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What could be worse than being the mayor of a prominent Northeast city and facing federal bribery conspiracy charges? Well, for starters, how about someone appropriating your name and using this treasured moniker to direct the public at large toward a virtual woodshed where some not-so-nice things are being said about you? Meet Providence, R.I., Mayor Vincent A. Cianci Jr. and the critical Web site bearing his nickname, www.BuddyCianci.com. Proving once again that not all publicity is good publicity, Mayor Cianci apparently disapproves of the Web site bearing his surname — owing, no doubt, to its fervent and repeated calls for his resignation, as well as its discussion area for airing similar, non-complimentary points of view. Cianci has made his feelings about the Web site crystal clear, according to The Providence Journal, as illustrated by his attorney’s recent cease-and-desist letter. But is the law, specifically trademark law, equally clear on this issue? Let’s put aside any legal questions concerning the nature of the content found on the site, and instead focus on whether the unauthorized appropriation of the mayor’s name — for use in a domain name — is itself impermissible under applicable trademark law or the provisions of the Internet Corporation for Assigned Names and Numbers’ (ICANN’s) Uniform Domain Name Dispute Resolution Policy. Under U.S. trademark law, a valid candidate for a trademark or service mark may comprise any word, name, symbol or device, or any combination thereof, which is used, or intends to be used, by a person in commerce to identify and distinguish their particular goods or services. One of many caveats to this definition concerns those marks that consist of primarily a surname, absent a showing of acquired distinctiveness. Moreover, common law trademark protection also may be conferred on a mark, provided that the mark in question also is being used in commerce. Unfortunately for the mayor, ‘Cianci’ does not presently enjoy a federal trademark registration and, the charges pending against Cianci notwithstanding, it is unlikely that the mayor would be able to obtain such a trademark registration given the apparent lack of any commerce associated with his name, in either goods or services. The mayor does have his own brand of pasta sauce, “The Mayor’s Own Marinara Sauce.” Additionally, even if filed with the U.S. Trademark Office, Mayor Cianci would have to show the requisite acquired distinctiveness to overcome the statutory inhibition against the designation of surnames as trademarks. Clearly then, he does not appear to be capable of relying on federal or common law trademark infringement actions to foreclose the use of www.BuddyCianci.com. EXERCISING FREE SPEECH Of course, the Providence mayor might argue his position vis-a-vis ICANN’s Uniform Domain Name Dispute Resolution Policy (UDNDRP), the arbitration mechanism for many of the most popular Top Level Domain registrations, including dot-com names. ICANN is the nonprofit corporation that was formed to assume responsibility for IP address space allocation, protocol parameter assignment, domain name system management and root server system management functions. Moreover, most registrants are bound by the provisions of the UDNDRP as a first step in resolving domain name disputes. Nevertheless, Cianci’s chances of prevailing in such a proceeding appears again doubtful. The UDNDRP provides for the cancellation, or transferal of ownership, of a contested domain name provided that the complainant proves each of the following: � The domain name in question is identical or confusingly similar to a trademark or service mark in which the complainant has rights; � The current owner of the domain name has no rights or legitimate interest in respect of the domain name; and � The domain name has been registered and is being used in bad faith. As discussed previously in this continuing controversy, Mayor Cianci does not now enjoy the grant of a federal trademark registration, nor is he likely able to obtain such a registration with respect to his last name. Absent any commercial activity that may qualify to support a common law trademark claim, he would therefore trip up on the first of the three necessary showings enumerated above. Additionally, similar disputes settled by ICANN through the UDNDRP have held that the fair use of a person’s or a company’s name, when utilized as part of a domain name for the purposes of criticism and commentary, is a reasonable exercise of free speech rights. Thus, it is highly likely that Cianci would find it equally difficult to show that the registrant of www.BuddyCainci.com had “no rights or legitimate interests in respect to the domain name.” To complete Mayor Cianci’s losing trifecta, it also has been held that the same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent. Game, set and match in the world of domain name resolution, according to UDNDRP. So what is a beleaguered mayor to do, you ask? Well, state and local privacy laws may provide some relief to those in Mayor Cianci’s shoes — however, this itself is unlikely given his vulnerable status as a public and political persona. More likely, politicos and others offended by such name-appropriating practices will find other innovative ways to express their displeasure — just ask the mayor’s self-described “Web guy” who, according to The Providence Journal, subsequently registered a plurality of domain names at the bequest of his boss, domain names which, incidentally, contained the surnames of many of Cianci’s most vocal critics. Nicholas J. Tuccillo was an examiner with the U.S. Patent and Trademark Office before becoming an associate with McCormick, Paulding & Huber, an intellectual property law firm with offices in Massachusetts and Connecticut.

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