Douglas P. Richter a/k/a
Nick Young since 1997 v. Gregg, Ostrick c/o GNO, Inc.
Claim Number: FA0809001224223
PARTIES
Complainant is Douglas P. Richter a/k/a Nick
Young since 1997 (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nickyoung.com>, registered with Moniker
Online Services, 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.
Jonas Gulliksson, James A. Carmody and David
P. Miranda as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 11, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 15, 2008.
On September 12, 2008, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <nickyoung.com> domain
name is registered with Moniker Online Services,
Inc. and that the Respondent is the current registrant of the name. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 October 6, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 27, 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@nickyoung.com by
e-mail.
A timely Response was received and determined to be complete on October 27, 2008.
An Additional Submission was received from Complainant on October 31,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on November 5, 2008,
which was determined to be timely and complete under the National Arbitration
Forum’s Supplemental Rule 7.
On November 12, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Jonas Gulliksson, James A. Carmody and David P.
Miranda as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Nick Young has been a
recognized trademark and identity for the performer as a stage name, produced
and credited in films, since 1997. Since 1998 he has
been filing a schedule C with the IRS for all incomes earned as independent
artist “Nick Young.” Nick Young’s current domain
is <nickyoungxxx.com> which is used as a review
and content blog site for fans and consumers. It provides reviews of Movies,
Webcam Models, Porn Stars and Sites as well as video content and makes
recommendations for services such as Movie Retailers, Cam Sites, Dating Sites,
VOD sites, etc.
The Complainant’s
intention is to use the domain <nickyoung.com>, which was lost in 2003 due to a failure by the Complainant’s webmaster to
renew the domain registration, to replace his existing domain (<nickyoungxxx.com>).
The Respondent has not been commonly known by the name
Nick Young and has not acquired trademark or service mark rights. Furthermore,
the Respondent has never used or prepared to use the domain name Nick Young or
a name corresponding to the domain name and is not offering any bona fide goods or services in
association with the name Nick Young. The Respondent claims via e-mail to the
Complainant that the domain is “part of the Personal
Entry network of popular-name sites, and is not available
for purchase;” however the <personalentry.com> website
provides no directory of sites and/or services, (nor any indication of this
service in the future) and indicates that the only way to contact the
administrator about “listing” on the site is via e-mail.
The website <nickyoung.com> is
currently sending traffic to <friendfinder.com>, whose
parent company owns <adultfriendfinder.com> and <cams.com> which
is a direct competitor to the
By using the domain name <nickyoung.com>, the Respondent has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s website or other online location, by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website.
B. Respondent
The
Respondent has been using the domain name, among other common “first
name/surname” combinations to provide a “Personal Entry” service for persons
that may have relatively common name combinations.
The Complainant presents no evidence of a trade or service mark
right, other than to assert that the Complainant has been credited in films
since 1997. In the present Proceeding, the Complainant asserts it has used a
name within a domain name, and within film credits, but the Complainant has
provided no evidence whatsoever of such use upon which a determination may be
based. In fact, among the first 50 of 21.8 million Google search results and
beyond for “Nick Young,” there is no indication of any current reputation or
notoriety associated with an alleged adult film performer known as “Nick Young.”
The name “Nick Young” is not inherently distinctive which was the reason why the name was selected among a batch of
expiring and abandoned names for registration and use by the Respondent.
The following examples illustrate this.
