Andrew Rivkin v. American
European Marketing
Claim Number: FA0611000849015
PARTIES
Complainant is Andrew Rivkin (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <andrewrivkin.com> and <andrewrivkinsucks.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.
Kendall C. Reed 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 21, 2006.
On November 21, 2006, Domainbank confirmed by e-mail to the National
Arbitration Forum that the <andrewrivkin.com> and <andrewrivkinsucks.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@andrewrivkin.com and postmaster@andrewrivkinsucks.com by e-mail.
A timely Response was received and determined to be complete on December 21, 2006.
On December 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
Complainant Contends:
Respondent’s domain names, <andrewrivkin.com>
and <andrewrivkinsucks.com>
(hereinafter “Respondent’s Domain Names”) contain his personal name, Andrew
Rivkin.
Respondent’s Domain Names resolve to a website containing many comments
concerning Complainant.
The nature of the comments concerning Complainant
contained in Respondent’s website demonstrate bad faith on Respondent’s
part.
Complainant seeks transfer of Respondent’s Domain Names to Complainant
so that he can establish his own website linked to his name.
Respondent Contends:
Complainant has not demonstrated trademark rights in his name, and as
such, Complainant fails in his required burden under the Policy. In light of the Panel’s decision in this
matter, the Panel need not address Respondent’s other
contentions.
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 ICANN Policy was created to address the
problem of cybersquatting. It is not
intended to address other types of problems that can be associated with domain
names and/or website content. See The Thread.com
v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (“This Panel is not a general
domain name court, and the Policy is not designed to adjudicate all disputes of
any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to
apply to a particular type of abusive cybersquatting.”).
Policy section 4(a)(i)
presents a threshold question for complainants, to wit, that a respondent’s
domain name be “…confusingly similar to a trademark or service mark in which
the complainant has rights…” This
threshold question necessarily presupposes the existence of trademark or
service mark rights (hereinafter collectively “trademark” rights).
As a matter of general law, a trademark is any
identifying device (including without limitation a series of letters, a word, a
name, an insignia, or a logo) used “…by a person…to identify and distinguish
his goods…[or services]…from those manufactured or
sold by others and to indicate the source of the goods, even if that source is
unknown.” 15 U.S.C. § 1127, bracketed
material added. A trademark can be
registered with a national trademark office, but trademark rights can also be
acquired without registration. In order
to establish trademark rights in the absence of a national registration, a
person seeking trademark rights must use the mark such that it acquires
distinctiveness and secondary meaning, and this requirement applies equally to
personal names functioning as trademarks.
The failure to demonstrate that an unregistered
putative mark has acquired the necessary distinctiveness and secondary meaning
is fatal. See Brinks Services 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. Leader 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 find 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 know as it is,
has been used in a trademark sense as a label or particular goods or
services”).
Here, Complainant has failed to establish that
his name, Andrew Rivkin, is a trademark.
The Complainant has not shown a national registration, nor has he
proffered evidence demonstrating that his name has acquired the necessary
distinctiveness and secondary meaning.
As such, Complainant has failed to carry his burden under section 4(a)(1) of the Policy.
This being the case, it is not necessary to
consider the remaining two elements of Policy section 4(a). See
Razerbox v. Torben Skjodt, FA 150795 (Nat Arb Forum May 9, 2003) (”[B]ecause 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.
Kendall C. Reed, Panelist
Dated: January 11, 2007
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