In this insightful guest post, Attorney Paul Keating offers a compelling critique of the recent UDRP decision concerning the domain name SteveJobs.com, arguing that the ruling is fundamentally flawed and represents a concerning expansion of trademark principles beyond their intended scope.
A Flawed Precedent? Analyzing the SteveJobs.com UDRP Decision
The SteveJobs.com UDRP decision has raised significant concerns within the intellectual property community, particularly regarding its interpretation of common law trademark rights for personal names. Attorney Paul Keating expresses profound unease with the ruling, viewing it as an attempt to force a complex legal issue into an ill-fitting framework, largely overlooking critical gaps in evidence and established UDRP precedent. While the outcome might be attributed to an inexperienced foreign Respondent, Keating argues that the panel’s reasoning falls short of expected standards, potentially setting a problematic precedent for future domain name disputes involving famous personalities.
Scrutinizing the Claimant’s Foundation and Trademark Assertions
Keating initiated an independent investigation into the Claimant’s background, revealing several addresses in Palo Alto that appeared to be registered rather than active business locations. Crucially, no operational website associated with the Claimant was found, nor did a reverse WHOIS search at DomainTools yield any registered domain names under the Claimant’s name. In essence, Keating discovered no substantive evidence to confirm the Claimant’s legitimate existence or, more importantly, any demonstrable use of the asserted “Steve Jobs” trademark in commerce prior to the dispute.
Further investigation into the global trademark landscape for “Steve Jobs” through the WIPO Global Brand Database (TMDM) site uncovered 66 registered trademarks. Significantly, 19 of these registrations belong to third parties entirely unrelated to Mr. Jobs. The earliest listed registration, filed in France in September 2011 by Yohann Uzan, predates the Claimant’s earliest filing by several years. While one U.S. registration exists, it lists “Steve Jobs” merely as one among many famous names, without specific commercial intent for a standalone “Steve Jobs” trademark.
The Claimant’s earliest trademark registration dates back to 2018, with numerous subsequent filings in various jurisdictions, all outside of the United States. Keating could find no registration documentation supporting a “first-use” claim that predated this 2018 application. This absence of clear, early trademark usage documentation for the Claimant forms a critical cornerstone of Keating’s argument against the panel’s findings, particularly its conclusion regarding common law rights.
Deconstructing the Panel’s Common Law Rights Determination
Despite the lack of direct evidence regarding the Claimant’s own pre-1999 trademark use, the panel controversially concluded that common law rights for “Steve Jobs” had been established as early as 1999, effectively predating the domain registration. This pivotal conclusion was based on the following assertions made by the Complainant, as highlighted in the decision:
Complainant contends that the name STEVE JOBS has also acquired strong common law trademark rights. The commercial community and international public identify Mr. Jobs as the alter ego of Apple. As CEO, Chairman and advisor to Apple for decades and the renowned visionary behind the company’s creations, Mr. Jobs became inseparably intertwined with the company’s successes and failures. Compl. Ex.E shows Steve Jobs’ connection to Apple and public perception, connecting Mr. Jobs to the successes and failures of the company.
Respondent rebuts that common law trademark rights in a person’s name needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name is insufficient to establish trademark rights in a person’s name.
Complainant states that Steve Job’s personal name has taken on such a cachet that it has become a trademark. See Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005). It further submits a screenshot of an archived news and media database showing the STEVE JOBS name linked to Apple over 10,000 times in articles across the globe prior to December 21, 1999, the date of Respondent’s registration for the
domain (Compl. Ex. H), including in Asia at least 1,247 times prior to the same date, displayed in Compl. Ex. I. After founding Apple, Mr. Jobs served in executive, leadership and chief advisory roles at Apple for about 24 years total. Mr. Jobs supervised the rollout of successful Apple products such as the iPod, Apple iTunes Store, iPhone and iPad, and, at times, successfully requested that efforts on certain products be halted or discontinued to allow the company to focus on more promising endeavors (Compl. Ex. E). Complainant also submits Compl. Ex. F: a few awards and recognitions Mr. Jobs received during and after his lifetime for the contributions, he, through Apple, made to the technology industry as a whole, as well as Apple’s recognition for the same. In 2002, Apple was awarded the Technical Grammy Award for its technical contributions to the music industry. See Compl. Ex. F. Complainant, which is solely owned by Mr. Jobs’ widow, Mrs. Jobs, is the owner of the rights in the STEVE JOBS trademark and has an interest in protecting the STEVE JOBS name from commercial use. The Panel observes that the name ‘Steve Jobs’ has satisfied the factors to consider when determining whether a name has acquired common law trademark protection in the case Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005), namely: (i) the extent to which the commercial community identifies the individual with the company; (ii) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company; (iii) the extent of the personal ownership of the company by the individual; (iv) the degree of personal control that the individual exercises over the enterprise; (v) the extent to which the individual is identified with any major achievements of the enterprise; and (vi) whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.
