Karen Finerman v Ben Johnston / Bookclout
Claim Number: FA1412001596768
Complainant is Karen Finerman (“Complainant”), represented by Carolyn Castiglia, New York, USA. Respondent is Ben Johnston / Bookclout (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <karenfinerman.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 National Arbitration Forum electronically on December 23, 2014; the National Arbitration Forum received payment on December 29, 2014.
On December 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <karenfinerman.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 January 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@karenfinerman.com. Also on January 6, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On 29 January 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 KAREN FINERMAN and alleges that the disputed domain name is identical to its trademark. In particular, Complainant asserts that “it has been using its mark in commerce in the United States and has therefore established common law trademark rights in the mark.”
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. In particular, it is alleged that Complainant engaged Respondent to register the domain name on its behalf and perform certain web creation services.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. In particular, Respondent registered the domain in its own name, has not transferred the name to Complainant and has withdrawn the web content.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in these proceedings are that:
1. Complainant is principally a financial investment advisor but also a television show panelist and a published writer;
2. Complainant founded the business, Metropolitan Capital Advisors, in 1992 and continues to play the role as CEO of that business;
3. Prior to that, Complainant worked for Donaldson, Lufkin & Jenrette Securities Corporation, and prior to that, for First City Capital;
4. In 2013 Complainant became the published author of a book entitled, “Finerman’s Rules”;
5. Complainant appears as a panelist on the CNBC television show, “Fast Money”;
6. Complainant engaged Respondent to create a website for Complainant; and
7. the disputed domain name was registered on August 18, 2011;
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 – an investigation into whether a complainant has rights in a trademark and an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
There is no question that the disputed domain name is legally identical to the name KAREN FINERMAN (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; moreover, the deletion of the space between the given name and family name is inconsequential).
Complainant asserts common law trademark rights in the name as it is entitled to do. Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and so-called common law trademark rights may accrue through use and reputation (see, for example, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)).
The question before Panel is whether Complainant has done enough to prove common law trademark rights and in that regard the protection of personal names as trademarks has been given particular attention by UDRP panelists over the years. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, which can be found at (http://www.wipo.int/amc/en/domains/search/overview2.0/#16) asks at Question 1.6 “Can a complainant show UDRP-relevant rights in a personal name?” In response it is written:
Consensus view: 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]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.
…
However: 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.
Question 1.7 goes on to ask: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” to which it is written:
Consensus view: 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. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, 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. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. …
That part of the Complaint concerned with paragraph 4(a)(i) of the Policy and trademark rights carries essentially no argument. Rather, it repeats published biographical information about Complainant and lists various internet locations where more information can be found about Complainant.
Under a heading, “Media & Publicity related to Complainant’s mark”, are links to articles from, notably, Forbes, Wall Street Journal and Yahoo Finance. Those articles in common give biographical information about Complainant herself and review and promote Complainant’s 2013 book. Further links under that part of the Complaint devoted to paragraph 4(a)(i) of the Policy are notably to an article in The Guardian which essentially tells the life story and career achievements of Complainant and her siblings, and in Amazon where, again, Complainant’s book is promoted.
The references are universally concerned with Complainant herself whereas, to repeat the words of the WIPO Overview, “[T]he 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.” In other words, the evidence goes to the professional and life experience of Complainant rather than to proof that the name KAREN FINERMAN serves as a unique trade identifier for specific goods or services, that is, functions as a trademark.
Those references listed under “Media & Publicity related to Complainant’s mark” do not show the use of any trademark in the sense just described. Further, the statement in the Complaint that Complainant “has been using its mark in commerce in the United States and has therefore established common law trademark rights in the mark” is not supported by the evidence; there is no evidence of use of the name KAREN FINERMAN in commerce as a trademark.
Complaints brought by individuals under the UDRP seeking to recover domain names corresponding with their personal names which have succeeded have in common the fact that those persons provided goods or services in commerce by reference to their own names (or names closely dreived from their own names).
By way of analogy, the personal information concerning Complaint includes the fact that she “lives in New York City with her husband Lawrence Golub” who is described as a successful investment manager in his own right and the founder of Golub Capital. Complainant, in contrast, has done business as an investment manager since 1992 under the name, Metropolitan Capital Advisors. There is probably little doubt that name has common law trademark status (if it is not additionally a registered trademark), but that does not assist Complainant in these proceedings.
Guided by the statements from the WIPO Overview, the evidence before the Panel does not show common law trademark rights in the name KAREN FINERMAN and so Panel finds that Complainant has not established paragraph 4(a)(i) of the Policy.
No findings required (see, for example, 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)).
No findings required for the same reason.
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 <karenfinerman.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: February 12, 2015
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