The Complainant is Liviu Tudor of Bucharest, Romania, represented by Nestor Nestor Diculescu Kingston Petersen, Romania.
The Respondent is Andra Matei of Bucharest, Romania. 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 October 29, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2014, the Registrar 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. The Center sent an email communication to the Complainant on October 31, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 5, 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 the Respondent of the Complaint, and the proceedings commenced on November 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2014.
The Center appointed Marilena Comanescu as the sole panelist in this matter on December 22, 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.
The language of the procedure is English.
On December 24, 2014, the Complainant filed Supplemental filings, particularly informing that, after receiving the Complaint, the Respondent has registered and is using in the same bad faith manner another seventeen (17) domain names including the name of or making references to the Complainant. Based on its powers provided by paragraph 12 of the UDRP Rules, the Panel is accepting such filings. 4. Factual Background
The Complainant is a Romanian businessman, Chairman of Genesis Development Offices S.A., a real estate investment and development company that owns two class-A business centers in Bucharest city, namely Novo Park and West Gate office buildings.
The Complainant is the founder and the president of the Romanian Association of Building Owners, the Vice-Chairman in the Managing Committee of the European Property Federation and the Secretary General of the Romanian Association for the Club of Rome. The Complainant is ranked in various publications among the richest persons in Romania.
The Complainant does not hold a trademark registration for the name "Liviu Tudor".
The Complainant holds several domain names including the name "Liviu Tudor", such as , , and .
The Respondent registered the disputed domain name on August 1, 2014. At the time of filing the Complaint, the disputed domain name was used to post articles criticizing the Complainant's business activity. Apparently, similar critical posts are provided on various Internet websites and blogs. The site contains no advertising and does not promote or offer the sale of any goods or services. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its personal name "Liviu Tudor". The Complainant has no trademark registration for its personal name, however, according to its assertions, the Complainant has acquired common law and unregistered trademark rights in the name "Liviu Tudor" due to use in trade and commerce in the real estate area and it meets the criteria set forth in the case Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068.
Further, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name , in particular the right to criticize does not extend to registering a domain name that is identical to its personal name.
Also, the Complainant alleges that the Respondent registered and uses the disputed domain name in bad faith as it was created and is exclusively used for tarnishing the reputation of the Complainant, the Respondent's name and contact details are false and, even if freedom of speech and legitimate criticism websites are generally accepted, in this case such registration should be considered abusive particularly because the Complainant cannot defend itself from the accusations as the Respondent's identity is concealed both on the website corresponding to the disputed domain name and in the publicly available databases. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and
(ii) a respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Also, it should be mentioned that the UDRP is limited to clear cases of abusive registrations of domain names, namely "cybersquatting". As a general principle, cybersquatting describes the deliberate bad faith abusive registration of a domain name.. A. Identical or Confusingly Similar
The Complainant has no trademark registration for the name "Liviu Tudor" but claims that the disputed domain name is confusingly similar to its personal name which, pursuant to use for trade and commerce in the real estate sector, the Complainant claims he has established common law and unregistered trademark rights in his name in connection with real estate services.
The Panel agrees that the disputed domain name is virtually identical to the name "Liviu Tudor" as embodies the Complainant's name; the only differences are that the constituent personal name commence with capital letters, the dash added between the name and surname and that the disputed domain name caries the addition of the generic Top-Level Domain ("gTLD") ".com", all these being elements that do not change the overall impression of confusing similarity between the personal name and the disputed domain name.
However, the issue in this case is whether the Complainant's name can be qualified as "a trademark or service mark in which the complainant has rights", as required by paragraph 4(a)(i) of the Policy.
It is relevant to note here that the guidelines given in the Report of the Second WIPO Internet Domain Name Process (September 3, 2001) ("Second WIPO Report") have defined how personal names ought to be protected under the Policy paragraph 4(a)(i). It is clearly indicated in the Second WIPO Report, that the Policy should be limited to personal names that have been commercially exploited. The Second WIPO Report, paragraph 199 also states, "Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves the UDRP to protect their personal names against parasitic registrations. (…) Furthermore, persons whose names have become distinctive in countries that do not recognize unregistered trademark rights are unlikely to find consolation in the UDRP in respect of bad faith registration and use of their personal names as domain names in those countries."
