WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alan Bond v. Information360 Limited
Case No. D2007-1081
1. The Parties
The Complainant is Alan Bond, London, United Kingdom of Great Britain and Northern Ireland (the “Complainant”), represented by Wallace LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Information360 Limited, Wembley, Middlesex, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).
2. The Domain Names and Registrar
The disputed domain names, and (the “Domain Names”) are registered with Tucows (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2007. On July 25, 2007, the Center transmitted by email to the Tucows a request for registrar verification in connection with the Domain Names. On July 25, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 22, 2007. The Panel finds that it was properly constituted. 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 Complainant is a well-known Australian businessman.
The Respondent registered the Domain Names on July 28, 2006 and August 18, 2006 .
Currently, the Domain Names connect to websites devoted to the Complainant and his interests and achievements.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has common law rights in his name (i.e. unregistered trademark rights) and that the Domain Names (absent the domain suffixes) are identical to the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Complainant says that its son’s company, Strategic Investments Limited, (acting on the Complainant’s behalf) commissioned the Respondent to develop and maintain a “personal profile” website to enhance the Complainant’s image. The Respondent registered the Domain Names in its own name. The Complainant contends that the agreement contained an implied term that the Domain Names would be registered in the name of the Complainant or an entity to which he wished to assign the names.
The Complainant became dissatisfied with the work of the Respondent in about March 2007 and in April 2007 the Respondent is said to have written to the Complainant agreeing to transfer the Domain Names to the Complainant on payment of the outstanding invoices. Strategic Investments Limited paid the invoices then outstanding on terms that the Domain Names be transferred, but the Respondent has failed to transfer the Domain Names, claiming that a further sum of money is due. The Complainant contends that this is a false claim and that the Respondent is using the Domain Names to extort money from him.
The Complainant further contends that the Domain Names were registered and are being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
B. Identical or Confusingly Similar
Question 1.6 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” asks: “Can a complainant show rights in a personal name?”. The answer reads as follows:
Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.
Relevant decisions: Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, Transfer. Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 among others, Transfer. Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874, Transfer.
However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.
Relevant decisions: Israel Harold Asper v. Communication X Inc. WIPO Case No. D2001-0540 among others, Denied. Chinmoy Kumar Ghose v. ICDS and Maria Sliwa, WIPO Case No. D2003-0248, Transfer
It is clear, therefore, that for a businessman to successfully establish unregistered trademark rights in respect of his name he has to show that he has developed a commercial goodwill by way of trade under or by reference to his name. Being famous is unlikely to be enough on its own.
One of the above-cited relevant decisions is Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540. This decision contains a detailed analysis of the cases involving famous people claiming rights in respect of their names. The decision contains the following passage:
In the cases mentioned in paragraphs 6.14 – 6.17 above where the Complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services. In some of these, including Monty and Pat Roberts, there were multi-purposes. The pure business cases are more problematic. An obvious difference between them and the above situations is that it is less likely that a business person will use his or her name to market their own goods or services, and very unlikely that they will do so to market someone else’s. Take, by way of examples, Henry Luce, Kenneth Thomson, Conrad Black and Rupert Murdoch. Are their publications marketed as a product connected to the person in question? Not likely. It is also not likely that someone would pay a fee to use these names in the promotion of a good or service with which they have no connection. Yet, each of these gentlemen is or was a famous businessman with a very high profile in the publishing business and held in high regard by many. [Emphasis added]
Why should the Complainant be in a position any different to those famous businessmen cited in that paragraph? What evidence as to the commercial use of the Complainant’s name is before the Panel?
The Panel is given the following information in the Complaint:
1. The Complainant is a well-known businessman
2. He became a national hero in the 1970s in Australia after sponsoring challenges for The Americas Cup
3. In 1978 he was nominated Australian of the Year
4. Following the collapse of the Bond Corporation he was jailed for fraud in May 1992, but the conviction was quashed in November of that year
5. He was again jailed for fraud in 1996 and released in 2000
6. Since then the Complainant has been heavily involved in “a number of entrepreneurial enterprises”
7. He has also been involved in charitable work and has funded Australia’s first private university, Bond University
8. He provides consultancy services to his son’s company
None of that information is supported by documentation. The Complaint features two annexes, one containing the Whois records relating to the Domain Names and the other containing the Policy. The Panel has nothing before him to show how the Complainant’s name is used. Nor are any figures provided to show the extent of the Complainant’s use of his name. The Panel accepts that the Complainant is a very well-known Australian businessman, but having a famous name does not of itself equate to unregistered rights in respect of that name
The Complainant may or may not have unregistered rights in respect of his name, but the Panel has not been provided with relevant hard evidence to enable the Panel to make the assessment.
The Complainant has failed to satisfy the Panel in these proceedings that the Domain Names are identical or confusingly similar to a trademark or service mark in which he has rights.
C. Rights or Legitimate Interests
In light of the above finding it is unnecessary for the Panel to consider this aspect of the matter.
D. Registered and Used in Bad Faith
In light of the above finding that the Complainant has failed to satisfy the Panel that the Domain Names are identical or confusingly similar to a trademark or service mark in which he has rights, it is unnecessary for the Panel to consider this aspect of the matter.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: August 30, 2007
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