A RESPONSE TO WIPO-2 by Professor Dixon

RESPONSE TO THE INTERIM REPORT:

THE RECOGNITION OF RIGHTS AND THE USE OF NAMES IN THE INTERNET DOMAIN NAME SYSTEM–WIPO-2

May 14, 2001

Rod Dixon

Visiting Assistant Professor of law

Rutgers University Law School- Camden

Professor Dixon teaches courses in the Intellectual Property area at Rutgers.

SUMMARY

This response to the WIPO-2 Interim Report is intended to provide reasons why the WIPO-2 process should not result in a recommendation to expand the scope of the UDRP to include dispute resolution over personal names.[1] The Interim Report recommends that the protection of personal names in the Domain Name System (DNS) be added to the scope of protections that may be resolved through arbitration under the UDRP. The basis of WIPO’s recommendation is an apparent concern that celebrities or people of famous or notorious standing might be conspicuous targets for Cybersquatting. This conclusion is ill advised, and should be flatly rejected by the Internet Corporation for Assigned Names and Numbers (ICANN).

In sum, the WIPO-2 preliminary recommendation should not be adopted in the final report. In the event that it is adopted by WIPO, ICANN should reject the recommendation for the following reasons:

(1) The completion of bottom-up substantive discussions concerning the UDRP and a review of the effectiveness of the existing implementation of the UDRP must occur prior to any consideration of expanding the scope of the UDRP;

(2) That existing laws of the States of the world adequately protect personal names, and to the extent that they do not the legislation of new law should only be effected through representative and legitimate law-making authority, not ICANN;

(3) The recommendation does not accord sufficient respect for rights outside of the intellectual property area and, in particular, the creation of a right of personality in domain names will have a direct and significant chilling effect on free expression as to matters of popular culture and public policy;

(4) The current UDRP and the arbitration decisions interpreting it provide no basis to distinguish common names from “famous” or notorious names. Nor is this fundamental shortcoming answered by direction or instruction from the Interim Report; and

(5) After a thorough-going review of the existing UDRP, it may well-serve the consensus of ICANN participants to modify the UDRP to protect the names of any individuals who can demonstrate that the name qualifies as a trademark under the law of a relevant State.[2]

INTRODUCTION

The World Intellectual Property Organization (WIPO) is an organization founded through a treaty, which has 177 States of the World as members, that serves as a forum for the development and implementation of intellectual property policies internationally. WIPO also provides dispute resolution services for the purpose of resolving intellectual property disputes. In this regard, WIPO has been authorized by the Internet Corporation for Assigned Names & Numbers (ICANN) to provide domain name dispute resolution services for issues coming under the Uniform Dispute Resolution Policy (UDRP) as an arbitration service provider. In April 2001, WIPO issued its “Interim Report” on the second WIPO Process.[3] It deals with the abusive registration of domain names in relation to the following identifiers:

· International Nonproprietary Names for pharmaceutical substances (INNs). INNs are used by the World Health Organization to maintain generic names for pharmaceutical substances;

· The names and acronyms of intergovernmental organizations, such as the United Nations (UN);

· Personal names identifying celebrities and notorious persons;

· Trade names identifying a business enterprise;

· Geographical indications identifying products, places or peoples that originate in a certain area, for example, a California wine might indicate a geographical product.

A comprehensive review of the issues underlying these broadly defined identifiers is an ambitious undertaking for the WIPO-2 process. Notably, the HTML version of the Interim Report spans over 350 numbered paragraphs and contains voluminous appendices. In this regard, I focus my response to an area for which I am deeply concerned. I express no opinion on the recommendations regarding the other domain name identifiers, but would caution readers that my silence should not be considered tacit or implicit support for those recommendations.

