Recent Case Notes & Commentary

Proof of Unregistered Trademark can be Plain Sailing

It is particularly difficult to win these cases when the Complainant is a business person, for the business in question is likely to be a company rather than the owner or the CEO and as hard as the individual complainant argues that he or she is, in effect, trading on the personal name, panels often find that the name is not being used in commerce or with a secondary meaning that gives it the cachet of an unregistered trademark.


In the case of sporting identities who are individual performers, panels can and do find that the name is so intricately associated with the commercial side of the sport that the individual has a common law trademark in his or her own name.


But can that be said of a complainant in a group or team sport such as yachting? A recent case has held that a team leader may have a common law trademark in his or her own name. The decision is Ernesto Bertarelli v. c/o Ernestobertarelli.com Nicholas Tee, Premier Management Ltd, (WIPO Case No. D2009-0421).


Mr Bertarelli is a billionaire with an interest in yachting who formed and financed the Alinghi yacht racing syndicate that won the Americas Cup on two occasions. The Respondent registered the domain name and set up a website that it claimed was a satire by virtue of the comment on the site directed to Mr Bertarelli’s having a largely New Zealand sailing operation.


The issue arose as to whether Mr Bertarelli had an unregistered trademark in his name, which he claimed he did as a result of his business, sailing and charitable exploits. The panellist was not satisfied on the business case, as Mr Bertarelli was really “… promot(ing) the brands and trademarks of the companies” and not his own name.

Nor did the charity aspect of his argument succeed.


But he did better relying on his yachting exploits. His case for the common law trademark in that regard was that he was the ‘leader, crew and team member’ of the Alinghi team.


The panelist accepted this submission and relied on Venus Williams and Serena Williams v. Allgolfconsultancy and Eileen White Byrne, (WIPO Case No. D2000-1673); Russell Coutts v. Massimo Gallotta, (WIPO Case No. D2006-0008); Stephen J. Nash aka Steve Nash v. HOOPology.com (WIPO Case No. D2009-0225).


The Panellist summed up the situation in the following way:

“The overwhelming effect of the evidence is that the Complainant is famous in the sailing industry, both as a member of the crew, and as the leader and financial backer of famous sailing teams. The Panel is satisfied that, on balance, the Complainant uses his name and associated reputation in the business of competitive yacht racing. His name has become distinctive of his commercial activities in the sailing industry, and so he has acquired common law rights in his name through such use.”


The case is significant in that the team still sailed under its own name and not Mr Bertarelli’s and yet he had the common law trademark.


He was then able to go on and establish the other elements of the case that he had to prove and the domain name was transferred to him. On those other issues, the Respondent’s defence seems to have been somewhat hampered by the fact that although it was claimed that the website was satire, it was linked to some commercial shopping sites and the domain name had been offered for sale. The lesson for respondents who want to establish a case for satire, or for that matter a fan or criticism site to show their legitimate interest in the domain name is: don’t contaminate the site by commercial content and don’t offer the domain name for sale.