Complainant is Philippe Pierre Dauman of New York, New York, United States of America, represented by Viacom International Inc., United States of America.
Respondent is Dinner Business of Valdosta, Georgia, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on July 12, 2013, the Registrar transmitted its verification response to the Center by email disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint.
The Center sent a deficiency notification on July 22, 2013 providing the registrant and contact information disclosed by the Registrar and invited Complainant to correct the deficiency. Complainant filed an amended Complaint on July 25, 2013.
The Center verified that the Complaint and the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 30, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 19, 2013. The Response was filed with the Center on August 19, 2013.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 2, 2013. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. 4. Factual Background
Complainant is president and chief executive officer of Viacom, Inc., one of the largest and best-known entertainment and media companies in the world. Complainant has served in various management and executive capacities at Viacom since 1987. Complainant holds or has held many corporate directorships and philanthropic or community-minded positions and has been the subject of hundreds of newspaper and magazine articles over many years. In 1999, Viacom registered the domain name on Complainant’s behalf.
Respondent registered the disputed domain name in June 2013. During the few weeks immediately following that registration, Respondent initiated a number of telephone and email communications to representatives of Viacom. The following is representative (Complaint, paragraph 25 and Annex 5):
“In the voicemail message, Respondent says he is a ‘domain name broker’ from New York and Florida, and asks whether Viacom has ‘any interest or concern’ in the Disputed Domain Name. He further claims that he is ‘building an ad-based TV system ... and will be using this domain as part of the system shortly. The domain will be connected to various social media like YouTube ... and other equivalents in China and India. On June 20, 2013, he called and spoke to [a Viacom representative]. During this conversation, Respondent stated that he had acquired the ‘geo-coded domain name with the intention to distribute content in China and India, and generate ad-based revenue ... like an Aereo-based system.’”
When the Panel entered the disputed domain name into his browser, he was directed to a webpage featuring a Bing search for “netflix.” Netflix is another prominent company in the movie business. 5. Parties’ Contentions A Complainant
Complainant contends as follows:
1. Complainant holds common law rights in his personal name by reason of his longtime prominence in the world of business and entertainment. Under United States trademark law his name has achieved secondary meaning. The disputed domain name is identical to this name and mark.
2. Neither Complainant nor Viacom has ever authorized Respondent to use Complainant’s name in any fashion. Respondent has never been known by the disputed domain name. Respondent’s inquiries to Viacom shortly after his registration of the disputed domain name indicate that he intends to use the disputed domain name to take advantage of Complainant’s fame and the extensive goodwill attached to that name for commercial gain – not a legitimate interest under the Policy.
3. Respondent’s registration and contemplated (“threatened”) use of the disputed domain name constitute classic bad faith under the Policy. Respondent has three times been the subject of UDRP proceedings in which transfer of domain names he registered was ordered and owns several hundred other domain names, many of which incorporate a famous celebrity name or other trademark.
All the factual allegations above are supported with substantial documentary evidence. B. Respondent
Respondent contends as follows:
1. Complainant owns no registered trademark in his personal name, which is not famous and which has “a reasonably short history and legal usage.” Complainant’s name has not achieved secondary meaning.
2. Neither Viacom nor Complainant has ever attempted to commercialize Complainant’s name; Respondent is the only person to have done so. “I am working on a very small TV-like system to stream news content. I chose to use this domain as a small news site on the impact of video streaming. It has been used to link to publicly available, generic video clips.” This is entirely legitimate.
3. As to bad faith, “Since there is no valid trademark here, I have not acted in bad faith. Viacom’s weak claims over Philippe Pierre Dauman’s supposed importance to Viacom are grossly overblown.”1 6. Discussion and Findings
This case gives the Panel but one serious issue to address. The disputed domain name is identical to the name in which Complainant asserts rights. Respondent’s proposed use of it (as alleged by Complainant and acknowledged by Respondent) demonstrate that Respondent lacks any rights to or legitimate interest in the disputed domain name and constitutes bad faith under a host of Policy decisions. The question here is whether Complainant’s name is a “a trademark or service mark in which the complainant has rights,” as required by paragraph 4(a)(i) of the Policy.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) , paragraph 1.6, states as follows on this subject (citations omitted):
“Can a complainant show UDRP-relevant rights in a personal name?
Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. 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 [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.
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.”
Complainant cites eleven UDRP cases to support his contention that “famous people own common law trademark rights in their names based on the association by the public of the person and their name: Philip Berber v. Karl Flanagan and KP Enterprises,WIPO Case No. D2000-0661; Anne McLellan v. S, eResolution Case No. AF0303a, (Sept. 25, 2000); Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235); Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Daniel C. Marino, Jr. v. Video Images Productions, et al..,WIPO Case No. D2000-0598; Rita Rudner v. Internetco Corp.,WIPO Case No. D2000-0581; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867; Cho Yang Pil v. ImageLand, Inc.,WIPO Case No. D2000-0229; Helen Folsade Adu Known As Sade v. Quantum Computer Services Inc., WIPO Case No. D2000-0794; and Michael J. Feinstein v. PAWS Video Productions,WIPO Case No. D2000-0880.
While the panel in each of these cases did find such rights and order transfer, in all but the first the panel expressly found that the complainant had used his or her name as an identifier of goods or services and based its finding of rights in a mark on that basis, not simply the “fame” of the complainant. An actor, author, performer, sports star, politician, or other person whose livelihood turns on personal recognition meets this criterion almost by definition. The interested public buys a book because it’s written by Jeanette Winterson, admission to a movie because Julia Roberts or Isabelle Adjani is performing, or a football jersey because it bears Dan Marino’s number. That is the rationale for the distinction drawn in the WIPO Overview 2.0 and these and other cases.2
Not all panels have followed this approach, including the Philip Berber case cited by Complainant. See, e.g., Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402. With a single exception, however, those cases were decided in the Policy’s early days, without the benefit of the development of the Consensus View through careful case-by-case analysis in many cases over many years.
This Panel chooses to follow the Consensus View, including its proviso, both to give proper deference to Policy precedent, see WIPO Overview 2.0, paragraph 4.1, and because he agrees with the reasoning expressed there and in the cases from which that reasoning was developed.
Under this test, the Complaint in this proceeding must fail. Complainant does not allege use of his name as the identifier of any particular goods or services, merely that his name is well known in the business and entertainment world. His fame is undeniable but under sound Policy precedent not by itself sufficient to establish common law rights in the name for purposes of paragraph 4(a)(i) of the Policy.
As noted in similar cases, this conclusion does not leave Complainant without a remedy. “He may have claims under the Anticybersquatting Consumer Protection Act (‘ACPA’), which expressly provides for protection of personal names, or perhaps his actions lie in tort. Complainant is free to pursue his claims in U.S. courts.” The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, P, and G,WIPO Case No. D2002-0184, quoted with approval in David Pecker v. Mr. Ferris,WIPO Case No. D2006-1514. 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Date: September 6, 2013
1 The Response includes a number of other arguments apparently addressing various issues of United States trademark law of marginal, if any, relevance to the Policy. As the Panel has difficulty following these arguments and in any case finds them unnecessary for this Decision, they are not discussed further.
2 This Panel finds David Pecker v. Mr. Ferris,WIPO Case No. D2006-1514, and Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540, particularly apt.
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