WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karl Lingenfelder v. Gary Petersen
Case No. D2006-1389
1. The Parties
Complainant is Karl Lingenfelder (“Complainant”), an individual located in San Diego, California, United States of America.
Respondent is Gary Petersen (“Respondent”), an individual located in Santa Barbara, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <karllingenfelder.com> (the “Domain Name”). The registrar is eNom, Inc. located in Bellevue, Washington, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2006. On October 31, 2006, the Center transmitted by email to eNom, Inc. dba Dynames.com, Inc. a request for registrar verification in connection with the domain name(s) at issue. On November 23, 2006, eNom, Inc. dba Dynames.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2006. The Response was filed with the Center on December 18, 2006.
The Center appointed Richard W. Page as the sole panelist in this matter on January 16, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant has had previous business dealings with Respondent and a third party named John Montfort. Apparently these three individuals have also been involved in previous disputes. In this proceeding, Complainant and Respondent each accuse one another of bad faith and vindictiveness because of their past dealings and disputes.
As early as June 25, 1998, Complainant registered the domain name <karllingenfelder.net>. On July 31, 2001, Respondent’s associate, John Montfort, registered the disputed Domain Name <karllingenfelder.com>, then transferred the disputed Domain Name to Respondent.
Other domain names, including <lingenfelder.com>, have been registered by members of the Lingenfelder family, other than, Complainant. Complainant alleges a close relationship with Rainer Lingenfelder, the proprietor of the Lingenfelder Estate and of the family wine business. Complainant does not claim ownership in the family domain name <lingenfelder.com>. Complainant does claim ownership of the additional domain names <lingenfelder.net>, <karllingenfelder.net> and <lingenfelderwine.com>.
A previous action regarding the disputed Domain Name was filed with an entity that Complainant identifies as the International Institute for Conflict Prevention and Resolution (“CPR”). This prior action apparently has been dismissed without any finding which would be binding in this proceeding either as res judicata or collateral estoppel.
On March 30, 2004 and June 6, 2006, Complainant sent a demand letter to Respondent demanding return of the disputed Domain Name. The current WIPO proceeding was filed on November 4, 2006.
5. Parties’ Contentions
A. Complainant’s contentions
(i) Complainant apparently contends that he has common law trademark rights in his name based upon his past use of his name in business and his contemplated future new business. Complainant’s allegations support the inference that he is trying to introduce Lingenfelder Winery products into California and the United States.
Complainant alleges that he has used his personal name in business for many years, including as manager for Lufthansa Airlines, as a property manager in San Francisco, as a real estate investor in California and Hawaii, as a real estate broker in Hawaii and as a real estate agent in California and as President/CEO of viewr (sic) Corporation in San Diego.
(ii) Complainant argues that the Domain Name is confusingly similar to Complainant’s name, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates KARL LINGENFELDER with the addition of generic terms.
(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because he is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Domain Name.
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondent has deliberately registered the Domain Name to spite Complainant because of their past business dealings.
Complainant claims that Respondent originally pointed the disputed Domain Name to the Internet Search Engine at “www.google.com”. After the initiation of the action with CPR, Respondent re-pointed the disputed Domain Name to the website for the Lingenfelder Winery in Germany at “www.lingenfelder.com”. Complainant alleges that these actions were a futile attempt to create some legitimate business activity associated with the disputed Domain Name.
(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant alleges that the actions of the Respondent after he was notified of the Complainant’s claims provide further evidence of Respondent’s bad faith. The Respondent did not contact the Complainant or otherwise respond to the demand letters from the Complainant.
Complainant alleges that Respondent’s activities fit into at least the following two categories described as bad faith in Paragraph 4(b)(iii) and (iv):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product.”
B. Respondent’s contentions
(i) Respondent alleges that Complainant has no enforceable trademark rights to the use of a personal name, without showing use of the name in commercial activity. Respondent asserts that Complainant has no cognizable trademark rights for purposes of this proceeding.
(ii) Respondent asserts that the Domain Name is not identical or confusingly similar to any cognizable trademark rights.
(iii) Respondent asserts that it has rights to or legitimate interests in the Domain Name because he is conducting legitimate non-commercial and fair use activities, including the detailing of Complainant’s history of filing frivolous litigation and making unsupported claims.
(iv) Respondent denies that it registered or used the Domain Names in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which apply.
Respondent claims that there is no showing of bad faith based on Paragraph 4(b)(i) because it did not offer or intend to sell the Domain Name to the Complainant or to others.
Respondent argues that Paragraph 4(b)(ii) does not apply because the registration of the Domain Name does not prevent the Complainant from reflecting the mark in a corresponding domain name, which Complainant has already done in registering his domain name <karllingenfelder.net>.
Respondent and Complainant are not business competitors and thus, there is no evidence of bad faith based on Paragraph 4(b)(iii).
There is no evidence of bad faith based on Paragraph 4(b)(iv) because Respondent is making legitimate non-commercial and fair use of the Domain Name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both the Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772, N. 3.
The Panel must find that the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Enforceable Trademark Rights
The Panel finds that this Complainant may not make use of the German registration of <lingenfelder.com> which is used in commercial activity by a third party. The Lingenfelder Winery or Lingenfelder Estate does have enforceable rights which it could seek to enforce in a UDRP proceeding or could assign such rights to Complainant as a family member or representative of family commercial interests in the United States. Such an assignment does not appear to have been made.
In light of the Second WIPO Domain Name Process, it is clear that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and/or services, i.e. common law trademark rights: The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030.
The Panel finds that the allegations of Complainant that he has used his name in commerce and that it is important to him in future business are not sufficient to make the required showing of use in commerce and acquisition of secondary association. No evidence has been offered that Complainant has used any of his registered domain names, including <karllingenfelder.net> for any purpose other than personal communications. There is apparently no related website to which any of these domain names resolve. Nor is there any showing that the Lingenfelder Winery or other family business or estate has authorized Complainant to use its domain name or related trademarks which appear to be registered in Germany.
Therefore, the Panel finds that Complainant does not have enforceable trademark rights sufficient to compel transfer of the disputed Domain Name. The Panel finds it unnecessary to analyze any of the remaining elements.
Any claim of reverse hijacking or for sanctions is hereby denied.
The Panel concludes Complainant has failed to provide sufficient evidence from which the Panel can conclude that Complainant has enforceable trademark rights in his name. Therefore, the Panel denies Complainant’s request for transfer of the disputed Domain Name.
Richard W. Page
February 5, 2007