Complainant is Betty Liu of New Jersey, United States of America, represented by Denlea & Carton LLP, United States of America.
Respondent is Nicklas Jonow, of Honolulu, Hawaii, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “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 January 8, 2014. On January 9, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On January 9, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 28, 2014.
The Center verified that the Complaint together with 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2014. The Response was filed with the Center on February 19, 2014. An amended Response was filed with the Center on February 20, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 26, 2014. 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
According to the Complaint, Complainant is a “well-known television anchor with Bloomberg Television.” She is the editor-at-large for Bloomberg Television and hosts the daily business news program “In the Loop with Betty Liu.” She also hosts the daily radio show “In the Loop, At the Half.” Complainant also states that she is an “award-winning business journalist” who, prior to her time with Bloomberg, was an anchor with CNBC Asia and a bureau chief with the Financial Times. Complainant also states that she is the author of two books, Age Smart: Discovering the Fountain of Youth at Midlife and Beyond (2006) and Work Smarts: What CEOs Say You Need to Know To Get Ahead (2013).
The Domain Name was registered on November 18, 2009. Respondent has been using the Domain Name to host a website “to aggregate and share information of the Complainant’s work and support the Complainant.” The site contains photos and video links of Complainant, and various other information about her. There are also links that take the visitor to a site where Complainant’s book Age Smart may be purchased. This “fan site” also contains a few links to third-party commercial websites, including a French language course site and a hotel booking site.
Respondent has no affiliation with Complainant and has not been authorized by Complainant to use Complainant’s alleged trademark. There is no evidence of any communications between the parties prior to the commencement of this proceeding. 5. Parties’ Contentions A. Complainant
Complainant asserts that she “plainly enjoys common law trademark rights in her name by virtue of her use of her name in conjunction with providing business information services on her nationwide daily television program on Bloomberg News, as well as in conjunction with her published works.” She argues that “[i]t is well-settled that the term ‘trademark or service mark’ as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks.”
Complainant also argues that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent registered and is using the Domain Name in bad faith by “intentionally attract[ing] Internet users for commercial gain by creating a likelihood of confusion with Complainant’s…mark” and by “utilizing Complainant’s famous mark in order to suggest to Internet users a connection between the Domain Name and Complainant.” She seeks an order transferring the Domain Name from Respondent to her. B. Respondent
Respondent argues that Complainant has not proven that she enjoys common law trademark rights in her name. Moreover, Respondent maintains, Complainant has not proven that she had any trademark rights in BETTY LIU at the time the Domain Name was registered on November 18, 2009 and, accordingly, Respondent could not have registered the Domain Name in bad faith within the meaning of the Policy.
In addition, Respondent asserts that he has the right to host a website “expressing support and devotion to Betty Liu’s work and career.” According to Respondent, he has operated this fan site for four years without any objection from Complainant.
Respondent also notes that the website contains a clear disclaimer of any affiliation with Complainant, and that Complainant’s omission of this crucial fact in her Complaint renders Complainant culpable of Reverse Domain Name Highjacking under the Policy.
Finally, Respondent asserts that he is operating the website at a financial loss. He alleges that the advertisements on the website are ancillary to the site’s primary noncommercial purpose. He claims to have earned only USD 65 through the ads on his website, which sum is less than the cost of maintaining the Domain Name and hosting the site. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant is certainly correct that the Policy applies to registered marks as well as common law marks. Unfortunately for Complainant, there is not a shred of evidence in this record that she has any common law trademark rights at all, much less the “famous” mark she claims to have. It is worth repeating here the entirety of Complainant’s case that she enjoys common law trademark rights:
“Complainant Betty Liu plainly enjoys common law trademark rights in her name by virtue of her use of her name in conjunction with providing business information services on her nationwide daily television program on Bloomberg News, as well as in conjunction with her published works.”
If a complainant seeks to rely on unregistered (common law) trademark rights in a proceeding under the Policy, it is necessary that the complainant provide evidence that the alleged mark has acquired secondary meaning as a source identifier for that complainant’s goods or services. Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") – entitled “Can a complainant show UDRP-relevant rights in a personal name?” – states in relevant part (with internal citations omitted and emphasis added):
“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].
[…]
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.”
Paragraph 1.7 of the WIPO Overview 2.0 – entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” – states in relevant part as follows (with emphasis added):
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
In the instant case, there is not the slightest bit of evidence presented in aid of Complainant’s alleged common law rights. Complainant has not presented any evidence that her name has acquired secondary meaning as a source identifier of her goods or services apart from her role as a host for Bloomberg News1 .
Complainant has presented no evidence of advertising efforts promoting the alleged mark BETTY LIU as a source identifier for any goods or services. She has presented no evidence that any sector of the public associates the alleged mark BETTY LIU with the source of any specific goods or services. Even with respect to the two books she has authored, Complainant has not provided any evidence of sales. Indeed, it is not even clear from the record here that the two books were published by a commercial publisher, as opposed to being self-published.
In short, there is simply no basis in this record to conclude that Complainant enjoys any common law trademark rights to her name BETTY LIU. Nor does the Complaint’s bald assertion of fame suffice to relieve Complainant of any obligation to prove her case. Unfortunately, even though the threshold under paragraph 4(a)(i) of the Policy has generally been regarded as a fairly low threshold to cross, it has not been surmounted here. On this record, the Panel must conclude that Complainant has failed to establish that she has any trademark rights in her name BETTY LIU. B. Rights or Legitimate Interests
In view of the Panel’s determination above, it is unnecessary to decide this issue. C. Registered and Used in Bad Faith
In view of the Panel’s determination above, it is unnecessary to decide this issue. 7. Decision
For the foregoing reasons, the Complaint is denied. Further, the Panel declines to declare that Complainant has engaged in Reverse Domain Name Highjacking. This Complaint, while misconceived and unsupported by evidence, was not brought in bad faith or for an abusive purpose.
Robert A. Badgley
Sole Panelist
Date: March 5, 2014
1 The Panel notes that Bloomberg News is not a party to this case and has not asserted any trademark rights in this proceeding in connection with Complainant’s name. Also, the Complaint does not indicate whether Complainant has assigned any rights in her name to Bloomberg.
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