Bill Stromberg v. Victor Platinum Limited / IT Manager
Claim Number: FA2103001935535
Complainant is Bill Stromberg (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Victor Platinum Limited / IT Manager (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <billstromberg.com>, registered with NameCheap, Inc.
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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2021; the Forum received payment on March 5, 2021.
On March 5, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <billstromberg.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 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@billstromberg.com. Also, on March 8, 2021, 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 timely Response was received and determined to be complete on March 29, 2021.
On April 1, 2021, the Complainant has submitted additional arguments as “Additional Submission”. According to the Complainant, the additional submission relates to “new facts and evidence” that have come to light since the Complainant initially filed its Complaint.
The Panel does not find it necessary to consider the Additional Submission of the Complainant. Therefore, this decision is rendered without having taken into consideration this Additional Submission.
On April 1, 2021, pursuant to the Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien 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.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
The Complainant is the Chief Executive Officer of T. Rowe Price, a financial services company. The Complainant claims common law rights in the BILL STROMBERG mark based on the Complainant’s over 30 years of work for T. Rowe Price in public facing positions and association with the brand name.
According to the Complainant, the Respondent has no legitimate interests in the <billstromberg.com> domain name. The Respondent is not commonly known by the disputed domain name and the Complainant has not authorized or licensed the Respondent any rights in the BILL STROMBERG mark. Additionally, the Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a page with various links related to the goods and services offered by the Complainant and its competitors. Further, the Respondent offers to sell the domain name in excess of out-of-pocket expenses.
According to the Complainant, the Respondent registered and uses the <billstromberg.com> domain name in bad faith. The Respondent registered the disputed domain name with the intent to sell it to the Complainant. Further, the Respondent registered the disputed domain name in order to disrupt the Complainant’s business and divert customers for commercial gain. Finally, the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the BILL STROMBERG mark.
B. Respondent
The Respondent argues that the Complainant does not possess any trademark rights pertaining to BILL STROMBERG. Merely having a “famous name”, such as a businessperson who has not demonstrated use of his personal name in a trademark/source-identifying sense, or making broad unsupported assertions regarding the use of such name in trade or commerce, does not demonstrate unregistered or common law rights.
To be entitled to protection under the Policy, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant's personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source.
The Respondent claims that it has legitimate interests in the <billstromberg.com> domain name. The Respondent argues that it registered the disputed domain name with the intent to create a fan site.
The Respondent further claims that it registered the <billstromberg.com> domain name in good faith. According to the Respondent, “There would be no commercial benefit or monetary gain, nor would there be any advertising displayed on the website. There is no intention of disrupting business or assisting competitors with a fan club site.”
The Respondent claims that it does not control the advertisements on the parked webpage of the disputed domain name.
The Complainant is a natural person named William (“Bill”) Stromberg. The Complainant is the Chief Executive Officer (“CEO”) and president of T. Rowe Price, a company active in the sector of financial services such as asset management and investment management services.
The Respondent is a London-based company named Victor Platinum Limited. The Complainant has shown that, on March 2, 2021, on its website <www.victorplatinum.com>, the Respondent described itself as an entity that “offers brand protection to companies and prominent individuals. Our team finds digital blind spots to help protect your brand from competitors, adversaries, and disgruntled employees”.
The Respondent registered the disputed domain name on July 15, 2020. The Complainant has shown that, on March 2, 2021, the webpage available via the disputed domain name was a “parked page” showing several “related links” which seem to link to third-party websites offering financial services (these links are named for instance “Billing”, “Pay Bill”, “Payment”, “House Payment”, etc.). On March 2, 2021, few dates before filing the Complaint, the webpage available via the disputed domain name also displayed the following disclaimer: “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers”.
The disputed domain name consists of the terms ‘Bill’ and ‘Stromberg’. Consequently, the disputed domain name consists of a generally accepted and well-known short form of the Complainant’s first name (‘Bill’, short for ‘William’), and of the Complainant’s last name (‘Stromberg’).
The Complainant does not own a registered trademark consisting of the term(s) ‘Bill Stromberg’.
On March 2, 2021, a representative of the Respondent (who signed with ‘Lewis Davids - Victor Platinum’) sent an email to the Board of Directors of T. Rowe Price, with the following message:
“Subject: Urgent – CEO Domain
Hello Mr. Stromberg,
Without prejudice, we are getting in touch with you, with regards to the following domain:
billstromberg.com [billstromberg.com]
We are a brand protection agency and our team has secured this domain. Our team values it at $9,725.
The CEO is an integral part of a company. If a competitor were to get control of a CEO's domain name and point it to one of their assets or worse still, to malicious websites, it would be incredibly embarrassing for a public company. It could hurt sales as well as brand reputation. Shareholders wouldn't be too pleased once it reaches the media. Especially as the above domain will rank number one on Google.
For that reason, we always advise clients to secure their personal domain names as soon as possible. The domain can be used by anyone, for anything. It's a great asset to have in your control whether used or not. This prevents potential abuse from competitors as well as disgruntled employees.
We are here to help prevent that and to protect your assets. Please do get in touch, if you're interested.
