Melinda French Gates v. John Clendenon
Claim Number: FA2207002003541
Complainant is Melinda French Gates (“Complainant”), represented by David J. Byer of K&L Gates LLP, Massachusetts, USA. Respondent is John Clendenon (“Respondent”), represented by Walter Sowa of The Law Office of Walter Sowa, III, Esq. PL, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <melindagates.com>, registered with Godaddy.Com, Llc.
Each of the undersigned panelists certifies that he or she has acted independently and impartially, and to the best of his or her knowledge, has no conflict of interests in serving as a Panelist in this proceeding.
Sandra J. Franklin, Esq., Kendall C. Reed, Esq., and Terry F. Peppard, Esq., as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 8, 2022; the Forum received payment on July 8, 2022.
On August 10, 2022, Godaddy.Com, Llc, confirmed by e-mail to the Forum that the domain name <melindagates.com> is registered with Godaddy.Com, Llc, and that Respondent is the current registrant of the name. Godaddy.Com, Llc, has also 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 August 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2022, 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@melindagates.com. Also on August 15, 2022, 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 late-filed Response was received on September 8, 2022, and was determined to be complete.
On September 19, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin, Esq., Kendall C. Reed, Esq., and Terry F. Peppard, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint and Additional Submission, Complainant alleges, among other things, the following:
Complainant is a well-known philanthropist and human rights advocate.
Starting in 1997, and continuing without interruption through May 7, 1999, and beyond that date to the present, Complainant has been featured in national and international news articles reporting on her philanthropic endeavors.
Complainant therefore has rights in the MELINDA GATES mark under the common law dating from May 7, 1999.
Respondent registered the domain name <melindagates.com> on May 21, 1999.
The domain name is virtually identical, and, therefore, confusingly similar to Complainant’s MELINDA GATES mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the MELINDA GATES mark.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to Respondent’s commercial website at <americanbusinesscenter.com>, which is used by Respondent to offer “business spaces” for rent in Largo, Florida.
Respondent registered the domain name in order to divert Internet users for its commercial gain.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name with knowledge of Complainant’s rights in the MELINDA GATES mark.
Respondent has a history of cybersquatting, which includes registration of seven domain names specifically targeting the children of Complainant, to wit: <jennifergates.com>, <roryjohngates.com>, <johngates.com>, <rorygates.com>, <adellegates.com>, <phoebeadellegates.com> and <phoebegates.com>, all of which were registered on various dates in May and June of 2017.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
In its Response to the Complaint, Respondent makes these assertions, among others:
“Respondent had never heard of the Complainant until shortly before this dispute was filed.”
Respondent was not aware of any rights Complainant might claim in a MELINDA GATES mark when it registered the domain name.
Complainant lacks common law rights in the MELINDA GATES mark because Complainant has failed to provide sufficient evidence of secondary meaning.
The disputed domain name is not confusingly similar to the MELINDA GATES mark because there is no likelihood of confusion as to an affiliation between the putative mark and Respondent’s resolving website.
Respondent has rights to and legitimate interests in the domain name.
Respondent merely registered a domain name using common generic terms that Respondent believed would have economic value.
Respondent now uses the domain name to resolve to a portal site.
Respondent is an entrepreneur who speculates “as to a domain name’s value to unknown parties.”
Respondent did not register and does not use the domain name in bad faith.
Respondent has not attempted to mislead Internet users as to any possible affiliation between Complainant’s alleged mark and the domain name.
Preliminary Issue: Delinquent Response
The record reveals that on September 8, 2022, Respondent filed a complete Response to Complainant’s Complaint, and that its Response was filed three days after the last date on which it was entitled to do so, September 5, 2022. Complainant is aware of this delinquent filing, but has not requested that the Response be disregarded as untimely, as we are permitted to do by Rule 5(e), nor has Complainant pointed to any prejudice to its rights under the Policy from the fact of the untimely filing. Accordingly, the Panel concludes that it is in the interests of justice that Respondent’s Response be considered for all appropriate purposes in coming to a decision in this proceeding. See, for example, Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum January 7, 2011) (deciding that, while a response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Complainant has failed to demonstrate that Respondent registered the contested domain name in bad faith in 1999.
