In the late 1980s, Michael Jackson was proclaimed “King of Pop”. On June 25, 2009, the planetary icon “left the stage”. A few years after his death, Gourmetgiftbaskets.com, Inc. acquired the domain name kingofpop.com which previously was used to designate a fan site. On February 25, 2016, Triumph International, Inc. (a company created by Michael Jacskon in 1980), John Branca and John McClain (executors of Michael Jackson’s estate) sued Gourmetgiftbaskets.com, Inc. in California for the purpose of obtaining the transfer of the kingofpop.com domain name (Triumph International, Inc. and Al V. Gourmetgiftbaskets.Com, Inc.). The plaintiffs considered that the defendant had committed the following civil torts: false and misleading association (15 USC § 1125 (a)), trademark dilution (15 USC § 1125 (c)), cybersquatting (15 USC § 1125 (d) and California Business and Professions Codes § 17525), and California common law trademark infringement. The plaintiffs sought a declaratory judgment seeking recognition that Gourmetgiftbaskets.com did not hold any rights in the disputed domain name.
In its defense, Gourmetgiftbaskets.com attempted to justify the use of the domain name kingofpop.com by a commercial activity related to the sale of… popcorns. Was there a wink to the video of Thriller?
Finally, the parties settled rather quickly. However, it is only recently that the kingofpop.com domain name has been redirected to the michaeljackson.com official website. This delay, of about three years between the date of the settlement agreement and the date of the actual transfer of the domain name, can be explained by the likely inclusion of a clause provided for this purpose. This is a practice that is not uncommon and, in the absence of any urgency (if the dispute does not concern the primary domain name), it allows the domain name holder to ensure a certain level of financial stability during a specified period of time. Such a clause is perfectly adaptable. Indeed, it is possible to imagine, for example, a percentage of the turnover of the website benefiting from the contentious domain name.
Heirs and estates frequently have to face cybersquatting issues. The case law is full of examples.
The first legal point that arises is that of the very existence of a trademark. Indeed, people with a certain level of celebrity do not systematically register their official name, their artist name or other pseudonyms as trademarks. For example, the heirs of the painter and art collector Caillebote, who had not demonstrated the existence of a mark, could not obtain the transfer of the domain name caillebotte.com (“UDRP: Caillebotte.com “, egillet.com, 2016-06-07, in French). In contrast, Picasso’s successors (WIPO, D2002-0496, Indivision Picasso v. MF Manual, August 6, 2002), Van Ghog’s successors (WIPO, D2001-0879, Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. O, October 21, 2001) and those of Chagall (WIPO, D2006-0442, Association for the Defense and Promotion of the Work of Marc Chagall Dite “Marc Chagall Committee” v. Valery T., July 11, 2006) were successful. Admittedly, in most common law countries, rights holders can benefit from a so-called “common law” trademark. However, geographically and economically, these territories exclude notably the European Union, China or Japan. Moreover, the potential existence of rights in a US common law trademark does not necessarily guarantee the transfer of the domain name if it has been registered several years before the filing of a trademark (WIPO, D2014-1945, The Estate of Paul Flato v. Newcal Galleries Ltd., January 12, 2015; WIPO, D2004-0001, White Castle Way, Inc. v. Glyn O. Jacobs, March 26, 2004; NAF, FA0302000144631, CMG Worldwide, Inc. v. Humphrey Bogart Club, May 27, 2003). It is therefore very strongly advised to celebrities, but also to those who are in likely to become famous (v., eg about the outbreak of football player Kylian Mbappé: iptwins.com, 2019-04-26), to register trademarks and domain names.
Another question arises as to the destination of the site. In other words, is it a fan site? Does it give rise to a commercial activity? On this point, reference should be made to WIPO’s summary of WIPO Jurisprudential Overview 3.0, para 2.7.
More rarely, in the presence of several rights holders, panelists may have to make sure that claimant does have the right on trademarks (WIPO, D2002-0616, The Hebrew University of Jerusalem v. Alberta Hot Rods, October 7, 2002).
In any case, we always recommend registering the domain name(s) that appear to be essential in the context of a long-term communication strategy. The sooner the better, as homonyms having undoubted legitimate interest may be very effective in managing trademarks and domain name portfolios (eg, WIPO, D2000-1578, Dr. Werner Kupper [Executor of the Estate of Late Herbert von Karajan] and Eliette von Karajan v. Karajan Pty Ltd., February 5, 2001).
Non exhausive list of extra-judicial procedures initiated by rights holders:
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