Wednesday, February 07, 2007

New domain name/trademark dispute when a namesake is used


There are news reports of a legal dispute between Keith Urban, the singer, who has a domain http://www.keithurban.net , litigating against another Keith Urban, the painter, who has a domain http://www.keithurban.com Apparently this is a trademark dispute.

A good summary of the dispute occurs here. The news reports indicate that the singer married Nicole Kidman. CNN's story is here. According to the CNN story, the singer claims that the painter is falsely implying that the painter's site is connected to the "famous" singer, so there may be more at issue here than a simple namesake domain name dispute.

There have been disputes over namesake domain names before. Generally, the literature maintains that people can use their own names for domains. Why didn't the singer reserve the .com name if he really wanted to keep it? On the other hand, there might be no issue if the painter's content does not imply any relationship to or endorsement by the singer. When I personally look at the painter's site, I don't see a connection; it would not confuse me, at least.

It would take some time to go into all of the trademark law background, and I don't know what is definitive on this personally as of this moment.

One observation would seem to be that a "famous" person -- an "established celebrity" who earned his celebrity with conventional means of competition -- might claim that his "right of publicity" trumps over someone else's right to use that name it that "someone else" has the same legal name. In the Internet world, this does not sound fair, although the reasoning might get a bit convoluted. Furthermore, someone with money could keep a newbie without it from competing. This sounds like good old feline "turf protection."

Philosophically, domain name disputes sound more legitimate when the names are based on common English words that companies may be using as registered trademarks. Publicly traded companies had a fiduciary responsibility to defend their brand names in public vigorously and with "zero tolerance." Nevertheless, trademark law is supposed to recognize the idea that entities in different business lines may reasonably use the same or similar names without confusion, even though in practice trademark suits have occurred even in those cases. I would have thought that a domain name based on a person's legal name (especially if it is hard to remember until it does become famous) would be safer from challenge than a name based on common words.

I would wonder what ICANN would say about this. Generally, ICANN insists that a domain name be used in "good faith" and it would sound as though someone's using his own legal name is good faith.

One idea could be, when two people have the same name, the second person to use the name must use a suffix -- like -2, (-3, -4, etc) after his name. That would eliminate any possibility of confusion, which is one of the aims of trademark law.

I am not personally confused by domain names this way. There are plenty of examples on the Internet where a .com and a .net represent totally different entities, without causing any real problems.

It will be important to gather more facts about this case.

Postscript:

Keith Urban the singer appeared on NBC Saturday Night Live, Feb. 10, 2007 (singing at the "Entrance to Trains"). Forrest Whitaker was the host.

Urban also appeared on and performed on the NBC Today Show on Feb. 16, 2007.

The picture is of a "babushka" doll. My last name is boushka. There is a store in the Minneapolis Mall of America called "babushkas" that sells Russian dolls as gifts. I wonder. Even unusual names can have similar spellings.

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