The Complainant is Margaret C. Whitman, of San Jose, California, United States of America, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is Domains For Sale, of Santa Monica, California, United States of America.1
The disputed domain names <megwhitmanforgovernor.com>, <megwhitman2010.com>, <meg2010.com>, <whitmanforgovernor.com>, and <whitman2010.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2008. On October 8, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On October 8, 2008, GoDaddy.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. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was
November 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 5, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on November 17, 2008. 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.
The Complainant served as the President and CEO of eBay, Inc. (“eBay”) from March 1998 through March 2008, and remains on eBay's Board of Directors and is a stockholder. During the Complainant's tenure, eBay grew from a small online auction website with approximately 30 employees and revenues of USD4 million to a publicly traded company valued at approximately USD46 billion, with over 15,000 employees worldwide and more than 248 million registered users. Prior to joining eBay, the Complainant had nearly 20 years of experience managing brands such as Hasbro, Playskool, FTD, StrideRight, Keds, and Disney.
During her tenure with eBay, the Complainant received a number of awards and accolades relating to her professional and business accomplishments at eBay. The Complainant has made numerous speeches, presentations and public appearances to promote eBay, and she has been featured on television and in numerous publications including The New York Times, The Washington Post, the San Francisco Chronicle, San Jose Mercury News, The Wall Street Journal, The Boston Globe, and Newsweek. The Complainant conducted several Google searches for “Meg Whitman” – with and without eBay – which returned more than 400,000 references to the Complainant.
The Respondent registered the disputed domain names between January 28 and March 28, 2008, at which time there was widespread speculation in California and elsewhere that the Complainant would run for election as Governor of California in 2010. According to the concerned registrar's WhoIs records, the Respondent is located in Santa Monica, California, United States of America (“United States” or “U.S.”) at a physical address shared with Thomas Hall, identified as the administrative contact for the disputed domain names in the relevant WhoIs records. Mr. Hall is a self-described political and campaign consultant.
This disputed domain names currently are being used in connection with what appear to be pay-per-click websites, which in addition to providing advertising links, also indicate that the domain names are for sale.
The Complainant is described in the Complaint as an Internet pioneer and businessperson whose name is internationally famous and synonymous with the accomplishments of eBay. Relying primarily on Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, the Complainant claims common law service mark rights in her personal name MEG WHITMAN “as evidenced by her fame and achievement, the international recognition and wide publicizing of her fame and achievement, and that Complainant's fame and achievement are inextricably connected to eBay's commercial success.”
The Complainant maintains that the disputed domain names are confusingly similar to her name. According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain names, as the Respondent has never been commonly known by the disputed domain names, which the Complainant the Respondent registered in an attempt to exploit and profit from the Complainant's trademark rights, both by offering the disputed domain names for sale and by using them in connection with pay-per-click landing sites that include paid advertising relating to eBay and to politics.
According to the Complainant, the foregoing is also evidence of the Respondent's bad faith registration and use of the disputed domain names. The Complainant argues that the Respondent's registration of multiple domain names incorporating the Complainant's mark further establishes a bad faith pattern of registering domain names under paragraph 4(b)(ii) of the Policy, which is further reflected by the Respondent's registration of numerous domain names appropriating third-party trademarks for use with pay-per-click landing sites.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel initially addresses the question of whether the Complainant has established common law trademark or service mark rights in her personal name, Meg Whitman.2 As noted by the Panel in Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, in cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services. See, e.g., Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682; David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299; Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402; Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598; Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Nik Carter v. The Afternoon Fiasco, WIPO Case No. D2000-0658.
Merely having a “famous” name is not sufficient to establish common law trademark or service mark rights in the name. The Policy itself inherently makes a distinction between the protection afforded trademark rights and rights arising under the law of publicity which has been discussed in further details in several UDRP cases. See Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540. Under the law of publicity, as recognized in virtually all United States jurisdictions, well known individuals have the right to control commercial exploitation of their names and likenesses. See Bi-Rite Enterprises, Inc., Et Al. V. Bruce Miner Company, Inc., Et Al., 757 F.2d 440 ( 1st Cir. 1985). To be entitled to protection under the Policy, however, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant's personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source.3
In asserting common law service mark rights in her personal name, the Complainant appears to rely mainly on activities performed while she was President and CEO of eBay between 1998 and 2008, and as a shareholder and Director of eBay. Indeed, the Complainant expressly asserts common law service mark rights in her personal name based on “her fame and achievement, the international recognition and wide publicizing of her fame and achievement, and [recognition] that Complainant's fame and achievement are inextricably connected to eBay's commercial success.”
