UDRP: stevejobs.com, transferred 20 years after registration

The year 2019 was marked by the transfer of several domain names identical to the names of celebrities, in particular kingofpop.com (iptwins.com, 2019-07-11), pabloescobar.com (iptwins.com, 2019-10-16) and mandela.org (iptwins.com, 2019-07-27). Stevejobs.com (NAF FA1909001861755, Steve Jobs Archive, LLC v. Jongsubkim, December 11, 2019, transfer) should be added to this list.

This domain name was registered in 1999 by a South Korean national. The UDRP procedure was initiated by  Steve Jobs Archive, LLC, the company that owns the “Steve Jobs” trademark. The three-member commission did not rule on the admissibility of the request, made some twenty years after the registration of the domain name. This delay recalls that which had elapsed in the cases of pabloescobar.com (20 years) and mandela.org (19 years). In both cases, transfer requests were authorized. In the present case, it is clear that the 20-year period was not an obstacle either. The defendant had relied on this particularly long period of time to raise the counter argument of reverse domain name hijacking, but in vain. The panel refused to recognize the abusive nature of the complaint.

On the contrary, the panel considered that the defendant had registered and used the domain name steve jobs.com in bad faith:

The Panel finds that Internet users who are directed to the disputed domain name’s resolved website are likely to believe that they have successfully accessed a website related to, or authorized by, Steve Jobs or his successors. Once on the site, viewers are presented with the option to contact stevejobs.com.manager@gmail.com for consulting services as well as with links relaying technology news. Confusion as to whether the domain, website or its services are related to, or authorized by, Steve Jobs or his successors, likely causes engagement with the owner of the website and email account. The Panel agrees that such a use of the disputed domain name, to lure consumers and solicit business, constitutes bad faith use in violation of Policy ¶ 4(b)(iv). See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting internet traffic to his website); ESPN, Inc. v. Ballerini, FA 95410 (Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website); Bama Rags, Inc. v. Zuccarini, FA 94380 (Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).”

As is often the case in similar situations, the interest of the decision relates to the existence of a trademark (see iptwins.com, 2019-07-27). Obviously, no one would challenge the notoriety of “Steve Jobs”. But it appears from the UDRP decision that it was only after 1999 that the name “Steve Jobs” was registered as a trademark (and in countries other than South Korea). Hence the following questions: (i) must the trademark be registered in the country of the defendant? and ii) was there an earlier “Steve Jobs” trademark, even an unregistered one (common law trademark) to serve as an enforceable right?

To the first question, the panel replied in the negative. The disputed domain name being registered with a generic top level domain (.com), it could not be otherwise. Indeed, it is conceivable that certain national registries (in other words, the States administration in charge of the ccTLDs) require evidence of the existence of a trademark (preferably, a registered trademark) in the territory concerned in order to obtain the transfer of a domain name in the context of judicial or extra-judicial proceedings. But in the case of generic top level domain, there is no reason for the plaintiff to prove the existence of a trademark in the country of the defendant. In this regard, the panel could very legitimately rely on paragraph 1.1.2. from the compilation of WIPO jurisprudence:

“Considering in particular the global nature of the Internet and the domain name system, the jurisdiction or jurisdictions where the mark is valid are not considered relevant for the assessment of the commission under the first element.” (WIPO Jurisprudential Overview 3.0, para. 1.1.2).

In other words, the principle of territoriality of trademarks does not apply in extra-judicial procedures concerning gTLDs.

To the second question, the panel saw fit to start by recalling the following principle:

While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.

The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.

Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.” (WIPO Jurisprudential Overview 3.0, para. 1.1.3.).

The point is to draw attention to the exceptional nature of the case, which is due to the notoriety of Steve Jobs, probably far greater than it was in 1999.

In any event, research prior to 1999 made it possible to verify that Steve Jobs had actually used his name as a trademark. Such proof did not seem very difficult for the company Steve Jobs Archive, the exclusive property of Ms. Jobs, who could simply submit press articles to win the conviction of the panel.

Non-exhaustive list of extra-judicial procedures initiated by beneficiaries:

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