national arbitration forum

 

DECISION

 

Sweet Revenge Enterprises, Inc. v. Scott Trent

Claim Number: FA1205001443846

 

PARTIES

Complainant is Sweet Revenge Enterprises, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA.  Respondent is Scott Trent (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marloscott.com> (the “Disputed Domain Name”), registered with Godaddy.com, LLC.

 

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.

 

Douglas M. Isenberg as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2012; the National Arbitration Forum received payment on May 15, 2012.

 

On May 15, 2012, Godaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <marloscott.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 May 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2012 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@marloscott.com.  Also on May 16, 2012, 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.

 

A Response was received and determined to be deficient on June 6, 2012.[1]

 

On June 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant contends, in relevant part, as follows:

 

·        Marlo Scott, “a well known small business entrepreneur,” is the “owner and sole proprietor” of Complainant, which has obtained common law trademark rights to the name MARLO SCOTT as the result of “years of extensive and exclusive use of the MARLO SCOTT Mark in connection with educational and informational services”; and the Disputed Domain Name is “identical to the MARLO SCOTT trademark.”

 

·        Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent previously used the Disputed Domain Name to redirect visitors to “a competing bakery located within less than a mile of Complainant’s New York bakery store” and now uses it in connection with “a fraudulent political website” for a nonexistent political candidate, “designed to obfuscate Respondent’s illegitimate interests in the domain name”; and “[t]he record reveals no credible evidence that Respondent has, as a business or other organization, been commonly known by the name <marloscott.com>.”

 

·        Respondent registered and is using the Disputed Domain Name in bad faith because, “[w]ith prior knowledge of Complainant and Complainant’s business, Respondent registered the <marloscott.com> domain name and redirected Internet traffic to a direct competitor’s website.  Upon being discovered, Respondent then created and posted a fraudulent website in an attempt to evade culpability.”

 

B. Respondent

 

As stated above, the Response was determined by the National Arbitration Forum to be deficient, and the Panel has not considered it.  Accordingly, the Panel does not address Respondent’s contentions.

 

FINDINGS

Complainant , whose owner and sole proprietor is Marlo Scott, operates a New York bakery store.  Ms. Scott has been featured in various media outlets.  The Disputed Domain Name was created on October 25, 2011.  Many, if not all, of the remaining additional facts are unclear but irrelevant to this decision, so the Panel makes no further findings.

 

DISCUSSION

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.

 

Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Ltd. v. Metyor Inc., D2005-1246 (WIPO Jan. 31, 2006) (“Since the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element . . . it is not necessary to make a finding under the second element of the Policy”); Micro Elecs., Inc. v. MicroCenter, D2005-1289 (WIPO Jan. 31, 2006) (finding that, where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – the Panel makes no findings with respect to the second or third elements of the Policy.

 

Identical and/or Confusingly Similar

 

Paragraph 4(a)(i) of the Policy requires a complainant to prove that “[its] domain name is identical or confusingly similar to a trademark or service mark in which [it] has rights.”

 

Although Complainant does not assert ownership of any trademark registrations for MARLO SCOTT, Complainant states that it has acquired common law rights “[t]hrough years of extensive and exclusive use of the MARLO SCOTT Mark in connection with educational and informational services, business consulting services, and blogging services” and that Ms. Scott “has been featured on numerous national and local television shows, in newspaper articles, and in print, radio, and online advertising campaigns.”

 

It is well-established under the Policy that ownership of a registered trademark is not necessary under paragraph 4(a)(i) and, further, that an individual may obtain common law trademark rights in a personal name.  On these two points, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) is instructive:

 

Paragraph 1.6 of WIPO Overview 2.0 states:

 

Can a complainant show UDRP-relevant rights in a personal name? . . .  Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below] . . . . The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.

 

Paragraph 1.7 of WIPO Overview 2.0 states:

 

What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? . . .  The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition . . . .  [A] conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.

 

Here, while Complainant has provided a number of news articles about Ms. Scott, it has provided no evidence of the length and amount of sales under the trademark, the nature and extent of advertising or consumer surveys.

 

In support of its claim to common law trademark rights in the name MARLO SCOTT, Complainant cites several previous decisions under the Policy regarding the issue of common law rights in personal names, namely, Cruise v. Network Operations Center, D2006-0560 (WIPO July 5, 2006); Lee v. Netico, Inc., D2005-0915 (WIPO Dec. 28, 2005); Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002); Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000); and Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000).  However, each of these decisions is distinguishable from the facts of the instant proceeding.  For example, Tom Cruise was described in the cited decision as “an actor who has appeared in numerous commercially successful films . . . [and] has received or been nominated for numerous awards in connection with his performing services”; Tommy Lee was described in the cited decision as “a world-famous rock star who has used the professional name Tommy Lee in commerce since the early 1980s”; Kevin Spacey asserted that he was “a noted actor”; Julia Roberts was described as “a famous motion picture actress” whose current film was “ranked #1 at the box office”; and Mick Jagger “presented evidence of the continuous commercial use of that mark for more than thirty-five (35) years.”

 

Here, Complainant claims that Ms. Scott is “well known,” but this claim does not compare to the fame of the celebrities described in the cited cases.

 

Rather, as the “owner and sole proprietor” of Complainant, Ms. Scott’s rights in her name appear to be more analogous to those described in a previous dispute under the policy brought by Margaret C. Whitman a/k/a Meg Whitman.  Whitman v. Domains For Sale, D2008-1534 (WIPO Dec. 1, 2008).  In that case, the Complainant “claim[ed] common law service mark rights in her personal name MEG WHITMAN ‘as evidenced by her fame and achievement, the international recognition and wide publicizing of her fame and achievement, and that Complainant's fame and achievement are inextricably connected to eBay's commercial success’.”  Further, “[t]he Complainant has made numerous speeches, presentations and public appearances to promote eBay, and she has been featured on television and in numerous publications . . . .”  However, in denying the Complainant’s request to transfer the disputed domain names, the Panel wrote that “fame alone is not sufficient to establish common law trademark or service mark rights in a personal name” and that “the Panel is unable to conclude that the Complainant has provided services under the name ‘Meg Whitman’ as a source-indicator to a segment of the relevant buying public based on her performance as President and CEO of eBay.”

 

Further, a significant distinction between the “celebrity” decisions cited by Complainant (that is, the cases filed by Tom Cruise, Tommy Lee, Kevin Spacey, Julia Roberts and Mick Jagger) and the instant proceeding is that all of the cited decisions involved cases filed by individuals claiming rights in their own names.  On the other hand, the Complainant in this case is Sweet Revenge Enterprises, Inc., not Marlo Scott.  Therefore, even if the Panel were to find the existence of trademark rights, it remains unclear whether Complainant or Ms. Scott is actually the owner of those rights.

 

In light of the above, the Panel is not persuaded on the record before it that Complainant has obtained rights in the name MARLO SCOTT for purposes of satisfying its requirement under the Policy.  To be clear, the Panel makes no finding as to whether Complainant or Ms. Scott is entitled to trademark protection in the name MARLO SCOTT; rather, the Panel finds merely that it is unable to conclude based upon the limited record applicable to proceedings under the Policy that Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.

 

Registration and Use in Bad Faith

 

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <marloscott.com> domain name REMAIN WITH Respondent.

 

 

Douglas M Isenberg, Panelist

Dated:  June 15, 2012

 

 



[1] Although the Panel has discretion to consider the deficient Response (see, e.g., Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011)), it declines to do so here given that, for the reasons described below, any arguments made by Respondent are irrelevant to the outcome of this proceeding.

 

 

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