By Jeff Pietsch
Last week Keith Urban, the Grammy nominated country singer from Australia, sued Keith Urban, a New Jersey painter, for use of the website www.keithurban.com. The suit filed in federal court alleges that Keith Urban, the painter, is infringing on the singer’s trademark rights by misleading internet users into believing that the website is owned by the singer. The website, which has been owned and registered by the painter since 1999, sells oil paintings through the website. Upon entering the site users see the following: “You have reached the site of Keith Urban. To those who don’t know, oil painting is one of my hobbies.” Users are then directed to a link which displays several paintings. The singer claims this use infringes on the Keith Urban trademark by violating the Anticybersquatting Consumer Protection Act, the Federal Trademark Dilution Act, and federal unfair competition laws. This article will examine the claims against the painter under the Anticybersquatting Consumer Protection Act.
The Anticybersquatting Consumer Protection Act (ACPA), established in 1999, provides trademark holders protection from cybersquatters. Cybersquatting is registering and using a domain name in bad faith with the intent of profiting from the goodwill created by another’s trademark. Cybersquatters often seek to sell the domain name to the trademark holder at an inflated price. In the early days of the internet, who ever registered a domain first had rights to that domain name. Many individuals bought names hoping to later sell them for exorbitant sums of money. For example, the generic domain name business.com sold for 7.5 million dollars in 1999. Concerned about this environment as it relates to federally registered trademarks, Congress passed the ACPA. The ACPA gives trademark owners legal remedies against defendants who cybersquat.
In this case, Keith Urban, the singer, alleges that the Keith Urban, the painter, is cybersquatting on the domain name www.keithurban.com. In order to receive relief, the singer must show that the painter:
1) has a bad faith intent to profit from the registered trademark (Keith Urban); and
2) registers, traffics in, or uses a domain name that is identical, confusingly similar, or, in cases of famous marks, dilutive of a mark that is distinctive or famous at the time the domain name was registered.
The Act defines many non-exclusive factors that show bad faith. These include offering to sell or transfer the domain name for financial gain; acquiring similar domain names relating to the same mark; diverting consumers from the owner’s online location to a site accessible under the domain name that harms the goodwill of the mark; supplying false information when registering the domain name; and not using the site for a bona fide noncommercial or fair use purpose.
The court will consider these factors to determine if the painter acted in bad faith in obtaining the domain name. Examining the website, it appears that the painter uses his domain name for commercial purposes, specifically to sell paintings as well as advertisements. Also, the web site does not state that the painter is not the famous singer. In fact, the web page subtly implies that the painter and the famous singer are the same. The message that states, “To those who don’t know, oil painting is one of my hobbies” implies that the owner is someone well known. This creates the appearance that the singer is the owner of the site and also paints as a hobby. The web page also stresses that the paintings are available for sale in a “very limited edition.” This language may cause unwitting fans to purchase limited art work of their favorite singer. These factors show bad faith.
On the other hand, no evidence suggests that the painter is seeking to sell the domain name for a profit. The painter is selling his art but on a very limited basis. The painter does not disclaim that he is not the singer, but he also does not proclaim this fact. A more significant factor favoring the painter is that he registered the domain name in 1999, and the domain name he registered was his actual name. Based on these facts, the court will determine if the painter acted in bad faith.
In addition, the singer must prove that his trademark was famous or distinctive when the painter registered the domain name. The painter registered the domain name in May, 1999. Although the singer was well known in Australia at this time, he was not well known in the United States. In October 1999, he released a self-titled album which produced three top ten country singles over the next two years. In 2001, he won awards for top male country vocalist cementing his status as a star in the music industry. The singer, however, must prove that his trademark Keith Urban was famous at the time the painter registered the domain name in May, 1999. This will be difficult for the singer to establish considering the above facts. If the singer is unable to prove this he was in fact famous at the time of registration, he will not be eligible for relief under the ACPA even if the painter acted in bad faith.
This is not the only recourse for the singer. The singer has also sued the painter on other federal trademark grounds as well as for unfair competition. Although the singer might prevail on these claims, the painter’s registration and use of the domain name before the singer’s mark became famous will be difficult to overcome.
Jeff Pietsch is an associate in the Business, Securities and Commercial Transactions and Intellectual Property groups at Weintraub Genshlea Chediak Tobin & Tobin. Jeff focuses his practice on representing public and private companies.