Representatives of Nelson Mandela’s memory have obtained the transfer of the domain name mandela.org following a UDRP process administered by the Arbitration Center and of Mediation of the World Intellectual Property Organization (WIPO, D2019-0372, The Trustees for the Time of the Nelson Mandela Foundation Trust v. Domains By Proxy, LLC / Rafael Trevisan, Trevis, Inc., May 15, 2019).
The disputed domain name was registered on September 26, 2000. The site was active, but was not seriously used. The site indicated that it was and would remain “under construction forever”. The only notable feature was the ability to download a software. Note that the defendant dared to respond to the UDRP complaint to explain that the domain name was taken from the name of this software “Micro Advanced Normalized Database Exploring for Long Activities” which, once compressed, gave the acronym “MANDELA”! The site also had the following message: “Yeah, this page is under construction forever, but if you need support please send an email to support@mandela.org” or variations on this message“.
The complaint was based on several trademarks, namely:
- “NELSON MANDELA and device”, filed in South Africa on 29 November 1999;
- “NELSON MANDELA”, filed in South Africa on 4 October 2004;
- “NELSON MANDELA” filed in the United Kingdom on 10 May 2005; and
- “MANDELA”, filed in South Africa on October 4, 2004.
Therefore, only the “NELSON MANDELA and device” trademark was filed earlier to the registration of the domain name, and the request for transfer of mandela.org relied exclusively on this trademark, as recalled by the panelist. However, the latter correctly stated that “Mr. Mandela’s reputation on his behalf was well established before the registration of the disputed 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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