Julia Roberts v. Russell Boyd

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In 1998 Russell Boyd registered the domain name “juliaroberts.com” among over 50 other domain names including “alpacino.com” and “madeleinestowe.com”. Boyd held onto the domain name until 2000 when he tried to sell “juliaroberts.com” in an e-bay auction. At one point Boyd was offered $2,550 for the domain name. Later that same year Julia Roberts the famous actress filed a UDRP complaint against Boyd seeking to have the domain name “juliaroberts.com” transferred to her. 

The panelists’ preliminary question was whether or not Julia Roberts had a trademark right to the name “Julia Roberts.” Roberts did not have a federally registered trademark to the name “Julia Roberts” so the actress argued that she had common law trademark rights to the name. The panel agreed with this argument, stating that in English law authors are entitled to common law trademark rights to their own names. Using that same logic the panel found that the name “Julia Roberts” has sufficient secondary association with the famous actress, and she therefore possessed a common law trademark right to her name. Once the panel decided on the issue of trademark rights, it swiftly found that Boyd’s registration of “juliaroberts.com” was a bad faith registration and that Boyd lacked any legitimate interest in the domain name outside of capitalizing off of the name of the famous actress.

On May 29, 2000 the panel found in favor of Julia Roberts and ordered that the domain name be transferred over to her. This case was one of the earliest instances of highly publicized cybersquatting in internet history, it has been referred to by some as a model example of a successful UDRP complaint.