National Arbitration Forum

DECISION

Todd Witteles v. Domain Guy

Claim Number: FA0512000616302

PARTIES

Complainant is Todd Witteles (“Complainant”), PO Box 19337, Las Vegas, NV 89132. Respondent is Domain Guy (“Respondent”), 11693 San Vicente # 116, Los Angeles, CA 90049.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toddwitteles.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

The Honourable Sir Ian Barker, QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 6, 2006.

On December 28, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <toddwitteles.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 6, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@toddwitteles.com by e-mail.

A timely Response was received and determined to be complete on February 6, 2006.

On February 15, 2006 a timely Additional Submission was received from the Complainant.

On February 13, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ian Barker as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

[a.] The TODD WITTELES mark has acquired sufficient secondary meaning to establish common law rights based on Todd Witteles’ recent fame and reputation associated with his poker career.

Complainant’s professional poker career began in 2003, but was brought into the national spotlight with his success in the 2005 World Series of Poker. He was featured at an ESPN-televised World Series of Poker final table on June 6, 2005, where he finished in third place. His notoriety was greatly increased on July 4, 2005, after winning a World Series of Poker gold bracelet, and setting a World Series record for initial tournament success.

Respondent registered toddwitteles.com on July 5, 2005, one day after reports were widely circulated on the Internet of Complainant’s World Series of Poker performance.

[b.] Respondent’s legal name is Eric Parkinson, which bears no similarity to the name Todd Witteles. Respondent has never had any association with or use of the name Todd Witteles. Respondent has never had any business dealings with Todd Witteles nor sold any authorized merchandise related to Todd Witteles. Respondent has never had any trademark or service rights to the TODD WITTELES mark.

The disputed domain name resolves to a website featuring links to a wide variety of third-party services and products unrelated to Complainant. These links to third-party websites presumably generate click-through fees for Respondent. Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).

Respondent has acquired the disputed domain name for purposes of selling it to Complainant for well in excess of the Respondent’s registration costs. Respondent has sent unsolicited e-mail messages to Complainant offering to sell the domain, including one offer on January 9, 2006, after receiving notification that this complaint was in process.

Respondent also has placed a “DOMAIN FOR SALE” link on the top of the web page resolving from the disputed domain name, which further demonstrates the fact that Respondent has acquired the domain for purposes of resale to Complainant or the highest bidder.

[c.] This registration is a bad faith registration. Its circumstances include three of the four “bad faith” elements as defined by ICANN Policy ¶ 4(b).

(i) Respondent has registered the disputed domain name in order to prevent Complainant from registering and using the site for his own mark. Respondent registered the disputed domain name just one day after Complainant’s high-profile World Series of Poker tournament victory.

Respondent has engaged in a pattern of such conduct registering approximately 100 names of well-known professional poker players without their knowledge or authorization. In all cases, Respondent closely watched World Series of Poker tournament reports on the Internet, and then quickly registered the identical domain names before these players could. These domains include <texbarch.com>, <aaronkanter.com>, <bradkondracki.com>, <tiffanywilliamson.com>, <joehachem.com>, <dustinwoolf.com>, <stevedannenmann.com>, <johnbarch.com>, and many others. These websites currently have a similar look, including both third-party links and the for-sale notification, as the disputed domain name does. The Respondent posted on an Internet newsgroup that he hoped to make as much as $35,000 from the sale of some of these domain names.

(ii) Respondent hopes to attract visitors to the disputed domain name website by using the poker notoriety of Complainant. The top of the website resolving from the disputed domain name includes a large picture of a poker hand next to the name “toddwitteles,” thereby misleading visitors into believing the site is owned and/or endorsed by the Complainant.

B. Respondent

(a) Complainant offers no evidence that the name Todd Witteles has been registered as a trademark. However, protection can be afforded to someone without an actual registration in what is called a service mark. To be granted protection as a service mark under the Policy one generally has be to be regarded as “famous throughout the world.” Also, it is well established under American Federal trademark law that no one can obtain exclusive trademark rights to a personal name. While there have been cases decided in favor of famous celebrities such as Julia Roberts, the name Todd Witteles has no such recognition or association in the minds of the public.

