Karen Finerman v. Ben Johnston / Bookclout
Claim Number: FA1502001606620
Complainant is Karen Finerman (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is Ben Johnston / Bookclout (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <karenfinerman.com>, registered with GODADDY.COM, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Jeffrey M. Samuels, Sandra J. Franklin, and Paul DeCicco, as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 25, 2015; the Forum received payment on February 25, 2015.
On February 25, 2015, GODADDY.COM, LLC confirmed by e-mail to the 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 February 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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 firstname.lastname@example.org. Also on February 26, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, Sandra J. Franklin, and Paul DeCicco as Panelists.
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.
Complainant Karen Finerman is the host of CNBC’s Fast Money TV show, which is broadcast four nights a week at 5 p.m. EST. Her show reaches more than 96 million U.S. households, as well as nearly 390 million viewers worldwide, and she has been featured in numerous magazine articles and publications, including The Wall Street Journal, Forbes, and The Huffington Post, both for her business acumen and charitable activities. Complainant frequently appears on MSNBC’s Morning Joe broadcast and has appeared on the NBC Nightly News, providing commentary on various topics related to finance. Complainant’s charitable activities include service on the board of the Michael J. Fox Foundation for Parkinson’s Research and as a member of the Wharton School of Business Undergraduate Executive Board.
Complainant is the recipient of numerous awards. In October 2008, she was ranked #20 in the Top 25 Nonbank Women in Finance by American Banker Magazine and in 2010 Complainant was named one of the Nation’s Most Powerful Women by Fortune Magazine.
Complainant is also the author of the best-selling book Finerman’s Rules: Secrets I’d Only Tell My Daughters About Business and Life, which was published in June 2013, and immediately made the New York Times Bestseller list.
Complainant advertises and offers public and private speaking engagements under her personal name KAREN FINERMAN.
Respondent Ben Johnston was hired by Complainant to perform web development services in February 2013. On February 6, 2013, Complainant instructed Respondent to buy <karenfinerman.com> for $1,000.00 from a third-party registrant, and Respondent invoiced Complainant in the amount of $1,018.00 for the purchase of the <karenfinerman.com> domain name, stating “This is an invoice for the acquisition and transfer of karenfinerman.com. Karen Finerman now owns karenfinerman.com.” Complainant promptly paid the invoice. However, on March 3, 2013, the WHOIS record for <karenfinerman.com> was updated to reflect that the owner of the domain name is Respondent Ben Johnston and not Complainant.
In October 2014, Complainant noticed that Respondent had placed the disputed domain name for sale via auction on Go Daddy.com. The disputed domain name currently resolves to a 404 error and has been doing so since at least December 2014.
Complainant has demanded on numerous occasions that Respondent surrender to her the <karenfinerman.com> domain name but all such demands have been ignored.
Respondent failed to submit a Response in this proceeding.
The Panel finds that: (1) the disputed domain name, <karenfinerman.com>, is identical to a trademark in which Complainant has common law rights; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain name, <karenfinerman.com>, is, for all intents and purposes, identical to the name KAREN FINERMAN. The domain name incorporates in full Complainant’s name. The absence of a space between Complainant’s first and last names in the domain name is immaterial, as is the addition of the generic top-level domain “.com.”
The only real question with respect to this element of the Policy is whether Complainant has established trademark rights in the name KAREN FINERMAN. While, in most cases, the complainant in a UDRP proceeding will establish rights in a mark through evidence of ownership of a national trademark registration, a complainant may establish such rights through application of common law principles. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000). More specifically, a UDRP complainant may establish common law trademark rights in his/her personal name through evidence relating to the manner and amount of promotion of one’s name in connection with the providing of services and/or sale of goods under one’s name, such that the name has acquired distinctiveness or secondary meaning.
In this case, Complainant has presented evidence that her name, KAREN FINERMAN, has achieved widespread recognition in connection with financial, charitable and other services, such that KAREN FINERMAN has obtained secondary meaning as identifying Complainant as the source of the services she offers.
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
As noted above, the domain name currently resolves to a 404 error message, so there is no doubt that Respondent is not using the domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the domain name. There also is no evidence that Respondent is commonly known by the disputed domain name.
The Panel holds that the disputed domain name was registered and is being used in bad faith. Respondent was retained and paid by Complainant to purchase the <karenfinerman.com> domain name and to register the name in Complainant’s name but, instead, abused the trust placed in him by registering the domain name in his name. Such fact, alone, is sufficient to demonstrate bad faith registration. The fact that Respondent attempted to sell the domain name at auction for profit is further evidence of bad faith registration and use, as is Respondent’s current nonuse of the domain name. See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where respondent was formerly employed by complainant, was fully aware of the name of her employer, and made no use of infringing domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <karenfinerman.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels (Chair), Sandra J. Franklin, and Paul DeCicco, Panelists
Dated: April 7, 2015
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