While this Panel notes that the parties in this case are located in Romania, which is a civil law system and thus trademarks are protected only through registration with the relevant body, and that a panel can decide a complaint based on any rules and principles of law that it deems applicable, this Panel notes that unregistered rights can arise for purposes of the UDRP even when the complainant is based in a civil law jurisdiction. .
Accordingly, this Panel will refers to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which defines what needs to be shown for the complainant to successfully assert common law unregistered trademarks: "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 view of this, the Panel shall further proceed to analyzing Complainant's claims regarding the establishment of common law rights or unregistered trademark rights in the name "Liviu Tudor".
This issue has been dealt in previous UDRP decisions as discussed in the WIPO Overview 2.0, paragraph 1.6 which summarizes the current jurisprudence as follows:
"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."
As the panel in Chung, Mong Koo case, supra states "From this summary it may be deduced that the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce."
In cases of personal names registered as trademarks, it is typically straight forward to establish this first element of the Policy (see Harrods Ltd. v Robert Boyd,WIPO Case No. D2000-0060 (the domain name was determined to be registered and used in bad faith, as it was confusingly similar to the personal name, "Dodi Fayed," which had been registered as a European Community Trademark)); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847 (the domain name was held to have been registered and used in bad faith and was identical or confusingly similar to the personal name, Madonna, for which the Complainant held a United States Trademark Registration); Helen Fielding v. Anthony Corbet a/k/a Anthony Corbett,WIPO Case D2000-1000 (Complainant had registered trademark in fictional character "Bridget Jones" in the United Kingdom); Alain Delon Diffusion S.A. v. Unimetal Sanayi ve Tic A.S.,WIPO Case No. D2000-0989 (the domain name was held to have been registered and used in bad faith and was identical to the personal name, Alain Delon, for which the Complainant held International Trademark Registration); Laurence Fontaine v. Visiotex S.A.,WIPO Case No. D2001-0071 (the panel found that the domain name was confusingly similar to the personal name of Complainant which hold a French registered trademark for LAURE SAINCLAIR); Isabel Preysler Arrastia v. Ediciones Delfín, S.L.,WIPO Case No. D2001-0298 (the panel found that the domain name was confusingly similar to the personal name, Isabel Preysler, for which Complainant held a Spanish trademark registration); or Ioana-Alexandra Stan v. MAAN MUSIC STUDIO S.R.L., WIPO Case No. DRO2014-0004(here the panel found that the domain name was confusingly similar to the personal name, Alexandra Stan, for which Complainant held a Romanian trademark application).
Further, in cases involving entertainers, professional athletes, authors, most of the UDRP decisions were favorable to complainants particularly because the panels have found common law trademark rights in complainant's names. The successful cases include the following: Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210; Experience Hendrix, LLC v. Denny Hammerton and The Jimi Hendrix Fan Club,WIPO Case No. D2000-0364; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M", supra; Isabelle Adjani v. Second Orbit,WIPO Case No. D2000-0867; Julie Brown v. Julie Brown Club,WIPO Case No. D2000-1628; Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club,WIPO Case No. D2000-1838; Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235; Daniel C. Marino, Jr. v. Video Images Productions, et al,WIPO Case No. D2000-0598; Jules I.Kendall v. Donald Mayer Re , WIPO Case No. D2000-0868; Jaap Stam v. Oliver Cohen,WIPO Case No. D2000-1061; Pierre van Hooijdonk v. S.B.Tait,WIPO Case No. D2000-1068.
Another category of cases involves politicians and religious people.
For example, in the case Tendzin Jigmey Drakpa, also known as His Holiness Phakchok Rinpoche v. Kim Joe,WIPO Case No. D2006-0328, the panel found that "Complainant is a religious leader, but he does not claim trademark rights merely by virtue of his status as a religious leader. Rather, as in Chinmoy Kumar Ghose v. ICDS and Maria Sliwa,WIPO Case No. D2003-0248, Complainant asserts that he offers goods and services under his name, with his name serving as a trademark and service mark designating the source of goods and services such as ministerial services, educational services, charitable solicitations, and publication of books, magazines, calendars, postcards, brochures and pamphlets."
Furthermore, cases involving business people who are the leaders of companies that do not carry their own names are much more difficult for complainants to prove. Also, it is important to point out, that protection under common law or unregistered trademarks is determined on a case by case basis and depends greatly on the factual basis of each individual case.
