Dr. Ellen Ochoa v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA2205001995027
Complainant is Dr. Ellen Ochoa (“Complainant”), represented by Sarah R. Frankfort of Cabello Hall Zinda, PLLC, Texas, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ellenochoa.com>, registered with Sea Wasp, 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 May 4, 2022; the Forum received payment on May 4, 2022.
On May 7, 2022, Sea Wasp, LLC confirmed by e-mail to the Forum that the <ellenochoa.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 May 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2022 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@ellenochoa.com. Also on May 10, 2022, 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 June 6, 2022, 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, ELLEN OCHOA, and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a former astronaut and director of the NASA Johnson Space Center in Houston (“NASA”);
2. the disputed domain name was registered on November 16, 2002;
3. the domain name resolves to a webpage with the links, “Family Life First”, “Life Science” and “Ellen Ochoa”;
4. the domain name is offered for sale; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use her name or to register any domain name incorporating her name.
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.
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.
The domain name is legally identical to the name, “Ellen Ochoa”, (see, for example, ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”); Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Forum Nov. 16, 2009) holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”); Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)). The principal issue is whether Complainant’s name is a trademark in which she has rights.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (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).”)). Complainant acknowledges that it has no registered trademark. Nonetheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and UDRP panels have found that a governmental registration is not required so long as a complainant can establish common law rights (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.”).
Proof of such common law trademark rights involves, in this case, two enquiries, best explained by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”) as follows:
1.5 Can a complainant show UDRP-relevant rights in a personal name?
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.
1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
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. …
The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.
Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.
The evidence accompanying the Complaint establishes to the Panel’s satisfaction that Complainant had a long and illustrious career with NASA, having spent 1000 hours in space as an astronaut between 1991 and 2002, principally as a crewmember of Space Shuttle Discovery. Thereafter, from 2013 to 2018, Complainant was the 11th Director of NASA during which time she was awarded that organisation’s Distinguished Service, Exceptional Service and Outstanding Leadership Medals. In 2017, Complainant was inducted into the U.S. Astronaut Hall of Fame. Complainant retired from NASA in 2018.
Having regard to paragraph 1.5 of the WIPO Overview, there is little doubt that, at least in the United States, if not more broadly, Complainant’s name is famous. By way of the evidence, the Panel is now aware of Complainant’s birthplace; present place of residence; number of children; preferred musical instrument; and the names of her husband and dog, but whether Complainant’s own name acts as “a trademark-like identifier in trade or commerce” is another question. As the panel said in Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255, after reviewing the prior UDRP cases cited by the complainant there:
“While the panel in each of these cases did find such rights and order transfer, in all but the first the panel expressly found that the complainant had used his or her name as an identifier of goods or services and based its finding of rights in a mark on that basis, not simply the ‘fame’ of the complainant.”
The Complaint states that “[t]hroughout Complainant’s tenure as an astronaut and her service to NASA, [her name] acquired distinctiveness (or “secondary meaning”) in connection with her national space flight services.
Were that the end of the matter, the Panel might have struggled to attribute a meaning to “national space flight services”. Not only is the expression troublesome but, for that time, Complainant was an employee of an organisation with its own reputation. Without more, the Panel would have had difficulty finding Complainant’s name to have acted as an identifier of goods or services.
However, the Complaint goes on to state that since retirement from NASA:
“Complainant also speaks across the country, as well as outside of the U.S., on a variety of topics, including but not limited to the importance of minorities …, women in leadership positions, and human space exploration. Complainant is paid for her speaking appearances, thus rendering her educational services in interstate commerce. For speaking engagements, Complainant is represented exclusively by the Lavin Agency, whom she has authorized to use her name in commerce to advertise her educational services.”
There is ample evidence of those claims, as there is of Complainant sitting on several boards and holding directorships in her post-NASA years and providing what must be assumed to be management services. Complainant has also authored a series of childrens’ books. The Panel is satisfied that the evidence presented supports the claim to common law rights.
