I'm almost embarrassed to say this but my girlfriend brought this arbitration case to my attention
. It's not embarrassing that she told me about it, but of all the places (or sites) she could have heard about this case, it happened to be from the Perez Hilton site. I'm not saying there is anything wrong with Perez Hilton, I'm just not into gossip type sites or sites that I perceive to be gossip type sites.
Anyway, I previously wrote a brief description of the Rescuecom v. Google
case that, although it was more procedural, dealt with trademark issues in particular infringement.
The Jennifer Lopez Foundation v. Jeremiah Tieman arbitration case
is interesting as well, but perhaps even more interesting because the situation seems
like it could happen to just about anyone who creates a fan site of potentially any celebrity. Before I continue though, it is necessary for me to FIRST direct you to the disclaimer at the bottom of this post.
It is perhaps important to first acknowledge that the Lopez v. Jeremiah case that I'm writing about is an "arbitration" case and not a trial. Wikipedia has a page that explains arbitration
. After checking out that page, you should get some idea as to how arbitration differs from a trial.
Jennifer Lopez trademarked her name on May 21, 1999. You can see this for yourself by clicking here
and looking at the United States Patent & Trademark Office records. Later in 1999, Jeremiah Tieman registered the domain name, JenniferLopez.net
and then later JenniferLopez.org. On January 15, 2009, the Jennifer Lopez Foundation filed a complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center. The WIPO Arbitration and Mediation Center (Center) is being described as an agency of the United Nations. (click here
for reference.) News reports suggest that Jennifer Lopez herself personally filed the complaint but the actual WIPO published case shows that it was the Jennifer Lopez Foundation (Foundation) that filed the complaint. The Foundation is a charity that promotes "increased access to healthcare for women and children." The Foundation was established by Ms. Lopez herself and has the consent of Ms. Jennifer Lopez to use the trademark "Jennifer Lopez."
LONG STORY SHORT
Tieman has been ordered to transfer the two domain names JenniferLopez.net and JenniferLopez.org to the Foundation.
The Foundation "argue[d] that the [Tieman] registered the disputed Domain Names with the intent of exploiting and profiting from the Complainant’s [Foundation's] rights in the JENNIFER LOPEZ mark. According to the [Foundation], the [Tieman] is using the disputed domain names to drive traffic to the Respondent’s website in order to generate paid advertising revenues, has offered to sell the disputed Domain Names to the [Foundation] first for $80,000 and then $45,000, and is also offering the disputed Domain Names for sale to the general public."
The WIPO papers also show that "[t]he Respondent claims rights or legitimate interests in the disputed Domain Names by virtue of their use with a website that the Respondent asserts is primarily a fan site devoted to providing news and information about Ms. Lopez. According to the Respondent, he is making a legitimate noncommercial or fair use
of the disputed Domain Names in connection with this fan site." (emphasis added by myself). The Respondent [Tieman] also asserted, "that the Complainant cannot establish bad faith registration or use, because the Respondent registered the disputed Domain Names for use with a website devoted to Ms. Lopez and her fans, and has only used the disputed Domain Names in connection with this website. In addition, the Respondent asserts that he did not register the disputed domain names with the intent of selling them to the Complainant, and that no bad faith otherwise should be inferred from an offer to sell. Further, the Respondent, raising the issue of a laches, argues that the Complainant’s nine-year delay in filing raises questions of the Complainant’s bad faith."
In the legal community the term laches
refers to sitting on one's hands instead of filing a claim or "sleeping your rights." Wiki has a page on laches
The Center or Arbiter found that laches did not apply here and and that arbitration can proceed. The arbiter cited to other cases where the doctrine of laches did not apply. "The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint)"
Something to remember about this arbitration case is that the arbitration panel found that, "There is no question that the Respondent has generated pay-per-click advertising revenue from links and advertisements on his website, which the Respondent does not deny. This clearly constitutes a commercial use of the disputed Domain Names, and the Panel is not prepared to accept the Respondent’s unsubstantiated averment that the paid advertising generated thereby is merely “incidental” to the asserted noncommercial use. Further, as noted earlier, when the Respondent offered to sell the disputed Domain Names to the Complainant for $80,000, he supported that asking price by pointing out that the website to which the disputed Domain Names resolve had been developed as a source of income.
Also, if you don't plan to read the entire decision of the WIPO arbitration panel, the facts provided show that Tieman, when he received notice of the complaint, attempted to make private his Lopez domain registrations. The problem with this is, that prior to filing the complaint with WIPO, the Foundation and/or its lawyers had already checked the domain registration and saw that Tieman was the registered user/owner of the disputed domain names. The WIPO arbitration panel discussed this issue as well, "The Panel also believes it is appropriate to draw a further inference of bad faith from the Respondent’s manipulation of the registrar’s WhoIs database to reflect fictitious organizations as the registrants of the disputed Domain Names, and the Respondent’s use of a privacy protection service to conceal his identity. While the Panel generally does not consider a registrant’s use of a privacy service in and of itself to constitute bad faith, the Panel has observed in prior decisions that privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere."
I realize this is lengthy already so I'll end this here.
**Disclaimer: I am not a licensed attorney and the above blog post is not (and should not be considered as) legal advice. Anything I post here is done so in my personal capacity and not in any other capacity as an employee, fellow, member, etc., of any other organization, institution or entity.