Productive authors increase in status and over time become recognized by the general public as the source of their literary works. At the beginning of a career authors simply start out as names. They become brands when readers recognize them as sources for goods and services in a trademark sense. Names can acquire value separate from the individuals who answer to them. Authors who have achieved “brand” recognition qualify for trademark registration, as exemplified by J.K. Rowling whose licensees own a host of trademarks in a variety of jurisdictions and Classes. Domain names are different from trademarks in that anyone can purchase a domain name, even the name of an author who has become a brand. There is no gatekeeper to say “you can’t do that!” If challenged in a proceeding under the Uniform Domain Name Resolution Policy (UDRP) the purchaser will most likely forfeit the domain name, but he cannot have been prevented from registering the domain name that is identical or confusingly similar to the author’s name. Again taking J.K. Rowling as an example: in 2004 a Uruguayan domiciliary purchased and . Joanne Rowling (the owner of the trademark) filed a complaint and the domain name registrations were transferred to her.
Many authors do not have trademark registrations but own domain names corresponding to their “brand” which is either their persona (“J.K. Rowling,” not Joanne Rowling) or personal name. Some authors have been chagrined to learn that someone has beaten them to their “names” on the Internet. I will name names in a moment. Other authors may not realize that their names have been registered as domain names. For example, Joyce Carol Oates is a distinguished author who does not own her domain name. The domain name is “owned” by Alberta Hot Rods. Alberta Hot Rods is a serial cybersquatter. Among the names this cybersquatter has purchased and then forfeited in UDRP proceedings are authors Michael Crichton and Jeffrey Archer, Pamela Anderson and Amber Smith (models and actresses), Tom Cruise and Kevin Spacey (actors) and Larry King (television personality). Ms. Oates has not (yet) challenged the bad faith use of her name. She is not alone.
U.S. trademark law recognizes “common law [unregistered] rights” to a personal or persona name if it has acquired “secondary meaning” and is identified as the source of goods or services. In contrast to Joanne Rowling, authors Crichton and Archer owned common law unregistered rights to their names. Even if they never register their names as trademarks, productive authors have the right to maintain a proceeding under the UDRP and capture the domain names that infringe their rights. Unproductive authors are probably out of luck, unless their single works have achieved great success in the marketplace. Joyce Carol Oates and other distinguished authors have standing to maintain proceedings to police their names and ensure that only they can use them. At present, does not resolve to an active website; that is, held passively for the very good reason that any content would constitute an infringement of the author’s right to her personal or persona name.
The UDRP is an on-line arbitration regime available to trademark owners which includes unregistered (common law) rights. Rogue domain names for “Harry Potter” () have been successfully shut down. Titles for example that cannot be copyrighted can be trademarked if they are associated as the source of goods or services. “Harry Potter” has featured in a dozen or more domain names; all have been captured by licensees in UDRP proceedings. HARRY POTTER is a registered trademark for clothing; HARRY POTTER AND THE DEATHLY HALLOWS is a registered trademark for printed matter and paper goods (including notebooks, diaries, greeting cards, photographs and calendars).
Authors who have prevailed over the past year in capturing domain names corresponding to their personal names include Delia Ephron (bestselling author, screenwriter, and playwright), Louise Rennison (author of the Confessions of Georgia Nicolson series for teenage girls), Gary Regan (Cocktail Columnist for San Francisco Chronicle, host of gazregan.com, and publisher of newsletters for bartenders worldwide) and Nathaniel Branden (author, lecturer, therapist and corporate consultant focusing on self-esteem and personal development).
If Author has not already, she should make sure that her personal or persona name has not been appropriated and if it has to take action to recapture it.