Thanks,
Lewis Davids
Victor Platinum”.
The version of the email as submitted by the Complainant does not show the full email addresses of the sender and of the recipient of this email. However, since the Respondent does not dispute that this email was sent by its representative to the Board of Directors of the Complainant, the Panel accepts that this email was indeed sent by the Respondent to the Complainant.
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.
The Complainant does not own a registered trademark consisting of the term(s) ‘Bill Stromberg’ or ‘William Stromberg’. The Complainant asserts that it has established common law trademark rights to the BILL STROMBERG mark based on the Complainant’s longstanding use of it, in close association with the financial services and philanthropic efforts of the company T. Rowe Price of which the Complainant has been a CEO for a considerable number of years. According to the Complainant, such use constitutes evidence of common law rights in the mark, sufficient to state a claim against the Respondent with regard to the disputed domain name.
The Panel notes that Policy 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration of a domain name if the complainant can demonstrate established common law rights in the mark. See 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.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
This Panel is of the opinion that a personal name that is not registered as a trademark may indeed serve as a legal basis for a UDRP domain name complaint on the condition that such personal name is used as a trademark-like identifier in trade or commerce (i.e., use of the name as a distinctive identifier of goods or services). This opinion is in line with paragraphs 1.3 and 1.5 of “The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition”.
The burden of proof that the name BILL STROMBERG has become a distinctive identifier which consumers associate with the Complainant’s services is on the Complainant. In other words, the Complainant has to provide the Panel with convincing evidence that his personal name is used in commerce as a distinctive, trademark-like identifier of its services.
In this case, the Complainant has submitted sufficient evidence that he has provided financial advisory services and asset management services via the company T. Rowe Price, of which the Complainant is the CEO, for more than 30 years. The Complainant has provided evidence that, because of his public facing roles for T. Rowe Price for more than 30 years, the BILL STROMBERG mark is in fact closely associated with the services provided by T. Rowe Price and serves as a source identifier for these financial services. The Complainant has provided sufficient evidence of the use of said mark (his own name), as well as evidence of the mark’s association with T. Rowe Price and its services. The Complainant has provided sufficient evidence that he has been widely recognized as a spokesperson for his company and as a prominent person in his business by various third-party organizations and publications. From the evidence submitted by the Complainant, it seems that the Complainant is indeed a well-known, industry-leading figure in the sector of financial services, with a proven track record in this sector of more than 30 years.
Based on the elements of fact mentioned above, the Panel finds that the Complainant’s name is indeed used in commerce as a distinctive identifier of the financial services provided by the company T. Rowe Price, of which the Complainant is the CEO. Consequently, the Complainant has established that it does hold common law rights in the BILL STROMBERG mark for the purposes of Policy ¶ 4(a)(i).
The Panel is of the opinion that it is generally accepted that the name ‘Bill’ serves as a short form or hypocorism of the name ‘William’.
The Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s BILL STROMBERG mark as the domain name contains the mark in its entirety and merely adds the “.com” gTLD. The disputed domain name consists of the terms ‘Bill’ and ‘Stromberg’ (respectively the given name and the surname of the Complainant). The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), then the burden shifts to the Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant contends that the Respondent has no business relationship with the Complainant, and that the Respondent was not authorised or given a license to use its BILL STROMBERG mark, or to apply for any domain name incorporating the mark. The Complainant further argues that, because it owns exclusive rights to the mark in the context of the financial services as offered by T. Rowe Price, the Respondent cannot establish legitimate rights to the disputed domain name.
The Complainant further asserts that the Respondent has made no use of the disputed domain name, other than to misdirect consumers to a web page comprised of hyperlinks to services related to financial billing and payment services. According to the Complainant, the Respondent therefore presumably benefits financially from the traffic generated by the unauthorized use of the BILL STROMBERG mark. Thus, the Respondent’s use does not represent a bona fide offering of goods or services pursuant to Policy 4(c)(i) and does not constitute a legitimate non-commercial or fair use under Policy 4(c)(iii).
Lastly, the Complainant argues that the Respondent’s registration of the disputed domain name with the intent to offer it for sale to the Complainant (or the company of which the Complainant is CEO), is convincing evidence that it does not have rights or legitimate interests with respect to the disputed domain name.
The Respondent argues that its intention for the domain was to create a non-profit fan club website. The Respondent argues that it had no intent for commercial gain and that it did not try to misleadingly divert consumers to or away from T. Rowe Price.
The Panel weighs the arguments of the Parties as follows:
First, the Panel notes that the webpage available via the disputed domain name posted several “related links”, which seem to refer to third-party websites offering financial services (these links are named for instance “Billing”, “Pay Bill”, “Payment”, “House Payment”, etc.). The Panel is of the opinion that such financial services should be considered as competing with the services offered by the Complainant and his company. In the given circumstances, the Panel finds that the Respondent’s posting of links to competing websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy 4(c)(i) or (iii).
The Panel notes that the webpage available via the disputed domain name displayed the following disclaimer: “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers”. However, the Panel finds that the Respondent is in fact responsible for the content published on its website and cannot hide its responsibility behind a general disclaimer.
