Celine Dion Wins URL Case
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When Celine Dion sings "Don't surrender, 'cause you can win...," she ain't just whistling Dixie.
The recording artist, who belts out that verse in "That's The Way It Is," held fast to the motto during a domain dispute over the URL celinedion.com -- and emerged the victor.
The legal battle started in late December, when the celebrity, backed by Sony Music Entertainment, made a filing to the World Intellectual Property Organization's (WIPO) Arbitration and Media Center.
The filing stated that the registration of the celinedion.com domain name to Jeff Burgar, who has registered a number of domains that have URLs identical to the names of celebrities, "was made in bad faith" and misled Internet users in search of information about Dion and Sony.
According to Dion's filing, "Internet users are likely to assume that Ms. Dion's official Web site is at the address celinedion.com and that the address has been used in this way on two Web sites not associated with the respondent (Burgar) and that the respondent deliberately registered the domain name in suit for the purpose of attracting Internet users to his Celebrity 1000 Web site for commercial purposes.
Burgar's statement insisted that "there is no confusing similarity between the complainant's trademarks and the domain name in dispute, the use of the celinedion.com address has recently been changed so as to link to a site which provides pages for a legitimate fan club and that the complainants remain free to adopt other domain names incorporating her name."
In his ruling, Professor William Cornish noted that "Authors and performers can establish trademark rights by either showing that they have registered their names as marks for certain goods or services, or because, through deployment of the names as source indicators in commerce, they have unregistered or 'common law' rights to protection against misleading use.
"While the complainants in this case have not registered Ms. Dion's name as a trademark, it is clear that her fame as a performing artist establishes the kind of reputation which can warrant protections against passing off."
He also noted that Burgar's penchant for obtaining celebrity.com names "gives rise to an evident pattern of conduct in which he stockpiled similar registrations. These prevented the celebrities concerned from securing straightforward.com registration for their name as it is correctly spelled. They, therefore, could not reflect their mark in that particular corresponding domain name. Such conduct falls within the form of bad faith identified in the Uniform Domain Name Dispute Resolution Policy (UDRP), Paragraph 4."
In summation, Cornish noted that Burgar has no rights or legitimate interests in respect of that domain name and that the panel requires that the domain name, celinedion.com, be transferred to the complainant.
However, Dion's win does not set precedent for other celebrities, noted Michael Froomkin, a professor of law at the University of Miami, who says the registering of celebrity names remains a "murky" area.
"All of these cares are decided against criteria," he said. "Plaintiffs in a domain dispute need to have a trademark. With the advent of the Internet, everything is potentially global and people are fighting for the same short words because they are desirable real estate. Trademarks are for things that identify goods, such as Calvin Klein Jeans. Domain names are like addresses and phone numbers. They may resemble trademarks but they aren't."
Celebrities who have won related cases include Madonna and Julia Roberts. Losers in this battlefield include Bruce Springsteen and Sting.