Mark Rivkin v. American
European Marketing
Claim Number: FA0611000849011
PARTIES
Complainant is Mark Rivkin (“Complainant”),
97 Ardwold Gate,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <markrivkin.com> and <markrivkinsucks.com>,
registered with Domainbank.
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.
Bruce E. O'Connor as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 21, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 22, 2006.
On November 21, 2006, Domainbank confirmed by e-mail to the National
Arbitration Forum that the <markrivkin.com> and <markrivkinsucks.com>
domain names are registered with Domainbank
and that the Respondent is the current registrant of the names. Domainbank
has verified that Respondent is bound by the Domainbank
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 December 1, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 21, 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@markrivkin.com and
postmaster@markrivkinsucks.com by e-mail.
A timely Response was received and determined to be complete on December 21, 2006.
On December 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O'Connor as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Complainant contends that the domain names at issue are his personal
name, and that users viewing web sites using the domain names are confused.
Complainant contends that the domain names in issue both link to the
same web site at <markrivkinsucks.com> and that there are many
offensive comments on that web site.
Complainant contends that the domain names in issue are being used in
bad faith. The web site at <markrivkinsucks.com>
includes many offensive articles.
Another web site at <cryptologicmafia.com> includes similar
articles along with a link to the web site at <markrivkinsucks.com>. That web site also appears on various other
web sites.
Complainant attaches copies of web sites supporting these contentions.
Complainant contends that he wants his own domain names back so that he
can have his own web site.
B. Respondent
Respondent contends that it is in the business of operating publishing
and marketing sites and online casinos through associated companies. Complainant is the founder of Cryptologic,
Inc., a company that provides software and services for the online gaming
industry. Respondent licensed this software
and services in 1999, and consequently suffered substantial losses that Respondent
attribute to Complainant's numerous and repeated frauds, misrepresentations of
the quality of its software and services, and lack of technical support by
Complainant. Complainant terminated
Respondent's license, resulting in further damages to Respondent. Respondent contends that Cryptologic is
connected to criminal activity.
Respondent has filed a lawsuit in
Respondent supports these contentions by a declaration, copies of
articles, a list of links to numerous articles
concerning Complainant, third party legal complaints, and pertinent legal authorities.
Respondent contends that Complainant does not have trademark rights in
his personal name, and does not allege or try to establish such trademark
rights.
Respondent contends that Respondent's use of the domain names at issue
is legitimate, being in the form of criticism of Complainant and his business
practices.
Respondent contends that its fair use of Complainant's name in
criticism, and its exercise of free speech in doing so, negate any finding of
bad faith on the part of Respondent, even if the form and content of its
criticism is offensive to Complainant.
FINDINGS
The Panel accepts the factual statements of the parties.
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.
The Panel finds that Complainant has failed to establish any trademark rights in his personal name. There are no contentions of such trademark rights, nor any facts introduced that would establish such trademark rights. Complainant has not introduced any trademark registrations for his personal name. Complainant has not introduced any evidence that his name has been used as a trademark. Complainant has not introduced any evidence that his name has acquired secondary meaning or distinctiveness in conjunction with any goods, services, or business. See Brinks Servs. v. Holt, FA 324699 (Nat. Arb. Forum Nov. 4, 2004) (finding that the complainant did not have standing to bring a complaint under the Policy because the complainant did not provide any evidence that it had valid trademark registrations for the mark or common law rights in the mark, and the complainant did not even suggest how long it had used the mark or identified what services were connected with the mark); see also Retail Indus. Leaders Assoc., Inc. v. R.I.L.A., FA 347841 (Nat. Arb. Forum Dec. 20, 2004) (“Complainant neither asserted common law rights in the RILA service mark nor supplied evidence that it has acquired common law rights in the mark. Therefore, the Panel finds that Complainant failed to establish common law rights in the RILA mark; therefore, Complainant lacks standing under the Policy.”); see also Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services”); see also Turner v. Fahmi, D2002-0251 (WIPO July 4, 2002) (“None of these facts amounts to evidence that the name ‘Ted Turner’ is a trademark or service mark, so that Mr. Turner has not satisfied Paragraph 4(a)(i) of the Policy.”).
The Panel finds
that Complainant has failed to establish a prima facie case for the element in
Paragraph 4(a)(i) of the Policy.
Because of its finding regarding the element in Paragraph 4(a)(i) of the Policy, the Panel declines to consider the
remaining elements in Paragraph 4(a)(ii) and 4(a)(iii). See Staten Island Bancorp, Inc. v. Ifg Inc., D2003-0384 (WIPO June 20, 2003) ("Accordingly, the Panel finds that Complainants have not
met their burden of proof under Paragraph 4(a)(i) of the Policy... given
its findings on the trademark issue, the Panel does not comment further on the
strengths and weaknesses of the Respondent’s position with regard to its
alleged legitimate interests (second element of the UDRP) or the bad faith
issue (third element of the UDRP)"); see also Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant
must prove all three elements under the Policy, Complainant’s failure to prove
one of the elements makes further inquiry into the remaining elements
unnecessary).
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint
be dismissed.
Bruce E. O'Connor, Panelist
Dated: January 11, 2007
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