The Complainant is Adam Leitman Bailey of New York, New York, United States of America, represented by Adam Leitman Bailey, P.C., United States of America.
The Respondent is Erwin Rohman of Malang, Jatim, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2013. On June 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2013, 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” 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 the Respondent of the Complaint, and the proceedings commenced on June 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 26, 2013. 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 an individual based in New York, United States of America (“USA”). The Complainant is a prominent real estate attorney, author and founder of a real estate law firm named Adam Leitman Bailey, P.C. The said firm was founded by the Complainant on January 3, 2000 and has received various accolades and awards. The Complainant does not own a registered trademark corresponding to his personal name but claims a common law service mark therein on the ground that it is a distinctive identifier associated with the Complainant and the Complainant’s services.
The Complainant features in multiple media in connection with his activities in the field of real estate law, including Chambers & Partners, Real Estate Weekly, New York Times and The Wall Street Journal. The Complainant has made numerous television appearances to discuss matters related to real estate on a variety of different television networks and is a frequent guest speaker at various events. In 2011, the Complainant wrote a book entitled Finding The Uncommon Deal: A Top New York Lawyer Explains How to Buy a Home for the Lowest Possible Price (“the Complainant’s book”). On May 8, 2011, the Complainant’s book was ranked “Number 1” on the New York Times Best Seller list in the “Advice, How-To and Miscellaneous” category. The Complainant’s book also appeared on other bestselling lists and gave rise to an award of “Best First Time Author” in favor of the Complainant by the National Association of Real Estate Editors.
The Respondent appears to be an individual with an address in Jatim, Indonesia. The disputed domain name was created on March 24, 2013. Screenshots for the website associated with the disputed domain name produced by the Complainant show that as at June 12, 2013, the said website consisted of a series of blog posts of random words and phrases in English which repeatedly mention a particular health and fitness DVD. The said website also featured a hyperlink to another similar website which appeared to promote the same or a similar DVD. The Complainant has no connection to the Respondent or to the said DVD. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant contends that the disputed domain name is identical and confusingly similar to the Complainant’s name and that the addition of the generic Top Level Domain (gTLD) and the omission of spaces are both irrelevant. The Complainant asserts that he has a common law service mark to his personal name due to its widespread recognition and his use of it to promote his own legal services and those of Adam Leitman Bailey, P.C. The Complainant states that his personal name is used in commerce and is a distinctive identifier of his services. The Complainant submits that the fact that he does not have a registered trademark does not preclude a finding that he has established trademark or service mark rights in his name. The Complainant notes that he uses his personal name for direct commercial purposes in marketing his own publications, which are available for sale at various online booksellers. The Complainant submits that the law firm Adam Leitman Bailey, P.C. is also sufficiently associated with the Complainant’s personal name.
The Complainant contends that the Respondent is not licensed by the Complainant, is not known by the disputed domain name, nor has the Respondent made a legitimate noncommercial use or any demonstrable preparations for a bona fide use thereof. The Complainant states that the Respondent’s sole intent is to misleadingly divert consumers and to tarnish the trademark at issue and that the disputed domain name is a parking page which contains sponsored links to a variety of third party sites promoting a health and fitness DVD. The Complainant submits that such use of the disputed domain name does not constitute a legitimate use thereof or a legitimate offering of goods or services.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because it is being used for a website in respect of which the Respondent is presumed to be receiving referral fees, the Respondent has not responded to the Complainant's request to transfer the disputed domain name, the Complainant has numerous registrations of practically identical domain names, and the Complainant’s trademark is both widely used and well-known. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As noted in the Factual Background section above, the Complainant in the present case claims a common law service mark in his personal name. Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses the question of rights in personal names, providing in part:
“While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required […]
However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
In the present case, the Complainant’s primary focus is on his practice as a well-known real estate lawyer via the law firm which he founded in January 2000. The law firm uses the Complainant’s personal name as the name of the firm. The first question for the Panel is whether, in that context, the Complainant may claim rights in his personal name. This Panel has considered a similar question before as part of a three member panel in the case of Gregg M. Mashberg v. Crystal Cox,WIPO Case No. D2011-0677. The complainant in that case was a partner in a New York law firm who claimed similar prominence in respect of his personal name and similar accomplishments in the practice of law to that claimed by the Complainant in the present case. The three member panel unanimously found that while the complainant was a highly respected, prominent lawyer with a major law firm, there was insufficient evidence that the complainant marketed or provided services independently of his law firm. The panel also unanimously found that the law firm was the platform on which the complainant provided his legal services, that there was no evidence that the complainant had spent money advertising his name apart from via the law firm or billed clients in his own name, and that there was no evidence that the legal community regarded the complainant as the driving force behind, or alter ego of his firm. Consequently, the panel found that the complainant had not demonstrated that he had acquired common law trademark rights in his personal name.