The Panel therefore finds that Complainant has shown trademark rights in a term which is identical to the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Notwithstanding the absence of a Response, Complainant must nevertheless make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624). The Panel returns to paragraph 1.3 of the WIPO Overview and, in particular, to the caveat that:
Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.
Casual investigation by the Panel shows the family name, “Ochoa”, to have wide international distribution, notably in Spanish speaking countries. Even in the United States its occurrence is approximately one in five thousand persons. There appear to be many people of repute in sport, business, academia, or the professions who bear the surname (see, for example, https://en.wikipedia.org/wiki/Ochoa). It seems entirely likely that there are persons named Ellen Ochoa, other than Complainant. It is quite conceivable that, in 2002, one of those persons desired the domain name. However, all the evidence points away from that possible scenario. The domain name was not registered by an Ellen Ochoa – on the contrary it was registered using a proxy service to conceal the registrant’s identity and in consequence of these proceeding the Registrar revealed the name of the underlying domain name holder as YOLAPT, an entity associated with a great many earlier UDRP decisions, all essentially resulting in an adverse decision based on registration in bad faith (see, for example, Amerimark Direct, LLC v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, FA1603001665584 (Forum Apr. 25, 2016); SBD Enterprises, LLC v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, FA1610001696401 (Forum Nov. 6, 2016); General Motors LLC v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, FA 1510001643209 (Forum Nov. 27, 2015); Capital One Financial Corp. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA1302001487712 (Forum Apr. 8, 2013); Herman Miller, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, FA1412001597830 (Forum Feb. 10, 2015); Sony Corporation v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2008-0794; Revlon Consumer Products Corporation v. Whois Privacy Services Pty Ltd, /Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2010-1070; Zions First National Bank v. Whois Privacy Services Pty Ltd / Domain Admin Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2015-1894 and Wikimedia Foundation, Inc. v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Yeonju Hong, Dzone Inc. / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2015-1978).
Further, there has been no shown use of the domain name in twenty years in relation to anything which might approximate legitimate noncommercial or fair use; the only use, as described earlier, being to divert Internet users looking for Complainant’s online presence to other, unrelated, locations. Furthermore, the domain name has been offered for sale and, according to the evidence, for a price ten-fold above its market worth if Complainant’s personal reputation is subtracted from that calculus.
The use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name; Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA0301000143684 (Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”)); Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA0605000714952 (Forum Aug. 2, 2006) finding that a site displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other sites); Ashley Furniture Indus., Inc. v. Private Registration/WhoisGuardService.com, FA1206001448492 (Forum July 28, 2012) finding that use of the domain name as a parked website featuring pay-per-click links did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii)).
The onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, op. cit.). Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that a compelling inference can be drawn that Respondent’s conduct falls under paragraph 4(b)(i) above. The Panel has already found the domain name to be identical to the trademark. Confusion is inevitable and it is likely that the domain name was chosen and registered to take advantage of Complainant’s reputation. The offer for sale is for a price far exceeding the acquisition and renewal costs over twenty years. In terms of the Policy, the Panel finds that Respondent registered or acquired the domain name primarily for the purpose of selling it to Complainant for consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name (see, for example, Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).).
The Panel finds that the third and final element of the Policy is satisfied.
Without in any way detracting from or qualifying these findings, the Panel notes that these proceedings were commenced twenty years after the disputed domain name was created. The evidence is that Complainant has registered other domain names which are composed of her personal name with other domain extensions, suggesting to the Panel that there has been ongoing awareness of the disputed domain name which might have been the preferred choice had it been available. On the facts as presented and for the reasons given this delay has not prejudiced Complainant in these proceedings but the Panel is keen to observe that many a complaint may have failed for reason that whilst the long passage of time does not of itself raise any estoppel which has been recognized by a consensus of UDRP panelists, it most certainly has the potential to erode the weight given to certain evidence or claims.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ellenochoa.com> domain name be TRANSFERRED to Complainant.
Debrett G. Lyons, Panelist
Dated: June 14, 2022
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