Jay Bloom v. CJ Stone
Claim Number: FA2103001936515
Complainant is Jay Bloom (“Complainant”), represented by Lou Colagiovanni, Nevada, USA. Respondent is CJ Stone (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jaybloombuffoon.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2021; the Forum received payment on March 13, 2021.
On March 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jaybloombuffoon.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2021 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@jaybloombuffoon.com. Also on March 22, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in the personal name JAY BLOOM. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Given the outcome of these proceedings the only factual findings to mention are that:
1. Complainant is a Las Vegas, Nevada, businessman.
2. The disputed domain name was registered on October 29, 2020 and resolves to a website critical of Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint but may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] There is no evidence that Complainant holds a national trademark registration, nor does it lay claim to one. However, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and so, to satisfy paragraph 4(a)(i), Complainant must prove that it has rights in an unregistered or so-called common law trademark which is either identical or confusingly similar to the disputed domain name.[ii]
Common law trademark rights may be established through proof of use and public recognition of a term or sign such that it has come to acquire secondary meaning.[iii] The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”)[iv], asks at paragraph 1.3: What does a complainant need to show to successfully assert unregistered or common law trademark rights? The consensus viewpoint of panelists includes the following statement:
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
Complainant correctly states that rights may exist in a personal name and cites cases which have considered that issue under the Policy[v]. Indeed, the WIPO Overview has more to say about that under paragraph 1.5, Can a complainant show UDRP-relevant rights in a personal name?, in answer to which it states:
“1.5.1 Personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case.
1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.”
Complainant states that he “has a common law trademark right in his personal name and likeness”. Clearly the issue of Complainant’s likeness is irrelevant to paragraph 4(a)(i) of the Policy which is concerned with whether or not Complainant has trademark rights in the name, JAY BLOOM. In that regard, the Complaint states that:
“Mr. Bloom is a resident and businessman in Las Vegas, Nevada. Over the course of the last several decades, he has owned and operated various businesses both in the Las Vegas area and in other states. Mr. Bloom is currently the manager of [Police Chase Las Vegas LLC], which is a Las Vegas based business that provides clients with the opportunity to drive and/or “chase” numerous vehicles. Mr. Bloom and his businesses are well-known in the Las Vegas community. Mr. Bloom is not only the face of his business, but Mr. Bloom’s name and likeness are inextricably intertwined with his business.
Mr. Bloom has a common law trademark right in his personal name and likeness as Mr. Bloom’s name is used as a distinctive identifier of goods or services offered by Mr. Bloom and his businesses. … Mr. Bloom has been using his name and likeness in connection with the goods and services provided through his businesses for decades now.”
The supporting material comprises a news article dated November 19, 2018 entitled, Experience a police chase in Las Vegas, without breaking the law, describing the then imminent opening of the Police Chase Las Vegas business. It concludes: “Police Chase Las Vegas has a soft opening on Jan. 13, 2019, and a grand opening on Jan. 19, 2019.” The only other supporting material is a Facebook page for Complainant listing college graduations and business interests. All that might be concluded from that material is that Complainant has an entrepreneurial bent and may be known in business circles in Nevada. The material does not speak to any of the usual indicia of acquired distinctiveness set out in the WIPO Overview and in spite of the statement in the Complaint that “Mr. Bloom’s name and likeness are inextricably intertwined with his business” the Panel has no evidence to suggest Complainant’s personal name is any better known than the quite different trading names of his various enterprises. In short, there is no evidence of the Complainant’s claim that his name “is used as a distinctive identifier of goods or services offered by … his businesses.”[vi]
Having regard to the standard of evidence required to support a claim of unregistered trademark rights set out in earlier UDRP decisions and in the WIPO Overview, there is insufficient proof of common law trademark rights and so the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required[vii].
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jaybloombuffoon.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 23, 2021
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”; see also, Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) to the same effect.
[iii] See, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”; Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) finding complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark; CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) finding complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”
[iv] See http://www.wipo.int/amc/en/domains/search/overview3.0
[v] For example, Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.
[vi] See, for example, eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
[vii] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page