ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION John Rizvi, P.A. v. John Rizvi, Novosante Healthcare Case No. D2024-1775 1. The Parties The Complainant is John Rizvi, P.A., United States of America (“United States”), represented by Erik M. Pelton & Associates, PLLC, United States. The Respondent is John Rizvi, Novosante Healthcare, United Arab Emirates, represented by Piasetzki Nenniger Kvas LLP, Canada. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2024. On May 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2024, 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 (Unknown, Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2024, 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 May 7, 2024. 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 the Respondent of the Complaint, and the proceedings commenced on May 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2024. The Response was filed with the Center on June 3, 2024.
page 2 The Center appointed John Swinson as the sole panelist in this matter on June 7, 2024. 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 a corporation that is organized under the laws of Florida, United States. The abbreviation “P.A.” in the Complainant’s name likely means “Professional Association”. The Complainant provides patent attorney services. According to LinkedIn, the founder and managing partner of the Complainant is John Rizvi. Mr. Rizvi is a Florida Bar Board Certified Patent Attorney and an Adjunct Professor of Patent Law and is registered to practice before the United States Patent and Trademark Office. According to LinkedIn, Mr. Rizvi is also the founding partner of Gold & Rizvi, P.A., a South Florida patent law firm. Mr. Rizvi owns a United States Trademark Registration for THE PATENT PROFESSOR. The Complainant has filed a pending trademark application for JOHN RIZVI in class 45 for legal services. This pending application has Serial Number 98144576 and was filed on August 22, 2023. The Complainant also owns a United States Trademark Registration for THE IDEAS ATTORNEY. The disputed domain name was registered by the Respondent on January 22, 2017. The Respondent is a citizen of India who lives in Dubai. The Respondent’s legal name is “John Rizvi”. The Respondent provided a declaration and photocopy of his passport. At the present time, the disputed domain name resolves to a Registrar-generated parking page. This page includes pay-per-click (“PPC”) links for charities and educational courses. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the Complainant has offered legal services under the JOHN RIZVI mark since July 1, 2001, and that that the Complainant has prominently and extensively used, promoted, and advertised its JOHN RIZVI name in connection with the offering and sale of legal services for over 20 years. These include weekly radio (and occasional television) appearances on matters related to intellectual property to which thousands of viewers are exposed. Accordingly, the Complainant submits that the JOHN RIZVI mark has become well recognized by consumers as designating the Complainant as the source of the legal services so marked. The Complainant was unable to find any evidence of an individual named “John Rizvi” linked to the listed entity “Novasante Healthcare,” nor was Complainant able to verify whether the telephone number or address listed for the Registrant belonged to a “John Rizvi.” The Complainant submits that lack of use of the disputed domain name for a significant period with no future plans to make bona fide use of the mark, at the time of the proceeding, can be viewed as evidence that the Respondent has no right or legitimate interest in the disputed domain name.
page 3 Further, the Complainant submits there is no evidence of any good faith use of the disputed domain name, at any time, by the Respondent. Given the lack of any evidence of use of the “John Rizvi” name by the Respondent in connection with any commerce, goods, or services at any time, along with the Respondent’s registration of the disputed domain name in 2017 and lack of any use or provision of content on the site since then, the disputed domain name was registered or acquired primarily for the purposes of selling to the Complainant. B. Respondent The Respondent contends that the Complainant has not satisfied all three of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Respondent contends that the Complainant does not have registered trademark rights, that the Complainant applied for a trademark registration after the Respondent registered the disputed domain name, that the Complainant has not provided sufficient evidence to demonstrate unregistered trademark rights, and that the disputed domain name corresponds to the Respondent’s legal name. The Respondent also contends that, in 2017, it received a promotional email from the Registrar suggesting that he buy a domain name in his personal name. The Respondent believed this was a good idea and so he registered the disputed domain name. The Respondent states: “I had planned to create a webpage where I could reference all of my business activities and other interests, but I have not had time to do so.” 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (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. The onus of proving these elements is on the Complainant. An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants and respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Captain Fin Co. LLC v. Private Registration, NameBrightPrivacy.com, Adam Grunwerg, WIPO Case No. D2021-3279. Paragraph 15(a) of the Rules directs the Panel to decide the 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. A. Identical or Confusingly Similar In view of the findings made below in respect of the second and third element of the Policy, the Panel does not need to decide whether the first element of the Policy has been met.
page 4 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. The Respondent relies on paragraph 4(c)(ii). The Panel finds that the Respondent has been commonly known by a name correspondent to the disputed domain name. WIPO Overview 3.0, section 2.3. The Respondent provided credible evidence that his legal name is “John Rizvi”. The Panel conducted additional searches and reviewed the Respondent’s Facebook page to confirm this evidence. The Panel finds the second element of the Policy has not been established. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by the complainant. Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), WIPO Case No. D2014-1747. The evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark. There is no evidence that the Respondent knew of, or should have known of, the Complainant. The Respondent registered the disputed domain name because it reflected his legal name. The disputed domain name resolves to a Registrar-generated parking page with PPC links for charities and educational courses. There is no evidence of bad faith use of the disputed domain name by the Respondent. The Complainant’s argument regarding bad faith is that the Respondent has held the disputed domain name for a long time without using it, and that this is evidence that the Respondent registered the disputed domain name in bad faith. At best, this argument is weak, and is not supported by the facts of this dispute. Boller, Winkler AG v. Craig Schlossberg, Image Info, LLC, WIPO Case No. D2022-2222. The Panel finds the third element of the Policy has not been established. 7. Decision For the foregoing reasons, the Complaint is denied. /John Swinson/ John Swinson Sole Panelist Date: June 21, 2024
Full & Egal Universal Law Academy