Re: Open letter to Kelsey Grammer: the Internet is not a trademark-free zone

On 11/13/1998, Rich Wiggins <wiggins[_at_]msuvm3.cl.msu.edu> wrote:
>
> Last night, Kelsey Grammer was on the Tonight Show, and he told
> Jay Leno that he'd started a Web site, kelseylive.com.
>
> Jay, apparently being an astute Internaut, suggested that Kelsey
> ought to have set it up as kelseygrammer.com.
>
> Kelsey replied that someone had already registered his name
> as a .com address, and that that someone wanted money for
> Kelsey to buy his own name back, and that he was unwilling to
> pay the amount wanted, so he was going to go with kelseylive.
>
> I checked this morning, and sure enough, kelseygrammer.com
> is registered to a group called "Friend to Friend Foundation."
> They proclaim:
>
> This particular site on the World Wide Web has been
> registered on behalf of the specific individual
> referred to by the domain name. It is reserved for
> their exclusive use.
>
> They dress it up as if they're benevolent friends, but if
> Kelsey's got the story right, they're just domain speculators.
>
> I've never been fond of the Internic's ready willingness to
> bow to big corporations who hold trademarks -- I think
> the roadrunner.com case was a travesty -- but it's hard to
> imagine how domain speculators in Kansas could own Kelsey's
> name. Shouldn't he just apply to the Internic for reassignment
> to him based on his trade name? Does he need to register a
> trademark in order to prevail?
>
> (Oh, and by the way, Kelsey, lose the swimsuit photo.)

InterNIC (NSI) will only suspend a domain name if a party can show a federal trademark registration that (i) is identical to the domain name and (ii) predates the registration of the domain name. Since I doubt that Kelsey Grammer has a federal trademark registration for his name, the NSI policy won't help him.

It is possible that he could make a trademark or trade name case against the Friend to Friend Foundation, whoever or whatever they are -- but the Toeppen cases notwithstanding, he might have a difficult time convincing a court that the domain name constitutes a commercial use of his name. (They're not selling anything, are they? Toeppen would suggest that offering to sell the domain to Grammer is a "commercial use," but I am becoming convinced that such an offer is not a "trademark" use of the mark or name. The Toeppen decisions seem to have been based largely on the perceived "need" of the trademark owners to occupy a specific domain name space, which I'm not sure is a trademark concept at all, and even if it is, I'm not sure Kelsey Grammer has the same "need.")

I think Grammer's best approach would more likely be a false endorsement or right of publicity claim. Unfortunately, NSI doesn't have a policy on celebrities whose names get co-opted as domain names, but Grammer may be able to get a court ruling that the use of the domain implies his endorsement or association with the Foundation.

Daniel J. Schaeffer
<daniel_schaeffer[_at_]kirkland.com>

--

These are just my opinions, not my employer's, my mother's or my
dentist's.  Anyone who considers these comments to be legal advice
should be required to sit in the corner with a tall, pointy hat.