Jonathan Ive, designer of the iMac, iPod and iPhone, has lost a claim for domain names carrying his name because his name is not a trade mark and because he shuns publicity.
His name is not used enough in commerce to be protected, an arbitrator has ruled.
UK-based Harry Jones registered jonathan-ive.com, jonathanive.com, jony-ive.com and jonyive.com in 2004 and operates a website at those addresses carrying news about and praise for Ive and his designs.
Ive came to international prominence when he designed the iMacs that helped to revitalise computer-maker Apple's fortunes in the late 1990s. He has since also designed the iPod and iPhone for Apple, for whom he works full time.
Apple offered Jones $10,000 for control of the domain names, but Jones had already told the company that he would sell the names for $400,000, and was aware that the company had paid $1 million for the iphone.com domain name.
Ive took a case to the World Intellectual Property Organisation (WIPO)'s arbitration centre under its domain name dispute resolution policy (UDRP), which can transfer domain names under certain criteria.
The first criterion for transfer is that the person seeking to gain control of a domain name demonstrates that they have trade mark rights in it. Ive did not apply for any trade mark registrations for his name until October 2008, and those applications are still pending.
"These applications were filed in October 2008. As they are pending applications, they are not sufficient to show registered trade mark rights," said the WIPO Panel.
A name can, of itself, acquire some of the properties of a trade mark though, the panel said.
"A complainant also has the right to claim a common law mark where there is no registered trade mark," it said. "The usual test to ascertain common law rights applies, namely, considering whether the trade mark has acquired secondary meaning, and become a distinctive identifier associated with the complainant’s goods and services."
"In the case of personal names, the complainant must show that its name/trade mark has been used in trade or commerce. Evidence of the complainant’s reputation or renown (on its own) will not necessarily be sufficient to demonstrate unregistered trade mark rights … previous complainants in these type of cases include authors, actors, artists, performers, athletes, royalty, politicians and business people."
The panel noted that the products Ive has designed are marketed as Apple products and never reference him in their promotion or packaging. It also noted that Ive actively shuns publicity and self-promotion.
Read the entire article here : http://www.theregister.co.uk/2009/05/12/ive_no_address/