The name “Nick Young” is used by:
- NBA Washington Wizards basketball player Nick Young (whose
career
apparently began
in 2007)
- CBS broadcast journalist Nick Young
-
- An acoustic guitarist for “Nick Young and the Beautiful People”
The Respondent was using the domain name in connection with a
directory service denominated as “Personal Entry,” which the Respondent has
been developing experimentally and with limited success. <personalentry.com>
provides a mechanism by which names consisting of “personal dot-com names” can
be utilized by numerous persons who happen to share the same name. The
Respondent has collected over a period of several years, such FirstnameLastname
combinations as:
adamanderson.com alecsmith.com alicemartin.com andywood.com
beckysmith.com nicholassmith.com bethdavis.com charlesgilbert.com
cherylsmith.com danielgray.com debbiewilson.com douglascampbell.com
genemiller.com haroldsmith.com jackfranklin.com janesmith.com
jessiedavis.com joebrown.com joehill.com johnmitchell.com
judysmith.com lennysmith.com louisjones.com lukesmith.com
petercoleman.com paulhartman.com susanjackson.com tobybrown.com
among a larger collection of such
names based upon the availability of domain names consisting of combinations of
common first names and common last names. During the period the Respondent was
collecting these names, they were often merely parked. By the time the
Complainant contacted the Respondent, as shown in the correspondence between
the parties, the Respondent had decided to name the proposed service <personalentry.com>
to provide such directory services. Thus, the Respondent had manifestly not
intended to use the domain name, and was not using the domain name, for
purposes relating to the goods and services in which the Complainant claims its
undocumented right. The Complainant engaged in no contact with the Respondent
until four years later, when the Complainant first approached
the Respondent to buy the domain name. Having purchased the domain name through
an expired domain name re-registration system in 2004, the
Respondent has had no reason to believe the domain name was anything other than
an abandoned domain name.
Complainant does possess common law
rights in the mark NICK YOUNG in connection with various services, including
"streaming video material on the Internet, providing internet
chatrooms" in international class 038 and "On-line journals, namely,
blogs featuring gay pornography, and porn star modeling" in international
class 041. Excerpts of web pages appear as follows:
3/28/2002
webpage accessed through <web.archive.org> and accessible at:
<http://web.archive.org/web/20020328190532/http://www.nickyoung.com/>
09/20/2003 webpage accessed through web.archive.org and accessible at:
<http://web.archive.org/web/20030803054121/www.nickyoung.com/>
10/31/2008 website currently accessible through Complainant's alternative
website <http://vod.nickyoungxxx.com/dispatcher/frontDoor>
The mark NICK YOUNG is shown at the top left comer of the screen in bold, stylized orange font, and the webpage evidences use of the mark as used in the course of performing the services, i.e., providing internet chatrooms. It is also evident on the left column of each webpage that Complainant also provides an online journal and streams video content over the internet (e.g., Webcam & Chat, Videography, Instant Access).
The evidence also consists of a web page, where on the upper left comer, the mark NICK YOUNG appears and in the upper center, the wording NICK YOUNG'S HOME PAGE appears. The marks appear in a banner with reference to the services "porn star model." It is also evident from this webpage that the mark NICK YOUNG is used in the course of performing other services, e.g., "streaming movie rentals," thus showing evidence in a service mark. While NICK YOUNG identifies an individual, i.e., Douglas Richter, it also serves to identify and distinguish the source of services. Thus, while it may be true that a personal name may lack common law rights if it identifies an individual alone, such rights do exist where they also identify and distinguish the source of services.
Complainant Abandoned the
Trademark
The Internet
firm IBill, which served as a payment processor for video on demand began
suffering financial problems which resulted in funds not being paid to
companies that hosted online pornography, such as Channel 1 Releasing. Channel
1 Releasing held the domain name for the benefit of Complainant, however, when Channel 1 did
not receive funds from IBill to maintain the websites, Channel 1 Releasing
released the domain names without consent and notice to domain name owners,
including the Complainant. As such, the domain name became available for public
purchase. Complainant, believing he had no recourse to retrieve his domain name
made no attempt until recently to recover his domain name. In 2006, Complainant
registered an alternate domain name, <nickyoungxxx.com> where he continued
to provide the same services he provided under the
original domain name. It is evident from the above discussion that
Complainant never had any intent not to resume use of the mark. Thus, it cannot
be said that Complainant's common law rights were ever abandoned.
