## Facts

- Israel Harold “Izzy” Asper, a prominent Canadian media executive, filed a UDRP complaint seeking transfer of the domain names izzyasper.com, izzyasper.net, and izzyasper.org.
- The respondent, Communication X Inc. (associated with Peter Zahoruk), registered the disputed domain names corresponding to Asper’s personal name.
- An email sent from an address associated with counsel contacted one of Asper’s companies about Zahoruk’s registration of the domains, implying the domains might be available for purchase; the message was later forwarded to other media organizations.
- The respondent used the domains for a satirical online game criticizing Asper and his media influence.
- Asper did not show that “Izzy Asper” was registered as a trademark, and the evidentiary record of trademark-like commercial use of the name was limited.

## Issues

1. Whether Asper had rights in a trademark or service mark in the personal name “Izzy Asper” sufficient to satisfy UDRP paragraph 4(a)(i).
2. If so, whether the respondent lacked rights or legitimate interests in the domain names, including whether noncommercial satire or criticism could qualify as a legitimate interest under the UDRP.
3. If the first two elements were met, whether the domain names were registered and used in bad faith, including for sale or improper leverage.

## Decision

- The panel denied the complaint and declined to order transfer of izzyasper.com, izzyasper.net, and izzyasper.org.
- The panel concluded Asper failed to prove the threshold requirement of trademark or service mark rights in “Izzy Asper,” including common-law rights based on secondary meaning.
- Because the complaint failed on the first element of UDRP paragraph 4(a), the panel did not need to make definitive findings on legitimate interests or bad faith.

## Legal Principles

- Under UDRP paragraph 4(a), a complainant must prove all three elements: (i) identical or confusingly similar to a mark in which the complainant has rights; (ii) no respondent rights or legitimate interests; and (iii) bad-faith registration and use.
- Personal names are not automatically protected under the UDRP; the complainant must show the name functions as a trademark or service mark (including through common-law rights and secondary meaning).
- Notoriety or public prominence alone does not establish UDRP “rights” in a personal name; evidence must demonstrate distinctive, source-identifying commercial use.
- When the complainant fails to establish trademark rights under paragraph 4(a)(i), the panel may deny relief without reaching paragraphs 4(a)(ii) and 4(a)(iii).

## Conclusion

The panel denied transfer because Asper did not prove that his personal name had acquired trademark significance through evidence of trademark-like commercial use or secondary meaning, making him unable to satisfy the UDRP’s threshold requirement of “rights” in a mark.


Asper v. Commc’n X Inc., WIPO Case No. D2001-0540 (WIPO Arb. & Mediation Ctr. 2001)