Julie Menin v. Peter Gleason
c/o Seven Sages, LLC
Claim Number: FA0802001142614
PARTIES
Complainant is Julie Menin (“Complainant”), represented by Rachel
Dooley, of Wilkie Farr & Gallagher LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juliemenin.com>, <juliemenin.net>,
and <juliemenin.org> (the "Domain
Names”) registered with Enom, Inc.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 4, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 6, 2008.
On February 5, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the Domain Names are
registered with Enom, Inc. and that the
Respondent is the current registrant of the names. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. 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 February 18, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 10, 2008 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@juliemenin.com,
postmaster@juliemenin.net, and postmaster@juliemenin.org by e-mail.
A timely Response was received and determined to be complete on March 10, 2008.
On 14 March, 2008 an Additional Submission was received in a timely
manner in accordance with The Forum’s Supplemental Rule # 7.
On 18 March, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that she has used the mark, JULIE MENIN, in
association with her professional and public services for more than seven
years. Complainant is the chairperson
for Community Board 1 in
Complainant submits that Respondent has shown a pattern of registering
domain names identical to other names well-known in
On January 18, 2008, Complainant sent a cease-and-desist letter to the
mailing address listed on the WHOIS Information for the Domain Names. It is said that each of the domain names
links to a general web page containing paid for advertisements for companies
providing various business services and products and that to date, Complainant
has not received a reply from Respondent.
Complainant asserts that on information received and belief, that Respondent
is an aspiring politician, who unsuccessfully ran to represent
Complainant further says that Respondent’s use of the Domain Names is
intended to prevent Complainant from using the Domain Names and that
Respondent’s bad faith use and registration of domain names identical to the
names of other public figures, is further evidence that Respondent’s
registration and use of the Domain Names is not legitimate commercial,
noncommercial or fair use, pursuant to ICANN Policy para 4(c)(iii).
Complainant relies on ICANN Policy, para 4(b)(ii)
which states that evidence of bad faith registration and use of a domain name
exists where the respondent “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] ha[s] engaged in a pattern
of such conduct.” Complainant contends that
this case is a prime example of such bad faith registration and use because
Respondent has registered the three most widely used gTLDs associated with
Complainant’s mark.
Complainant submits that the name of a public figure is one of their
most important assets and that a public servant working for the general public
cannot effectively function as such if they are unable, due to the bad faith
actions of potential adversary, to effectively communicate with the public.
B. Respondent
Respondent asserts that while he acknowledges that Complainant is a public figure there is nothing in the public record or the Complaint that indicates Complainant uses her name for profit. It is argued that as such the claim is speculative. In the alternative, it is contended that upon information and belief, Complainant is a named principle in a very lucrative real estate development company, Crescent Heights, and due to public opposition of overdevelopment and development that is contrary to the historical template of the area she does not use her alleged mark in association with what seems to be her most lucrative endeavor.
Respondent contends that both
parties reside in the same area of
Respondent asserts that there is a public interest in publicly scrutinizing Complainant’s performance in the areas cited, some of which are Community Board 1, World Trade Center Memorial, Lower Manhattan Development Corporation and Wall Street Rising. He accepts he has been publicly critical of Complainant’s affiliation with some of the above entities but suggests that the Domain Names were purchased with the intent to provide information for public dialog on Complainant. Furthermore, he contends that he has never profited nor seeks to financially profit from the ownership of the Domain Names or any other domain names, all of which were set up as information portals or in order to add to the public debate.
C. Additional Submissions
Complaint further contends that Respondent’s bad faith intent to
deprive Complainant of the use of her name and mark may be motivated by his
belief that Complainant could decide to run against Respondent in an upcoming
election for City Council. Respondent
has been quoted in various publications criticizing Complainant for failing to
foresee Respondent’s registration of the Domain Names, noting that “voters are
going to have to determine whether or not they want to vote for somebody who
doesn’t have a certain level of foresight.”
FINDINGS
For the reasons set out below the Panel is of
the view that the relief be granted and the Domain Names transferred to
Complainant.
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.
Identical or Confusingly Similar
Complainant does not hold a registered trademark for the JULIE MENIN mark. However, it is not necessary for Complainant to establish rights in the mark as such. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Instead, it is open to the Panel to take into account whether there is sufficient secondary meaning in the mark to confer common law rights pursuant to Policy ¶ 4(a)(i). See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant alleges common law
rights in the mark JULIE MENIN, which is Complainant’s name, based upon her
affiliations with the Community Board in
Complainant contends that the
Domain Names are
identical to the JULIE MENIN mark. The
Domain Names contain, in essence, the mark in its entirety, with the addition
of the generic top-level domains (“gTLDs”) “.com,” “.net,” and “.org.” The Panel finds these alterations to be
insignificant and that the Domain Names are substantially identical to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
On this basis, Complainant has established this element of the Policy.
Rights and Legitimate Interests
It is well established that Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Namesunder Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. Complainant asserts that Respondent is not licensed or authorized to use the JULIE MENIN mark and there is no suggestion that Respondent is commonly known by the Domain Names.
Respondent is using the Domain Names to resolve to a parked page displaying a list of hyperlinks unrelated to Complainant. The Panel finds that Respondent’s use of the Domain Names in this way does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Respondent alleges that it has no control over the content posted to this parking page. This is hardly credible and the Panel has little difficulty in holding Respondent responsible for this content. See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
At the heart of this dispute is Respondent’s
acknowledgement that the Domain Names were purchased with the intent to provide
information for the public dialog on the Complainant, just as Respondent did
with other individuals or entities, namely, as he put it, to shed light on
certain perceived misgivings and adding to the public debate. This is consistent with Complainant’s belief that the parties are political
opponents and are likely to contest an upcoming local body election in
In the Panel’s view it is one thing to engage in vigorous debate and
even criticize a political opponent but quite another thing to register as a
domain name that opponent’s name and to do so simultaneously in all
three generic
top-level domains. The Panel considers that in the context of this Complaint it
is consistent with an effort to
deprive or a least limit Complainant’s full and effective use of her name.
Further, the Panel is of the view that the argument that Complainant has failed
to exhibit foresight by failing to foresee Respondent’s registration of the Domain
Names is disingenuous and Complainant is entitled to question Respondent’s
motives in registering the Domain Names and raising this argument as part of
the political debate.
Accordingly, the Panel concludes that Respondent lacks a right or
legitimate interest in engaging in this type of conduct and accordingly that
this element of the Policy is satisfied.
Registration and Use in Bad Faith
Complainant alleges that Respondent, in registering three domain names containing her name and mark in its entirety, is preventing Complainant from using her mark in a domain name. The Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Complainant alleges that the Domain Names are likely to cause confusion as to Complainant’s sponsorship or affiliation with the resolving websites and that Respondent is attempting to generate success based upon the goodwill associated with Complainant’s JULIE MENIN mark. It is unclear why or how Respondent would generate success in this way. In any event, the finding directly above about preventing Complainant from using effectively her mark in a domain name is sufficient to dispose of this ground.
Finally, while Complainant points to Respondent’s registration and use of domain names incorporating others’ names as well, UDRP decisions have not been rendered with respect to those domain names. Therefore, those additional domain names cited by Complainant are inapplicable to Policy ¶ 4(b)(ii), and to these proceedings. However, the Panel is satisfied that registration and use in bad faith is established without reliance on such similar fact evidence.
Accordingly, the ground is established.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <juliemenin.com>, <juliemenin.net>,
and <juliemenin.org> domain names be TRANSFERRED
from Respondent to Complainant.
Dated: 2 April 2008
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