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

On Fri, 13 Nov 1998, Greg Ikonen <gikonen[_at_]venlaw.com> wrote:
>
> On Thu, 12 Nov 98, 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?
>
> Not only does Kelsey need a registered trademark, but he must
> satisfy Internic that he acquired that registration prior to the date
> his friendly cybersquatters registered the domain name. Failing that,
> his only remedy is to go to court. Sound fiar? Workable? You're not
> alone. A variety of "virtual" solutions to domain name disputes have
> been proposed, but to my knowledge, none has been widely accepted.
> Does anyone else have any additional information on this point?

FWIW, while the NSI Domain Name Dispute Resolution procedure by its terms does not provide relief to a celebrity like Kelsey without a registered trademark, celebrity rights to domain names (without a showing of trademark rights) have been recognized in at least one litigated case. See McGraw v. Salmon, 1998 U.S. Dist. LEXIS 10987 (C.D. Cal. June 30, 1998) (granting a permanent injunction on behalf of a couple dozen country singing stars whose names were used as domain names).

Eric.

---
Eric Goldman (formerly Eric Schlachter)
Cooley Godward LLP, Palo Alto, CA
ericgoldman[_at_]theglobe.com
http://members.theglobe.com/ericgoldman/


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