Bona fide use of the domain name
The Complainant contends that <personalentry.com> is a sham. Firstly, it has no clientele, which suggests it is not a legitimate service. Secondly, the Complainant alleges that Respondent uses <personalentry.com> as a means for claiming he has a legitimate interest in the domain names he cybersquats. Complainant's allegations are based on Respondent's history of cybersquatting. Respondent is no stranger to the UDRP domain name dispute process as he is well-renowned as a cybersquatter under both the National Arbitration Forum and the World Intellectual Property Organization. See Panthers BRHC L.L.C v. Gregg Ostrick/GNO,Inc., D2005-0681 (WIPO Sept. 1, 2005), or Carnival Pic v. GNO, Inc., FA 997923 (Nat. Arb. Forum July 10, 2007). Since Respondent does not in fact use the domain name in dispute for any particular purpose, he has no legitimate interest or right in the domain name.
The Respondent's own history of acquiring domain names known to belong to others
evidences Respondent's bad faith intent in acquiring the domain name in dispute.
Furthermore, it is the Complainant's position that Respondent was aware that many porn sites lost their domain names when IBill suffered financial problems. Having seen this
opportunity, well reported in news articles, the Respondent acquired the domain name in dispute, belonging to a porn star. In order for Complainant to recover his domain name, he is forced to either offer an exorbitant amount for return of the domain name or force the current legal proceedings.
The Complainant has submitted a single web page from 2002 and
one from 2003. In addition, the Complainant has shown a web page of recent
vintage, which is not probative of any use of the claimed mark prior to
registration of the disputed domain name. However, the Complainant provides
absolutely no evidence of consumer recognition.
As
was demonstrated in the Response, the name “Nick Young” is by no means
uniquely associated with the Complainant, and the
Complainant’s supplement provides no evidentiary basis for concluding that the
Complainant had established any reputation among relevant consumers in the
alleged mark asserted here.
The
Respondent freely admits that the “Personal Entry” service was not successful.
As the developer of a variety of online and offline commercial ventures, the
Respondent is perfectly aware that not every business idea pans out, but that
experimentation is inherent in entrepreneurial activity. Some of the Respondent’s
ventures have indeed been successful, and the Complainant misunderstands that
while there were no subscriptions under the name “Nick Young,” there were other
applicants for entries under other names for which the Respondent had been
using its collection of first-last name domains. Prior to the notification of
this dispute, the Respondent was using the domain name for the “Personal Entry”
service described by the Complainant. That such
service has not been a tremendous success does not render such use to be either
illegitimate or a “sham.”
Furthermore,
when a domain name expires and is re-registered as an abandoned domain name by
another party, the subsequent registrant is not responsible for facts and
circumstances relating to prior non-renewal of the domain name. Addressing such
circumstances is beyond the scope of the Policy.
The
Complainant has selectively cited two prior UDRP decisions as proof of the
proposition that the Respondent, as a question of
status, is a cybersquatter. In one of the
decisions cited by the Complainant, the Respondent
expressly agreed to transfer of the
requested domain name, and the Panel expressly
declined to enter a finding on the merits of the Complainant’s claim. The
Respondent respectfully disagrees with the panel majority in the cited Panthers
case, in which a dissent was published. Even if it were a pattern, the
question in this case is whether Respondent has cybersquatted this domain name.
Of
course, the Complainant neglects to mention that the Respondent is better known
not
to
be a cybersquatter.
Finally,
the Complainant remains silent on the most obvious and apparent fact of this
Proceeding – namely that the Respondent has held the domain name for several
years, and has made no use of the domain name in connection with the goods and
services for which the Complainant claims a trade or service mark right.
DISCUSSION AND FINDINGS
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.
Complainant has claimed common law rights to
the mark “Nick Young” on the grounds that Complainant has used that name as a
performer stage name within the pornographic industry since 1997. Furthermore
the name is used as a brand for Complainant’s website for fans and consumers.
Respondent has contended this claim, stating
that Complainant has not shown that “Nick Young” is a distinctive indicator of
the source of goods and services.