ISSUE: RIGHTS IN THE USE OF PERSONAL NAMES IN THE INTERNET DOMAIN NAME SYSTEM

On July 10, 2000, WIPO publicly announced what it calls the “Second WIPO Internet Domain Name Process” (WIPO-2). The first process ultimately resulted in what we have now, the UDRP. The current version of the UDRP is intended only to target the most egregious problems caused by the tension between domain names and trademarks. Although many view this as an appropriate limitation on the use of the UDRP, WIPO-2 is intended to determine whether the UDRP should be expanded to include what some contend are additional problem areas related to the registration of domain names.[4]

This response to the WIPO-2 Interim Report is intended to provide reasons why the WIPO-2 process should not result in a recommendation to expand the scope of the UDRP to include dispute resolution over personal names.[5] The Interim Report recommends that the protection of personal names in the Domain Name System (DNS) be added to the scope of protections that may be resolved through arbitration under the UDRP.[6] This conclusion is ill advised,[7] it should not be adopted by the final report and, most importantly, should be flatly rejected by ICANN.[8]

The Interim Report’s preliminary conclusion is off the mark for several reasons, two of which are conspicuous throughout the report, itself; namely, the fact that existing laws of the States throughout the world adequately protect personal names - - to the extent that they need protection at all[9] - - mitigates against protecting personal names under the UDRP. In addition, a recommendation for an expansion of the UDRP is entirely inappropriate prior to substantive discussions and a review of how well the existing implementation of the UDRP has fared.[10] More important, the protection of personal names for some individuals in Cyberspace because of their “celebrity”[11] or notorious status is wrong-headed not only because it creates new or special rights for a class of Internet users, who could easily seek to enforce whatever rights they have to a personal name in legal fora within an appropriate State, but because the creation of such a right will have a significant chilling effect on free expression as to matters of popular culture and, in some instances, public policy.[12]

The Internet community should not be silenced in its desire to critique, comment upon, satirize, or express fanatical support for an individual, who happens to maintain a notorious or celebrity status. Famous persons are not without their own ability to respond to criticism or claims perceived to be unfair or in contravention of a civil right. The Internet is a powerful and empowering vehicle of communication. Rules that summarily alter the openness and freedom of expression inherent in the interconnectedness of a network of networks should be regarded with suspicion and carefully scrutinized.

Notably, the Interim Report failed to show one instance wherein a celebrity with a bona fide property interest in a personal name suffered from an abusive domain name registration without any recourse under the laws of a pertinent State. Indeed, even if the Interim Report could point to such an instance, it would not warrant a recommendation to expand the scope of the UDRP to include this new celebrity right.[13] As the Interim Report acknowledges, it is not fitting to make new “law” or create new “rights” through ICANN. Given the apparent desire of the States of the world not to broadly protect the “personality rights” of the famous, ICANN need not do so either. On the merits, the Interim Report is unpersuasive, and the protection of personal names under the UDRP is undesirable.

WHAT TO DO: NOTHING, SOMETHING, OR MORE?

The Interim Report offers three options that might meet this recently discovered need to protect personal names in Cyberspace. The options are: (1) doing nothing with regard to personal names,[14] (2) do something with regard to personal names such as modifying the scope of the existing UDRP only in its application to the new TLD, .name, or (3) do more than something by creating a new category of claims that may be brought under the UDRP by a select group of intellectual property owners on the basis of a so-called “personality right.” Admittedly, to some degree, the three alternatives presented in the Interim Report might constitute a balanced approach to the issue, and the drafters of the report should be lauded for that initial effort. Unfortunately, the Interim Report is not even-handed throughout, and its conclusions certainly are not. Even so, if the Interim Report had only a dearth of bias, the case could not be made that the UDRP should be expanded. Time might tell a different story, but it has not done so to date. The effectiveness of the UDRP must be evaluated, and this evaluation should occur before the scope is expanded. Consequently, the final report of WIPO-2 should adopt option 1, do nothing with regard to personal names.

