Rescuing Celebrity website names
By Prashant Reddy

A couple of months ago distinguished cricketer Kapil Dev, at the function to inaugurate the .Asia domain names was quoted as saying:  “Yes, I lost out on securing KapilDev.com and KapilDev.in for myself”.  I was intrigued and outraged at the possibility of such an eminent cricketer not having access to his domain names, and decided to explore the legal options available to this ace cricketer.

Before actually going into the law we randomly investigated the ownership of a couple of celebrity websites such as amitabhbachchan.net, vluvshahrukh.com and diyamirza.org. All three sites have put up disclaimers that they are not official fan-sites and that they do not in any way have contact with the celebrity in question.

A search of the companies authorized to register website names, confirmed that none of these websites were in the names of the celebrity or their fan clubs. Each of these websites also hosts several hundred advertisements for which they get paid by Google Adsense. Considering that these websites are top hits in a Google search I’m guessing these websites could earn substantial Ad-revenue.  Google Adsense provides advertising to any website that signs up and the website owner is paid a commission if someone clicks on the advertisement.

While it is very true that the celebrity in question may not even have a problem with such websites, the question remains as to what is the position of law if the celebrity wanted to regain control of the website – can he or she do so?

Well the answer is yes – celebrities can in fact regain control of domain names under the common law doctrine of ‘Publicity Rights’. The ‘publicity rights doctrine’ basically bestows upon a celebrity the right to control the manner in which his name is exploited either for commercial or non-commercial objectives. The rationale for this common law doctrine as outlined by legal documents is three fold:

1) Economic rationale – It provides incentives to promote creativeness and achievement i.e. sportspersons sometimes earn more from celebrity endorsements of particular goods than from the sport itself.
2) Consumer Protection Rationales for the doctrine – It protects consumers from buying goods that a particular celebrity has not endorsed for reasons ranging from poor quality to unethical business practices.
3) The moral justification theory – i.e. a person should be allowed to reap the ‘fruits of his labour’ especially when celebrities (except for Paris Hilton) spend so much time, money and effort in building up their reputations and brands in the market.

As most of you must be know .com, .org, .net disputes are resolved through WIPO arbitrations under the ‘Uniform Dispute Resolution Policy’.  In the last decade WIPO has arbitrated several such cases involving super stars like Pretty Woman star Julia Roberts, Patricia Ford, Nicole Kidman and others. One such case involved Mr. Ratan Tata who is a well known Indian businessman. In each one of these aforementioned cases the arbitration ended in favour of the celebrity.

In January,  2008 the Delhi High Court ruled that a cyber squatter had to handover the website AnilAmbani.com to the Mumbai-based billionaire businessman.

If the celebrity can argue these three points in their favour they will be able to regain control of that particular domain name. It is quite surprising that Indian celebrities have been so lax about their IP rights over the internet. Apart from the enormous commercial benefits that may accrue from the website it is also necessary to protect the domain names from being used for malicious or derogatory purposes.

Techgoss note:  Prashant Reddy has done a more detailed article for IP blog SpicyIP.  You can read his full article at SpicyIP