The initial consideration of the Panel was whether Complainant had sufficiently alleged the existence of common law trademark rights in her Complaint. On page 5 of her Complaint, Complainant alleges that "The Respondentâs use of
www.juliaroberts.com infringes upon the name and trademark of Complainant and clearly causes a likelihood of confusion as defined by Section 2(d) of the United States Lanham Act, Section 2(d), 15 U.S.C. Section 1052(d)." From this allegation, the Panel understood that Complainant asserted common law trademark rights in her name. The Panel further decided that registration of her name as a registered trademark or service mark was not necessary and that the name "Julia Roberts" has sufficient secondary association with Complainant that common law trademark rights do exist under United States trademark law.
A recent decision citing English law found that common law trademark rights exist in an authorâs name. The Policy does not require that the Complainant should have rights in a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that she has rights in common law trademark or sufficient rights to ground an action for passing off. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, May 22, 2000.
