The administrative panel of the WIPO Arbitration and Mediation Center has issued numerous decisions addressing cases in which famous authors or celebrities have sought to prevent other individuals or entities from using their names or derivatives, or their names within registered domain names, a practice generally known as cybersquatting. Usually, in cases where the panel has found that the name was registered in bad faith or where the panel determined that the registrant did not have a legitimate interest in the use of the domain name, it has ordered the registrant to transfer the domain name to the respective authors.
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Numerous cases have come before the WIPO administrative panel where individuals or other entities registered domain names using the names of famous authors or celebrities. In a number of such cases, the aggrieved parties applied to the panel to prevent the use of their names by the registrant. In a majority of these cases, the panel agreed with the claimants’ arguments and has ordered the transfer of the domain names. Authors or celebrities whose names have been used by cybersquatters include J.K. Rowling, Julian Barnes, Jeffrey Archer, Gene Edwards, Sylvia Browne, Louis de Bernieres, and Marian Keyes.
To prove that the use of the use of a particular domain name constitutes cybersquatting, the claimant must typically show that (1) they had legitimate trademark rights in their own name and that the allegedly infringing domain names were identical or confusingly similar to such a name, (2) that the registrant did not have legitimate rights to the use of the name, and (3) that the registrant registered and used the domain name in bad faith.
The primary motivation of most cybersquatters who register domain names that are identical or similar to the names of famous persons’ appears to have been to sell the domain names to either the authors or third parties for sums that vastly exceed the expenses that the registrants incurred in registering the domain names. In fact, a number of respondents appeared to have been “chronic cybersquatters,” who have registered dozens of authors’ and other celebrities’ names, attempting to capitalize on the sales of these domain names. In some instances, the cybersquatters have attempted to mask their true identities. The panel found the above factors to be constitutive of bad faith on behalf of the respondents.
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Staff Attorneys, IBLS Editorial Board