In this case, the Complainant cites several UDRP cases to support his contention that famous businessmen have demonstrated commercial attachment to the use of their personal names with their business activity, such as: Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299; Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402; Chung, Mong Koo case, supra; Kotak Mahindra Bank Limited v. Richard Brown,WIPO Case No. D2008-0243. Based on the records of each above cited case, panels have found that the complainants have used his or her name as an identifier of goods or services and based its finding of rights in a trademark on that basis, not simply the "fame" of the complainant.
With respect to business people, this Panel notes the case Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540 in which the prominent Canadian business person and philanthropist Mr. Israel Asper was held not to have acquired trademark rights in his name because "… (he had) not shown on a preponderance of the evidence that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services, or that he intended to do so."
Furthermore in the case R. E. 'Ted' Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi,WIPO Case No. D2002-0251, the majority of the panel observed that the case differed from the Asper case supra in that Ted Turner's surname was used in the names of several major companies in the group which he controlled. However, they concluded that there was "insufficient evidence produced in the Complaint that the Complainant, Ted Turner, has ever offered goods or services under that name, or that that name has acquired any secondary meaning in relation to any goods or services".
Also, in David Pecker v. Mr. Ferris,WIPO Case No. D2006-1514, the panel concluded that a business executive in the publishing industry did not demonstrate that his personal name was used as a mark in trade or commerce. See also The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, P, and G,WIPO Case No. D2002-0184 where "The 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".
Further, the panel in the recent case Philippe Pierre Dauman v. Dinner Business,WIPO Case No. D2013-1255 concluded that the president and chief executive officer of one of the largest and best-known entertainment and media companies in the world which has been the subject of hundreds of newspaper and magazine articles over many years did not demonstrate that his personal name was used as a mark in trade or commerce.
In the present case, the Complainant relies on the criteria mentioned in the WIPO Overview 2.0, paragraph 1.7, particularly on "nature and extent of advertising, (…) and media recognition" and the set of criteria established by the panel in the Chung, Mong Koo case, supra namely: (1) extent to which the business community identifies the individual with the company; (2) extent to which the media and the public see the individual as the alter ego of the company or the driving force behind the company; (3) extent of personal ownership of company by the individual; (4) degree of personal control that the individual exercises over the enterprise; (5) extent to which the individual is identified with any major achievements of the enterprise; and, (6) whether the individual has demonstrable interests in protecting his or her name for commercial interests.
However, in cases such as the present one, the mere celebrity as a business personality is regarded to this Panel as insufficient to obtain the remedy under the Policy. The essential analysis in this case is whether the Complainant has used his personal name in a manner that shows or establishes trademark or service mark rights.
More generally, secondary meaning can be demonstrated by a history of continuous use and public recognition associated with a trademark. Paragraph 1.7 of WIPO Overview 2.0 provides that "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 name "Liviu Tudor" was not registered as a trademark and to support secondary meaning Complainant submitted the following evidence:
- media articles regarding the Complainant (Annexes 6 and 7 to Complaint);
- Annex 10 to Complaint provides the excerpt from the Romanian Companies Registry presenting that the shareholders of the company Genesis Development Offices SA are Complainant's wife (also the marriage certificate is provided as Annex 12 to Complaint) and another entity and the Director of Genesis Development Offices SA is a third party.
Accordingly, based on the evidence submitted by the Complainant, the Panel finds on balance that the Complainant has not shown sufficient evidence that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services and thus failed to demonstrate unregistered trademark rights in the name "Liviu Tudor".
For all the above the Panel finds that the Complainant failed to demonstrate the first element of the Policy. B. and C. Rights or Legitimate Interests and Registered and Used in Bad Faith
Because the Complainant has failed under paragraph 4(a)(i) of the Policy, it is not necessary for this Panel to consider the other elements of the Policy. See Backstreet Boys Productions, Inc. v. John Zuccarini, Cupcakeparty, Cupcake Real Video, Cupcake-Show, and Cupcakes-First Patrol,WIPO Case No. D2000-1619; The Church in Houston v. Jim Moran, Light of Truth Ministries,WIPO Case No. D2001-0683 and Thelonious S. Monk v. The Holding Company,WIPO Case No. D2003-0828.
The Complainant may, of course, choose to pursue its claims in the national competent courts. 7. Decision
For the foregoing reasons, the Complaint is denied.
Marilena Comanescu
Sole Panelist
Date: January 7, 2015
Full & Egal Universal Law Academy