Complainant is Adam Anschel of New York, New York, United States of America, represented by Lewis & Lin, LLC, United States of America.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Tzvi Milshtein, of Pompano Beach, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2015. On September 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 11, 2015.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 5, 2015.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 8, 2015. 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
Complainant, Adam Anschel, is an individual residing in New York, New York, who works and trades in the medical devices industry, using his personal name as a mark. Complainant has done business in the medical device industry using his personal name, Adam Anschel, since at least 2000. Complainant has spent USD 10,000 on advertising and has earned revenues of approximately USD 7 million with this business.
Respondent registered the disputed domain name on April 29, 2015, on May 2, 2015, and on May 4, 2015. The disputed domain names resolve to a website that names Complainant and states “Since 2003 Adam Anschel has personal and company judgments totaling over $440,000 All of public records information on the World Wide Web”, with attached links. Respondent is a competitor of Complainant, and is a named defendant in an ongoing, pending lawsuit, where Complainant is a plaintiff, in the federal district court in the Southern District of Florida. Complainant has not authorized use of his personal name as a mark by Respondent. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) the disputed domain names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.
In particular, Complainant contends that he uses his personal name as a mark, and that although unregistered, this mark has become a distinctive identifier associated with Complainant and the marketing and sales of his medical devices. In this regard, Complainant submitted his affidavit attesting to approximately USD 7 million in revenue since 2000. He also attached web pages from various business websites recognizing his name as a mark for his business.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names because he is merely using them to host an “anonymous” gripe site. Respondent is a competitor of Complainant in the medical devices industry, and is a named defendant in an ongoing, pending lawsuit where Complainant is a plaintiff in the federal district court in the Southern District of Florida. Complainant contends that this use by Respondent is in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain names are “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy. The Panel notes that Complainant does not assert a registered trademark in his personal name, Adam Anschel, but rather relies on common-law rights. In determining Complainant’s rights to his name as a mark, the Panel finds it instructive to turn to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.6, which states in relevant part:
“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 the name would normally be required [see also paragraph 1.7 below].”
WIPO Overview 2.0, paragraph 1.7, states in relevant part:
“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.”
Complainant has shown through unrebutted affidavit evidence that he uses his personal name as a mark, and that although unregistered, this mark has become a distinctive identifier associated with Complainant and the marketing and sales of his medical devices. See Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235 (transferring ). Whether a person’s name has acquired secondary meaning (and hence may claim protection as a common law trademark) requires a factual determination. Factors that a panel might consider include (a) whether the name is common (which reduces the possibility of acquiring secondary meaning) (b) whether the name was used in connection with goods or services in a commercial context; and (c) the time period over which the name was so used. See also Arthur Golden v. Galileo Asesores S.L.,WIPO Case No. D2006-1215 (transferring ), citing Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596. In this regard, Complainant’s affidavit attested to approximately USD 7 million in revenue since 2000. He also attached external web evidence referencing his personal name, Adam Anschel, as his business. The Panel finds that Complainant has established rights in his name as a distinctive identifier for the purposes of the Policy. The Panel further finds that the disputed domain names, , , and incorporate in full Complainant’s personal name, to which he has established rights in commerce.
Regarding the disputed domain names , and , they incorporate in full Complainant’s personal name, and add the descriptive term “lawsuit(s).” Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web,WIPO Case No. D2000-1500 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ); CBS Broadcasting Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring ).
This Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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 disputed domain names resolve to a website that names Complainant and states “Since 2003 Adam Anschel has personal and company judgments totaling over $440,000 All of public records information on the World Wide Web”, with attached links. In determining whether this constitutes a showing of rights or legitimate interest by Respondent, the Panel turns to WIPO Overview 2.0, paragraph 2.4, which states that where two United States parties are involved, Panels “tend to adopt” views1 as follows:
“Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.”
Additional considerations include:
whether: “(i) the domain name has been registered and is used genuinely for the purpose of criticizing the mark owner; (ii) the registrant believes the criticism to be well-founded and lacks intent for commercial gain; (iii) it is immediately apparent to Internet users visiting the website at the domain name that it is not operated by the owner of the mark; (iv) the respondent has refrained from registering all or most of the obvious domain names reasonably suitable for the owner of the mark; (v) where appropriate, a prominent and appropriate link is provided to the relevant trademark owner's website; and (vi) where there is a likelihood that email intended for the complainant will use the domain name in issue, senders are alerted in an appropriate way that their emails have been misaddressed.”
Although Complainant has argued that Respondent has tarnished his mark, cases have found that “[t]arnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark.” See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206 (denying transfer of ). In that case, the Panel found that the respondent was running a noncommercial website and was not a true competitor since it was simply a protest group; see also Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947 (transferring ); Midland Heart Limited v. Uton Black,WIPO Case No. D2009-0076 (denying transfer of ). Here, however, the situation is distinguishable. Respondent is not an individual or group lodging a noncommercial, fair protest, but rather is a commercial competitor of Complainant. The Panel notes further that Respondent has registered some of the key domain names containing Complainant’s personal name and mark, including Complainant’s personal name by itself with the simple, common Top- Level Domain, “.com”. The associated websites also do not indicate in any way that they are noncommercial, protest sites (or for that matter that they are not sponsored or endorsed by Complainant himself as some sort of advertisement). Needless to say, there is no apparent link to Complainant’s own website or email. As such, the Panel finds that, on the balance, Complainant has provided sufficient evidence that Respondent lacks any rights or legitimate interests in the disputed domain names, which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [Respondents’] web site or other on-line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondents’] web site or location or of a product or service on [the] web site or location.”
As discussed above, UDRP panels have recognized an appropriate balance in the analysis of criticism websites. Accordingly, this Panel finds it appropriate to weigh the circumstances in determining whether Respondent has registered and used the disputed domain names in bad faith. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947; Midland Heart Limited v. Uton Black,WIPO Case No. D2009-0076.
Respondent is a named defendant in an ongoing, pending lawsuit in which Complainant is a named plaintiff. This, by itself, does not end the inquiry. Rather, the Panel takes into consideration that Respondent is a commercial competitor of Complainant, rather than a noncommercial protest group. The Panel further considers the content of the websites and that without a disclaimer, the endorsement and sponsorship thereof is unclear. See Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration/1&1 Internet Inc.,WIPO Case No. D2009-0062 (transferring ). Overall, the Panel finds that the disputed domain names have been registered and used in bad faith in accordance with paragraph (4)(a)(iii) of the Policy. 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 names , , and be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Date: October 14, 2015
1 Although various UDRP panels have discussed application of national law, others have indicated that this may not be the best practice. See for example“In the view of this Panel, the Policy, including paragraph 4(c), was intended to be given a consistent interpretation, regardless of the location of the parties, registrar, or respondent's website.” Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration/1&1 Internet Inc.,WIPO Case No. D2009-0062.
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