Harvey Solursh v. American
European Marketing
Claim Number: FA0611000849013
PARTIES
Complainant is Harvey Solursh (“Complainant”). Respondent is American European Marketing (“Respondent”), represented by Anthony
J. DeGidio, of Fraser, Martin & Miller LLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harveysolursh.com> and <harveysolurshsucks.com>,
registered with Domainbank.
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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
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 <harveysolursh.com> and <harveysolurshsucks.com>
domain names are registered with Domainbank
and that the Respondent is the current registrant of the name. 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@harveysolursh.com and
postmaster@harveysolurshsucks.com by e-mail.
A timely Response was received and determined to be complete on December 21, 2006.
On January 3, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
1) The domain names <harveysolursh.com> and <harveysolurshsucks.com> are identical and/or confusingly similar to Complainant's name HARVEY SOLURSH.
2) Respondent has no rights or legitimate interests in this domain name.
3) The domain name is used in bad faith.
CONTENTION
NO. 1.
AS TO THE IDENTICAL OR CONFUSINGLY SIMILAR CONTENTION, COMPLAINANT STATES:
The domain name listed above is my personal name. I would like to have my domain name so I can have my own website. It is too confusing for people that are looking up my name in google.ca to find any information about me. The only information that is posted on the website listed above is negative and incorrect.
I note that Complainant does not allege that it holds a registration or a trademark for his name. I further note that Complainant does not provide any evidence that the HARVEY SOLURSH mark, his personal name, has acquired secondary meaning in connection with any products or services.
Complainant advises that when people are looking him up under his personal name it is very confusing. He would like to have his domain name so he can have his own website with the correct information about himself.
RESPONSE OF
RESPONDENT TO CONTENTION NO. 1:
Respondent states that Complainant has failed to establish common law rights of the
HARVEY SOLURSH mark, because Complainant has provided no evidence of having common law rights in the mark.
Respondent
argues that Complainant already owns the <harveysolursh.net> domain name registration and is free to register any
domain name under the ".ca" country code top-level domain name
registry.
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.
FINDINGS
I find the issues on this element in favor of Respondent.
Respondent alleges that Complainant has failed to establish common law rights in the
HARVEY SOLURSH mark, because Complainant has provided no evidence of having common law rights in the mark.
Respondent claims that Complainant already owns the <harveysolursh.net> domain name registration and is free to register any domain name under the “.ca” country-code top-level domain name registry.
I conclude that Complainant's HARVEY SOLURSH mark has not acquired secondary meaning sufficient for Complainant to establish common law rights in the mark in accordance with Policy ¶ 4(a)(i). 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 Jul. 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.”).
Because I conclude that Complainant
does not have rights in the HARVEY SOLURSH mark under Policy ¶ 4(a)(i), I decline to analyze the other two elements of the
Policy. In that Complainant must prove
all three elements under the Policy, the failure to establish the first element
defeats the Complaint. See 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 element unnecessary); see also CyberImprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that,
although the respondent’s domain name <cyberimprints.com> was identical
to the complainant’s incorporated business name, the complainant did not claim
to hold any trademark or service mark rights in CYBERIMPRINTS or
CYBERIMPRINTS.COM, and therefore, its request for transfer was denied).
DECISION
In that Complainant has failed to establish the first of the three
elements required under the ICANN Policy, I conclude that relief shall be DENIED.
Timothy D. O’Leary, Panelist
Dated: January 11, 2007
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