So, you have made it all the way to the top and you are now so famous that you want to set up a Web site for your fans.

But what do you do when you find that somebody has registered your name as a dotcom address?

As recently as last year, the only effective option would have been potentially expensive litigation to get a court order for the name be transferred to you.

However, the uniform domain dispute resolution policy by the Internet Corporation for Assigned Names and Numbers (ICANN) came into, force at the end of last year-

This policy is enforced through four arbitration bodies approved by ICANN, including those of the National Arbitration Forum (NAP) and the World lntellectual property Organisation (WIPO).

Under the policy, ICANN will transfer a domain name if:

  • it is identical or confusingly similar to a trade mark in respect of which the complainant has rights;
  • the registrant has no legitimate interest in the domain name;
  • the registrant's domain name has been registered and is being used in bad faith.

The first of the Hollywood stars to take advantage of the ICANN policy was Julia Roberts, who took action against Russell Boyd, who had registered the domain name and had set up a Web site under this name.

Mr Boyd also had offered for sale at the auction site.

The WIPO arbitration panel held that all three of the above requirements had been satisfied and that the domain name should be transferred to Julia Roberts.

Of particular interest was the decision that it was not necessary for Julia Roberts to hold a trade- mark registration for the "Julia Roberts" name as she already had rights under US common law.

In Hong Kong, such protection can be found through the tort of passing off, which enables action to be taken if sufficient goodwill has been established in the name.

Traditionally, however, it has been difficult for famous personalities to use passing off to prevent use of their names except in circumstances where they can show that their name is being used in & trade mark sense.

The arbitrators in the claim by Julia Roberts did not fully explain this element of their decision and it leaves open to question the extent to which she had established that the "Julia Roberts" name was capable of protection as a trade mark.

This perhaps forms the basis of Mr Boyd's refusal to transfer the domain name.

ICANN's policy provides that the transfer must be put on hold if the registrant refers the matter to court for resolution.

In the meantime, others have followed Julia Roberts' lead and have filed complaints to recover their names from cybersquatters including singer/actor Gordon Summer (also known as Sting) to recover, singer Madonna to recover, and Hollywood actor Sylvester Stallone to recover

The first claim failed, on the basis that the "Sting" mark had-not been registered as a trade mark in the US by Gordon Summer and a finding by the arbitrators that he had not established common-law rights in such a common word.

The decisions in the remaining claims are expected shortly and, if the claimants are successful, we can expect a host of other stars to be filing complaints. Success may well depend on whether they have had the foresight to register their names as trade marks.

First published in SCMP Technology Post on 19 September 2000.