THE GUIDING PRINCIPLES DO NOT SUPPORT EXPANSION

The guiding principles for the formulation of the WIPO-2 recommendations do not support expanding the scope of the UDRP to include claims based on “personality rights.” The guiding principles for WIPO-2 were the same principles guiding the formulation recommendations in WIPO-1; namely, that the process for evaluating whether the scope of the UDRP should be expanded be guided by (1) a respect for the diversity of purposes for which the Internet was used, (2) respect for the limitations of the existing law and for the fundamental proposition that the legislation of new law should only be effected through a representative and legitimate authority, (3) respect for rights outside the intellectual property system, (4) respect for the functionality of the Internet by ensuring that any recommendations were practical in nature and would not impose unreasonable burdens on the high-volume and highly automated operations of domain name system, and (5) respect for the underlying dynamic nature of the technologies that underlie the development and expansion of the Internet. WIPO-2 is already out of step with these principles.

What is clear from the guiding principles is that the WIPO-2 process should not result in adopting new claims that do not respect the limitations of the existing law or offend the fundamental proposition that the legislation of new law should only be effected through a representative and legitimate law-making authority. Nor should the WIPO-2 process result in recommendations that do not accord sufficient respect for rights outside the intellectual property system. Unfortunately, WIPO-2 does both of these by creating a new global “personality right” in domain names for celebrities, and by disregarding the chilling effect that the new right might have on freedom of expression on the Internet.[15]

A PERSONALITY RIGHT WITH MIGHT

As the observations in the Interim Report pointedly confirm, personal identity, as expressed through an extensive number of methods, styles or manner, including a person’s name, voice or appearance, is fundamental to the inherent dignity and individuality being human. What is more, it cannot be doubted that there is a proper interest in protecting an individual’s expression of identity through the use of their name. It need not follow, however, that the personal dignity that comes with one’s name is accompanied by a correlative property interest in excluding all others from the use of that name for any purpose presumptively determined to be widely associated with one (and only one) individual.

In this regard, the Interim Report sets forth an interpretation of the “right of personality” that mistakenly conflates the distinct interests of identity and identification. Contrary to the conclusion of the Interim Report, valuing identity as an expressive artifact of self is not concomitant with the exploitation of a commercial interest in identity.[16] Indeed, to join these distinct interests in the context of domain name identifiers is to do nothing more than exalt the commercial interest above the expressive interest; the expressive value of self or personality is reduced to the monetary value of the good or service sold.[17] Consequently, the Interim Report’s reliance on the principled basis supporting some State’s legal support for the right of personality is inappropriately applied to ICANN’s consideration of whether to expand the scope of the UDRP to include claims covering personal names on the basis of a “personality right.”[18]

According to the Interim Report, there is “abundant evidence” that celebrities are subject to “parasitical practices in the domain name space.” What this means is anyone’s guess, but it cannot refer to Cybersquatting under the UDRP. The vast majority of the celebrity UDRP disputes do not involve trademarks since most allegations arise from celebrities living in the United States, whose access to a trademark remedy for the use of their personal name is so circumscribed that most celebrities could not avail themselves of such a remedy. More important, the UDRP, itself, is limited to trademark issues. Hence, the report must be referring to anecdotal evidence, cases in court, or wrongly decided arbitration decisions; all of which would leave the drafters of the Interim Report with substantially less than abundant evidence. Even so, the Interim Report provides no procedural suggestions on how personal name claims can be filtered through the scope of free expression.[19]

THE UDRP PROVIDES NO BASIS TO DISTINGUISH COMMON NAMES FROM “FAMOUS” NAMES

The current UDRP and the arbitration decisions interpreting it provide no basis to distinguish common names from “famous” or notorious names. Nor is this shortcoming answered by direction or instruction within the Interim Report. To the extent that the Interim Report relies upon prior arbitration decisions to bolster its point, those decisions are wrong.[20] It is axiomatic under American Federal trademark law that no one can obtain exclusive trademark rights to a personal name.[21] Indeed, generally, anyone may use his or her own name in trade in the United States. Applying this common sense approach to the UDRP should have resulted in the rejection of many of the celebrity complaints.[22] That notwithstanding, more than a couple of arbitrators permitted celebrities not only to push up against the limits of common sense, but to tread right over it, by allowing those complainants to successfully demand the transfer of domain names from registrants to themselves under tenuous claims of Cybersquatting.[23]

