Protecting Your Domain Name: What do Bruce Springsteen and Venus and Serena Williams all Have in Common?
Posted on Jan 22, 2019 in Intellectual Property, Blog by Scott Austin
What do Bruce Springsteen and Venus and Serena Williams all have in common? In each case, while they were out making their fame, someone else was stealing it online. They are just 3 of the many cases of domain hijacking. In each case, they fought to protect their name under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) when it was abused online through a hijacked domain name.
The process can be surprisingly difficult, even for cases that a layperson would believe to be relatively simple. For instance, even though Rolling Stone magazine called Springsteen “the embodiment of rock & roll,” he could not protect his name from cybersquatting.
Serena, arguably the greatest female tennis player ever, faced similar risks, but was able to shut down venusandserenawilliams.com (and avoid paying the hijacker’s $1,000,000 asking price) only because her opponent was incompetent. Luckily for the Williams’ sisters, the opponent, who wasn’t a lawyer, represented herself, and presented a poor case with contradictory and false evidence.
Bruce Springsteen’s Case
Although the average American would probably identify the name ‘Bruce Springsteen’ with the performer and not anyone else (a typical test for trademark protection), the UDRP is a unique and sometimes misunderstood procedure. It is also subject to decision makers from all over the world who may not be as familiar with a U.S. celebrity, so the evidence must be fully presented with nothing left to chance.
As an example of how difficult these cases can be, in the Springsteen case, the majority of a three-member panel of UDRP arbitrators questioned whether his name was distinctive enough to merit common law trademark rights that would allow him to have protection.
Perhaps more surprising is that the actual reason he lost, however, was that, under the limited evidence he presented, the majority of the three judges thought he hadn’t proved that the alleged fan website did him any harm or would confuse fans.
According to the judges, Mr. Springsteen failed to prove that pointing brucespringsteen.com to one of the celebrity1000.com fan sites was “illegitimate use” because it didn’t convey the degree of harm that would have been recognized if it had instead pointed to links to pornography or other “regrettable material.” (The dissent pointed out that that wasn’t the standard, but Mr. Springsteen still lost.)
The Williams Sisters’ Case
After Venus Williams won her first Grand Slam tournament, and it was clear that her sister Serena was also destined for greatness, the sisters discovered that a “domain troll” had purchased venusandserenawilliams.com and was offering it for sale for $1,000,000.
In response, they filed a UDRP complaint.
Fortunately, the domain troll submitted no evidence that she intended to use the URL in conjunction with the putative sports consultancy referenced on the “under construction” website. Otherwise, had the sports consultancy website been constructed for legitimate purposes relative to their tennis careers, the sisters may well have faced similar challenges as did Bruce Springsteen.
There’s Only One Domain That’s You
Domain names are unique – there is only one in a given .com that exactly matches a legendary name. And that’s not all. The Internet Corporation for Assigned Names and Numbers (ICANN) has made protection more difficult through the release of hundreds of new dot-com substitutes, some in characters used in Arabic, Chinese, Russian and Hindi, as well as those controlled by over 165 countries (e.g., .ru for Russia).
Any athlete, musician, or actor, whose reputation has reached or is approaching the horizon of “celebrity,” should seek counsel to secure and protect what has taken a lifetime to distinguish: their name.
If you don’t exploit the value of your name, someone else will.Share
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