"WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Joseph Leccese v. Crystal Cox
Case No. D2011-0679
1. The Parties
Complainant is Joseph Leccese of New York, New York, United States of America represented by Proskauer Rose, LLP, United States of America.
Respondent is Crystal Cox of Eureka, Montana, United States of America.
2. The Domain Name and Registrar
The disputed domain name
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 18, 2011, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On April 18, 2011, GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant.
The Center verified that the 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 April 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2011.
Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2011. Respondent filed a Response on May 20, 2011. Complainant sought leave to file a supplemental submission to address certain alleged inaccuracies and legal assertions contained in the Response, but the Panel in its discretion chose not to entertain a supplemental submission since its decision ultimately rested on the Complaint (and annexes thereto) itself.
The Center appointed Robert A. Badgley, Andrew D.S. Lothian and Debra J. Stanek as panelists in this matter on June 20, 2011. The Panel finds that it was properly constituted. Each member of 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. "
Note: WIPO has the Wrong Name on this Part of the Decision, it Should Be Joseph Leccese and not Gregg Mashberg on this One. WIPO will not change posts once decision is made, no matter name errors or so Caitlin Tubergen, Head WIPO Intellectual Property Attorney Says. ( Caitlin Tubergen does not even own his dotcom, Clearly WIPO has run Amok and yet is deciding on our VERY valuable Intellectual Property Assets.
"The first hurdle Complainant must clear is to establish that he has rights in a trademark to which the Domain Name is identical or confusingly similar. The asserted mark is Complainant’s personal name, GREGG MASHBERG.
Complainant relies on the evidence set forth above in the Factual Background section, as well as certain previous decisions under the Policy. Complainant’s entire argument is set forth below:
As a result of these commercial activities under Complainant’s name, Complainant has developed trademark rights in his name. See, e.g., Roland Mouret v. Domains by Proxy, Inc. and Sonia Long, WIPO Case No. D2009-1435 (Complainant had trademark rights in his personal name, which he used in connection with his fashion design business); Kotak Mahindra Bank Limited v. Richard Brown, WIPO Case No. D2008-0243 (Complainant had developed trademark rights in his name through being a well-known business man and chairman of a bank).
Respondent’s use of Complainant’s name on her web site provides further evidence that Complainant is known by his name and is identified with the legal services he offers through Proskauer Rose. See Kotak Mahindra Bank Limited v. Richard Brown, WIPO Case No. D2008-0243 (“Complainant’s evidence is corroborated by Respondent’s web page […] [this] text clearly identifies the Complainant with the bank and vice versa”).
Although “the UDRP does not specifically protect personal names,” the “consensus view” is that “in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.” Chung Mong Koo v. Individual, WIPO Case No. D2005-1068. The evidence set forth above makes clear that the name JOSEPH LECCESE is being used for trade and commerce.
The Panel does not agree with Complainant’s conclusion. There are certainly instances where an unregistered personal name may acquire common law trademark rights through use in commerce as a source identifier of goods or services. According to the WIPO Overview 2, the “consensus view” under section 1.7 (entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”) states as follows:
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.
The evidence in this case falls short. The record before the Panel suggests that Complainant is a highly respected, prominent lawyer who is a partner with a major law firm. There is insufficient evidence here that Complainant markets or provides services independently of the Proskauer law firm. Rather, it appears that the Proskauer firm is the platform on which Complainant provides his legal services.
Nor is there any evidence of record that Complainant has spent money advertising his name apart from the Proskauer firm, or billed clients in his own name. Further, there is insufficient evidence in the record that the legal community regards Complainant as the driving force behind, or alter ego of, the Proskauer firm.
For these reasons, Complainant’s reliance on the Roland Mouret and Kotak cases is misplaced. Complainant’s provided evidence does not come close to matching the evidence described by the panel in the decisions in those cases. In the Kotak case, complainant Uday Kotak apparently presented evidence that his name was so closely associated with the Kotak Mahindra Bank that he had protected trademark rights in his name. Further, his surname Kotak was also the first word in the bank’s name. As the Panel in that case observed:
The uncontradicted evidence of the Complainant in this case is that the commercial community identifies the Complainant with the bank which he founded and which Kotak Mahindra Bank Limited continues to operate under his leadership. He is seen by the media and the public, particularly in India, as the alter ego and driving force behind the company.
Complainant’s reliance on Roland Mouret fares no better. The complainant in that case used his personal name Roland Mouret in connection with his fashion design business. In that commercial context, a designer’s personal name has obvious, and sometimes almost exclusive, value as a trademark. The context of an accomplished partner at a prominent, well-known law firm is generally not analogous.
In sum, the Panel does not find adequate support in this record that Complainant has acquired common law trademark rights in his personal name.
Accordingly, because the Panel finds that Policy paragraph 4(a)(i) has not been satisfied, there is no need to consider the other two elements of a successful complaint under the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Presiding Panelist
Andrew D.S. Lothian
Panelist
Debra J. Stanek
Panelist
Date: June 30, 2011"
Source of
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0679
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