Playing off a joke made by Gilbert Gottfried during the comedic roast of Bob Saget that recently resurfaced in the Fark forums, Internet user Isaac Eiland-Hall registered the domain name glennbeckrapedandmurderedayounggirlin1990.com. The Web site was set up as a parody meant to criticize television news host Glenn Beck’s interviewing and reporting tactics. At the bottom of the site is a disclaimer that reads, “Notice: This site is parody/satire. We assume Glenn Beck did not rape and murder a young girl in 1990, although we haven’t yet seen proof that he didn’t. But we think Glenn Beck definitely uses tactics like this to spread lies and misinformation.”
Days after Eiland-Hall had registered the domain Beck took action, filing an administrative complaint with the World Intellectual Property Organization (WIPO). The complaint claimed that the site was improperly using a trademark and the domain name was registered and being used in bad faith. Eiland-Hall’s lawyer responded that because the site is a legitimate criticism site, his client has legitimate rights to the domain name.
Beck’s complaint does not actually prove that he owns any trademark rights to his name and the response to Beck’s complaint notes that, unlike a trademark that is actually being used by its owner, an intent-to-use trademark application does not create any rights in the mark until it is fully registered (and the owner must prove actual use in order for it to register). However, UDRP allows alternatives to proving trademark registration. In a recent decision involving ashleyjudd.com, the panel found that it is “well-established that where an actor has a sufficient reputation for her professional work under her name or stage name, that name is a mark in which she has rights for the purpose of the UDRP.”
This qualification of reputation allowed the panel to find that the domain name ashleyjudd.com is confusingly similar to the famous persona of Ashley Judd. The difference here is that ashleyjudd.com is a domain solely comprised of the actress’s name, whereas the domain containing Beck’s name may not be considered sufficiently confusingly similar to grant him rights to the name.
It will be interesting to see the outcome of Beck’s complaint—the UDRP exists primarily to deal with cybersquatting, not matters of defamation or libel, so WIPO is an unusual forum for this type of domain dispute.
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