The Problematic Reliance on the Chung, Mong Koo Precedent
Keating highlights that the panel’s reasoning heavily draws from the outcome of the Chung, Mong Koo and Hyundai Motor Company case, a default UDRP decision from 2005. Keating argues against awarding precedent status to default cases, where the respondent does not actively participate, as they often lack a robust adversarial examination of facts and legal arguments. However, his criticism extends far beyond this procedural issue.
More critically, Keating points out that the specific, distinguishing facts present in the Chung case are conspicuously absent in the SteveJobs.com dispute. In Chung, compelling evidence demonstrated that the phrase “Chung Mong Koo” was understood in a trademark context because: (1) Hyundai itself had actively used the phrase “Chung Mong Koo” in a clear trademark capacity, and (2) the respondent in that case specifically used the disputed domain name to target Hyundai car owners. Such crucial evidence of direct commercial use of “Steve Jobs” as a trademark by Apple, or direct targeting of Apple customers by the Respondent, was not presented or cited in the present case. This glaring omission renders the application of Chung as a guiding precedent fundamentally unsound.
Ignoring Established UDRP Principles for Personal Names
Keating emphasizes that while Steve Jobs was undeniably linked to Apple, there is no evidence that Apple ever actively marketed or sold its products using “Steve Jobs” as a standalone brand identifier. Mr. Jobs served as an exceptional CEO and spokesperson for Apple, NeXT, and Pixar. Yet, the decision makes no reference to him (or these companies) having sold any specific products or services under his personal name. This distinction is vital for establishing common law trademark rights.
The WIPO index itself offers clear guidance on celebrity claims. Keating cites the well-reasoned statement from the three-member panel in Dr. Michael Crichton v. In Stealth Mode (D2002-0874 michael-crichton.com):
In light of the Second WIPO Domain Name Process, it is clear that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and/or services, i.e. common law trademark rights: The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030; R.E. Ted Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251.
To establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Upon such proof, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services: Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA0205000114437.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview 3.0), specifically section 1.6, directly incorporates the Crichton language. It mandates that establishing a common law right in a personal name requires either (1) proof of the name’s use as a distinctive identifier for goods or services offered under that name, or (2) proof of passing-off—making misrepresentations to the public in a commercial context. Keating vehemently argues that the SteveJobs.com panel appears to have disregarded these well-established guidelines, seemingly seeking to expand these reasoned limitations to cover famous CEOs and similar personalities without sufficient basis.
What makes the SteveJobs.com case particularly egregious, in Keating’s view, is the conspicuous absence of citations to relevant authority beyond the default Chung case. The decision effectively ignored the essential conditions outlined in WIPO Overview 3.0, section 1.6, which are critical for determining common law rights in personal names. The Chung decision itself has been frequently criticized as an outlier that unduly stretches the UDRP beyond its intended scope. Applying Chung in the present case completely bypasses the fundamental principle that mere celebrity status as a business personality is insufficient to secure remedies under the UDRP Policy. The essential analysis must center on whether the celebrity has utilized their personal name in a manner that unequivocally establishes trademark or service mark rights, meaning its use as an indication of the source of goods or services in a commercial context.
The SteveJobs.com decision provides no concrete evidence demonstrating that “Steve Jobs” was used as “a distinctive identifier of goods/services offered under that name.” Nor does it reference any instance of passing-off. While Mr. Jobs was undoubtedly a celebrated CEO and Apple spokesperson, Apple did not market or sell “Steve Jobs” branded products or services. Similarly, Mr. Jobs himself did not engage in such commercial activities. Unlike cases involving famous authors, for instance, there was no mention of any books or movies authored by Mr. Jobs under his own name. The facts cited by the panel are a far cry from those presented in the Crichton case, and indeed, they fail to even approach the specifics referenced in the Chung default case.
