Should there be a special exception for business persons whose personal names are highjacked for Internet commerce? On their face, the WIPO Reports of 1999 (para. 167) and 2001 (para. 181 et. seq.) do not support such a view, but the question is suggested because a number of recent decisions have moved the discourse in that direction. The Panel in Thomas Pritzker, The Pritzker Organization, LLC v. Richard Brown, D2009-0911 (WIPO October 12, 2009) believes that the construction advocated in those decisions is heretical. He notes that Paragraph 167 recommended that the Policy apply only to trademarks and service marks. This consensus was further elaborated in the Second WIPO Report denying protection to personal names unless complainants could demonstrate that “the personal name served as a trademark or service mark, then the name could be protected against abusive registration under the UDRP.” Also WIPO Overview of WIPO Panel Views on Selected Question, paragraph 1.6: “Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.”
Eponymous business leaders qualify; non-eponymous leaders do not, thus for example R.E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, D2002-0251 (WIPO July 4, 2002) was denied protection. But this “consensus” is now being challenged by a new interpretation that extends protection to business leaders. The Panel in Pritzker identifies Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005) as the lead case, the opening salvo of the heresy, although Steven Rattner v. BuyThisDomanName (John Pepin), D2000-0402 (WIPO July 3, 2000) may also be cited in which the Complainant demonstrated that he was generally seen as the alter ego or driving force behind his numerous companies and businesses and that he used his name in connection with trade and commerce.
In the Rattner and Chung cases the complainant businessmen were found to have common law trademarks by demonstrating a stronger than usual narrative that placed them on an equal footing with the businesses they manage. This is evident in the cases that follow Chung, Soin International LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, D2007-0094 (WIPO March 7, 2007) and Kotak Mahindra Bank Limited v. Richard Brown, D2008-0243 (WIPO April 9, 2008). The Panel in Soin adopting the Chung approach noted that
Eventually, such cases come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce. In undertaking that exercise, it is useful to consider a number of guides, for they can be no more than that, that will tend to suggest one way or the other, whether such a nexus has been established and might over time help to establish the “pattern” of consistent authority that the panelist in the Asper Case lamented is presently absent.
Those factors justifying jurisdiction are succinctly enumerated in Chung. They include “the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company” and others. In other words, these non-eponymous leaders emerge from their narratives as having the same status as eponymous leaders except their companies do not adopt their leaders’ names.
It is too soon to see whether the Chung construction as viewed through the lens of the Thomas Pritzker Panel is a dead end, but if it is not it is another issue of which it can be said that the decision depends on which panelist is selected. Non eponymous business leaders will pray for the Chung panelist; respondents for the Thomas Pritzker panelist, thereby undermining predictability, the same problem in fact as the different constructions of paragraph 4(c)(iii) of the Policy as to the protection of noncommercial fair use and free speech.
