Another Controversial Decision from WIPO’s Domain Name Authority
Jonathan Ive, the Senior Vice President of Industrial Design at Apple, Inc., who designed well-known Apple products iMac, iPod, and iPhone, filed a complaint to transfer or terminate the above domain names claiming that he is internationally renowned within the field of industrial design. He has won a significant number of awards and accolades for his designs, and these domain names relate to him as one of the world’s finest industrial designers. He further asserted that the Respondent is not making legitimate non-commercial or fair use of the disputed domain names by using three of the disputed domain names to direct traffic to the principal website located at .
The Respondent replied to the Complainant’s claims by stating that the Complainant had no sufficient common law right to the domain names despite his worldwide fame and that the Complaint fails to show that the his name has been used in trade for the sale of any products or services. The names “Jonathan Ive” and “Jony Ive” have not been used as a distinctive identifier of associated goods or services and have not acquired secondary meaning or sufficient goodwill that would be sufficient to pass the test for common law trade marks.
Examining the facts, claims, and replies, John Swinson, the sole panelist in the file concluded that UDRP does not specifically protect personal names. Evidence of the complainant’s reputation or renown (on its own) will not necessarily be sufficient to demonstrate unregistered trade mark rights. Moreover, the Complainant’s name has never used in trade and commerce by the Complainant or Apple Inc. despite its worldwide fame. Therefore, there is no need to transfer or terminate the domain names in dispute even though several decisions by the Center go in another direction.