Tina Turner and Jethro Tull - as well as the estates of dead celebrities such as Jimi Hendrix - who have disputes pending under the ICANN procedure.

On the other hand, since the Blair baby has yet to cut any path in this world, the decisions are unlikely to help him against the registrant of 'leoblair.com'.As far as the UK legal authorities go, the Kojak, Abba, Wombles and Uncle Mac decisions are all long in the tooth.

The recent UK decisions involving the non-registrability of Elvis and the failure of the Spice Girls to prevent an unauthorised sticker album on the grounds of passing-off looked grim from the famous individual's point of view.Undoubtedly, nightclub boss Peter Stringfellow would still be unable to stop the similarly named potato chips had the dispute from the 1980s arisen now (unless there was a positive misrepresentation that he had licensed his name in support).

Similarly, the Wombles' failure in the 1970s to prevent use of their name on rubbish skips, and the radio presenter Uncle Mac's failure in the 1940s to prevent a breakfast cereal being named after him would be unlikely to be decided differently today.However, in a good case where the famous individual has genuinely been using his or her name in relation to goods, for example Naomi Campbell for perfume, UK courts would have little difficulty in holding that a third-party perfume similarly named would be restrainable in passing off proceedings.So has the law changed? The answer has to be no, for the present.

However, looking to the future, the overall effect on attitudes cannot yet be measured.

As the Internet is increasingly becoming one single channel of communication to consumers, change cannot be ruled out.

The difficulty in identifying official Web sites in an environment where respectability is easily feigned, may, in time, lead to increased legal protection in these circumstances, which may trickle over to traditional channels of trade.

Dawn Osborne is a partner at London law firm Willoughby & Partners, and an executive at intellectual property consultants Rouse & Co