22
Aug/02

Who Is The Real Slim Shady?


A doctrine which has populist appeal and found itself codified somewhat in the UDRP, but which has NOT been trademark case law since Justice Oliver Wendell Holmes blue-penciled it approximately 90 years ago, is “the sacred right to use one’s own name.”  If your name is Giorgio Armani, and you are not that Giorgio Armani, and you wish to sell clothing, while you may introduce yourself as Giorgio Armani to your friends and colleagues, but may not use GIORGIO ARMANI as a trademark.  And if your name is Martha Stewart (fill in topical joke here).

Someone named Kenneth Cole successfully defended a STOP proceeding brought by the Kenneth Cole, over the domain name kennethcole.biz.  Mr. Cole was not the original registrant and the panel accepted the argument that the regiIn this case, someone named Kenneth Cole, of West Virginia, defeated the KENNETH COLE strant obtained the name on behalf of Mr. Cole.

It is not clear to me why, except in the case where using the true registrant’s name would disclose confidential information (such as in the case of a new company name), why a domain name company would ever register a domain name in its own name, on behalf of a customer.

Also, as I read the case, I find myself re-calling a case I worked on for FISHER-PRICE, where a toy company went out and found a guy named FISHER and a guy named PRICE, arguing that it could then sell FISHER PRICE toys.  I am also reminded of a reported case where someone went out and found a guy named ALFRED DUNHILL.

Just free associating.

UPDATE:  Prof. Froomkin of icannwatch.org wrotes in to state that to the extent UDRP codifies anything, it codifies existing law, in that one can register one’s own name for various purposes (distinguishing “registration” from use as a trademark).  I’ll clarify: Use of own’s own name is not an absolute against trademark infringement, registration of one’s own name is a defense against cyber-squatting (apart from the trademark ramifications).

 

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