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Still a babe, but
already being merchanded |
While cats tend to have their kittens in multiples and with surprising frequency, members of the British Royal Family produce their offspring only occasionally and at highly irregular intervals. Much interest has recently focused on a rare breeding pair, the Duke and Duchess of Cambridge. To the great excitement of the world's media, this couple have outperformed pretty well every pair of pandas in captivity by producing a small, helpless but commercially valuable baby (such offspring is termed a "prince", of which a small number will metamorphose into a fully-fledged "king") within little more than two years of their nuptials. But the baby is in constant danger from the depredations of ruthless cybersquatters. Guest authors Simon Bennett and Rachel Cook (Fox Williams LLP) take up the tale:
While some people may have been camping out outside St Mary’s Hospital, Buckingham Palace or Kensington Palace, and others were wondering if there was anything else happening in the world, there were clearly some people sitting by their computer waiting to press “send” on a domain name application as soon as the baby’s name was announced.
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In a cunning but unsuccessful attempt to avoid the attention
of the media, the Duke (left) and Duchess (right) picnic
in Green Park while disguised as pandas |
The name George Alexander Louis Windsor was announced on 24 July – which was bad news for the bookies with whom “George” had been the favourite. Since then, numerous domain names have appeared with variations of the name or featuring “George”. Many are available for sale to the highest bidder.
In the wake of the royal wedding and the Queen’s Jubilee, the royal family has seen a surge in popularity according to the opinion polls, and merchandise referencing the new third-in-line to the throne will be sought after. Analysts have estimated that the birth of the royal baby could be worth around £240 million to the economy. The Royal Collection Trust, shops on Prince Charles’s Highgrove estate and the Middletons, through their business, are selling royal baby-related goods. But is there any way for the Duke and Duchess of Cambridge to control the use of their son’s name?
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In the era before paparazzi, in the absence of photographers it was necessary
to resort to artists in order to portray the likeness of the royal offspring.
Note the inescapable presence of the Kat ... |
George Alexander Louis Windsor is not a registered trade mark and, based on the current law, any application to register this name as a trade mark would be likely to fail. The name falls squarely within previous case law relating to famous celebrities and characters, for example Tarzan and Elvis. The strong likelihood is that the public will not consider that memorabilia, mementos or a website featuring that name originate from one source, whether it be the royal family or a company connected to the royal family. Even the estate of the prince’s late grandmother, Diana Princess of Wales, failed in its application to register her name for a wide range of goods and services as it was not considered to indicate a trade origin (see Application of Executrices of Diana, Princess of Wales [2001] ETMR 25).
In the United States, trade mark law appears more accommodating. When Ivy Blue Carter was born, Jay Z and Beyoncé applied to trade mark the name; similarly Kanye West and Kim Kardashian are reported to be taking similar steps for North West. However, it could be argued that the royals and by extension the royal baby are perceived as being more public property than other celebrities, particularly those who present themselves as being a “brand”.
The online marketplace is a difficult arena for companies and celebrities in which to control their brand image. Embarrassment is one thing ,but there can also be a more sinister aspect where cybersquatters use domain names for “phishing” scams, impacting consumers and tarnishing a brand image.
Buying potentially squattable domain names up first is one strategy, but the potential for variations, slight misspellings and the number of registries offering domain names for sale will always limit the effectiveness and the bill for purchasing these dubious properties could be endless, particularly as the new gTLDs are launched. Also, only the bigger brands can realistically afford to have a team dedicated to monitoring this activity on a daily basis – individuals or celebrities often will simply not know about a cybersquatter or a problem until it is brought to their attention.
A celebrity will in theory be able to recover a domain name, under the rules of domain name dispute resolution services of the relevant registry, if it can be shown that:
* It/they had rights in the subject matter of the domain name (whether registered or not),
* the party that registered the domain name has no rights or legitimate interest in the domain name,
* the domain name was registered in bad faith; and/or
* the registrant has used the domain name to lure internet users to its site to attract commercial gain.
However, there have been some high profile failures to secure transfers. Sting, for example,
failed to obtain transfer of sting.com. All the circumstances will be considered, including whether the domain name is being used for a legitimate purpose. Generally, the registrant offering to sell the domain name for a substantial sum will point to bad faith -- but this is not determinative. Also, if the registrant has form (previous registrations of a similar type), then the chances of success are higher.
In England and Wales, the Court of Appeal decision in One in a Million [1999] ETMR 61 held registrations such as www.marksandspencer.com, sainsburys.com and virgin.org were passing off and trade mark infringement. The basis for this decision was, however, linked to the facts and the likely perception of any consumer, who it was considered would link them only to the companies and not to the speculating registrant.
Lines of attack may not only be limited to passing off and trade mark infringement. If a website not only uses a name or word mark but also mirrors your website or uses your logos and images, then you may be able to claim copyright infringement. The advantage of copyright is that the issues will focus on whether a substantial part of the work has been copied, not what the customer or internet user think when they reach the site.
Following consultations with brand owners,
ICANN has agreed to implement a service to assist brand owners in response to the fact that the domain name registration system is being opened up: soon there will be around 1,400 new gTLD domain name registries. The Trade Mark Clearing House, launched on 26 March 2013, allows trade mark owners to submit their trade mark to ICANN’s database for a fee, giving them the benefit of early notification of new top level domains and, therefore, the chance to get in early. Also, any member of the public seeking to register a domain name featuring a trade mark will be notified – although cynics may consider they are likely to already know about this. Further, this will not help the Royal couple if the Prince’s name is not registered as a trade mark.
As with all new services it will take some time to assess how effective this proves in reality.
Ultimately, while early registration and vigilance are important, the best form of defence may be to promote your website so heavily that, the more customers see it, the more likely they are to go to it directly rather than relying on the services of a search engine. This could help avoid instances of the public accessing the “wrong website”.
