WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fields for Senate v. Toddles Inc.
Case No. D2006-1510
1. The Parties
The Complainant is Fields for Senate , New York, New York, United States of America.
The Respondent is Toodles Inc., Stamford, Connecticut, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
and
are registered with Dynadot LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November�28,�2006. The Response was filed on January�5,�2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
The Center appointed Mark Partridge, Frederick Abbott and David Sorkin as panelists in this matter. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complaint is filed in the name of Fields for Senate. The Complaint further states that the Complainant is C. Virginia Fields. In 1989, Ms. Fields was the first African American woman in Manhattan elected to the New York city council. In 1997, she was elected Manhattan Borough President. In 2005, she was a Democratic candidate for Mayor of New York. In 2006, she was a candidate for State Senator.
Respondent Toodles Inc. is the pseudonym of John Fisher, a political critic and commentator on New York politics. Mr. Fisher is a vocal critic of local politicians, including Ms. Fields.
Mr. Fisher registered the disputed domain names in September�17,�2004. The domain names direct Internet users to a site that is critical of Ms. Fields. The site states, in part:
“C Virginia Fields would be a terrible State Senator. Keep her in the private sector (or unemployed), where she can’t hurt anyone.”
The site also states:
“This website is not associated with, approved by or supported by any candidate (especially C. Virginia Fields), political party or club. It is intended to provide political criticism and satire.”
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Respondent’s domain names infringe the Complainant’s trademark rights because the Respondent is using the Complainant’s mark commercially and the domain name is confusingly similar to Complainant’s mark.
The Complainant further states that likelihood of confusion should be presumed because the Respondent intentionally copied the Complainant’s mark, and the “Poloroid Factors” indicate a likelihood of confusion exists.
The Complainant asserts that the name Toodles Inc. is a sham and that the prevention of bogus information is one of the reasons that the Policy was created.
B. Respondent
The Respondent contends that the Complainant has not presented a case for violation of the Policy because it lack rights in the alleged trademark, the Respondent’s use is a legitimate exercise of fair use for the purpose of free speech, and he registered the domain names in good faith for the purpose of criticism. He further asserts that the registration information using his pseudonym was not a sham, but included working phone, post and email addresses.
6. Discussion and Findings
The Complainant primarily asserts a case for violation of the Lanham Act, the U.S. Trademark Law. This decision is narrower in scope. Although it is common for decisions under the Policy to consider authority from civil courts, the Panel’s analysis is limited to the elements of the Policy which are addressed below.
A. Identical or Confusingly Similar
On the first element of its claim, the Complainant has the burden of demonstrating that (i) it has rights in a trademark; and (ii) that the domain name is identical or confusingly similar to that mark.
On the initial question of the ownership of rights, the Complaint is confusing in that it identifies the Complainant as either Fields for Senate, a political campaign committee, or C. Virginia Fields, an individual.
There is no evidence that Fields for Senate owns any rights in the claimed mark. Thus, it appears that the political campaign committee lacks standing to bring this action. A similar result was reached in Friends of Kathleen Kennedy Townsend v. B.G. Birt, WIPO Case No. D2002-0451 (2002)(denying relief where action committee lacked rights in individual’s name).
As for Ms. Fields’ ownership of trademark rights, the record shows that she has been a public figure in New York for many years, has held office, and has received several awards for her service. The Complainant provides no case or other authority to support its position that such use gives rise to ownership of trademark rights in the name. The Respondent in contrast points to authority indicating that the rendering of services as a politician is not a sufficient basis for finding trademark rights under the Policy.
For example, The Final Report on the Second WIPO Domain Name Process, dated September�3,�2001, recommended that the Policy should be limited in its protection of personal names to those that have been commercially exploited. Following that Report, a WIPO Panel denied trademark protection to the personal name of a politician in Kathleen Kennedy Townsend v. B.G. Birt, WIPO Case No. D2002-0030 (2002). A U.S. Federal Court considering a similar case has also found that use of a name as a politician does not create trademark rights. Ficker v. Tuohy, 305 F.Supp.2d 569 (D Md. 2004).
Here, we agree with the Respondent that the Complainant has not established trademark rights in the name C. Virginia Fields. The argument presented is limited to use of the name as a politician. There is no indication that the name has ever been used or advertised as an indication of the source of any goods or services. Although Complainant says there has been “continuous commercial use of C.Virginia Fields mark for over seventeen years,” we do not find any evidence of trademark or service mark use of that name in the record. Although there may be circumstances where a political figure uses his or her name in a manner that would establish trademark use, merely using a name as a public figure for seventeen years is not sufficient to establish such rights as are necessary for relief under the Policy.
Accordingly, the Panel concludes that the Complainant has not satisfied the first necessary element of a claim under the Policy. Further, given this conclusion, it is unnecessary to consider the remaining elements of a claim under the Policy, namely, whether or not the Respondent has a legitimate interest in using the domain names for criticism and whether the Respondent registered and used the domain names in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Mark V.B. Partridge
Presiding Panelist Frederick M. Abbott
Panelist
David E. Sorkin
Panelist
Dated: March�14,�2007
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