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:
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 to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In the ordinary course, we would address each of the three subparts of Policy ¶
4(a) seriatim, that is, in the order in which they appear in the Policy, beginning with ¶ 4(a)(i), which in effect poses the question whether the challenged domain name, <melindagates.com>, is identical and/or confusingly similar to Complainant’s claimed personal name treated as a mark in which she has rights developed under the common law. However, because Complainant must demonstrate that she has met the requirements of each of the three subparts of Policy ¶ 4(a) in order to succeed in her case as a whole, we will on this occasion turn first to the provisions of ¶ 4(a)(iii) because we have concluded that that aspect of the Policy, which deals with the question whether the domain name was registered and is now being used in bad faith, is dispositive of the case.
We begin by noting that ¶ 4(a)(iii) is stated in the conjunctive (“and”) so that Complainant is obliged to prove in this proceeding both that Respondent registered the domain name in bad faith and that Respondent is now using it in bad faith. If, therefore, we find that Respondent has not been proven to have registered the domain name in bad faith, it will be unnecessary for us to examine whether Respondent now uses it in bad faith.
The facts before us appear to show that, starting in 1997, and continuing without interruption through May 7, 1999, and beyond that date to the present, Complainant has been featured in national and international news articles reporting on her philanthropic endeavors. The facts set out in the Complaint before us also indicate that Respondent registered the contested domain name, <melindagates.com>, on May 21, 1999. This leaves a window of less than two-and-one-half years during which Complainant must have developed the name MELINDA GATES into a distinctive mark under the common law because it cannot be said that Respondent registered the domain name in bad faith before Complainant’s personal name had ripened into a protectable mark. See, for example, Faster Faster, Inc. v. Jeongjo Yoon, FA 1708272 (Forum February 6, 2017):
Respondent registered the domain name more than a decade before Complainant introduced the … mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in … [the mark] … at the moment the domain name was registered.
The exhibits accompanying the Complaint detail a handful of events in connection with which Complainant was featured in published reports for her charitable giving in the less than three years running from 1997 through early May of 1999. In one of those instances, Complainant’s name was reported in connection with creation of the Gates Library Foundation, her name not being mentioned in the title of the institution, while in the others Complainant was credited with philanthropic giving jointly with her spouse, rather than in her name alone. In more recent times Complainant appears to have become well known for charitable and public-spirited undertakings in her own right, but our analysis here must be confined to events and circumstances in the timeframe preceding registration of the contested domain name.
The Panel is aware that in the reported case denominated Melinda Gates v. Bruce B, FA 1738284 (Forum August 17, 2017) an experienced panel found that our Complainant had developed a common law mark in her personal name and went on to conclude that a respondent had registered the domain name <melindagates.org> in bad faith. Importantly, in that case the disputed domain name was, as recorded in the pertinent WHOIS information, first registered on September 3, 2011. This means that our Complainant’s common law mark had thirteen years to ripen (1997 to 2011) in that instance whereas in this one it had only less than three years to do the same (1997 to 1999). These two decisions are therefore consistent on the facts.
On the record before us, therefore, we find that Complainant has not proven that her personal name had ripened into a protectable common law mark by the time Respondent registered the <melindagates.com> domain name. Complainant has thus failed to show that Respondent registered the domain name in bad faith when that occurred in May of 1999.
This being so, it is unnecessary for us to inquire whether Respondent is now using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Identical and/or Confusingly Similar and Rights or Legitimate Interests
For the reason set out above, it is also unnecessary for us to explore whether Complainant has met the proof requirements of either Policy ¶ 4(a)(i) or Policy ¶ 4(a)(ii). See, for example, Netsertive, Inc. v. Ryan Howard / Howard Tech., Ltd., FA 1721637 (Forum April 17, 2017) (finding that, because a complainant must prove all three elements of Policy ¶ 4(a)(i)-(iii), that complainant’s failure to prove one of those elements made inquiry into the remaining elements unnecessary). See also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (a panel there determining not to inquire into a respondent’s rights or legitimate interests in a domain name or its registration and use of the domain name in bad faith where a complainant could not satisfy the evidentiary requirements of Policy ¶ 4(a)(i)).
We note in passing that this decision does not mean that Complainant has no means for redressing her grievance against Respondent, as to the merits of which we offer no opinion. We decide only that Complainant must, if she so chooses, seek relief for her claim in a court of competent jurisdiction because the facts supplied to us do not allow her to pursue it here.
Complainant having failed to establish one of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the domain name <melindagates.com> REMAIN WITH Respondent.
___________________________ ______________________________
Sandra J. Franklin, Esq., Panelist Kendall C. Reed, Esq., Panelist
Terry F. Peppard, Esq.,
Panelist and Chair
Dated: October 3, 2022
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