Second, the Panel finds that, the Respondent’s email of March 2, 2021 (the full text of this email is quoted supra) to the Complainant mentioning that the domain name is valued at $9,725 and that the domain name could seriously damage the Complainant’s company if it were acquired by a competitor, constitutes further evidence of a lack of rights and legitimate interests. The underlying message conveyed by this email was clearly an offer for sale (combined with an implicit threat to harm the company of the Complainant should the offer be refused). The Panel considers the price of $9,725 a disproportionate price that significantly exceeds the Respondent’s out-of-pocket registration costs.
Third, the Panel agrees with the Complainant that the Respondent lacks rights or legitimate interests with respect to the disputed domain name due to the fact that the Complainant has not authorized or licensed to the Respondent any rights in the BILL STROMBERG mark. Lack of authorization to use a complainant’s mark may indeed indicate that a respondent does not have any rights or legitimate interests in the disputed domain name. Moreover, the WHOIS information for the disputed domain name lists the registrant as “Victor Platinum Limited”, making it seem that the Respondent is not commonly known as BILL STROMBERG. There is no other evidence suggesting that the Respondent was authorized to use the BILL STROMBERG mark or is commonly known as BILL STROMBERG.
The Respondent, on the other hand, has provided no evidence at all of its purported intention to create a non-profit fan club website. The disputed domain name was registered on July 15, 2020. The Panel believes that, since the registration date of the domain name, a reasonable period of time has passed, which should have allowed the Respondent to provide the Panel with evidence regarding its intended use of the domain name.
For the reasons outlined above, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
On March 2, 2021, the Respondent sent an e-mail to the company of the Complainant, with a clear underlying message that the domain name is open for sale for the price of $9,725 (the entire text of this email is quoted by the Panel supra). The Panel considers the price of $9,725 an exorbitant price, and at the very least a price that exceeds the normal out-of-pocket registration costs of the Respondent. This email mentioned, inter alia: “We are a brand protection agency and our team has secured this domain. Our team values it at $9,725.”; “For that reason, we always advise clients to secure their personal domain names as soon as possible.” ; and “Please do get in touch, if you're interested.” From the specific facts and circumstances of this case, this email should be considered as an offer for sale of the domain name for an unreasonably high price.
Furthermore, the Panel interprets this email as a plain threat to cause damage to the Complainant’s company. Indeed, this email mentions that, if a competitor were to get control of the CEO's domain name and point it to one of their assets or to malicious websites, it could be incredibly embarrassing for the company, could hurt sales and brand reputation, and would displease shareholders. The email adds that the acquisition of the domain name would prevent potential abuse from competitors and disgruntled employees. The Panel views this email as a clear evidence of bad faith at the time of registration and during the use of the domain name.
Additionally, the abovementioned e-mail of the Respondent confirms that the Respondent was very well aware of the Complainant and his company when registering and using the disputed domain name. Indeed, the email was directed to the Complainant in person (the e-mail started with the words “Hello Mr. Stromberg”). It is without question that the Respondent had indeed actual knowledge of the Complainant’s mark, which further demonstrates bad faith registration and use.
Also, the fact that the Respondent presents itself as a “brand protection agency” weighs heavily against the Respondent when it comes to the question of bad faith. As a brand protection agency, the Respondent is deemed to have been aware of the rights and interests of the Complainant in his personal name. A “brand protection agency” that registers a domain name containing the personal name of a CEO of a company, in an unsolicited way, and subsequently contacts the CEO or the company to sell the domain name and threaten with abusive uses of the domain name, obviously crosses the borders of good faith. The fact that the Respondent formulated this as a way to “protect” the Complainant (“We are here to help prevent that and to protect your assets”) is yet another proof of bad faith.
Finally, the Complainant has provided a screenshot of the disputed domain name resolving to a parked page with links to competing services, which the Panel considers as yet additional evidence of bad faith. As mentioned above, the fact that the parked page contains a general disclaimer with the message that the Respondent has no control over such links, does not excuse the Respondent from its responsibility in this regard. The Panel believes that, in the given circumstances, the Respondent had an own responsibility for the content and links published on its website. The Respondent allowed a third party to post links to competing financial services, instead of resolving the webpage to a blank page. The Panel finds that the Respondent’s use of the disputed domain name to redirect consumers to competing goods or services constitutes evidence of bad faith disruption of the Complainant’s business and an attempt to attract users for commercial gain.
As mentioned above, the Respondent has provided not a single piece of evidence of its alleged intention to use the domain for a non-profit fan club website. Also, in its email of March 2, 2021, the Respondent made no reference whatsoever to a fan club. The Panel is of the opinion that, since the registration date of the domain name (July 15, 2020), a reasonable amount of time has passed, which should have allowed the Respondent to provide the Panel with evidence regarding its purported bona fide use of the domain name. The Panel notes that the actual use of the domain name is as a parked page with links to competing services and as a tool to threaten the Complainant. There is no evidence of any actual or intended use of the domain name as a fan site.
In light of all the factors mentioned above, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <billstromberg.com> domain name be TRANSFERRED from Respondent to Complainant.
Bart Van Besien, Panelist
Dated: April 15, 2021
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