For example, Russell Boyd, a Princeton, New Jersey resident registered Juliaroberts.com. Roberts[24] successfully argued that Boyd's registration of “her” name constituted an abusive registration of a “trademark” in the name, Julia Roberts.[25] “Julia Roberts,” it should be noted, is a name so common in the United States that a search on the name on switchboard.com turns up over 100 names of women from Maine to California; Julia Roberts, the box office movie star, probably is not one of them, since her number, presumably, is not in the switchboard.com database. Undoubtedly, the name is quite likely to be more common than the database might indicate.
Julia Roberts filed her complaint with the World Intellectual Property Organization (WIPO is an ICANN-approved arbitration service provider). WIPO's arbitration panel ruled that she had the common law trademark rights[26] to her name, and that Boyd had “no rights or legitimate interest in the domain name,” which, according to the WIPO panel, he had registered with “bad-faith”[27] intent to profit from the registration.[28]

The arbitration panel decided that federal registration of the name “Julia Roberts” as a registered trademark or service mark was not necessary and that the name “Julia Roberts” has sufficient secondary association with the Complainant that trademark rights must exist under United States trademark law. Recognizing that this conclusion was on unstable ground, the panel also noted, without regard to its pertinence, that English common law supports the notion that a trademark right may exist in a common personal name in England.

Although the panel noted, specifically, that the UDRP does not require that Julia Roberts have rights in a registered trademark or service mark in order to prevail, its hyperbolic conclusion that a celebrity may prevail in a UDRP proceeding by simply satisfying the arbitration panel that she has rights in a common law trademark or sufficient rights to “ground an action for passing off” casts substantial doubt that the panel had resolved the case under the narrow terms of the UDRP. The decision neither establishes how the complainant had shown that Boyd’s use of the domain name constituted or could constitute passing-off, nor states why a claim regarding passing-off is relevant to the case.[29] Today, the juliaroberts.com domain name and the website to which it is affixed sits idle.

CONCLUSION

This response to the WIPO-2 Interim Report identifies pertinent reasons why the WIPO-2 process should not result in a recommendation to expand the scope of the Uniform Dispute Resolution Process (UDRP) to include claims concerning the abusive registration of personal names of celebrities as domain names. The Interim Report recommends that the protection of personal names in the Domain Name System (DNS) be added to the scope of protections that may be resolved through arbitration under the UDRP. For the reasons presented throughout this response, the preliminary conclusion by WIPO is ill advised, and should be flatly rejected by the Internet Corporation for Assigned Names and Numbers (ICANN), if formally recommended by the WIPO-2 process.

[1] The Interim Report makes a number of additional recommendations that are not addressed here; those recommendations may or may not be worthy of adoption. I express no opinion on those recommendations, and my silence should not be considered tacit or implicit support for them.

[2] It might surprise few who are familiar with domain name debates that some Internet users view this conclusion as going too far in the direction of supporting trademark interests at the expense of free expression. In response to a draft of this document, one member of ICANN’s Domain Name Supporting Organization’s WG-Review asked: “…[w]hy should trademarking be required, for that with which a person is born? And, why should trademarking have any precedence, over a family's heritage? My family name is Busby. If the family of Sir Matt Busby, former manager of the Manchester United soccer team, trademarked the name Busby, and, if I was lucky enough to be able to register a gTLD domain name, with the name busby, why should their trademark have precedence, over the heritage of my family, going back hundreds of years?” Brett Busby, Armadale, West Australia, May 10, 2001 (ML of the WG-Review).

