Joel I. Picket v. Niyazi Palay / Gotham Constructions
Claim Number: FA1702001717501
Complainant is Joel I. Picket (“Complainant”), New York, USA. Respondent is Niyazi Palay / Gotham Constructions (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gothamconstructions.com>, registered with NetRegistry Pty Ltd.
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 Forum electronically on February 15, 2017; the Forum received payment on February 15, 2017.
On February 22, 2017, NetRegistry Pty Ltd. confirmed by e-mail to the Forum that the <gothamconstructions.com> domain name is registered with NetRegistry Pty Ltd. and that Respondent is the current registrant of the name. NetRegistry Pty Ltd. has verified that Respondent is bound by the NetRegistry Pty Ltd. 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 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2017 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 email@example.com. Also on February 22, 2017, 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 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
If the Panel is to order transfer of the disputed domain name Complainant must prove each of the three elements under paragraph 4(a) of the Policy, namely, that:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Complainant’s submissions
The Complaint states in relation to paragraph 4(a)(i) of the Policy that:
The Complaint states in relation to paragraph 4(a)(ii) of the Policy that:
The Complaint states in relation to paragraph 4(a)(iii) of the Policy that:
B. Respondent’s submissions
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the CEO of a New York company which offers construction and construction management services;
2. the disputed domain name was created on April 22, 2015;
3. Respondent has sent emails posing as Complainant and quoting the address, firstname.lastname@example.org, for return correspondence; and
4. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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."
The Complaint is non-responsive to the requirements of paragraph 4(a)(i) of the Policy in that (1) it does not identify a trademark or service mark in which Complainant has rights and (2) is silent on the matter of the identity or confusing similarity of the disputed domain name to any such trademark.
Paragraph 3(b)(viii) of the Rules requires that the Complaint shall specify the trademark(s) or service mark(s) on which the Complaint is based.
On February 22, 2017 the Forum sent a Deficiency Letter to Complainant requiring Complainant to “[p]rovide the Trademark/Service mark registration at issue.”
The amended Complaint merely states:
After a review of the Complaint, the Panel took the view that Complainant should be allowed the opportunity to provide further and better particulars of its claim to trademark rights and so invited Complainant to provide same. The Panel would allow Respondent the chance to comment on anything received.
Accordingly, on April 3, 2017 the Forum issued a Panel Order in the following terms:
“Pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Complainant is invited to provide further particulars of its claim to trademark rights by way of response to the following questions from the Panel:
1. Please provide (if available) proof of a relevant trademark registration;
2. In the alternative, please provide further and better proof of common law trademark rights, such proof to clearly identify the trademark in which rights are asserted and clearly identify the owner of the trademark, be it an individual or a corporate entity.
Please have your submissions to the questions above sent to FORUM and Respondent by way of email no later than April 10, 2017. From the date the submissions are received, Respondent will be granted an additional 3 days to reply to Complainant’s reply.”
On April 4, 2017, Complainant sent an email to the Forum, reading:
“As requested by the Panel Order, please find sample documents showing additional usage and ownership of Gotham Construction creating a common law trademark dating back to 1931, as per option 2 in the note from the Panel. The company has been in the Picket family, Complainant Joel I. Picket is the grandson of company founder Nathan Picket and son of David Picket, both in evidence on the early documents (documents are bound and in the company archives). Also attached are the documents of formation of the LLC in 1997, showing Joel’s ownership of the company name now.”
On April 6, 2017, and presumably in reaction to the information provided under the Panel Order, Respondent wrote to the Forum:
“These emails were initially going to junk and was (sic) neglected as a consequence. Later in the piece (sic) i realised they were in fact genuine correspondence from yourself. In good faith i have decided i will terminate the contract and realise (sic) the domain name. I am currently in discussion with the provider with this request. I do ask though, How will i be compensated for the charges i have incurred?”
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant’s response to the Panel Order clarifies that trademark rights are asserted in the name “Gotham Construction” and although the Complaint is silent on the matter, it can be readily understood that Complaint assumes the disputed domain name to be either identical, or confusingly similar to, “Gotham Construction”.
