Trademark Law

Our domain name attorneys often receive questions from clients about personal name protection in cyberspace. The Wikipedia definition of 'personal name' states "A personal name is the proper name identifying an individual person. It is nearly universal for a human person to have a name." And yes, personal names are specifically protected from cybersquatting under the Anti-Cybersquatting Consumer Protection Act (ACPA).

Salle v. Meadows, 2007 U.S. Dist. LEXIS 92343 (UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA, ORLANDO DIVISION).  Domain registrant attempted to sell a domain subject to Plaintiff's trademark for an inflated price.  The Court held that that inflating a domain name price in an attempt to sell it to the person whose name was registered will not defeat a bad faith argument.
 
This case arose under the Anti-Cybersquatting provisions of the Lanham Act, specifically 15 U.S.C. §§ 1125 (d) and 1129(1)(A). First, Plaintiff sought relief under, 15 U.S.C. § 1129, which states that:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

Defendant admitted that he purchased the domain name www.BrianSalle.com for less than $ 10.00 and attempted to sell it to Plaintiff for $ 9,500. However, Defendant argued that he had no intent to profit when he registered the domain name, because he merely attempted to recover money that he was owed by Plaintiff. Plaintiff argued that this distinction is irrelevant, particularly because the debt alleged by Defendant is actually owed by a corporate entity, not Plaintiff.

While the issue of whether Plaintiff actually owed Defendant $ 9,500 was in dispute, the debt issue was not material because cyber-extortion is not a permissible way to recover a debt. Therefore, this Court found that Plaintiff was entitled to summary judgment in his favor with regard to his claim under 15 U.S.C. § 1129.

Plaintiff also sought relief under 15 U.S.C. § 1125(d), the general Lanham Act provision, which states that:

    A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person -

    (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

    (ii) registers, traffics in, or uses a domain name that -

    (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

    (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

    (III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code. 15 U.S.C. § 1125(d)(1)(A).

The parties disputed the meaning of the statement "a personal name which is protected as a mark under this section". Defendant argued that this is a restrictive clause, indicating that § 1125(d) applies only to personal names that have trademark protection under the Lanham Act, while Plaintiff argued that this is an unrestrictive clause, indicating that all personal names are protected as trademarks under this section. This Court rejected the "all personal names" argument by plaintiff', ruling that trademark status was critical to success.

Because Plaintiff failed to establish that his name was worthy of trademark protection (ie sufficiently famous) summary judgment was denied on the Lanham Act trademark claims.  Thus, plaintiff was granted summary judgment on his ACPA claims and had summary judgment entered against him on the Lanham Act claims.