The Unanswered Question of Trademark Ownership
Another deeply troubling aspect for Keating is the complete lack of explanation regarding how the Claimant, formed in 2015 according to Delaware records (which do not disclose ownership), came to possess any asserted pre-1999 common law trademark rights. The decision offers no insight into the Claimant’s history or how a company established in 2015 could have succeeded to common law trademark rights that purportedly predated the domain registration in 1999. For such rights to be held by the Claimant, they would necessarily have had to be formally assigned by the original owner. The critical question then becomes: who would have been the rightful owner of such rights?
While one might speculate that Mr. Jobs himself, and subsequently his estate, could have been the original owner, this notion is directly contradicted by the decision’s stated reasoning for the trademark’s existence. The panel explicitly cites only Apple:
The commercial community and international public identify Mr. Jobs as the alter ego of Apple.
Given this statement, the logical conclusion is that any common law rights associated with the “Steve Jobs” name, derived from his commercial activities, would inherently belong to Apple. It would be counter-intuitive to assert that Mr. Jobs, acting as an employee (CEO and spokesperson) for Apple, could simultaneously claim common law trademark rights in his name in direct association with Apple’s commercial endeavors. Legally, an employee’s activities undertaken in the scope of employment are for the benefit of their employer. Therefore, any common law rights generated by his public persona in relation to commercial activity would typically be associated with, and owned by, Apple, not the Steve Jobs estate.
This leads to an even more glaring inconsistency: Apple was not a claimant in this UDRP dispute. In the Chung case, both the individual (Chung Mong Koo) AND Hyundai were claimants. Keating notes that this pattern holds true for virtually all other cases (that he found) that cited Chung with approval; the UDRP claimant was either the entity to which the individual was inextricably linked, or both the individual and the company. The absence of Apple as a claimant is a significant deviation and undermines the very basis of the panel’s argument for common law rights tied to commercial activity. While the Steve Jobs estate may possess publicity rights (which could arguably be assigned to the Claimant), publicity rights alone do not satisfy the UDRP’s stringent requirement for a trademark. The decision conspicuously avoids any reference to “passing off” in the context of establishing trademark rights, further blurring the lines between fame and legitimate trademark ownership.
Ultimately, Keating concludes that the panelists appear to have conflated mere fame with actual trademark status. The undeniable fact that Steve Jobs was famous, while true, is simply insufficient under established UDRP principles to award trademark rights without clear evidence of commercial use as a source identifier.
Dubious Rulings on Legitimate Interest and Bad Faith
Keating expresses similar profound concern regarding the panel’s treatment of the elements of legitimate interest and bad faith. The Claimant asserted that the Respondent’s use was “diversionary,” alleging that the domain was used to direct users to a website containing links unrelated to the “Steve Jobs” trademark. However, the Respondent provided substantial evidence demonstrating continuous registration and ownership of the domain since December 1999. Crucially, the Respondent also stated that he was known as “Steve Jobs Kim” and showed that the domain had been utilized for a variety of purposes over the years. From 2005 to 2009, it was used for PPC (Pay-Per-Click) advertising. For much of 2012, it functioned as a jobs platform, prominently displaying the banner phrase “Steve Jobs Kim.” From 2016 onward, it served as a community portal for the Respondent, again featuring the banner phrase “Steve Jobs Kim Job Site.”
The Panel, however, inexplicably chose to disregard this extensive evidence of the Respondent’s legitimate use, instead focusing narrowly on the supposed common law rights:
The Panel cannot find any evidence that Respondent began to use the name ‘Steve Jobs’ as his nick name prior to December 21, 1999, the date of registration for the disputed domain name.
Keating argues that even assuming the existence of common law rights and their ownership by the Claimant, the Panel’s finding is illogical. The Claimant itself conceded that the Respondent’s use was non-conflicting, stating that the site “contained hyperlinks to content unrelated to Steve Jobs.” There was no evidence to suggest that the Respondent’s site directly conflicted with the asserted trademark or engaged in passing off. The Complainant’s argument that the Respondent had not developed rights in “Steve Jobs” flies in the face of evidence from screenshots.com, which clearly shows consistent use as “Steve Jobs Kim” and “Steve Jobs Kim Jobs Site” since 2012. The mere existence of a trademark cannot, and should not, automatically negate a respondent’s legitimate interests in a domain name, especially when evidence demonstrates the absence of conflict. To rule otherwise would render the second and third elements of the UDRP (legitimate interest and bad faith) utterly meaningless.
