UDRP: transfer of Mandela.org to the guardians of Nelson Mandela’s memory

Representatives of Nelson Mandela’s memory have obtained the transfer of the domain name mandela.org following a UDRP process administered by the Arbitration Center and of Mediation of the World Intellectual Property Organization (WIPO, D2019-0372, The Trustees for the Time of the Nelson Mandela Foundation Trust v. Domains By Proxy, LLC / Rafael Trevisan, Trevis, Inc., May 15, 2019).

The disputed domain name was registered on September 26, 2000. The site was active, but was not seriously used. The site indicated that it was and would remain “under construction forever”. The only notable feature was the ability to download a software. Note that the defendant dared to respond to the UDRP complaint to explain that the domain name was taken from the name of this software “Micro Advanced Normalized Database Exploring for Long Activities” which, once compressed, gave the acronym “MANDELA”! The site also had the following message: “Yeah, this page is under construction forever, but if you need support please send an email to support@mandela.org” or variations on this message“.

The complaint was based on several trademarks, namely:

  • “NELSON MANDELA and device”, filed in South Africa on 29 November 1999;
  • “NELSON MANDELA”, filed in South Africa on 4 October 2004;
  • “NELSON MANDELA” filed in the United Kingdom on 10 May 2005; and
  • “MANDELA”, filed in South Africa on October 4, 2004.

Therefore, only the “NELSON MANDELA and device” trademark was filed earlier to the registration of the domain name, and the request for transfer of mandela.org relied exclusively on this trademark, as recalled by the panelist. However, the latter correctly stated that “Mr. Mandela’s reputation on his behalf was well established before the registration of the disputed domain name“.

Heirs and estates frequently have to face cybersquatting issues. The case law is full of examples.

The first legal point that arises is that of the very existence of a trademark. Indeed, people with a certain level of celebrity do not systematically register their official name, their artist name or other pseudonyms as trademarks. For example, the heirs of the painter and art collector Caillebote, who had not demonstrated the existence of a mark, could not obtain the transfer of the domain name caillebotte.com (“UDRP: Caillebotte.com “, egillet.com, 2016-06-07, in French). In contrast, Picasso’s successors (WIPO, D2002-0496, Indivision Picasso v. MF Manual, August 6, 2002), Van Ghog’s successors (WIPO, D2001-0879, Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. O, October 21, 2001) and those of Chagall (WIPO, D2006-0442, Association for the Defense and Promotion of the Work of Marc Chagall Dite “Marc Chagall Committee” v. Valery T., July 11, 2006) were successful. Admittedly, in most common law countries, rights holders can benefit from a so-called “common law” trademark. However, geographically and economically, these territories exclude notably the European Union, China or Japan. Moreover, the potential existence of rights in a US common law trademark does not necessarily guarantee the transfer of the domain name if it has been registered several years before the filing of a trademark (WIPO, D2014-1945, The Estate of Paul Flato v. Newcal Galleries Ltd., January 12, 2015; WIPO, D2004-0001, White Castle Way, Inc. v. Glyn O. Jacobs, March 26, 2004; NAF, FA0302000144631, CMG Worldwide, Inc. v. Humphrey Bogart Club, May 27, 2003). It is therefore very strongly advised to celebrities, but also to those who are in likely to become famous (v., eg about the outbreak of football player Kylian Mbappé: iptwins.com, 2019-04-26), to register  trademarks and domain names.

Another question arises as to the destination of the site. In other words, is it a fan site? Does it give rise to a commercial activity? On this point, reference should be made to WIPO’s summary of WIPO Jurisprudential Overview 3.0, para 2.7.

More rarely, in the presence of several rights holders, panelists may have to make sure that claimant does have the right on trademarks (WIPO, D2002-0616, The Hebrew University of Jerusalem v. Alberta Hot Rods, October 7, 2002).

In any case, we always recommend registering the domain name(s) that appear to be essential in the context of a long-term communication strategy. The sooner the better, as homonyms having undoubted legitimate interest may be very effective in managing trademarks and domain name portfolios (eg, WIPO, D2000-1578, Dr. Werner Kupper [Executor of the Estate of Late Herbert von Karajan] and Eliette von Karajan v. Karajan Pty Ltd., February 5, 2001).