According to the Policy ¶ 4(a)(i), common law rights are sufficient to establish rights in a mark. The ICANN dispute resolution policy is thus broad in scope in that the reference to a trademark or service mark in which Complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name Complaint under the Policy. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
Absent uniform international protection of names and trade
names, the Policy was intended solely to protect registered and
unregistered trademarks and not names or trade names. Hence, under normal
circumstances names cannot be afforded protection as trade- or service marks
while names are not deemed as inherently distinctive. See Navigo Energy Inc. v. Meier, FA
206312 (Nat. Arb. Forum Dec. 6, 2003)
(“The Policy was intended solely to protect registered and unregistered
trademarks and not trade names because trade names are not universally
protected as are trademarks.”); see also Sintef v. Sintef.com, D2001-0507
(WIPO June 9, 2001) (finding that trade names are “not the subject of the
[UDRP]”). This can be overcome by the name acquiring secondary meaning.
However, it is not
enough to simply have a famous or a recognized name to achieve common law
protection. The Panel stresses the fact that the name must be used as a source
indicator, not as a mere personal identity marker. See Geiger
v. Premium Design, FA
604896 (Nat. Arb. Forum Jan. 17, 2006) (finding that the Complainant had
failed to establish rights in a mark while the Complainant had not stated that
“Teddy Geiger” had a source indicating function but had asserted that the <teddygeiger.com>
and <teddygeiger.net> domain names were “exact
representations of [Complainant’s] professional name,” implying that “Teddy
Geiger” referred to a person and not a source of goods or services); see also Ahmanson Land Co. v. Save Open Space and Elec. Imaging
Sys., D2000-0858 (WIPO Dec. 4,
2000) (“A mark comprising a personal name has
acquired secondary meaning if a substantial segment of the public understand
the designation, when used in connection with services or a business, not as a
personal name, but as referring to a particular source or organization.”).
Hence, Complainant is required to substantiate its claim that it has
acquired sufficient rights in the mark through common law under the Policy. In
other words, Complainant must by building a prima facie case, establish
that the public associates the asserted mark with its goods or services.
Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enter., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001).
Complainant has inter alia submitted, what the Panel regards as relevant evidence for establishing secondary meaning, two annual tax forms from 2003 and 2004, showing Complainant declaring business income in the name of Nick Young, two extracts from the web archive, showing that the web page <nickyoung.com> was registered by Complainant during 2002 and 2003. Furthermore an extract of Complainant’s current web page <nickyoungxxx.com> is submitted, showing the present activities of Complainant.
The dispute resolution procedure is by no means a court procedure. The process is intended to award quick and efficient relief for the trade- and service mark owners that are subjected to what is commonly referred to as “domain hijacking.” Establishing common law rights to a personal name (whether a stage name or not) is dependent on the evidence submitted. It is for Complainant to submit enough evidence to build a prima facie case.
Although the evidence undoubtedly is
indicative of the professional activities of Complainant, the Panel finds that
Complainant has failed to establish sufficient common law rights to the mark Nick Young as there is no relevant
evidence submitted in support of the public
identifying Complainant’s mark exclusively or primarily with the product of
Complainant. See, e.g., Molecular Nutrition, Inc. v. Network
News & Publ’ns, FA 156715 (Nat.
Arb. Forum June 24, 2003) (finding that the complainant failed to establish
common law rights in its mark because mere assertions of such rights are
insufficient without accompanying evidence to demonstrate that the public
identifies the complainant’s mark exclusively or primarily with the
Complainant’s products).
Because Complainant has failed to establish the element of rights in the mark under
¶ 4(a)(i) of the Policy, further inquiry into the remaining
elements is unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(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); see also Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (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)).
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
___________________________________________________
Jonas Gulliksson, Presiding Panelist
James A. Carmody, Panelist
David P. Miranda, Panelist
Dated: November 26, 2008
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