Whitman was president and CEO of online auction giant eBay for
10 years. She continues to serve on its board of directors. The
domain names were registered this year at a time of widespread
media speculation that she will run for election as Governor of
California in 2010.
The names include megwhitmanforgovernor.com and meg2010.com. At
the time of the ruling they fronted web pages that contained
adverts and a notice that the names were for sale. The pages
produced error messages at the time of writing.
An arbitration panel of the World Intellectual Property
Organisation acknowledged that Whitman is internationally famous,
but said that was insufficient to prove that the domain names were
identical or confusingly similar to a trade mark in which she owns
rights.
"Merely having a 'famous' name is not sufficient to establish
common law trademark or service mark rights in the name," said sole
panellist William Towns. "The Policy itself inherently makes a
distinction between the protection afforded trademark rights and
rights arising under the law of publicity which has been discussed
in further details in several UDRP cases."
"To be entitled to protection under the Policy, however, a
personal name must function as a trademark, and for common law
trademark rights to exist, the Complainant’s personal name must
have come to be recognized by the public as a symbol which
identifies particular goods or services with a single source," he
wrote.
Towns said Whitman's name "must be used such that a relevant
segment of the public comes to recognize her name as a symbol that
distinguishes her services from those of similarly situated service
providers."
He said he was unable to conclude that Whitman "has provided
services under the name 'Meg Whitman' as a source-indicator to a
segment of the relevant buying public based on her performance as
President and CEO of eBay."
Towns concluded that Whitman had failed to demonstrate common
law service mark rights in her name and therefore that her claim
must fail.
Lee Curtis, a trade mark attorney with Pinsent Masons, the law
firm behind OUT-LAW.COM, said the decision highlights the common
misconception about common law trade mark rights.
"There is a difference between repute and goodwill," said
Curtis. "Having a reputation and having goodwill in a brand or name
are not the same. Passing off in the UK and similar common law
torts in the US protect someone who has built up goodwill in
relation to goods and services. It appears Meg Whitman never traded
under her name in relation to any goods and services, she was
simply well known as the CEO of eBay."
Disclaimer: We hope you find OUT-LAW’s content useful. It’s prepared by the lawyers at Pinsent Masons. Please remember, though, that it’s intended as general information only. It’s not legal advice. If that’s what you’re seeking, please
contact us. See also: our
full disclaimer
