As Long As It Can Identify You in Trade or Commerce.
Karen Finerman v Ben Johnston / Bookclout
NAF Case: February 12, 2015
Claim Number: FA 1412001596768
Two decisions concerning the entrepreneur Karen Finerman have raised again the question: is it possible for a famous person to have common law trademark rights in their name? Previous decisions decided under the Policy would suggest that yes, if a celebrity has acquired such a reputation in his or her name they may develop sufficient secondary association that a common law trademark can arise (Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000).
So which ‘celebrities’ will be deemed adequately famous enough for the names to be given protection under the UDRP? In light of the first Karen Finerman decision, it may not matter how many gossip magazines your photo is in, or how many A-list parties you’re invited to. Rather, establishing a common law trademark may come down to whether your name is used in trade or commerce to identify goods or service. That was the question the panel grappled with in both Karen Finerman cases. The answers were different in each case. First, we look at the first decision. This claim was filed on January 6, 2015.
Disputed Domain Name
The Complainant, Karen Finerman, is an American businesswoman and television personality. Founder of a successful New York based hedge fund, she sits on a variety of boards and published her first book, Finerman’s Rules: Secrets I’d Only Tell My Daughters About Business and Life, in June 2013.
The Respondent did not file a submission in this proceeding.
Paragraph 4(a)(i) – Trademark rights / Identical or Confusingly Similar
There was no doubt the disputed domain name was identical to the Complainant’s name. The next step required the Panellist to determine whether Ms. Finerman held trademark rights in her name. Because she had not registered her name as a trademark, Ms Finerman was relying on the Panellist finding that a common law trademark had arisen through use of the name in commerce.
In turning to the WIPO Overview for guidance, which states that while unregistered personal names may establish trademark rights, the name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish a common law trademark. The evidence tendered by the Complainant in the first case did not satisfy this requirement.
In attempting to prove that her name had acquired a secondary meaning, Ms. Finerman submitted articles containing biographical information from major publications such as Forbes, The Guardian, Wall Street Journal & Yahoo Finance. The Complainant also provided book reviews of her recently published works. However, this evidence was insufficient to prove a common law trademark as it went to the Complainant’s professional life and experience. In the eyes of the sole Panellist, this did not go far enough to prove the name had become a distinctive identifier associated with the Complainant or its goods or services.
Thus, Ms. Finerman was unsuccessful on this element. The Panel did not go on to consider the next two elements of the policy as it was clear the Complainant could not succeed.
Needing A Unique Trade Identifier In Certain Goods or Services
What the Complainant was required to show was evidence she used the name KAREN FINERMAN in commerce as a trademark. An example provided by the Panellist referred to the Complainant’s investment company performing business under its own name, and would therefore likely have attained common law trademark status. The Panellist, however, held that Ms. Finerman’s submission related solely to descriptive, biographical information.
Some might say that it would be reasonable to suggest the Complainant had already shown evidence that she has used her name in providing goods or services in commerce. A published author, it is arguable that by having her name associated with her book, Ms. Finerman’s name had acted as an identifier of the book. Sales of the book would therefore likely constitute the sale of goods of services. That, however, was not the result and Ms Finerman was unsuccessful in her claim.
The first Finerman decision, just discussed, naturally makes us cast our minds all the way back to 2005 to the UDRP case involving former First Lady Hilary Clinton, the then New York Senator, who was successful in establishing that she had an unregistered trademark in her own name on the basis, not of her being a public figure engaged in politics, but because she was a best-selling author (Hillary Rodham Clinton v. Michelle Dinoia a/k/a SZK.com, NAF Case No.: FA0414641 (NAF March 18, 2005). Although the Complainant in the present case could not claim the same public profile as Ms. Clinton, indeed almost nobody could, the Clinton decision did not turn on the numerous activities Mrs. Clinton performed in the public eye. Rather, it was a question of whether she had engaged in commerce or trade using her name and it was held that she had.
The Hillary Clinton Case was not referred to in the Karen Finerman decision and it will be interesting to see how the two cases are reconciled if and when this issue arises for consideration in the future. But see below, for that is not the end of the story.
The decision in the first Karen Finerman Case was given on February 2, 2015. Only 14 days later, on February 26, 2015, Ms Finerman filed another UDRP Complaint, also with the National Arbitration Forum (Claim Number: FA1502001606620) against the same respondent and for the same domain name, but with different attorneys acting for her. This time, she requested a three person tribunal as she was entitled to do and the decision is that of the three person panel. The Respondent was unrepresented in this proceeding and had not been represented in the first case. The decision in this, the second Karen Finerman case, was given on April 7, 2015.The decision did not mention the issue of the refiling of the Complaint, i.e. whether Ms Finerman was able to bring a new case so soon after her first case had been decided and rejected. The second panel of three had no difficulty in finding that Ms Finerman had established a common law or unregistered trademark. On that issue it said:
”In this case, Complainant has presented evidence that her name, KAREN FINERMAN, has achieved widespread recognition in connection with financial, charitable and other services, such that KAREN FINERMAN has obtained secondary meaning as identifying Complainant as the source of the services she offers.”
Ms Finerman had thus established, in the second case, the first of the three elements required to be proved under the UDRP, i.e. whether the Complainant had established a trademark, in this case a common law trademark. The Panel went on to decide in her favour on the other two elements and Ms Finerman was able to recover the domain name which she did by the order made by the Panel.
If nothing else, the decisions highlight in a dramatic way the importance of producing evidence to establish each of the three elements under the UDRP.
Complainants should also not assume that if they lose they will always be able bring a new case, s Ms Finerman was able to do. The issue of whether a complainant may bring a new case, or refile, as it is usually referred to, is often argued and sometimes decided against the complainant. So it is best to collect all of the available evidence and use it the first time around.
For further discussion of the arbitration of celebrity domain name disputes, see the article The Arbitration of Celebrity Domain Name Disputes in the International Trade and Business Law Review, Vol X111, 2010, by The Hon. Neil Brown QC.
NOTE: Research for this article was carried out by Jacob Bayley, but the opinions expressed are those of the Editor.