WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Peter Bober v. National Institute for Mortgage Education Case No. D2008-1668 1. The Parties
Complainant is Peter Bober, Hollywood, Florida, United States of America.
Respondent is National Institute for Mortgage Education, Redlands, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name, is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2008. On November 3, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On November 5, 2008, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On November 5, 2008, the Center sent a Complaint Deficiency Notification to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 11, 2008. The Center verified that the Amended Complaint (hereinafter 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 2, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 10, 2008. 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
Complainant is an attorney and is the mayor of the city of Hollywood, Florida. Complainant is the youngest mayor ever elected to this position and the first of Cuban ancestry. Complaint, Annex 5(b). In October 2007, when Complainant was campaigning for the office, he first learned that Respondent had registered the domain name at issue and contacted Respondent. Complaint, Annex 4.
Complainant and his wife, Samara, have a law practice, Bober & Bober P.A., located in Hollywood, Florida, where they emphasize employment law. Complaint, Annex 5(c). Complainant has published legal articles in various law journals, and is active in the Hollywood, Florida community, holding such positions as Chairman of the Broward County Resource Recovery Board, Director of the Hollywood Rotary Club, Director of the Hollywood Business Council, and Director of the Broward County Hispanic Bar Association.
The domain name at issue was registered on September 22, 2005. At that time it was registered in the name of Domains by Proxy, Inc., a privacy service. Complaint, Annex 1(b). The domain name at issue is currently not being used. 5. Parties' Contentions A. Complainant
Complainant contends that the domain name at issue is identical to Complainant's common law trademark PETER BOBER, which rights stem from his activities as a community leader and provider of community and legal services, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent registered and is using the domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It has been established that personal names as such are generally not protected under the Policy. This includes the personal names of business men and politicians. “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).” Fields for Senate v. Toddles Inc.,WIPO Case No. D2006-1510. There are exceptions to this rule: where a business person establishes that his or her name is synonymous with a particular business and that good will exists not only in the name of the business but in the name of the individual with which it is identified (Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068) or where a politician has derived commercial success from the use of his or her name, such as the through the authorship of commercially successful books. (Hillary Rodham Clinton v. Michele Dinoia aka SZK.com, NAF Case No. FA414641).
In the present case, Complainant has failed to show that his name, Peter Bober, is identified with a particular business. The name of the practice in which he participates is Bober & Bober P.A. Perhaps if he had been offering legal services under the name the Law Offices of Peter Bober, the result might have been different. Neither is Complainant the author of commercially successful books, but rather of scholarly articles. While this may be admirable, it does not of itself on the present record qualify for common law trademark status. Previous panels have established that community, scientific, and educational uses of an individual's name, while often admirable, do not per se constitute activities which are protected under the Policy:
“Complainant claims a common law trademark in his personal name. Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services. The dissent notes that this failure is attributable not only to Dr. Falwell, but to The Liberty Alliance as well. There are many well-known ministers, religious figures, and academics. Are their sermons or lectures to be considered commercial goods? Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use as a trademark. On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the “Second WIPO Report”). In that report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. “Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society.” Second WIPO Report, paragraph 199.”
The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, P, and G,WIPO Case No. D2002-0184. Accordingly, the Panel finds that Complainant has failed on the present record to establish that he has common law trademark rights in respect of his name, and therefore the complaint must fail. Because of this finding, it is unnecessary for the Panel to reach the other two factors which Complainant is required to establish. 7. Decision
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Sole Panelist
Dated: December 15, 2008
Full & Egal Universal Law Academy