The list of affected celebrities who have already fallen victim to “domain name theft” is unfortunately long. It might come as a surprise to many, but a high number of stars have never publicly come forward with their various lawsuits to gain ownership over their domain names.
Cybersquatting then and now
The sensationalized cases of celebrities fighting for their right to sole ownership of their domain name asset was mainly a problem of the past. Even though the internet was an increasingly growing venue for the entertainment industry, most managers of stars and starlets had not yet realized its importance.
Now cases of cybersquatting are in heavy decline. In the past, around the 2000’s - the Bronze Age of the Internet - it was not always so simple.
Here are a couple of unfortunate cases that celebrities had to deal with:
1. Who came first? Madonna or Madonna.com?
The domain "Madonna.com" was still cheap when the artist was putting out one smash hit after another. It was not until 1998, just before her comeback, after a 4-year hiatus, that someone had bought it for a rather hefty sum of 20,000 USD. This was before the WIPO, the "World Intellectual Property Organization”, took care of domain name disputes. One could assume if this organization was in play that the domain would have been handed over to the singer directly, ultimately avoiding it falling into the hands of money-hungry hijackers.
Alas, this was not the case. Up until the year 2000 the domain “Madonna.com” was used for an adult entertainment portal. In 2000, the WIPO Arbitration and Mediation Center took on the case of Madonna Ciconne (the artist’s birth name) versus the owner of Madonna.com. Now one can argue that Madonna is a generic name or term that bears no trademark rights. But there were differing opinions in the singer’s favor:
"Quite clearly, if someone put up a site that was religious, there would be no question of confusion. But when someone puts up a site that is pornographic or disparaging in some way...that would trigger provisions of trademark law allowing Madonna to get the name back,” said G. Gervaise Davis, an attorney specializing in domain name dispute arbitration. He further stated: "Respondents often win when cases deal with generic terms. But in this case, the personality is so famous that it takes it out of the generic. Trademark holders don't own words, but they do own the identifications associated with words."
The result of the dispute was that the domain name was found to be identical to Madonna’s trademarks, and that the owner lacked rights or legitimate interests in the domain name. In short: it had been registered and used in bad faith.
The domain was then transferred to Madonna. Today, the artist owns said domain, along with other country-specific top-level domains. Another very famous artist, Sting, was not so lucky.
2. This stings like a bee: Sting.com
When Gordon Sumner began his career as the front man of "The Police," he was not held accountable by any law enforcement agency because of the band's name.
However, when the tables turned on Mr. Sumner, aka. “Sting”, he was not as lucky. He wanted to force the owner of sting.com to transfer the domain name to him, claiming that the name “Sting” has become synonymous in the minds of the public with his presence in the music industry. And as such he felt strongly that he should solely own the rights to this particular domain name.
The difference between Sting and Madonna’s case was that Sting isn’t the real name of singer Gordon Sumner. In addition, the site owner was also using the nick name “Sting” online and as such did not use the domain name in bad faith. In July 2000, WIPO ruled that the "sting" in "sting.com" was a "generic name", which puts it into the same category as domains like books.com, trees.com or any other common word.
Therefore, Sting the musician was not entitled to this domain and could not claim legal copyright control over it. This means a beekeeper or anyone else could also have had the right to purchase this term as a domain – much like the artist himself.
Today, years after WIPO’s ruling, the artist owns the domain. Purchase price: unknown.
3. Kidman: Nicole or Nichole?
In 2001, the movie star Nicole Kidman had to call on the WIPO Arbitration and Mediation Center as well. She felt she was a victim of one of the most common ways to profit off the reputation of a famous star with a domain – a cleverly built-in typo.
In this particular case the domain nicholekidman.com was up for debate at the WIPO panel. Plugging this domain into one’s browser immediately caused pop-up ads to appear. A user who arrived at the site had to click on multiple windows before being able to leave. Obviously, the owner was trying to profit from typos and generate revenue from the clicks of misguided users.
Here, the legal battle resulted in favor of Kidman. The panel concluded that nicholekidman.com is "identical or confusingly similar" to Kidman’s trademark and that the only difference to her real name was a purposeful misspelling. The owner had no rights or legitimate interests in regards to the domain name; and the domain had been registered and used in bad faith.
In the end, the domain was transferred to Kidman.
4. Even “The Boss” doesn’t get to decide ownership of his domain name
Fans who pay their respects to their beloved artists never want to cause any harm. But when you own an array of celebrity domains and forward these to draw traffic to a celebrity portal site, this isn’t really the make of a true fan. Some would even say, such domain names were registered in bad faith.
Among these addresses was BruceSpringsteen.com, which made the “Boss” open a dispute with WIPO in 2001. But despite the previous verdicts, it seems there is no such thing as a "naturally grown" trademark right to one's own name as a domain. Not even for mega-rock stars - no matter if you were "born in the USA" or anywhere else.
The owner of the domain argued, among other points, that the use of a celebrity name as an internet address is similar to the name being printed on the front page of a magazine. Does that sound right to you? It did for WIPO.
The panel claimed that, “it is relatively unlikely that any user would seek to go straight to the internet and open the site brucespringsteen.com in the optimistic hope of reaching the official Bruce Springsteen website. If anyone sufficiently sophisticated in the use of the internet were to do that, they would very soon realize that the site they reached was not the official site, and consequently would move on, probably to conduct a fuller search.”
It’s an interesting decision, in the very least because the panel holds the general internet user’s behavior in such high regards. In the end, Bruce Springsteen was forced to step down from his legal battle for “his” domain name, after the WIPO ruled against his dispute 2 to 1. He kept his website on the URL brucespringsteen.net, which he has been the owner of since 1998.
5. Jennifer Lopez: When good intentions no longer meet the needs
The case of Jennifer Lopez is one example of an artist emerging as a winner from the legal battle over her name. By 2009, it was no longer a secret that artists were within their legal rights under copyright laws to protect their name from infringement.
"J-Lo" received a verdict in her favor from WIPO. This verdict forbade the owners of the commercial fan websites, "jenniferlopez.net" and "jenniferlopez.org" from continuing to operate under these misleading names.
Under the decision, the owners were found to not operate in fair use while generating revenue with advertising on the domains in question. The defendants in question even went so far as trying to hide their real identities by altering the WHOIS records to reflect fictitious organizations in their registration records. The WIPO panel found this also to be an indicator of acting in bad faith.
In any case, the trademark rights worked in her favor. The counterparty also could not rely on the fact that parts of the funds generated through their sites were going to a good cause. The domains were then transferred to Jennifer Lopez.
Who owns a stage name; who owns the matching Domain?
Anyone who wants to protect their stage name - even in all "variations and spellings" against plagiarism and "cybersquatting" - best have his or her name patented as a trademark. The fundamental overarching claim that with steadily growing fame comes the unrestricted right to one’s own name, does not exist.
We at Sedo recommend registering or buying the most commonly used domain variations before entering legal battles. Often times this is the cheapest way of securing your online presence. This is an experience that the actor John Malkovich needed to go through, too. Take a look for yourself!
Further information on the subject of Domain Name Dispute Policies can be found at ICANN: www.icann.org/resources/pages/policy-2012-02-25-en
WIPO’s website is available at www.wipo.int/portal/en/index.html