Ive has applied for European Community trade marks but they have
not yet been registered.
UK-based Harry Jones registered jonathan-ive.com,
jonathanive.com, jony-ive.com and jonyive.com in 2004 and operates
a website at those addresses carrying news about and praise for Ive
and his designs.
Ive came to international prominence when he designed the iMacs
that helped to revitalise computer-maker Apple's fortunes in the
late 1990s. He has since also designed the iPod and iPhone for
Apple, for whom he works full time.
Apple offered Jones $10,000 for control of the domain names, but
Jones had already told the company that he would sell the names for
$400,000, and was aware that the company had paid $1 million for
the iphone.com domain name.
Ive took a case to the World Intellectual Property Organisation
(WIPO)'s arbitration centre under its domain name dispute
resolution policy (UDRP), which can transfer domain names under
certain criteria.
The first criterion for transfer is that the person seeking to
gain control of a domain name demonstrates that they have trade
mark rights in it. Ive did not apply for any trade mark
registrations for his name until October 2008, and those
applications are still pending.
"These applications were filed in October 2008. As they are
pending applications, they are not sufficient to show registered
trade mark rights," said the WIPO Panel.
A name can, of itself, acquire some of the properties of a trade
mark though, the panel said.
"A complainant also has the right to claim a common law mark
where there is no registered trade mark," it said. "The usual test
to ascertain common law rights applies, namely, considering whether
the trade mark has acquired secondary meaning, and become a
distinctive identifier associated with the complainant’s goods and
services."
"In the case of personal names, the complainant must show that
its name/trade mark has been used in trade or commerce. Evidence of
the complainant’s reputation or renown (on its own) will not
necessarily be sufficient to demonstrate unregistered trade mark
rights … previous complainants in these type of cases include
authors, actors, artists, performers, athletes, royalty,
politicians and business people."
The panel noted that the products Ive has designed are marketed
as Apple products and never reference him in their promotion or
packaging. It also noted that Ive actively shuns publicity and
self-promotion.
"I only occasionally accept speaking engagements and only accept
payment of direct expenses," said Ive in his declaration to the
WIPO panel. "I am a very private person. My reputation has been
established by the work I do, not through self-publicity. I do not
usually give interviews … I seek to avoid publicity.”
"[Ive and Apple] do not promote [his] name as a brand or trade
mark, and therefore do not use it in trade or commerce. [Ive's]
work for which he is most famous is publicly recognised and
primarily attributable to Apple Inc. rather than [him]," said the
ruling. "Despite having the opportunity to pursue individual
endeavours outside his employment, which under certain
circumstances might be branded under his personal name, [Ive] has
made a conscious decision not to do so. In fact, [he] has actively
sought to keep his personal name out of trade and commerce."
"[Ive] has failed to establish that he has unregistered trade
mark rights in his name, and accordingly the first element has not
been met," said the WIPO panel.
Jones retained the right to the domain names, but the panel
warned that Ive can take a future case if his circumstances
change.
"A different result under this element could occur if or when
the [Ive's] Community Trade Marks are registered, or if for
instance Apple Inc., takes different steps in relation to the
branding and use of [his] personal name. In such circumstances,
[Ive] may be entitled to file another…case," it said.
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