When assessing legitimate interest, the Respondent’s burden is merely to provide a “plausible, non-infringing explanation for choosing and registering the domain name.” (Telephone and Data Systems, Inc. v. Protected Domain Services / Daniel Wang, D2011-0435 (WIPO 2011)). The Telephone & Data panel further clarified that a respondent’s rights or legitimate interests are not measured in relation to the interests of the Complainant or any third party. As noted in that case, “Complainant’s registration of the CHOICE trademark does not give Complainant unfettered rights to use the name. Trademark ownership confers no absolute monopoly on a word or symbol.” (Id; citing Jeffrey S. Thompson d/b/a The Wedding Planner v. Wedding Channel.com, lnc. D2002-0086 (WIPO 2002)). Moreover, “Trademark rights are not coextensive with rights to a domain name and thus trademark holders do not have the absolute right to reflect their mark in a domain name.” (Goldberg & Osborne v. The Advisory Board Forum, Inc., D2001-0711 (WIPO 2001)). The UDRP is not designed to balance which party possesses a “better” right. A respondent must prevail if they have established a “potentially legitimate interest in the disputed domain name, and the Complainant has been unable to prove that such interest is illegitimate.” (Borges, S.A., Tanio, S.A.U. v. James English, D2007- 0477 (WIPO 2007; Choice Courier Systems, Inc. v. William H. Kirkendale, D2002-0483 (WIPO 2002)). The Panel’s findings on legitimate interest starkly contrast with these well-established UDRP principles.
Misjudging Bad Faith: Historical Inaccuracies and Post-Mortem Use
Keating identifies similar deep-seated problems with the panel’s determination of bad faith. The Panel concluded that the Respondent must have possessed knowledge of the Claimant’s trademark rights because the domain name was registered merely two years after Mr. Jobs’ reconnection with Apple. This reconnection, the Panel asserted, “made it possible that Apple enjoyed resurgence on an unprecedented scale and ultimately became one of the most valuable U.S. companies in history.” The Panel thus, incredibly, concluded that the asserted mark became famous and acquired common law status within less than two years of Mr. Jobs rejoining Apple.
This conclusion is historically inaccurate and deeply troubling. Mr. Jobs rejoined Apple as “interim CEO” in July 1997 and became CEO in 2000. In reality, Apple continued to struggle for several years under Mr. Jobs’ leadership. Its public stock price remained below $0.25 per share (a mere 25 cents) until 2006, when it reached approximately $10.46 per share (Apple Historical Stock Prices). Most industry observers would agree that Apple’s monumental success truly began with the much later release of the iPhone. It is deeply concerning to Keating that the Panel merely assumed Apple’s immediate, unprecedented success to justify the rapid attainment of common law trademark status for Steve Jobs’ name in such a short timeframe, directly contradicting the actual historical financial performance of the company.
Furthermore, while the Panel referenced the Respondent’s use of the email address [email protected] and the offering of consulting services and links to technology news, it critically overlooked that Mr. Jobs passed away in 2011. As Keating wryly notes, it is logistically impossible for a deceased person to actively use email or provide consulting services. If “Jobs” was as globally famous as the Panel believed, the vast public would have been well aware of his death years prior. Moreover, while the registered trademarks held by the Claimant cover a wide array of products and services, none of these specific registered trademarks existed when the Respondent originally registered the domain (or began publicizing the email, consulting services, or technology news). This temporal disconnect definitively precludes a finding of bad faith use at the time of registration. Most importantly, nothing in the decision establishes a clear link between the supposed common law trademark rights and the specific activities cited as evidence of bad faith, such as emailing, consulting, or providing technology news.
Conclusion: A Troubling Deviation from UDRP Principles
Attorney Paul Keating unequivocally asserts that the Panel in the SteveJobs.com UDRP decision appears to have fundamentally lost its way. He expresses particular sadness, noting that elements of the decision’s reasoning seem reminiscent of Mr. Neil Brown’s past positions, speculating that Mr. Brown may have played a significant role in its drafting. Keating would have expected a dissenting opinion from such an experienced panelist, given the substantial departure from established UDRP jurisprudence.
It seems that the Panel’s outlook on UDRP matters has undergone a significant modification, evolving towards a far more expansive view of trademark rights, particularly concerning personal names. This expansive interpretation, Keating argues, does not align with the original purpose and spirit enshrined in the UDRP Policy. This decision, if left unchallenged, risks setting a dangerous precedent, blurring the crucial distinctions between public fame, publicity rights, and genuine trademark rights, thereby undermining the predictability and fairness of the Uniform Domain-Name Dispute-Resolution Policy.