Melinda Gates is a billionaire and one of the world’s most powerful women, according to Forbes, but she lost a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the domain name <melindagates.com>. In a new video, I explain why she lost and what lessons other trademark owners – women, men, and companies of every size – can learn from this case.
Gates is co-chair of the Bill and Melinda Gates Foundation, the organization she leads with her former husband and Microsoft co-founder Bill Gates. Forbes calls her “one of the most powerful women in philanthropy” and estimates her net worth at more than $6 billion.
In 2017, Gates won a UDRP decision for the domain name <melindagates.org>, although it is not currently associated with an active website. I don’t know what motivated her to file a UDRP complaint for <melindagates.com> now — in 2022, five years after she won the dot-org variation and 23 years after the domain name was created, in 1999. Whatever her reason, she obviously did not have the same success with the dot-com version of her name that she had with the dot-org version five years ago. But the different outcome has nothing to do with the top-level domain itself – dot-com versus dot-org – but instead with timing and trademark rights.
As I discuss in the video, Melinda Gates lost her UDRP case because of a combination of two factors: First, she only claimed common law trademark rights in her name, which is acceptable under the UDRP since a trademark registration is not required, but, second, she failed to establish that those rights existed in 1999, when the disputed domain name was registered.
As a result, the panel said that Gates could not prevail on the third element of the UDRP, which requires proof that the domain name “has been registered and is being used in bad faith.”
According to the UDRP decision here, Melinda Gates claimed that she only began using her name as a trademark in 1997. Which means, as the panel wrote:
This leaves a window of less than two-and-one-half years during which Complainant must have developed the name MELINDA GATES into a distinctive mark under the common law because it cannot be said that Respondent registered the domain name in bad faith before Complainant’s personal name had ripened into a protectable mark.
And the panel concluded that Gates “has not proven that her personal name had ripened into a protectable common law mark by the time Respondent registered the <melindagates.com> domain name. Complainant has thus failed to show that Respondent registered the domain name in bad faith when that occurred in May of 1999.”
I suppose the biggest lesson from this case for other would-be complainants in UDRP cases, whether individuals or businesses, is to fully appreciate and understand the UDRP’s requirements before filing a complaint. Previous success does not guarantee the same results. And just because a complainant is famous does not guarantee a winning decision. Indeed, cases involving personal names and common law trademark rights are often challenging, especially where the disputed domain name is relatively old.