[3] In July 1998, upon the proposal of the United States WIPO commenced WIPO-1, the first Internet Domain Name Process. WIPO-1 recommended that an administrative dispute settlement procedure be adopted with effect throughout the generic top‑level domains, which were open for registration of domain names without restriction. ICANN duly adopted the recommendation in its essential form and implemented the UDRP in December 1999.

[4] The Interim Report duly noted that WIPO-2 has at least two objectives with regard to the UDRP; namely, (1) to explore the suitability of seeking relief under the UDRP for an expanded range of “rights” of intellectual property owners, and (2) to determine whether the laws of the States of the world would suggest that some uses of the existing UDRP required changes in the UDRP because some of the protections the UDRP ostensibly afforded trademark owners lacked a proper legal basis. In regard to this latter question, the Interim Report is alarming silent.

[5] The Interim Report makes a number of additional recommendations that are not addressed here; those recommendations may or may not be worthy of adoption. I express no opinion on those recommendations, and my silence should not be considered tacit or implicit support for them.

[6] According to the WIPO-2 Interim Report, cyberspace is unique in its capability to create an environment that may harm celebrities. This is so, we are told, because while names, images and voice can be presented through multimedia web pages, the DNS emphasizes the importance of the names or labels selected by those using the network.

In this regard, personal names become, according to the Interim Report: “a potential target for abuse by third parties who would wish to benefit from the associations generated by certain personal names. …[O]ne prevailing view… [in our] UDRP decisions, is that the placing on the domain name register of a distinctive name, such as gretagarbo.com, makes a representation to persons who consult the register that the registrant actually is, or is associated with, the person whose name is registered and thus is entitled to use the goodwill in the name.” Interim Report, Section on Personal Names.

[7] Aside from unanswered fundamental questions such as how should “famous” be defined or how should someone’s name recognition be measured to determine whether the complainant’s use of a name warrants rights against all others throughout the world in all gTLDs, there is serious doubt whether the present practice by arbitrators of awarding domain name access to a celebrity in all gTLDs is sound or consistent with the interests at stake. To some degree, the practice might be better described as awarding “domain names because of the chance that someone MIGHT misuse the domain name in the future. That's like arresting someone for murder because they own a pocket knife. They COULD someday kill someone with it.” Chris McElroy, Member of the WG-Review, May 11, 2001 (WG-Review is a Working Group convened by the Domain Name Supporting Organization of ICANN with a broad mandate to attempt to provide recommendations to ICANN on a number of matters, including issues regarding the UDRP. The group operated both a formal and an informal mailing list. Since the archives of both lists are available to the public, one reference is used for citation purposes; namely, “ML OF THE WG-REVIEW”).

[8] In less than two years, well-over 3500 decisions have been rendered under the UDRP. WIPO has resolved the vast majority of those decisions (By its own count, 2316 decisions have been administered by the WIPO Arbitration and Mediation Center). Consequently, it is noteworthy that commentary by WIPO on the effectiveness of the UDRP should be taken for what it is worth, and might be properly viewed as a self-study.

[9] Those engaged in WIPO-2 need not be reminded that the UDRP is narrowly focused because of an explicit intent to fill a void where the laws of most States had not or could not fill. This is not to say that the UDRP protects new “rights,” however. It does not and should not. Instead, the UDRP might be viewed as an attempt to apply a uniform trademark law to DNS issues. Perhaps because of the potential benefit of uniformity, it is still appropriate to view the UDRP as a uniform gap-filler even though some States, including the United States, have laws protecting Trademark owners from Cybersquatting.

[10] Indeed, ICANN’s consideration of an expansion of the scope of the UDRP prior to its assessment fills the air of bottom-up consensus building with the familiar aroma or stench of back door agenda-setting. Throughout the Interim Report WIPO-2 notes that comments challenging the appropriateness of expanding the UDRP with arguments that the UDRP, itself, needs reform were not considered relevant to the WIPO-2 process. This cannot be so in an open process. Although the focus of WIPO-2 is clearly established, the 200 page Interim Report provides palpable evidence that WIPO-2 is not a narrowly focused process.