Complainant states that the domain name in question was registered within one day of his “record setting performance” in a poker tournament in Las Vegas, Nevada. One day is hardly enough time to establish service mark rights in one’s name. There are over 40 such events every year (other than the Main Event) at this tournament, and it is extremely unlikely that any person who does not follow poker on a daily basis could name one winner of any of these events in the last 30 years. Complainant also states that this event was televised on ESPN. This event was not aired on television until months later.

Complainant has offered no evidence that he has ever used the name Todd Witteles in commerce, let alone to the degree that would afford him service mark protection. By his own admission, he is much more known in the poker community as an Internet player named Dan Druff. He claims to be a professional poker player since 2003, yet he states, and the articles he produces support the fact that his “record setting performance” was based on “initial tournament success.” Complainant provides no evidence that the name Todd Witteles had received any recognition before the summer of 2005.

Complainant could have registered the domain name Todd Witteles at any time, even after the summer of 2005. By playing poker online under the name of Dan Druff, it can be assumed that Complainant is well-versed in the workings of the Internet.

(b) Respondent registered the disputed domain name, along with various other poker-related names in 2005. Respondent put up a web page that contained up-to-date results of various poker events on these pages. This initial action contained absolutely no commercial links at all, and was provided as a service to poker fans in general.

Respondent registered the disputed domain name as a fan of poker, and had never registered any type of poker name before the summer of 2005. Other than the general information poker site, Respondent also contemplated putting up an Unofficial Fan-Site for Complainant but put those plans on hold because of concerns over Complainant’s behavior.

Respondent uses that “For Sale” link on a majority of his sites as a default design choice, and since Complainant is not famous enough to warrant service mark protection, Respondent can put up any links he chooses and it would not be material to this dispute.

Even if the name Todd Witteles should be granted service mark protection, the facts alleged by Complainant would not leave a reasonable visitor to the site with the impression that the site was sponsored by Complainant. In fact, the exact opposite would likely be concluded. Complainant clearly stated that the links are completely unrelated to his line of work. Most Internet users today are sophisticated enough to make this distinction. Complainant states that the page in question features a card hand at the top of the page. There is the image of a “die” immediately to the right of the cards. Once again, this is a design choice of Respondent. Complainant has never claimed any expertise or fame with dice.

Complainant further alleges that Respondent has engaged in a pattern of such conduct by registering approximately 100 names of well-known professional poker players without their knowledge or authorization. Complainant offers no facts to back up this claim, but even if Respondent had done so, that would be immaterial to this dispute. Respondent would have a right to do what he pleased with these domain names (including selling), as long as he did not infringe a trademark.

Both Julia Roberts and Emmitt Smith are famous people with lengthy distinguished careers in their respective fields. It is extremely unlikely that the name Todd Witteles would even be recognized by a single person outside a very small group of people in the poker world. Even then, most of Complainant’s notoriety in poker is from online poker, where he is rarely referred to as Todd Witteles and generally goes by the name “Dan Druff.” His correspondence with Respondent (as well as with the Forum) comes from an email address that includes the name Dan Druff. Most, if not all of Complainant’s reputation before July 2005 had been received under the name Dan Druff. The message board goes by the name Dan Druff.

Complainant went so far as to re-do part of his Complaint so that it included correspondence where Respondent offered the name for sale to Complainant. This offer was made after Respondent was notified of the official filing of this dispute, and it is well established that offers such as this, that are in the context of mitigating a dispute, should not be looked upon adversely with regards to Respondent.

C. Complainant’s Additional Submissions

Complainant refuted Respondent’s doubts as to his fame as a poker player. He pointed to his accomplishment being recorded in Card Player magazine in 2005.

He acknowledged that ‘Dan Druff’ was his online poker alias. When he transferred his online skills to live tournaments, poker fans were able to connect ‘Dan Druff’ with Todd Witteles.

He makes general criticisms of Respondent’s arguments over commercial use and bad faith.

FINDINGS

a) Complainant is an online poker player using the name ‘Dan Druff.’ In June 2005, he finished third on a televised World Series of poker under his personal name, Todd Witteles. On July 4, 2005, he won a World Series of Poker gold bracelet and set a record for initial tournament success. There was a write-up of his success on the World Series website which was carried by other websites.

b) Respondent registered the disputed domain name which is identical to Complainant’s personal name, one day after Complainant won the tournament.

c) There is no evidence of any marketing of goods or services using the Complainant’s name.

d) Respondent operates a website at the disputed domain name which resolves to numerous third-party links. The website shows playing cards and a dice. The domain name is said to be for sale.

e) Respondent does not deny that his real name is Eric Parkinson rather than “Domain Guy.” Respondent has offered to sell the disputed domain name to Complainant for $1,500. It seems likely that Respondent has registered domain names using the names of other poker players.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

The disputed domain name is identical to Complainant’s name. That is not conclusive. Complainant has to prove he has rights in a trademark or service mark. He has no registered mark and is forced to rely on a common-law mark. UDRP jurisprudence is fairly clear about claims to common-law marks in proper names.

