Does Average Jane Ever Have a Claim to Her Domain Name?

By August 25, 2014Internet Law, Trademark

Have you ever entertained registering a domain name containing your personal name, maybe to market your trade or hobby or to post personal information for your family and friends, only to find that someone else has snatched up the name? Hey, that’s your name! Can you get it back?

Your first option is to make like a celebrity. Yet another celeb, this time Jennifer Lopez, has won the rights to two domain names containing her name. On March 24, 2009, a panelist for the WIPO Arbitration and Mediation Center ruled that the domain names and must be transferred to the famous actress and singer. The registrant of the domain names argued he was making a legitimate noncommercial use of the domain names as addresses to a Jennifer Lopez fan site. The panelist disagreed, finding that the registrant used the domain names in bad faith to attract Internet users to his website to generate pay-per-click advertising revenues. (See a copy of the decision here.)

Someone like Lopez, as a famous person with a federally registered trademark in her name, has rights to her domain name under the more well known portion of the Anticybersquatting Consumer Protection Act — that located at 15 U.S.C. § 1525(d). That section prohibits the bad-faith use or registration of a domain name containing someone else’s personal name if the name is protectable as a trademark. A personal name is only protectable as a trademark if it is used to identify and distinguish goods and services of the individual.

“So what?” you say. “I’m no Jennifer Lopez, even if I do sound rather like her when I sing in the shower.”

If you haven’t achieved Lopez’s level of fame, you still can go the route of proving that you have a registered trademark in your name or that your name is protectable as a trademark. A locally known New York politician made her case recently based on using her name in association with her professional and public services for more than seven years. (See a copy of the decision here.)

Even without trademark protection, you may have another avenue by which to assert rights to your domain name, albeit a narrow one. You’ll find this avenue under a different and rarely cited section of the ACPA — a section originally located at 15 U.S.C. § 1129 and now, to confuse matters even more, tucked away in a different part of the U.S. Code at 15 U.S.C. § 8131.

You can file a lawsuit under that section against any person who 1) registers a domain name that consists of your name, if you’re another living person (which I assume you are if you’re reading this), 2) without your consent, and — this is the kicker — 3) with the specific intent to profit from the name by selling it to you or anyone else. A court in such instance may order that the domain-name registration be transferred or cancelled and may award costs and attorneys’ fees to the prevailing party. Keep in mind that your sole avenue for relief under this section is in a court of law. If you have trademark protection in your name, you can seek a quicker resolution in a non-court arbitration proceeding under ICANN’s Uniform Domain Name Dispute Resolution Policy.

A final option for getting your hands on your coveted personal domain name, of course, is to get out your checkbook. You can submit an offer to buy the name from the registrant through a domain-name registrar’s website. Your luck depends on whether the registrant is willing to part with the name.