06 August, 2007
A World Intellectual Property Organisation ('WIPO') panellist has ordered the transfer of the domain names freshprince.com, freshprince.net and freshprince.org to the actor and musician Will Smith.
Many of you may recall the popular programme the "Fresh Prince of Bel Air", from which the actor Will Smith derived his stage name "Fresh Prince". It was held that the domain names were identical or confusingly similar to Will Smith's stage name and that the registered holders of the domain names did not have any legitimate rights in the domain names. The reasoning behind this decision is that the domain names were found to have been registered in bad faith because they were used to direct traffic to a website which generated revenue for the registered holders and ultimately they had procured a financial benefit out of Will Smith.
There are two main issues that come out of this decision, firstly that the WIPO panellist accepted that although Will Smith did not own a registered trade mark for his stage name, he had acquired substantial common law rights in the name through his television appearances in the "Fresh Prince of Bel Air" and extensive music sales under his performance name.
It is well known that "Cyber squatting" is prevalent in today's society and that a number of celebrities have successfully obtained transfers of domain names which were identical or similar to their real names. This case goes further in that it protects Will Smiths rights not in his REAL name but in his stage name.
This therefore makes us all aware that we must be careful when registering domain names. Cyber Squatting is not permitted and is actually discouraged by WIPO and in summary this case highlights their extensive view on such acts and how the scope for the potential success of such cases is being widened.
Should you require any further information in relation to registering a domain name or alternatively if you are looking to register a trade mark or any other form of intellectual property, please contact one of our Business Law solicitors.