November 16, 2005

Domain name identical to a trademark that does not exist at the time of the registration

Melania Trump is an American celebrity. She is known as Melania Trump since her marriage with Donald Trump in January 2005. On November 1, 2005, the domain name was transferred to her.

What can we learn from this decision? First, that it may only take 10 months to establish a common law trademark right in a name. We know that in the UDRP procedure, celebrities who use their names for commercial purposes could establish common law rights in their names. It is not the length in time of the fame that is important, what the panel takes into account is only the fame: "the Complainant did not begin using her current name for commercial and professional purposes until her recent marriage to Donald Trump in January 2005 is a complicating factor, but there seems little doubt that the public has come to know the Complainant by the name “Melania Trump”, and the Panel finds that the Complainant’s use of that name in commerce for the direct marketing of her services and to promote the goods or services of others is sufficient to convey trademark or service mark rights in the name."

Second, the domain name was registered 8 months before Melania Trump became Melania Trump! The domain name owner knew she was going to marry Donald, and registered the name before her wedding and name change. Is it bad faith? To the panel, "when the respondent is aware of the complainant and the circumstances indicate that the aim of the registration was to take advantage of potential complainant rights, bad faith can be found". This reminds previous decisions where cybersquatters bought domain names that combined the brands of two companies that were to merge. But there were rights on the marks that were used in the disputed domain name. In this Melania Trump case, bad faith was obvious, and there is no reason to criticize the decision. But this decision interestingly leads to grant a sort of retroactive protection on a trademark the complainant was to use. Is my interpretation too extensive?