Josh Schachter v. Sue Pearl Wang
Claim Number: FA1108001403527
Complainant is Joshua Schachter (“Complainant”), represented by Jennifer E. Hill of Gunderson Dettmer LLP, New York, USA. Respondent is Sue Pearl Wang (“Respondent”), represented by Bill Gao of Jiangang Joseph Shang, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <joshuaschachter.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2011; the National Arbitration Forum received payment on August 16, 2011.
On August 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <joshuaschachter.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@joshuaschachter.com. Also on August 24, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 6, 2011.
Complainant’s Additional Submission was received on October 10, 2011 and deemed compliant with Supplemental Rule 7. Respondent’s Additional Submission was received on October 18, 2011 and deemed compliant with Supplemental Rule 7.
On October 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the founder of several technology companies, including del.icio.us, and an investor in and advisor to many other companies. He speaks regularly at conferences, for which he is compensated through a speaker’s bureau. Complainant states that he is “a luminary in the technology industry” and “a pioneer in the social commerce and peer-to-peer internet space.” Complainant claims that he has common-law trademark rights in his name as a result of his fame and professional reputation. He alleges further that the disputed domain name, <joshuaschachter.com>, is identical to his name.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. In support thereof, Complainant states that he has not authorized Respondent to use his name, that Respondent has not used the domain name for legitimate purposes, and that Respondent has used the domain name solely to profit from confusion with Complainant’s name using a landing page comprised of advertising links.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant states that when he contacted Respondent to inquire about a possible purchase of the domain name, Respondent asked Complainant to invest $30,000 in her business, and later asked for $100,000. Complainant alleges that Respondent’s attempt to extort money from him using the domain name is indicative of bad faith. Complainant also cites other evidence to support his claim of bad faith.
B. Respondent
Respondent challenges Complainant’s claim of common-law trademark rights in his name, noting that Complainant has not used his name to promote goods or services. Respondent claims to have rights and legitimate interests in the disputed domain name, asserting that “joshuaschachter” is the personal name of Respondent’s father. Respondent states, however, that she registered the domain name to establish a website for a planned business because she dreams of being a successful businessman like Complainant. Respondent similarly denies having registered and used the domain name in bad faith. She states that Complainant initiated the email correspondence between the parties, and denies that she has intentionally attempted to attract Internet users to her website by creating a likelihood of confusion with a mark owned by Complainant.
C. Additional Submissions
Both parties have submitted additional submissions, which the Panel considers only to the extent that are helpful to the Panel and contain material that could not reasonably have been included in the parties’ initial submissions.
In his Additional Submission, Complainant reiterates the allegations made in his initial submission, and submits additional new evidence relating to Complainant’s allegation of bad faith. Respondent’s Additional Submission similarly reiterates Respondent’s previous allegations, and states that “Respondent’s father has been using the name ‘Joshua Schachter’ in his blog onling [sic] since 2009.” The only evidence offered in support of this claim, however, is a barely legible screenshot that appears to be in Chinese.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that the disputed domain was registered and is being used in bad faith. However, the Panel finds that Complainant has failed to prove that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The disputed domain name is comprised of Complainant’s personal name, with the “.com” top-level domain suffix appended thereto. At issue is merely whether Complainant has common-law trademark rights in his personal name.
The burden on a complainant seeking to establish common-law trademark rights for purposes of the Policy is fairly steep, requiring strong evidence of secondary meaning or distinctiveness. The name must have been used as to identify the source of goods or services, and as a result of such use, must have become distinctive of that source. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶ 1.7, http://www.wipo.int/amc/en/domains/search/overview/#17; see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002).
In the Panel’s view, the evidence offered by Complainant fails to meet this burden. It is far from clear that Complainant’s name has become known as an identifier of the source of goods or services. To the extent that the name is known among the general public (or within the technology sector), it appears to be known and understood merely as Complainant’s personal name.
Accordingly, the Panel finds that Complainant has failed to prove the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name, shifting to Respondent the burden of production to come forward with concrete evidence of such rights or legitimate interests. See, e.g., Google Inc. v. Texas Int’l Property Assocs., FA 1212995 (Nat. Arb. Forum Aug. 25, 2008). The Panel does not view as credible Respondent’s claim that her father shares Complainant’s name, and in any event Respondent has admitted that she selected the disputed domain name because of Complainant.
Respondent claims to have made preparations to use the domain name for a future business enterprise, but it appears that the only step she has taken thus far is the registration of the disputed domain name itself. Respondent clearly has not made the “demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” contemplated by Paragraph 4(c)(i) of the Policy.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Respondent registered a domain name comprised of Complainant’s name, and appears to be using the domain name to exploit the value of the name by profiting from a landing page comprised of advertising links. It further appears to the Panel that Respondent has attempted to use the domain name as leverage to extort money from Complainant. The fact that Respondent did not initiate the communications between the parties weighs in Respondent’s favor, but on balance this nonetheless seems to be a bad faith use of the domain name. Respondent’s initial registration of the domain name occurred less than two years ago, and under the circumstances it seems likely that Respondent’s intentions at the time of registration were consistent with her subsequent use of the domain name. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <joshuaschachter.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: October 26, 2011
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