Denise Garner v. Almir Davletshin
Claim Number: FA2004001891855
Complainant is Denise Garner (“Complainant”), represented by Meredith Lowry, Arkansas, USA. Respondent is Almir Davletshin (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <denisegarner.com>, registered with Dynadot, 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 Forum electronically on April 13, 2020; the Forum received payment on April 13, 2020.
On April 15, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <denisegarner.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2020 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 April 17, 2020, 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 May 13, 2020, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights in the personal name DENISE GARNER. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used for a bona fide purpose.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith having targeted Complainant.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a politician and member of the Arkansas State House of Representatives; and
2. The disputed domain name was registered on April 6, 2020 and resolves to a website displaying salacious material.
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.
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.
It is well established by decisions under this Policy that proof of a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant has no such registration but asserts common law trademark rights in the personal name, Denise Garner (see, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”).
To establish common law rights in a trademark, a complainant generally must prove that the mark has generated a secondary meaning (see, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that the complainant had demonstrated common law rights in the GOODWIN 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.”).
Proof of common law trademark rights in a personal name is not quite so easy. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at paragraph 1.5 asks the question: “Can a complainant show UDRP-relevant rights in a personal name?” in answer to which the consensus view of UDRP panellists has been:
“1.5.1 Personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case.
1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.”
Complainant’s submissions do not advance its case for trademark rights since it only cites UDRP decisions concerned with marks clearly used in trade and commerce such as that of Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Forum Apr. 10, 2007) where use was in connection with a car dealership and Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Forum June 23, 2006) where use was in connection with real estate development.
Complainant relies on the fact that it is a politician and member of the Arkansas State House of Representative and asserts secondary meaning has been generated through her website referencing her political career and news articles detailing her election win. This material only goes back to 2018.
Were this a contested case a respectable argument may have been put that proof of common law trademark rights was lacking. However, here the Panel finds by a fine balance that Complainant has established such rights in the name DENISE GARNER.
Complainant goes on to submit that the compared terms are confusingly similar. It is not necessary for the Panel to consider those submissions since innumerable UPRP decisions have held that a domain name which simply annexes a gTLD to a complainant’s trademark is identical to that trademark. The Panel finds that the disputed domain name is identical to Complainant’s trademark and so Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
A privacy service has been used to shield the name of the domain name registrant but in consequence of these proceedings the Registrar disclosed the name of the underlying domain name holder as Almir Davletshin. That name provides nothing to suggest that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights and there is no evidence of any association between the parties.
Complainant asserts that the disputed domain name resolves to a pornographic website. It does not provide evidence of that assertion. However, at the time of making this decision the disputed domain name indeed did so. Such use is clearly not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy (see, for example, Yahoo! Inc. v. Zuccarini, FA 183997 (Forum Oct. 20, 2003) (“Respondent's use of the disputed domain names to redirect Internet users to [adult-oriented] websites . . . cannot qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the names under the Policy.”).
The Panel finds that a prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that use of the domain name falls under paragraph 4(b)(iv) above. The Panel has already found the name to be identical to the trademark. Confusion is inevitable. The Panel finds it more likely than not that the resolving website exists for commercial gain in some form or another and that the use of the domain name to redirect internet users to that online location financially benefits Respondent in some way.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <denisegarner.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 15, 2020
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