Complainant is Gerald Celente of Kingston, New York, United States of America, represented by Pryor Cashman, LLP, United States of America.
Respondent is Pine, Chris of Boston, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain”) is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 16, 2012. On November 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain. On November 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 18, 2012.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 21, 2012. 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.
On January 7, 2013, Complainant submitted an unsolicited submission comprised of a transcript from a hearing regarding a preliminary injunction in a case before the Southern District of New York. 4. Factual Background
Complainant, Gerald Celente, is an individual residing in New York, who founded and serves as the director of The Trends Research Institute. There is a Wikipedia entry for Complainant that describes him as an “American trend forecaster.”
Complainant has written three published books, the first of which, Trend Tracking, was published in 1991. Two federal trademark applications in the United States are relevant to this inquiry. Complainant filed Application No. 85/561,869 on March 6, 2012, for GERALD CELENTE for a newsletter and providing various information via a website. As to the services relating to providing information via a website, this application recites that the mark was first used in commerce on April 1, 1995. The second relevant trademark filing is Application No. 85/566,942 for GERALD CELENTE’S TREND ALERT, also filed on March 6, 2012, for a newsletter and providing various information via a website. This application does not recite use and was filed by The Socio-Economic Research Institute of America Inc. d/b/a The Trends Research Institute.
On March 12, 2011, prior to the filing date of both applications discussed above, but more than a decade after the recited first use in commerce of GERALD CELENTE, Respondent registered the Domain . The Domain features a photograph of Complainant in its title bar and links to at least one video featuring Complainant with a description that states the video was originally released on November 2, 2012, at . The bottom of the landing page on the Domain states: “The Gerald Celente Blog features articles and videos from Gerald Celente. A summary of each video is also provided. This page is updated with Gerald Celente’s investment advice and commentary on stock recommendations, the global financial markets, the economy, and future trends.” The individual posts include links to various social media sites under the title “Share Gerald Celente’s Message.”
The domain name was created on November 28, 1995, but the identity of the registrant is unclear because it used a proxy service to register the domain name. The domain name was registered on April 23, 2008, but the identity of the registrant is unclear because it used a proxy service to register the domain name. 5. The Complainant’s Unsolicited Supplemental Submission
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties.” The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. “[A]dditional . . . submissions should only be admitted in exceptional circumstances… [and] if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure.” Id. (emphasis added).
In this case, the hearing that is the subject of the transcript submitted by Complainant as a supplemental submission occurred on December 10, 2012, and Complainant asserted that it submitted the transcript as soon as it became available. After an examination of the transcript, the Panel notes that it at no point mentions specifically the Domain or Respondent. While it refers to the defendant in that case as a possible alias for a party that has impersonated Complainant in a variety of online contexts, it is not clear from the transcript that Respondent or the Domain here are at issue in the transcript.
A second point, for which the supplemental submission may be relevant is whether GERALD CELENTE has acquired secondary meaning. As discussed below, the Panel herein finds that GERALD CELENTE has acquired secondary meaning without regard to Complainant’s supplemental submission.
Given the ambiguities related to the supplemental submission in this instance, the Panel, exercising its discretion with paragraph 10 of the Rules, finds that this case is not one of the exceptional circumstances that warrants the acceptance and consideration of the transcript at issue. By electing not to consider Complainant’s supplemental submission, the Panel furthers the Policy’s goal of providing a relatively inexpensive and speedy resolution to disputes involving domain names. Additionally, as discussed above, the Parties will not be prejudiced by the Panel’s decision in this regard. 6. Parties’ Contentions A. Complainant
Complainant asserts that he has used GERALD CELENTE as a trademark since 1981 in connection with his provision of socio-economic information in the field of geopolitical trends. In addition to publishing a newsletter, books, and maintaining several websites, Complainant states that he has provided his services by appearing in segments on several national television and radio shows, and interviews with him have been published in a variety of newspapers and magazines. According to Complainant, he has also appeared in several documentary films. Complainant also states that he provides information via emails, which go out to more than 45,000 individuals, institutions and other entities more than once a month. Complainant also asserts that he maintains several websites, including “www.”, which receives approximately 90,000 unique views each month. Complainant further asserts that he has more than 34,000 Twitter followers.
Complainant asserts that he spends approximately USD 150,000 per year on marketing his services in connection with the GERALD CELENTE trademark, and that he generates roughly USD 1.5 million in yearly revenue by providing his services under GERALD CELENTE.
Because of the foregoing, Complainant claims valid and enforceable rights in GERALD CELENTE as a trademark, which has acquired distinctiveness through its substantially continuous and exclusive use as a trademark.
Complainant next argues that the Domain is confusingly similar to GERALD CELENTE because it wholly incorporates the mark and is likely to cause confusion among the relevant consuming public. Complainant argues that the addition of “blog” to the domain only increases the likelihood of confusion because consumers will likely believe that the website that the Domain resolves to is sponsored by or controlled by Complainant.
