In the domain of brands
Simon Halberstam from Sprecher Grier Halberstam discusses how brands and even celebrities should be looking to safe guard their proposition and even careers from squatters taking appropriate steps to secure their off and especially online presence
I don't want to give any readers evil ideas but what if one of you decided to register http://www.simonhalberstam.com (something which like the proverbial doctor who fails to get a check-up) I have failed to do. Worse still, you could post pictures of scantily clad men, women or animals on the site. This would probably not be good for my reputation but you never know.
Such situations are common but not always easy to resolve. What if as in several of the "harrypotter" type domain name cases, the person who has registered the domain name is a "fan" who just wants to use the site to tell the world how wonderful their hero is?
There have been a lot of disputes in this area as many celebrities have been slow to wake up to the importance or registering the domain name corresponding to their name and even if they have registered some domains, there are so many variants including .eu, .mobi, .com. co.uk and all the national suffixes that you cannot cover all the bases.
Some of the people who purport to be fans are of course charlatans whose real motive is profit either by generating advertising revenue from the site or from trying to persuade the celebrity to buy the name. These cyber squatters know very well that if they are not too greedy it will be less expensive and more certain for the celebrity to pay them off than to start court proceedings or Dispute Resolution Proceedings provided by the Domain Name Registry which governs the domain name in question. However, if you buy someone off, what is to stop them registering another domain name incorporating the same celebrity's name but with a different suffix? That is where lawyers come in. We would always advise celebrity clients that if they are minded to pay off a cyber squatter, the payment be subject not only to the transfer of the domain name but also to the cyber squatter giving legally enforceable undertakings not to re-offend.
I have been involved in many such celebrity cases and there are some very clever operators out there who know how to muddy the waters and make it unclear whether they are genuine fans or have some other legitimate ground for registering a domain name which corresponds to the name of a celebrity.
In one case where we were representing Bernard Matthews, the UK turkey product producer, a rather canny individual had changed his name by deed poll to "Bernard Matthews" before registering the .co.uk version of the name. He argued that he had been known by this name on account of his accent.
In another case, where we were acting on behalf of Holly Valance, a supposed fan diverted two sites incorporating her name to soft porn sites when we challenged his ownership of the name.
Ultimately, we were successful in both cases but it is not always a foregone conclusion that the celebrity will by the winner.
The decisions that emanate from the courts and the Dispute Resolution Proceedings are not always consistent, but there are some common threads which help to establish some of the key factors likely to determine whether the celebrity will succeed.
- If the "fan" is not generating any revenue from the website i.e. has no sponsored advertising or commercial links on the site, this is likely to count in favour of the fan
- If the domain name registered contains wording indicating that it is a fan site not the individual's autobiography site, that will also help the fan. For example, http://www.simonhalberstamisgreat.com would probably be ok whereas "simonhalberstam.com" would not be
- If the website prominently indicates that the site is not authorised by the celebrity; this will typically also count in the fan's favour.
It is always good practice for celebrities to register trademarks corresponding to their names and such registrations will typically be very helpful in such domain name cases.
An article on this topic would not be complete without some reference to "gripe sites"; sites where disgruntled individuals want to express their contempt for a particular person. The content on such sites may be libellous and that may well indicate bad faith on the part of the registrant but with free speech in mind, such sites are often viewed as legitimate if the domain name is unlikely to deceive potential visitors into thinking that it is a site officially endorsed by the celebrity or an autobiographical site. Hence, there are accepted naming conventions for such sites.
Whereas "simonhalbrerstamsucks.com" might well be ok for such a site, http://www.simonhalberstam.info or.com probably would not be.
Anyway, if you are famous or think you will be soon, I suggest you get registering before someone unscrupulous beats you to it.
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