Non exhausive list of extra-judicial procedures initiated by rights holders:

December 11, 2019NAF FA1909001861755, Steve Jobs Archive, LLC v. jongsubkim, December 11, 2019Transfer
July 10, 2019NAF, FA1908001859584, Escobar, Inc. v. Neil Okrent / Ivan Munguia, October 7, 2019)Transfer
May 15, 2019WIPO, D2019-0372, The Trustees for the time being of the Nelson Mandela Foundation Trust v. Domains By Proxy, LLC / Rafael Trevisan, Trevis, Inc., May 15, 2019Transfer
August 15, 2017WIPO, D2017-1236, The Estate of Alberto Aguilera Valadez v. Web Enterprises, Inc., August 15, 2017Transfer
August 9, 2017WIPO, D2017-1249, The Estate of Alberto Aguilera Valadez v. Edinson R. Ramirez, August 9, 2017Transfer
October 5, 2015NAF, FA1509001635934, Estate of Frederick Mark Linkous v. Mroczek, Matthew, October 5, 2015Transfer
January 12, 2015WIPO, D2014-1945, The Estate of Paul Flato v. Newcal Galleries Ltd., January 12, 2015Denied
May 21, 2014WIPO, D2014-0446, Henry Ford Estate v. Moniker Privacy Services / Leon Georgiou, May 21, 2014Transfer
December 16, 2013WIPO, D2013-1855, Legião Urbana Produções Artísticas Ltda. and Giuliano Manfredini v. Domain Admin, Epik.com Private Registration / Yoko Sayuri, December 16, 2013Transfer
May 13, 2013NAF, FA1304001492383, Estate of Malcolm McLaren v. Paul Nordstrom August, May 13, 2013Denied
April 12, 2012WIPO, DES2012-0010, Trustees of the Marlon Brando Living Trust c. Alex Lapuerta, 12 de abril de 2012Transfer
January 30, 2012NAF, FA1112001418188, Estate of James Brown v. Owned by LAC Music - Jack Bart c/o Gregory J. Chamberlain, January 30, 2012Denied
February 24, 2011NAF, FA1101001369537, Amanda De Wolf (formerly Moon) and The Estate of Keith Moon v. Liftoff Domains c/o Capital D., February 24, 2011Transfer
April 9, 2010WIPO, D2010-0248, Mr. Cinar Orge Saylan and Mr. Caglayan Orge Saylan v. GKG.NET Domain Proxy Service/The Fact Co., Winston Smith, April 9, 2010Denied
March 25, 2009WIPO, D2009-0334, The Estate of Jim Morrison a/k/a Lou and Pearl Courson v. Rick Sentieri, Communication Services Group, March 25, 2009Transfer
March 5, 2009WIPO, D2009-0067, Eventus Management, Inc. v. Twenty Four Hours, LLC, March 5, 2009Transfer
August 8, 2008WIPO, D2008-0832, Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods, August 8, 2008Transfer
July 18, 2008WIPO, D2008-0778,   Jacques Ch., Dominique Ch., Olivier Ch., Gilles Ch., Jean-Jacques Ch., Patrick Ch., Sybille G. née Ch., and Florence B. v. MindViews LLC , July 1 8, 2008Denied
December 11, 2007WIPO, D2007-1306, Die Marlene Dietrich Collection GmbH v. Johan Duplesis Du Plesis, November 12, 2007Transfer
November 2, 2007NAF, FA0709001076568, Ellen G. White Estate, Inc. v.   Cary   Mayo c/o   Calvary   Community   Church, November 2, 2007Denied
October 5, 2007ADR.EU, The JRR Tolkien Estate Limited v. Haik Tonoyan, 2007-05-10Transfer
June 18, 2007WIPO, D2007-0221, Estate of Francis Newton Souza v. ZWYX.org Ltd., June 18, 2007Denied
May 14, 2007NAF, FA0703000944826, Courtney Love v. Brooke Barnett, May 14, 2007Denied
October 18, 2006WIPO, D2006-0968, Rhino Entertainment Company v. DomainSource.com, Inc., October 18, 2006Transfer
October 4, 2006NAF, FA0608000780199, Amanda De Wolf (formerly Moon) and the Estate of Keith Moon v. Dennis Schimka, October 4, 2006Transfer
September 18, 2006NAF, FA0607000758614, First American Real Estate Solutions L.P. v. Manila Industries, Inc.Denied
July 11, 2006WIPO, D2006-0442, Association pour la Défense et la Promotion de l’œuvre de Marc Chagall Dite « Comité Marc Chagall » v. Valery T., July 11, 2006Transfer
June 16, 2006NAF, FA0605000702606, The Estate of Dorothy Dandridge v. Dick Lobin, June 16, 2006Transfer
March 8, 2006WIPO, D2006-0103, The Estate of Cheri Blum v. k, j, March 8, 2006Transfer
February 26, 2006WIPO, D2005-1156, Other Half Entertainment v. Jason Fiore aka One Stor, February 6, 2006Denied