Despite the similarity of some of the features of Gregg M. Mashberg, supra to those of the present case, there are important differences. In particular, the record before the Panel in the present case demonstrates that the Complainant is indeed the driving force behind and alter ego of the law firm in which the Complainant is a partner. Furthermore, given that the said firm has adopted the Complainant’s personal name as its own, its activities and accomplishments might be said to accrue goodwill to the Complainant as an individual. The Panel reminds itself however that the present Complaint is brought in the name of the Complainant as an individual and not by, or jointly with, the law firm of the same name. There is no evidence before the Panel that the Complainant provides legal services other than through the said firm. It might therefore be argued, not unreasonably in the Panel’s view, that a sizable portion of the goodwill generated by the Complainant’s extensive activities in the practice of law and related promotional work accrues to the said firm and not necessarily to the Complainant as an individual.
Nevertheless, had the Panel required to consider the matter on the strength of the Complainant’s activities in legal practice alone, the Panel would on balance have determined that the Complainant did have rights in his personal name due to his being the driving force behind and alter ego of his eponymous law firm. However, unlike the situation in Gregg M. Mashberg, supra, the Panel does not require to decide the question exclusively on that basis. The record before the Panel also demonstrates that the Complainant is an award winning author of a best selling book, written in this personal name, that is available from multiple online booksellers. There is no doubt in the Panel’s mind that in this sense the Complainant has directly exploited his personal name on a commercial basis. Furthermore, in this particular instance the goodwill from such activity, of which the record contains ample evidence, is bound to accrue to the Complainant and not to any third party. In these circumstances, the Panel finds that the Complainant has established that he has common law trademark rights in his personal name.
The disputed domain name is identical to the Complainant’s personal name save in respect of the lack of spaces and the addition of the gTLD “.org”. Both of these differences may be disregarded for comparison purposes given that the former is a consequence of technical rules, which forbid the presence of spaces in domain names, and the latter is wholly generic and itself a technical feature of the domain name space.
In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with sufficient evidence of rights or legitimate interests to rebut that prima facie case.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not licensed by the Complainant to use the Complainant’s unregistered trademark, is not known by the name within the disputed domain name, and has not made a legitimate noncommercial use or any demonstrable preparations for a bona fide use thereof.
The Respondent has not responded to the Complaint and thus has not taken the opportunity to rebut the Complainant’s prima facie case. In any event, given the purpose for which the disputed domain name has been used, the fact that it is an exact match of the Complainant’s name and unregistered trademark, and the fact that this name appears to have no logical connection to the Respondent or to the circumstances of its use in the disputed domain name, the Panel can conceive of no possible rights or legitimate interests that the Respondent might have claimed and/or demonstrated in the disputed domain name.
Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
On this topic, the primary focus of the Complainant’s submissions is on the registration and subsequent use of the disputed domain name, containing an exact representation of the Complainant’s unregistered mark, either to promote a health and fitness DVD or otherwise in an apparent attempt to generate income from referral fees on the website associated with the disputed domain name. This is effectively a submission in terms of paragraph 4(b)(iv) of the Policy to which no answer or explanation has been received from the Respondent.
The Panel is satisfied in the circumstances disclosed on the record of this case that the Complainant has established on balance of probabilities that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the complainant’s unregistered trademark as to the source, sponsorship, affiliation, or endorsement of the said site as per paragraph 4(b)(iv).
In these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the third element under the Policy has been established. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: August 9, 2013
Full & Egal Universal Law Academy