More important, one could hardly argue the point that when advocating that a process should be expanded, the advocate would eventually stumble upon logical fallacy if the advocate had not implicitly accepted the notion that the UDRP, as it presently exists, has substantial substantive value. It is in this regard, that the WIPO-2 process ought to justify its final conclusions with substantive responses to those comments the Interim Report found appropriate to ignore.

[11] One cannot escape the overriding concern that the UDRP must be fully evaluated by ICANN’s bottom-up process before the debate concerning the expansion of the scope of the UDRP is resolved. Quite ironically, the Interim Report finds support in its determination that the scope of the UDRP ought to be expanded to include personal names by citing WIPO arbitration decisions and the decisions of other arbitration service providers that have mistakenly concluded that the UDRP already protects personal names. Either those decisions are in error (and, of course, ICANN ought to review why these errors were made in the first place under the existing UDRP) or the WIPO-2 recommendation on personal names is much ado about nothing.

Of course, it is more likely that the correct view is the former rather than the latter, but the Interim Report suggests that the better view is that there might be some circumstance involving a WIPO-created version of the “right of publicity” for which a celebrity somewhere, somehow, might obtain protection from Cybersquatting that is not currently available under the laws of a pertinent State.

[12] The UDRP need not be all things to all persons, who might express a so-called “property” interest in written symbols or speech in Cyberspace. It seems more than sufficient that the UDRP may protect the names of individuals who can demonstrate that the name qualifies as trademark under the law of a relevant State. Apparently, a few arbitrators have taken this view already, and that view might prove worthy of support after the UDRP is thoroughly evaluated.

[13] This is not to say that a consumer cannot be duped by a fraudulent practice that uses a celebrity’s name to sell goods or services. Rather, the implication of the argument is that the call for caution in growing the UDRP must be answered affirmatively.

[14] The UDRP sets forth three criteria, which a complainant must prove to establish that a domain name registration is abusive:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the registrant of the domain name has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Most importantly, the complainant must establish the personal name in question is protected as a trademark or service mark, in which that complainant has rights.

[15] Indeed, the creation of a “right of personality” in domain names will cause significant harm to Internet users. A “direct stifling effect on free expression as to matters of popular history, culture, and public policy” is the likely result of permitting celebrities to silence those that might create critical commentary through the use of a celebrity’s name in a web address. Sotiris Sotiropoulos, May 11, 2001, (E-mail from Co-chairman of the WG-Review).

[16] Some would argue that this issue does not involve individual rights at all. Instead, the protection of personal names for celebrities is camouflaged as a matter concerning individuals and personal interests of identity when, in fact, an agenda to protect corporate rights holders and intellectual property interests is being advanced. “At the heart of the matter, we are not talking about Julia Robert's rights to her own name as a DN at all. This is about website content, and who is allowed to represent a real person and who is not. It is simply nonsense to suggest that ICANN should become embroiled in any policy that sets out to promote one entity's rights to exploit a person's name, while another entity is denied, neither entity being the individual themselves. Nevertheless, that is how those to whom famous names are beholden would enforce this policy.” Joanna Lane, May 10, 2001, (ML of the WG-Review).

[17] It should be noted that I do not quibble with the goal here; trade names, trademarks, and even domain names are all examples of marketing identifiers. Rather, I reject the justification given, which ostensibly was presented in the Interim Report as the human dignity of identity. If the debate is directed toward the use of personal names as trademarks (and only trademarks), then the Interim Report’s reliance on values underlying the right of publicity and the “right of personality” are not only unnecessarily misleading, but inapposite.

[18] According to the Interim Report, the right to protect one’s own identity, often referred to as a “personality right,” serves to prohibit unauthorized commercial use of a person’s name, likeness or other characteristic closely associated with the individual.