Respondent asserts that Complainant has failed to prove common law rights in the TODD WITTELES mark. Complainant did not provide any evidence of secondary meaning or continuing use of the sort discussed in the following precedents. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, or number of consumers served)); see also Molecular Nutrition, Inc. v. Network News & Publ’ns., FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if Complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant’s goods or services”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also BAA plc v. Larkin, D2004-0555 (WIPO Nov. 11, 2004); see also Cobos v. West, North, D2004-0182 (WIPO June 21, 2004); see also CT Woodhaven Country Club v. Reynolds, FA 436770 (Nat. Arb. Forum Apr. 21, 2005).

As to proper names being the basis of a common law mark, it is not enough that the person should be well-known. There has to be proof that his/her name has been used commercially as a trademark to promote goods and services. A useful analysis is found in Asper v. Commc’n X Inc., D2001-0540 (WIPO June 21, 2001), which was approved by the majority in Turner v. Fahmi, D2002-0251 (WIPO June 4, 2002), where the well-known businessman, Mr Ted Turner, was held not to have a common law mark in respect of his personal name.

The Panelist in Asper listed and categorized previous decisions where a disputed domain name had been held to have been identical or confusingly similar to a complainant’s common law mark found to exist in the complainant’s professional or personal name. In cases involving entertainers, authors and professional sports people, the complainant had usually succeeded, especially where it could be shown that the complainant had either used his/her name as a marketable commodity or had allowed the name to be used for a fee to promote either the complainant’s own or someone else’s goods and services. The Panelist noted other one-off categories; one concerning royalty and one concerning a politician.

The Panelist in Asper found that the complainant, a prominent Canadian businessman and philanthropist, had not shown that he had used his personal name for the purpose of merchandizing or for any other commercial promotion of goods or services. The Panelist found that the complainant had a deservedly famous name and that he may have had a remedy in a national court, but that, as the UDRP was currently worded, he could not succeed on a complaint under the Policy.

See also Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002), where the Reverend Jerry Falwell failed to show, despite the fact that he was very well-known, that his name had been used in a trademark sense as a label for particular goods and services.

See also the Final Report of the Second WIPO Internet Domain Name Process (September 3, 2001) where it was said:

“Persons who have gained eminence or respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to prevent their names against parasitic registration.”

US trademark authority supports this view. McCarthy on Trademarks and Unfair Competition (2^nd Edition) at pages 578 and 579 states the U.S. position thus:

“Personal names (surnames and first names) have been placed by the common law into that category of non-inherently distinctive terms which require proof of secondary meaning for protection. Thus, since personal names are not regarded as being inherently distinctive marks, they can be protected as trademarks only upon proof that through usage, they have acquired distinctiveness and secondary meaning…that is, the public has come to recognize the personal name as a symbol which identifies and distinguishes the goods or services of only one seller.”

That is the situation here. Complainant has not established that he has a common law mark. Indeed, a reputation as a top poker player of only a few months would make it hard to justify a common law mark, even if there were evidence sufficient to support a claim to a common law mark. Accordingly, Complaint must fail because it fails to satisfy the first limb of the Policy.

Had it been necessary to decide, the Panel would have held favourably to Complainant on the other limbs of the Policy.

Respondent was given no rights in the disputed domain name by Complainant. Respondent has failed to bring himself within the criteria in Paragraph 4(c) of the Policy.

Moreover, Respondent’s registration of the disputed domain name the day after Complainant’s success at the Poker tournament indicates an opportunistic bad faith registration. Likewise, Respondent’s attempt to sell the name and his use of the name on the website for obvious commercial gain signifies ongoing bad faith.

It may be that Complainant has other rights under United States law. However, Complainant cannot succeed on this Complaint under the UDRP.

DECISION

The Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Hon. Sir Ian Barker, QC, Panelist
Dated: February 27, 2006