Celine Dion Wins URL Case

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.

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