Out-Law News | 11 Dec 2008 | 2:22 pm | 1 min. read
Whitman was president and CEO of online auction giant eBay for 10 years. She continues to serve on its board of directors. The domain names were registered this year at a time of widespread media speculation that she will run for election as Governor of California in 2010.
The names include megwhitmanforgovernor.com and meg2010.com. At the time of the ruling they fronted web pages that contained adverts and a notice that the names were for sale. The pages produced error messages at the time of writing.
An arbitration panel of the World Intellectual Property Organisation acknowledged that Whitman is internationally famous, but said that was insufficient to prove that the domain names were identical or confusingly similar to a trade mark in which she owns rights.
"Merely having a 'famous' name is not sufficient to establish common law trademark or service mark rights in the name," said sole panellist William Towns. "The Policy itself inherently makes a distinction between the protection afforded trademark rights and rights arising under the law of publicity which has been discussed in further details in several UDRP cases."
"To be entitled to protection under the Policy, however, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant’s personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source," he wrote.
Towns said Whitman's name "must be used such that a relevant segment of the public comes to recognize her name as a symbol that distinguishes her services from those of similarly situated service providers."
He said he was unable to conclude that Whitman "has provided services under the name 'Meg Whitman' as a source-indicator to a segment of the relevant buying public based on her performance as President and CEO of eBay."
Towns concluded that Whitman had failed to demonstrate common law service mark rights in her name and therefore that her claim must fail.
Lee Curtis, a trade mark attorney with Pinsent Masons, the law firm behind OUT-LAW.COM, said the decision highlights the common misconception about common law trade mark rights.
"There is a difference between repute and goodwill," said Curtis. "Having a reputation and having goodwill in a brand or name are not the same. Passing off in the UK and similar common law torts in the US protect someone who has built up goodwill in relation to goods and services. It appears Meg Whitman never traded under her name in relation to any goods and services, she was simply well known as the CEO of eBay."