Next, Complainant argues that Respondent could have no rights or legitimate interests in the Domain because Respondent’s name is Chris Pine and Respondent has not been authorized to use the GERALD CELENTE trademark. Complainant argues that the Domain appears to be an authentic blog run by Complainant and that such use is not a bona fide, legitimate, or noncommercial fair use. Complainant also argues that the Registrant has no rights to the Domain because Respondent is using the Domain to generate advertising revenue.
Finally, Complainant argues that Respondent has registered the Domain in bad faith because the Respondent intentionally attempts to lead viewers of the website to believe that Complainant created or sponsors the Domain, because Respondent registered the Domain thirty (30) years after Complainant began using GERALD CELENTE as a trademark, and because Respondent uses the Domain to generate advertising revenue. B. Respondent
Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(1) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
As noted above, Respondent filed no response. Accordingly, Respondent is in default and the Panel may infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Charles Jourdan Holding, AG v. AAIM,WIPO Case No. D2000-0403. Nonetheless, Complainant retains the burden of proving the three required elements of paragraph 4(a) of the Policy. Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish that the Domain is confusingly similar to a trademark in which Complainant has rights.
As an initial matter, in UDRP cases brought by ”authors . . . and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity . . . or for direct commercial purposes in the marketing of the complainant's own goods or services.” Jay Leno v. Garrison Hintz,WIPO Case No. D2009-0569; see also Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210 (holding that common law rights existed in JULIA ROBERTS); and Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235.
In the present case, the Panel also notes that Complainant has filed a United States trademark application, Serial No. 85/561,869, for GERALD CELENTE, which has been allowed by the United States Patent and Trademark Office (“USPTO”). The USPTO is currently reviewing the specimen of use submitted by Complainant.
In the Panel’s view, Complainant has demonstrated by a preponderance of the evidence that he owns valid trademark rights in GERALD CELENTE. According to Complainant’s assertions, he has expended significant time and energy to develop goodwill in his name as a trademark in connection with his business as an author and speaker. The USPTO’s allowance of Complainant’s application for the same is further evidence that GERALD CELENTE serves as a trademark.
The Panel further finds that the Domain is confusingly similar to GERALD CELENTE. As in Jay Leno v. Garrison Hintz, supra., wherein the panel found that the addition of “weeknights with” to JAY LENO to form actually exacerbated the likelihood of confusion because the Complainant, Jay Leno, had served as the host of a weeknight television show for seventeen (17) years, the Panel here finds that the addition of “the” and “blog” make it more likely that consumers will be confused because the Complainant is an author who maintains several websites.
Accordingly, Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain. “A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.” Accor v. Eren Atesmen,WIPO Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
In this case, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain . On balance, the record shows that Respondent intentionally created the impression that the Domain was created or sponsored by Complainant. The record convincingly demonstrates that Respondent registered the Domain to intentionally mislead and divert consumers for his own commercial gain. Respondent registered a domain name that wholly incorporates Complainant’s mark and prominently features content suggesting a connection with Complainant, including Complainant’s picture, on the website at the Domain . Further, Complainant asserts that Respondent is not authorized or licensed to use GERALD CELENTE.
Still, Pursuant to paragraph 4(c) of the Policy, Respondent could establish rights to or legitimate interests in the Domain by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In Accor v. Eren Atesmen, supra., the panel found that the respondent, having filed no response, had not rebutted the prima facie case made the complainant. In this case, Respondent has likewise failed to file a response and there is no evidence that Respondent has used the domain name in connection with a bona fide offering of goods or services, has been known to use the name Gerald Celente, or has made a legitimate noncommercial or fair use of the Domain. On balance of the evidence shown in the record, the Panel concludes that Respondent has no rights or legitimate interests in the Domain.
Accordingly, Complainant has established the second requirement under the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists circumstances that may constitute evidence that a disputed domain name was registered and used in bad faith, and includes instances wherein “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
The main concern of the Policy is “curb[ing] the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another.” M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, Respondent has included a photograph of Complainant in the banner featured prominently on the landing page at the Domain, . Additionally, the website features a variety of content that suggest to viewers that it is a blog sponsored by or associated with Complainant. Such content includes but is not limited to a paragraph at the bottom of the website stating “The Gerald Celente Blog features articles and videos from Gerald Celente. A summary of each video is also provided. This page is updated with Gerald Celente’s investment advice and commentary on stock recommendations, the global financial markets, the economy, and future trends.”
On balance, the Panel here finds that Respondent intentionally registered the Domain to attract, for commercial gain, consumers who would be confused into believing that the Domain was created or sponsored by Complainant. Complainant has argued that Respondent is not authorized to make use of Complainant’s trademarks and Respondent has not provided evidence that it has such authorization.
Accordingly, Complainant has established the third requirement under the Policy.
Based on the above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are satisfied. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain, be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: January 8, 2013
Full & Egal Universal Law Academy