SWITZERLAND — David Pecker, Chairman and Chief Executive Officer of massive tabloid publishing company American Media, Inc. (AMI), has come out on the losing end of his complaint filed with the World Intellectual Property Organization with regards to the domain name DavidPecker.com.The domain, which was registered by Californian businessman Thomas Ferris last February, became subject of a WIPO complaint in November, when Pecker filed a complaint asserting rights to it, despite the fact that he never registered the domain, or register a trademark in connection with his own name.
Part of what upset Pecker, according to documents from the WIPO action, was the fact that the domain “parking” service used by Ferris provided “various links to ‘hardcore’ pornographic websites and an invitation to purchase the domain name.”
While lacking a trademark basis on which to argue for rights to the domain, Pecker contended that his very fame itself, and the strong association of his name to that of his company, provided the basis for claiming that Ferris’ use of the domain was damaging to Pecker and AMI.
In the complaint, Pecker argued, among other things, that he is “known nationally and internationally by the name David Pecker,” and his “high profile name is linked inextricably with AMI and is cited frequently by the media.”
AMI assistant general counsel Michael Antonello submitted an affidavit in the case showing that a Google search for David Pecker’s name produces 389,000 results, and stated that “Mr. Pecker’s name has been indelibly etched in the public mind with AMI.”
“Mr. Pecker’s name is constantly being used to promote AMI,” Antonello stated, according to court documents. “Considerable good will has attached to Mr. Pecker’s name and damage to his name would be irreparable.”
Ferris countered in the complaint that he had no knowledge of David Pecker when he registered the domain, and asserted that there are “many David Pecker’s in the Whitepages, and other such people search websites.”
Ferris explained the presence of the porn links by noting that he had the domain parked at Sedo.com and “(T)he ads on Sedo.com were related to pornographic websites.”
“This is because the word ‘pecker’ is within the domain name, and Sedo.com uses that as a keyword to try and display relevant ads,” Ferris argued, according to WIPO documents.
Douglas Isenberg, assigned as the sole panelist in the case by the WIPO Arbitration and Mediation Center, found that Pecker had simply failed to demonstrate any right to the domain name.
“In this case, Complainant [Pecker] has provided no evidence of his rights in the Disputed Domain Name other than broad assertions that he is ‘known nationally and internationally by the name David Pecker and his high profile name is linked inextricably with AMI and is cited frequently by the media,’” Isenberg wrote in his decision.
Antonello argued that Pecker “possesses a strong common law service mark in his name by virtue of his position as being one of the leaders in the publishing industry… David Pecker’s personal fame and reputation have caused his name, as a leader in the publishing industry and as Chairman and CEO of AMI, to acquire a secondary meaning in the industry… and the public understands his name as referring to AMI.”
Isenberg found Antonello’s argument irrelevant.
“While these statements may well be true, it is nevertheless incumbent on a complainant, except in the most obvious cases, to provide evidence in support of a claim to rights in a personal name for the purposes of the Policy,” Isenberg wrote in his decision. “In view of the limited supported evidence provided in the present case, the Panel’s ability to assess the merits of the claim is accordingly limited.”
“It is also unclear to the Panel on the evidence provided whether, as required by the Policy in such cases, Mr. Pecker ‘has ever used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services’,” Isenberg added, citing another WIPO case, Joacim Brutus-Jensen v. John Adamsen.
Isenberg found that, given the lack of supporting evidence, Pecker simply hadn’t demonstrated that he had grounds for a claim in WIPO court. Isenberg further indicated, however, that Pecker may have other options in terms of pursuing legal action against Ferris.
“Complainant’s [Pecker] lack of success in this proceeding in proving its rights in the name ‘David Pecker’ does not necessarily mean that Complainant has no remedy,” Isenberg wrote.
Citing another WIPO case, Falwell v. Cohn, Isenberg added that Pecker “may have claims under the Anticybersquatting Consumer Protection Act (‘ACPA’), which expressly provides for protection of personal names, or perhaps his actions lie in tort… Complainant is free to pursue his claims in U.S. courts.”
According to documents filed in the case, Pecker attempted to purchase the domain from Ferris for $100, and Ferris refused, saying that the minimum bid he would consider was $1,000.
Ferris later tried to sell the domain to Pecker for $1,600, a move that resulted in further negotiations, during which Parker’s attorney alleges that Ferris “demanded Fifteen Thousand Dollars in order for him to forgo registering other domain names with the name Pecker,” according to documents from the case.
