Peter B. Walker v. taotao
Claim Number: FA2206002001826
Complainant is Peter B. Walker ("Complainant"), represented by Sarah E. Bro of McDermott Will & Emery LLP, California, USA. Respondent is taotao ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <peterbwalker.com>, registered with Dynadot7 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2022; the Forum received payment on June 24, 2022.
On June 27, 2022, Dynadot7 LLC confirmed by email to the Forum that the <peterbwalker.com> domain name is registered with Dynadot7 LLC and that Respondent is the current registrant of the name. Dynadot7 LLC has verified that Respondent is bound by the Dynadot7 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 July 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@peterbwalker.com. Also on July 1, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 is an expert on U.S.-China relations and a senior partner emeritus at McKinsey. He is an opinion columnist for CEOWORLD magazine, the author of a popular book on U.S.-China relations, and a prolific presenter on that subject. Complainant claims common law rights in PETER B. WALKER and PETER WALKER arising from his use of those marks in connection with his work as a business consultant, advisor, author, and speaker for nearly 50 years, including appearances on popular, nationally televised programs. Complainant owned the disputed domain name <peterbwalker.com> until recently, using it to promote and disseminate his services for several years until inadvertently permitting the registration to lapse. Complainant subsequently registered and began using an alternate domain name, <peterbwalker.net>, to continue to advertise his book, to disseminate his ideas and expertise, to host his blog, and to advertise his services as an advisor, speaker, and commentator. Complainant asserts that the PETER B. WALKER and PETER WALKER have become distinctive and well-known globally as a result of longstanding use and consumer recognition.
Respondent registered the disputed domain name <peterbwalker.com> in January 2022. The name is registered in the name of a privacy registration service on behalf of Respondent. It is being used for a Chinese-language website consisting of links to sexually explicit websites. Complainant states that Respondent is not commonly known by the domain name, has no affiliation with Complainant, and has not been licensed or permitted to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <peterbwalker.com> is confusingly similar to his PETER B. WALKER mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant asserts common law trademark rights in PETER B. WALKER and PETER WALKER based upon his longstanding use of those marks in connection with his work as a business consultant, advisor, author, and speaker. Common law rights are sufficient under the Policy, provided the Complainant can prove that the mark has acquired secondary meaning. See, e.g., Bill Stromberg v. Victor Platinum Ltd. / IT Manager, FA 1935535 (Forum Apr. 15, 2021) (recognizing such rights in personal name of financial services company CEO); Denise Garner v. Almir Davletshin, FA 1891855 (Forum May 15, 2020) (recognizing such rights in personal name of politician and state legislator); see generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.5 (noting that the name must be "used in commerce as a distinctive identifier of the complainant's goods or services"; "[m]erely having a famous name" is insufficient). In the Panel's view, Complainant has provided sufficient evidence of use and recognition to support his unchallenged claim of common law rights in PETER B. WALKER.
The disputed domain name <peterbwalker.com> corresponds to the PETER B. WALKER mark, with spaces and punctuation omitted and with the ".com" top-level domain appended thereto. The domain name is identical to that mark for purposes of paragraph 4(a)(i) of the Policy. The Panel therefore finds that the disputed domain name is identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's mark, and it is being used for a sexually explicit, commercial website bearing no other apparent relationship to the domain name, presumably using the domain name simply to attract traffic to the website. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Baylor University v. 程建玮, FA 1994812 (Forum June 3, 2022) (finding lack of rights or interests in similar circumstances); Denise Garner v. Almir Davletshin, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name corresponding to Complainant's name and common law mark, and is using it to attract Internet users to a commercial website that promotes adult-oriented content with no apparent relationship to the domain name. The Panel infers from the circumstances that Respondent was aware of Complainant and his prior use of the disputed domain name. Respondent's conduct is indicative of bad faith registration and use under the Policy. See, e.g., Baylor University v. 程建玮, supra (finding bad faith in similar circumstances); Denise Garner v. Almir Davletshin, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peterbwalker.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 27, 2022
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