However, this decision turns on the question of whether Complainant has on the evidence established trademark rights in “Gotham Construction”.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Neither the Complaint nor Complainant’s response to the Panel Order provided evidence of any registered trademark.
Nonetheless, Complainant can in the alternative provide evidence of common law trademark rights.[i] In that regard, the material of possible relevance accompanying the Complaint comprises what is described as “Proof of prior claim to service mark” being:
(a) a “screenshot of Whois registry for GothamConstruction.com, with original creation date of March 25, 1998”; and
(b) a “screenshot of current Gotham Construction website showing Mr. Joel I. Picket as CEO.” [ii]
Also provided is a document showing that Gotham Construction Company LLC was incorporated in the State of New York on December 12, 1997.
Further provided is a 2011 press article entitled “Gotham’s $520M Mixed-Use complex Breaks Ground in Manhattan” referring to a building complex scheduled to be completed by 2014.
The material provided in response to the Panel Order comprises copies or partial copies of documents indicating that a New York company operating under various names including the words “Gotham Construction” existed as early as 1931 having directors bearing the same family name as Complainant.
In assessing this material, the Panel notes Complainant’s reference to documents said to show a “prior claim” to a service mark. This suggests to the Panel that the Complaint proceeds on the belief that in law the essential element in the establishment of common law rights is proof of first adoption. It is not. Rather, common law rights are premised upon proof of reputation in and public recognition of the trademark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition[iii] (“WIPO Overview”) asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of UDRP panelists is that:
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. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
The evidence shows that Gotham Construction Company LLC was incorporated in 1997. It shows that the domain name <gothamconstruction.com> was created in 1998, albeit that domain name is not owned by either Complainant or Gotham Construction Company LLC. It shows that Complainant is the CEO of Gotham Construction Company LLC. It shows that in 2011 Gotham Construction Company LLC was to build a large mixed-use complex in Manhattan, although it is unclear on the evidence whether that project came to completion.
The archive material provided in response to the Panel Order suggests that the origins of Gotham Construction Company LLC can be traced back to 1931, but
Complainant’s statement that this material shows “a common law trademark dating back to 1931” is not supported by that evidence. Moreover, contrary to what is claimed, there is no evidence before the Panel that Complainant is the owner “of the company name now” (emphasis added).
In any event, putting the matter of ownership to one side, the evidence does not include the information which might adequately prove rights in a common law trademark, such as evidence of continuous use over time, annual revenue generated by reference to business conducted under the trademark, public recognition of the trademark, or evidence of the nature and extent of advertising of the trademark over time. The evidence is limited to a single press cutting concerning one project which may or may not have come to fruition.
Further, given that “Gotham (city)” is a commonly understood slang name for New York City, the Panel notes also the statement in the WIPO Overview 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.”
The Panel has a discretion to make limited research of its own into matters of factual relevance and given the described shortcomings in the material provided by Complainant, the Panel made an internet search of the name, Gotham Construction Company LLC, ( not the named Complainant, but the likely owner of any trademark) and the first page of “hits” were either to that company’s own website or to its social media pages. Third party references were merely directory listings. There was nothing of immediate value upon which the Panel could attribute common law trademark rights in the words “Gotham Construction”.
Having had two opportunities to do so, Complainant has not shown trademark rights. It follows that the Panel’s finding is that Complainant has failed to establish the first element of the Policy.
Since the Panel finds that Complainant fails to establish paragraph 4(a)(i) of the Policy, no determination of this ground is required.[iv]
Since the Panel finds that Complainant fails to establish paragraph 4(a)(i) of the Policy, no determination of this ground is required.[v]
Having not established one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gothamconstructions.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons Panelist
Dated: April 10, 2017
[i] See, for example, Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (FORUM July 27, 2015) where the Panel confirmed that “[a] Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”
[ii] Complaint annexes a screenshot from the “Executive Team” page of the website at www.gothamconstruction.com giving a brief biographical portrait of Complainant.
[iii] See, www.wipo.int/amc/en/domains/search/overview2.0
[iv] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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.
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