[19] Although it might be said that the ACPA is similarly silent in this regard, the act explicitly directs American courts to consider interests of free expression. More important, American courts are not without considerable experience adjudicating constitutional matters of free expression.

[20] The UDRP required an expansion of its scope before most personal name domain name disputes could have been properly decided. Although the Interim Report cites many of those cases approvingly - - many of which were decided by WIPO arbitrators - - as detailed later, the rationale in many of those arbitration decisions lack credulity. Arbitrators exercised unrestrained discretion in selecting trademark guidance from the laws of States that approved of nebulous distinctions, complainants sought recover of domain names in all generic Top-level Domains (gTLDs), and arbitrators ignored their duty to dismiss complaints that failed to present a prima facie case (proof of bad faith was often lacking).

[21] Common law trademark rights are less firm on this regard.

[22] Trademark owners should not prevail in a dispute under the UDRP simply on the basis of an allegation that a domain name registrant has a domain name that might infringe a trademark; there would be no need for the UDRP, if the matter were that simple. Quite to the contrary, to prevail, a complainant must overcome high hurdles when the UDRP is properly applied.

The complainant must show that she had a distinctive trademark at the time the domain name was registered and, then, once meeting that requirement, must demonstrate that the registrant acquired the domain name for an illicit purpose. If the domain name registrant can show that he had a "legitimate" interest in the domain name, the trademark owner's case has been rebutted, and the trademark owner loses the case.

What's more, it is far from unlikely that the registrant will successfully show his "legitimate" use of the domain name. The factors that may support the registrant's position that he has a legitimate interest in the use of a domain name include: freedom of expression, his own common law or foreign trademark in the domain name, his use of a trade name, a legal name, a common name, a parody, a comparison (comparative advertising, for example), as well as a variety of additional fair use principles. Consequently, in spite of the warts and defects in the UDRP, it is clearly evident that the UDRP exists to resolve disputes limited to uses concerning the narrow range of cases where a complainant may attempt to show that a domain name holder has engaged in the improper registration of a distinctive trademark as a domain name with "bad-faith intent" to profit from that registration (commonly referred to as Cybersquatting).

[23]Arbitrators should adopt the practice of dismissing complaints from complainants that only present claims that are far outside the scope of the UDRP.

[24] Julia Roberts is an American movie star.

[25] See Julia Fiona Roberts v. Russell Boyd, WIPO Case D2000-0210 (May 29, 2000) (holding that the complainant has trademark rights in her name).

[26] The panel’s assertion was made on the basis of citing two prior WIPO arbitration decisions regarding common law trademark rights (one of which had held that English Law approved of trademark rights in personal names) and its determination (or observation - - it is not clear whether this was an evidentiary matter) that the complainant was a “famous.” This circular reasoning lead to the panel’s conclusion that a common law trademark in a personal name could constitute a prima facie case if the rights were sufficient to “ground an action for passing off,” which the panel determined was apparent in the case, but did not say why.

[27] The panel noted that Respondent had posted the name on an auction web site, used the name on a web site that seemed to have no purpose, and offered to sell the name to the complainant. On this basis, the panel summarily concluded that the facts met the UDRP 4(b) evidence requirement for proving bad faith; it remains a mystery how the facts cited persuaded the panel to arrive at its conclusion since the decision does not say.

[28] Of course some fan websites, like the fans, themselves, go overboard. It is quite possible that some fan websites, rather than honoring the celebrity in whose namesake the domain name is registered, appropriate the identity of a celebrity in manner that could be humiliating or embarrassing. Or, some fan websites may not be tasteful or to the celebrity's liking. Under such cases, celebrities are free to use their enormous resources to ensure that their legitimate interests are accounted for fairly. It is difficult to say, however, that such uses ought to be included as instances of Cybersquatting.

[29] Passing-off actions have some similarity to traditional trademark infringement actions, but vary widely among States. Since the panel’s reference is unclear, it is imprudent to guess what elements of the action (or which action) it deemed relevant.