Article: November 2013 Entertainment Litigation Update

Viacom Executive’s Name Not Protected as Trademark Under Web Domain Rules. On September 6, 2013, a World Intellectual Property Organization (“WIPO”) arbitrator denied Viacom President and CEO Philippe Dauman’s claim for infringement of unregistered trademark rights in his own name, against a company that had registered the website domain name “philippepierredauman.com.”

The respondent, a company called “Dinner Business,” registered the domain name and then contacted Viacom regarding the respondent’s prospective use of the name. The facts had many of the hallmarks of “cybersquatting,” a practice where someone registers a domain name with the intent to profit from the goodwill of some else’s trademark. Cybersquatting is a serious issue for many corporations owning trademarks.

Dauman brought a complaint before WIPO under the Uniform Domain-Name Dispute Resolution Policy (the “UDRP”), which is binding on all domain name registrars. Dauman argued that he holds common law rights in his name because of his fame in the business and entertainment world and, under U.S. trademark law, his name has acquired secondary meaning. He alleged that the respondent had not previously used the Dauman name and its actions showed that it was merely trying to take advantage of Dauman’s fame and goodwill for commercial gain.

The arbitrator acknowledged that Dauman was famous, recognizing that he has held many corporate directorships and philanthropic positions and has been a subject of hundreds of newspaper and magazine articles over many years, and that the respondent did not have any legitimate interest in the name. However, relying on the “consensus view” in the WIPO Panel Views on Selected UDRP Questions, the arbitrator concluded that a name “needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP.” The arbitrator reasoned that unlike an actor, performer or politician—“whose livelihood turns on personal recognition” —Dauman “does not allege use of his name as the identifier of any particular goods or services, merely that his name is well known in the business and entertainment world.” The arbitrator ruled that this was insufficient to establish common law trademark rights in the name under the UDRP (although Dauman may have claims under, inter alia, the Anticybersquatting Consumer Protection Act which expressly provides for protection of personal names).

The case is Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255.