One of the lessons that we at FairWinds have seen people learn over and over again is that just because you might be one of the rich and famous, it doesn’t necessarily entitle you to your name as a domain name if someone else has scooped it before you. See our blog post on former U.S. Congressman Ron Paul’s UDRP complaint from May as an example.
Given the right set of circumstances, though, some celebrities can prevail as evidenced by supermodel Miranda Kerr’s recent UDRP success in recovering the domain names kerr-miranda.com, mirandakerr.com, mirandakerrconnection.com, and mirandakerrweb.com.
Her complaint was filed with the World Intellectual Property Organization (WIPO) against someone calling themselves orangesarecool.com (the Respondent).
This proved to be an interesting case. The Respondent put up a tough fight when pressed to concede the domain names, pulling out almost every trick in the book in making her case. Among her many arguments, she stated that she has rights and legitimate interests in the domain names because of their use as legitimate fan sites, that the complaint should be barred on the basis of laches given that Ms. Kerr waited eight years to file, the purpose of the ads on the sites is purely to offset maintenance and server costs, and even that the supermodel is her favorite celebrity.
While the Respondent’s complaints may have been compelling, they did not stand up before the WIPO Panel. One of Ms. Kerr’s strongest advantages, that distinguishes her case from that of other famous figures, is that she uses her name for commercial purposes as a model and has thus developed trademark rights to the name. “She does not fall into the category of a person with a famous name who does not actually use her name in connection with the business she is engaged in.”
With regard to the laches defense, the Panel states in its decision that this should not generally apply in UDRP cases. Furthermore, the Panel clarifies that the relevant date for consideration is not the date of first registration of the domain names, rather the date the domain names were acquired by the Respondent, which shortens the length of time from eight years to three and weakens her argument.
In considering whether the domain names were being used for legitimate fan sites, the Panel pointed out that prior to the Complaint, the websites were generating revenue from Pay-Per-Click and banner advertising, eliminating the Respondent’s case that she was making legitimate noncommercial or fair use of the domain names.
While this definitely wasn’t a cut and dried case, it is an excellent example of how a celebrity was able to use the UDRP to successfully recover domain names associated with her name. It will also be a huge asset to the Australian beauty as she continues to establish herself as a world famous model and fashion icon and builds an empire around her name and image.
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- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017