Stars Battle Cybersquatters for Rights to Names

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As everyone knows, it’s hard being a celebrity.

The glare of the flashbulbs is irritating. There’s always the chance of tripping and looking like an idiot on the red carpet. And your mansion only has so much room for all those freebies.

But in this Internet age, celebrities must now deal with an altogether new dilemma: people using their names as an online address without their authorization and then trying to get them to fork over cash in exchange for the address.

Since President Clinton signed a federal anti-cybersquatting law at the end of November, a number of celebrities are going to court in an effort to get domain names transferred to their control.

One of the most recent was musician John Tesh, who filed suit earlier this month in federal court in Los Angeles against Celebsites Inc., a Tempe, Ariz.-based company that registered www.johntesh.com for its use.

“It’s kind of Orwellian, like ‘1984,’” Tesh said. “It’s like they’re saying, ‘I’m sorry, you can’t have your name any more.'”

When Internet users go to www.johntesh.com, they are immediately transferred to the Celebsites homepage. Calls and e-mails to Celebsites seeking comment on the lawsuit were not returned.

Tesh follows in the footsteps of Brad Pitt and Kenny Rogers, both of whom have filed similar suits against other companies and individuals.

Rep. James Rogan, R-Pasadena, who helped write the federal anti-cybersquatting law, said the original intent of the bill was to protect companies with an existing trademark.

“I had heard a number of stories things like somebody registering AT & Tphonecard.com; and having people logging in thinking they were going to get phone service, when in fact the person who registered it was just getting their credit card information,” Rogan said. “Then there’s stories of people registering MaryPoppins.com and trying to sell it to Disney. It made me realize that traditional copyright and trademark law is not really recognized in the way e-commerce is being done. Traditional thinking had to be updated.”

As the bill made its way through Congress, protections were added for individuals who are having their names used in bad faith on the Internet.

“The act was passed because there are several individuals and companies trying to take advantage of getting a name, be it Coca-Cola or John Tesh,” said Charles Kenworthy, Tesh’s attorney. “People then try to extort money from that individual or company. Because the Internet is so new, people haven’t had the time to register their names.”

Some celebrities already have a leg up in the battle over who had a name first by placing a “service mark” essentially a personal trademark used for merchandizing on their name. For Rogers, the service mark on record with the U.S. Patent and Trademark Office classifies the singer as part of “entertainment services in the nature of vocal and instrumental musical performances.”

But California law gives even celebrities without a service mark the right to control their publicity, and it is this law that attorneys believe can be cited to vanquish purported cybersquatters.

Pitt filed suit in December against Khalid Alzarooni, a resident of Dubai in the United Arab Emirates, Nidal Abu-Robb, of Kindcaid, Ill., and KMA Visual Design Oy, a company in Finland. Alzarooni and Abu-Robb have registered and maintain the site www.bradpitt.com, while KMA Visual Design Oy operates www.bradpitt.net, according to the suit.

Pitt alleges that use of his name on these sites is a violation of the federal cybersquatting act, along with false designation of representation and a common-law misappropriation of the right to publicity.

Pitt’s publicist refused to comment and repeated calls to his attorney, John Lavely Jr., were not returned.

According to the lawsuit, Alzarooni and Abu-Robb offered to sell bradpitt.com to Pitt for $20,000. It’s also alleged that the Web site advertised that “This domain name is for sale. Contact [email protected] and state your offer.”

Attempts to reach Abu-Robb were unsuccessful and no response to the original complaint has been filed in court. When visitors now go to bradpitt.com, they are greeted with a “site under construction” message.

At bradpitt.net, which once served as a fan site for the actor, Web surfers encounter a notice that the “URL is not active.” Attempts to reach someone at the company headquarters were unsuccessful.

Pitt is seeking transfer of both the domain names to him, as well as up to $100,000 in damages.

“Based on his talent, popularity and hard work, and the artistic and commercial success of many of his films, (Pitt) has, for a number of years, been highly sought after as a motion picture actor, all of which has given his name tremendous value in the entertainment industry and great commercial value with the public,” the lawsuit states.

On Dec. 20, Kenny Rogers and his production company filed suit against Bridal Services Inc., Wedding Referral Services Inc. and businessman Donne Kerestic, a former employee of the companies.

Kerestic’s attorney, Robert Fish of Fullerton, believes that after a series of legal snafus the case is moving toward dismissal, with steps being taken to transfer the registration of KennyRogers.com to Rogers.

“Donne did work for Bridal Services, and they did register the KennyRogers.com Web site,” Fish said. “But Bridal’s out of business and (Kerestic) never had authorization to register the site. So finally we found the old president of the expired company and got his permission to transfer the domain name to Kenny Rogers. One way or another they’re getting the name.”

Fish said Rogers has no connection to the wedding firm, which essentially registered the Web site at random.

Calls to Rogers’ attorney, Lisa Popovich of Los Angeles, were not returned. When a Web surfer now tries to visit kennyrogers.com, it shows that access to the site is “forbidden.”

Fish said the key element behind the cybersquatting law is intent whether or not the registration was done with extortion in mind. “The law is not quite as broad as people think it is,” Fish said. “In our case, (Kerestic) didn’t have intent.”

With all of these cases in the early stages, it remains to be seen how the cybersquatting law will weather the litigation. Kenworthy said the slow evolution of case law is particularly irritating because of the speed with which the Internet is changing.

“Tesh.com right now is (John’s) official site,” he said. “He has big plans for it, and he’s in the middle of being courted by several venture capitalists. But as you grow your official site, its value is being diluted by the rogue sites out there.”

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