As reported by Fox News, Ron Paul (“Paul”) has filed a Complaint with the World Intellectual Property Organization seeking transfer of the domain names RonPaul.com and RonPaul.org. Paul, a former U.S. Congressman from Texas and three-time candidate for President of the United States, is a well known political commentator and public speaker.
The Complaint alleges that Paul has common law (i.e., unregistered) trademark rights in the “RON PAUL” trademark in the United States by virtue of his use of the mark in connection with books, articles, public appearances and political commentary. The Complaint also alleges that the Registrants of the disputed domain names have no legitimate rights or interest in the domain names, and, in fact, have registered them in bad faith. In support of this contention, Paul alleges that the Registrants offered to sell him the domain names for $848,000 on one occasion and for $250,000 on another.
The domain names at issue were registered in 1999 and 2000 and, according to news reports, were utilized by supporters of Paul during his most recent presidential bid. Not surprisingly, Paul’s supporters have a different view of the dispute, which they expressed in the following statement published on their website:
“Back in 2007 we put our lives on hold for you, Ron, and we invested close to 10,000 hours of tears, sweat and hard work into this site at great personal sacrifice. We helped raise millions of dollars for you, we spread your message of liberty as far and wide as we possibly could. . . Now that your campaigns are over and you no longer need us, you want to take it all away. . .”
One key advantage of trademark rights is the ability to assert those rights to prohibit others from using a domain name that is confusingly similar. The owner of valid trademark rights may file a Complaint with an administrative body such as the World Intellectual Property Organization (“WIPO”) to obtain cancellation or transfer of a confusingly similar domain name under the applicable domain name policy.
In this case, the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”), was the applicable policy. It is not necessary to have a trademark registration in order to file a UDRP Complaint, so long as the trademark owner truly has “common law” trademark rights. Such “common law” trademark rights arise from the owner’s use of the trademark in connection with goods and services in commerce. Since Paul has used his name extensively in connection with books, public appearances and political commentary, he will likely be able to rely upon his common law trademark rights to secure the transfer of the domain names in dispute, provided that the Registrants have no legitimate rights or interest in the domain names.
Had the Registrants used the disputed domain names solely for the purpose of promoting Paul’s candidacy for President, they may have been deemed to have a legitimate fair use interest in the domain names. If it is established, however, that the Registrants offered to sell Paul the domain names for a six figure amount, or that they are benefiting monetarily from the use of the domain names (e.g., through the sale of merchandise or advertising space), they will likely be found to have registered in bad faith and WIPO will ultimately issue an order transferring the domain names to Paul.