As noted above, however, fame alone is not sufficient to establish common law trademark or service mark rights in a personal name. Rather, the Complainant's personal name must be used such that a relevant segment of the public comes to recognize her name as a symbol that distinguishes her services from those of similarly situated service providers. United States' judicial decisions have broadly defined a “service” for purposes of U.S. trademark law as involving “the performance of labor for the benefit of another.” Morningside Group Ltd. v. Morningside Capital Grp., L.L.C., 182 F.3d 133, 138 (2d Cir.1999). See also In re Canadian Pacific Ltd., 754 F.2d 992, 994 (Fed.Cir.1985). The prevailing judicial view is that the activity need not be “solely for the benefit of the performer” – in other words, it is sufficient to show that the activity “did provide valuable benefits to others.” Morningside, supra. See also Murphy v. Provident Mutual Life Ins. Co., 923 F.2d 923, 927 (2d Cir.1990).
Nevertheless, since the fundamental objective of trademark law is the protection of “the goodwill established in the minds of the relevant buying public”, whether a service is provided for the benefit of “another” turns on whether the service recipients constitute “a segment of the public which purchases and benefits from a service provided by the owner of the mark.” In re Canadian Pacific, supra. In that respect, the In re Canadian Pacific court commented that shareholders cannot be considered “other” than the corporation or part of the relevant “public,” because they are “in fact and in law” a corporation's “owners,” and because “all together they are” the corporation.
Thus, consistent with the fundamental principles underlying United States trademark law, an activity may be recognized as a “service” only where such activity involves the performance of labor which provides a valuable benefit to another person or entity who is part of the relevant buying public. See Huthwaite, Inc. v. Sunrise Assisted Living, Inc., 261 F.Supp.2d 502 (E.D. Va. 2003). Applying this construct to the particular circumstances of this case, the Panel is unable to conclude that the Complainant has provided services under the name “Meg Whitman” as a source-indicator to a segment of the relevant buying public based on her performance as President and CEO of eBay. Even if, contrary to the teachings of In re Canadian Pacific, supra, the Panel were to consider eBay as part of the relevant buying public respecting the services claimed by the Complainant, there is insufficient evidence in the record to demonstrate that the Complainant's personal name has acquired secondary meaning in the public's mind sufficient to distinguish her services from those of similarly situated service providers.
The Panel does not believe that the decision in Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, relied on by the Complainant, requires a different result in the context of this case. The distinguished panel in Chung, Mong Koo relied largely upon Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, and Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402, in determining that Hyundai's founder, Chung, Mong Koo, had acquired common law service mark rights in his personal name. In Monty and Pat Roberts, Inc., supra, the Complainant's founder, Monty Roberts, was held to have common law service mark rights in his personal name because the services in question had been provided under his name. Similarly, in Steven Rattner, supra, it was determined that the Complainant had common law service mark rights in his personal name based on investment banking and corporate advisory services actually provided under his name. Unlike the complainants in Monty and Pat Roberts, Inc., and Steven Rattner, supra, the Complainant here has presented no evidence of the actual use of her name as a source indicator in connection with the services she is claiming.
Accordingly, the Panel concludes in the circumstances of this case that the Complainant has failed on the record before this Panel to demonstrate common law service mark rights in her personal name. Accordingly, the Panel finds that the Complainant has in this case failed to satisfy the requirements of paragraph 4(a)(i) of the Policy. Because the Complainant bears the burden of proving each of the elements under paragraph 4(a) of the Policy, it is unnecessary for the Panel to consider the Complainant's arguments under paragraphs 4(a)(ii) and 4(a)(iii) for purposes of its decision.
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Dated: December 1, 2008
1 The Complaint identifies the Respondent as “Thomas Hall d/b/a Domains For Sale”. The Panel notes according to GoDaddy.com Inc.'s WhoIs database and registrar verification described in Section 3, the registrant of record for the disputed domain names is Domains For Sale. Both services identify Thomas Hall as the administrative contact, at the same physical address provided for Domains For Sale.
2 The term “trademark or service mark” as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers' Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218. Common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
3 The Panel notes that under United States trademark law a mark that is primarily a surname cannot be registered on the principal register of the USPTO unless it has acquired secondary meaning. 15 U.S.C. § 1052(e)(4). A designation that is likely to be perceived by prospective purchasers of goods or services as a personal name generally is not considered to be inherently distinctive. Rather, such a designation is distinctive only if it has acquired secondary meaning. See Restatement (Third) Unfair Competition § 14.