It is well established that an unregistered trademark is sufficient in UDRP proceedings and that it may be relied on where it is a personal name at issue.
But celebrities have often had trouble establishing a trademark, for it is not enough for this purpose that the celebrity is famous. It must also be shown that the name has been used to identify the goods or services offered by the celebrity and to distinguish between the celebrity’s goods and services and those of others.
The associated problem is that some celebrities and their advisors do not realise that this essential link with goods and services must be proved by evidence. Thus, celebrity cases sometimes crash, seen for example in David Pecker v. Tom Ferris (WIPO Case D2006-1514).
But they can also succeed and a recent example can now be added to the list of successful celebrity cases. The decision is Jay Leno v. Garrison Hintz, (WIPO Case No. D2009-0569).
The Respondent had registered the domain name <weeknightswithjayleno.com> which was clearly evocative of the night time TV show hosted by Jay Leno. But Leno, unlike many celebrities like Madonna, did not have a registered trademark in his own name and therefore had to establish an unregistered one.
This he succeeded in doing by adducing evidence that was described by the panellist as “highly probative evidence.” In view of that accolade, it is worthwhile looking at the evidence that got Mr Leno across the line.
The Complainant itself described the evidence it was relying on as:
“…success and fame as an comedian, entertainer, author and television personality, spanning a career of more than thirty-years, including critical and commercial success as the host of the highly popular The Tonight Show for over seventeen seasons, the JAY LENO mark has acquired enormous value and goodwill and has become recognized by the public and trade as distinguishing and identifying the Complainant’s services and products.”
The panelist summarised his findings on the evidence in the following way:
“…successful and well-known comedian, entertainer, and television personality … The Complainant perhaps is best known for his comedic career of more than thirty (30) years, and as the host of the popular late night television talk show The Tonight Show with Jay Leno for more than seventeen (17) years, from 1992 until May 2009. The Complainant began appearing in various television shows in the mid-1970s, and prior to becoming the host of The Tonight Show in 1992 he also served as the permanent guest host of the show starting in 1987, and made frequent appearances as a guest on the show. It has been announced that the Complainant will host a prime time talk show on NBC beginning in the fall of 2009, reportedly to be called The Jay Leno Show“.
There are two features of the evidence that stand out.
The first is that Jay Leno, as well as being an entertainer, which may not have been enough for these purposes, is also an author and consequently his name would have been used as the mark of the originator of the book or books. It was the link between the name and the commercial nature of writing and selling books that succeeded for Hillary Clinton in Hillary Rodham Clinton v Michele Dinoia aka SZK.com(NAF case no. FA0502000414641); <hillaryclinton.com> and Bill Clinton in William J. Clinton and The William J. Clinton Presidential Foundation v Web of Deception (NAF case no. FA0904001256123); <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> both of whom have written books.
Secondly, it is significant that Jay Leno’s name was part of the name of the TV show he hosted and the one he was mooted to host and that is the reason for the underlining above. In other words, the name of the TV product was virtually his alter ego, thus sufficiently identifying him with the goods and services offered in the form of the TV show.
Mr Leno had thus established his common law trademark and went on to show that the domain name was confusingly similar to it, that the Respondent had no right or legitimate interest in the domain name (there was no evidence to support his claim that he was intending to use the domain name for a fan site) and that it had been registered and used in bad faith (it was used to earn pay-per-click revenue).