## Facts

- Julia Fiona Roberts is a famous U.S. motion picture actress whose name had significant public recognition and goodwill before 1998.
- Roberts asserted that, through her fame and media exposure, she had acquired an unregistered (common-law) trademark in the name “Julia Roberts” before the disputed domain was registered.
- In November 1998, Russell Boyd registered the domain name `<juliaroberts.com>`.
- Boyd used the domain for a website whose content was not meaningfully connected to Roberts; at one point, the site displayed a photograph of another woman (identified in the record as “Sari Locker”).
- Boyd placed `<juliaroberts.com>` for auction on eBay.
- Boyd had registered more than 50 other domain names that matched the names of well-known celebrities.
- Roberts filed a UDRP complaint with the WIPO Arbitration and Mediation Center seeking transfer of the domain name, alleging (1) identity/confusing similarity to her unregistered trademark, (2) no rights or legitimate interests, and (3) bad-faith registration and use.
- Boyd did not meaningfully rebut the first two elements, but he contested bad faith, stating he registered the domain because he was a fan and claiming he acted in good faith.
- A three-member WIPO administrative panel was appointed to decide the dispute; the panel declined to consider a reply submission Roberts attempted to file after the response.

## Issues

1. Whether `<juliaroberts.com>` is identical or confusingly similar to a trademark or service mark in which Roberts has rights, including common-law rights in her personal name.
2. Whether Boyd has rights or legitimate interests in `<juliaroberts.com>`.
3. Whether `<juliaroberts.com>` was registered and is being used in bad faith under UDRP ¶ 4(a)(iii).

## Decision

- The panel held that Roberts proved all three UDRP elements and ordered transfer of `<juliaroberts.com>` to Roberts.
- The panel found Roberts had common-law trademark rights in “Julia Roberts” because the name had sufficient secondary association with Roberts and her services; UDRP standing did not require a registered mark.
- The panel found `<juliaroberts.com>` was identical to Roberts’s common-law mark for purposes of UDRP ¶ 4(a)(i).
- The panel found Boyd lacked rights or legitimate interests under UDRP ¶ 4(a)(ii) because he had no relationship with or permission from Roberts, registered the domain after her rights had accrued, and used the site in a way that was not credibly connected to Roberts (including content unrelated to her).
- The panel found bad faith under UDRP ¶ 4(a)(iii), relying on Boyd’s pattern of registering celebrity-name domain names and his decision to auction the domain on eBay; taken together, these facts supported an inference that the registration and use were in bad faith rather than a bona fide fan activity.

## Legal Principles

- UDRP complaints may be based on unregistered/common-law trademark rights; a complainant need not own a registered trademark if the evidence shows protectable rights (including rights comparable to passing off) in the relevant name or mark.
- A personal name can function as a trademark for UDRP purposes when it has acquired secondary meaning identifying the complainant and the complainant’s services.
- A domain name that exactly matches the complainant’s name/mark (aside from the gTLD) satisfies the “identical or confusingly similar” requirement of UDRP ¶ 4(a)(i).
- Lack of authorization, absence of a bona fide offering of goods or services, and use not credibly connected to a genuine noncommercial or fair use can support a finding of no rights or legitimate interests under UDRP ¶ 4(a)(ii) and ¶ 4(c).
- A respondent’s pattern of registering domain names corresponding to the names/marks of others is evidence of bad faith under UDRP ¶ 4(b)(ii), particularly where it blocks the rightful holder from registering the corresponding domain.
- Offering the disputed domain name for sale (including through an auction) may support bad faith, especially when combined with other evidence such as a pattern of similar registrations.

## Conclusion

In *Julia Fiona Roberts v. Russell Boyd*, the WIPO panel ordered the transfer of `<juliaroberts.com>` after finding that Roberts had common-law trademark rights in her famous name, the domain was identical to that mark, Boyd lacked any legitimate interest in the registration or use, and his pattern of celebrity-name registrations together with auctioning the domain showed bad-faith registration and use under the UDRP.


Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (2000)