February 17, 2006NAF, FA0512000610713, Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate v. Konstantinos Zournas, February 17, 2006Transfer
October 31, 2005WIPO, D2005-0803, Estate of Frank Gorshin v. [no name provided in the Whois] aka Terry Martin, October 31, 2005Transfer
September 15, 2005NAF, FA0508000530332, Estate of Hunter S. Thompson v. Mitchell Moore, September 15, 2005Transfer
August 29, 2005NAF, FA0506000503817, The Estate of Marlon Brando v. WhoisGuard c/o WhoisGuard Protected, August 29, 2005Denied
August 16, 2005NAF, FA0506000505502, The Estate of Marlon Brando v. thewordbank twb, August 16, 2005Transfer
August 3, 2005NAF, FA0506000491647, The Heirs of Bruce Lee and Concord Moon LP v. Martin Eng, August 3, 2005Transfer
June 9, 2005WIPO, D2005-0165, Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-  Transfer
March 25, 2005WIPO, D2005-0086, Wal-Mart Stores, Inc. and Mrs. Helen Walton v. Bestinfo/David Webb, March 25, 2005Transfer
November 11, 2004WIPO, D2004-0723, Fondation Le Corbusier v. Mercado M., November 11, 2004Transfer
March 26, 2004WIPO, D2004-0001, 2001 White Castle Way, Inc. v. Glyn O. Jacobs, March 26, 2004Denied
January 8, 2004WIPO, D2003-0833, JRR Tolkien Estate Limited v. tolkien.net, January 8, 2004Transfer
December 26, 2003WIPO, D2003-0837, JRR Tolkien Estate Limited v. Network Operations Center, Alberta Hot Rods, Transfer
May 27, 2003NAF, FA0302000144631, CMG Worldwide, Inc. v. Humphrey Bogart Club, May 27, 2003Denied
March 27, 2003WIPO, D2003-0036, Estee Lauder, Inc. v. Jeremy Stamper d/b/a Pon, March 27, 2003Denied
October 7, 2002WIPO , D2002-0616, The Hebrew University of Jerusalem v. Alberta Hot Rods, October 7, 2002Denied
August 6, 2002WIPO, D2002-0496, Indivision Picasso v. Manuel M. F., August 6 , 2002 Transfer, with dissenting opinion
January 4, 2002NAF, FA0112000102746, Jimmie Vaughan, Independent Administrator for the Estate of Stevie Ray Vaughan v. Domain Sales, This Domain Name is For Sale, January 4, 2002Transfer
December 18, 2001WIPO, D2001-1234, Herederos de Manuel De Falla C.B. v. Music Sales Group, December 18, 2001Transfer
October 25, 2001WIPO, D2001-1042, Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, October 25, 2001Denied
October 21, 2001WIPO, D2001-0879, Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. O, October 21, 2001Transfer
May 2, 2001WIPO, D2000-1578, Dr. Werner Kupper [Executor of the Estate of The late Herbert von Karajan] and Eliette von Karajan v. Karajan Pty Ltd, February 5, 2001Denied
January 19, 2001NAF, FA0012000096280, New Life Church and Literary Foundation v. Private Business a/k/a Virgil Howard, January 19, 2001transfer
January 12, 2001NAF, FA0011000095966, CMG Worldwide, Inc. v. Lombardi,   January 12, 2001Transfer
December 15, 2000WIPO, D2000-1459, David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, December 15, 2000Transfer
November 8, 2000NAF, FA0009000095641, CMG Worldwide, Inc. v. Naughtya Page, November 8, 2000Transfer
November 7, 2000NAF, FA0009000095645, CMG Worldwide, Inc. v Steve Gregory, November 7, 2000Transfer
October 10, 2000WIPO, D2000-0773, Estate of Stanley Getz aka Stan Getz v. Peter Vogel, October 10, 2000Transfer
October 2, 2000NAF, FA0005000094909, CMG Worldwide, Inc. v. Eric Dluhos, October 2, 2000Transfer
September 28, 2000eResolution, AF-0346, Estate of Tupac Shakur v. Shakur Info. Page, September 28, 2000Transfer
September 27, 2000WIPO, D2000-0673, Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc., September 27, 2000Denied, with dissenting opinion
May 31, 2000NAF, FA0004000094661, CMG WORLDWIDE, INC. VS. ALESSANDRO BOTTAI, May 31, 2000  Transfer
April 11, 2000NAF, 0002000094187, CMG WORLDWIDE, INC. VS JAMES DEAN INTERNET CLUB, April 11, 2000Transfer

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