Complainants are Thomas Pritzker and The Pritzker Organization, LLC both of Chicago, Illinois, United States of America (hereinafter referred to jointly and severally as “Complainant”).
Respondent is Richard Brown of Dayton, Ohio, United States of America.
The disputed domain name <tpritzker.com> is registered with 1&1 Internet AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On July 8, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On July 10, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 24, 2009. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 17, 2009.
On August 26, 2009, at the request of the parties, the Center issued a Notice of Suspension of the proceedings, such suspension to expire on September 24, 2009. On September 28, 2009, at the request of Complainant, the Center issued a statement of the reinstitution of the proceedings.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 1, 2009. 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.
Complainant Thomas Pritzker is a prominent businessman who is the Chairman and Chief Executive Officer of The Pritzker Organization LLC, Chairman of Global Hyatt Corporation, Chairman of Marmon Holdings, Inc. and Chairman of the Art Institute of Chicago. Complainant the Pritzker Organization LLC is a private business advisory firm that primarily operates its business in Chicago, Illinois.
The Pritzker family is perhaps best known as the owner of the Hyatt chain of hotels, but the family is also known as the past or current owner of or investor in Marmon Holdings, Inc., Royal Caribbean International, Conwood Company, LLC, Triton Container International, LTD. and Trans Union LLC. The family name is also associated with philanthropic contributions such as the Pritzker Architecture Prize, the Pritzker Pavilion in Millennium Park in Chicago, The Pritzker School of Medicine at the University of Chicago, The Pritzker Institute of biomedical Science and Engineering at the Illinois Institute for Technology, and the Pritzker Legal Research Center at Northwestern Law School. Complaint, Annexes 7, 8, and 9.1
Following the death of his father in 1999, Thomas Pritzker has become the chief business manager of the family interests. The prominence of Thomas Pritzker has been recognized by many news media. Complaint, Annex 11. Thomas Pritzker holds numerous business and community positions. Complaint, Annex 12. Complainant asserts that it has common law rights in the names “Pritzker” and “Thomas Pritzker,” citing the panel to the cases of Kotak Mahindra Bank Limited v. Richard Brown, WIPO Case No. D2008-0243 and Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068. Complaint, Annex 13.
Respondent registered the domain name at issue on March 14, 2006. Complaint Annex 4. The domain name at issue has been continuously offered for sale through “Sedo.com”. Complaint, Annex 15. Complainant became aware of Respondent's registration in or about October 2008.
On December 18, 2008, Complainant's counsel sent a cease and desist letter to Respondent. Complaint Annex 16. Respondent did not reply thereto. On January 29, 2009, Complainant sent Respondent another cease and desist letter by email. Complaint, Annex 17. Again, Respondent did not reply.
Respondent used the domain name to resolve to a web site at which several lines of text referred to Thomas Pritzker and the Pritzker family. Complaint, Annex 14.
Complainant contends that the domain name at issue is identical to or confusingly similar to a common law trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent did not reply to Complainant's contentions.
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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and,
2) that respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
The question before the panel is whether Complainant has a common law trademark or service mark in the personal name T. Pritzker or Thomas Pritzker. In order to answer that question, the Panel has had to revisit the WIPO Reports on the Internet Domain Name Process, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the numerous decisions that have dealt with this issue, and paragraph 4(a)((i).
In the present case we know the following concerning the name T. Pritzker or Thomas Pritzker: 1) Complainant Thomas Pritzker is a prominent business person who is the Chair and Chief Executive Officer of the Pritzker Organization, LLC, the Chair of Global Hyatt Corporation, the Chair of Marmon Holdings, Inc., and the Chair of the Art Institute of Chicago; 2) Thomas Pritzker is “well-known in the business community;” 3) The Pritzker family has been “renowned for generations for their extensive business accomplishments and philanthropic contributions;” 4) The Pritzker family name is associated with many institutions which the Pritzker family has funded; 5) Following the death of Thomas Pritzker's father in 1999, Thomas Pritzker has taken the lead in the family's business activities; 6) There is no evidence that the name Thomas Pritzker or the name T. Pritzker have ever been used to indicate the source of commercial goods or services.
It is clear that the Pritzker family has earned well-deserved recognition and respect both for its business acumen and its philanthropic activities. The question that the panel must address, however, in light of the facts and circumstance set out above, is “Does Complainant Thomas Pritzker or Complainant The Pritzker Organization, LLC have common law trademark rights in the personal name T. Pritzker or Thomas Pritzker?” It is with this question in mind that the panel examines the authorities listed above.
The Final Report of the WIPO Internet Domain Name Process, April 30, 1999, (“Process Report I”) examined the question of protection for personal names. The Report noted a consensus that only trademarks and service marks were entitled to protection from abusive registrations and that trade names, geographical indicators, and personality rights would not initially be so protected. Process Report I, at 167.
The Second WIPO Internet Domain Name Process took a second look at whether personal names should be protected under the UDRP. Section Five of the Final Report of the WIPO Internet Domain Name Process (“Process Report II”) dealt exclusively with the topic of personal names. Process Report II indicated that if it could be demonstrated that the personal name served as a trademark or service mark, then the name could be protected against abusive registration under the UDRP: “The first condition requires that in each case the complainant must demonstrate that the personal name in question is protected as a trademark or service mark, in which that complainant has rights.” Process Report II, at 181. The report noted that where a personal name has been registered with a national authority, it would certainly qualify for protection, but that registration was not required where a complainant could show common law trademark rights in the personal name. “[M]any decisions under the UDRP have therefore determined that common law or unregistered trademark rights may be asserted by a complainant and will satisfy the first condition of the UDRP.” Process Report II, at 182. “Using a personal name in association with certain goods or services can create distinctiveness and a secondary meaning in the name.” Process Report II, at 183. WIPO summarized the comments received and then made the recommendation that the process be limited to personal names that acted as trademarks or service marks, commenting:
“199. It is clear that many sensitivities are offended by the unauthorized registration of personal names as domain names. It is clear also that UDRP does not provide solace for all those offended sensitivities, nor was it intended to do so, as originally designed. The result is that there are some perceived injustices. Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society.”
In Section 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the”WIPO Overview”), the views of the WIPO panelists on the question of personal names as common law trademarks are summarized:
Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.
Julia Fiona Roberts v. Russell Boyd D2000-0210, Transfer
Jeanette Winterson v. Mark Hogarth D2000-0235 among others, Transfer
Dr. Michael Crichton v. In Stealth Mode D2002-0874, Transfer
However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights. (Emphasis added by Panel.)
Israel Harold Asper v. Communication X Inc. D2001-0540 among others, Denied
Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa D2003-0248, Transfer
This is a very clear statement that at the time the WIPO Overview was compiled in 2005 a personal name had to have been used in trade or commerce as a trademark or service mark to establish common law trademark rights, and that the fame of the person, whether it be as a business person or religious leader, is not sufficient to acquire protection.
Recently, a line of cases has set out a new test, a kind of facts and circumstance test as to whether an individual's name should be protected, even though that name has not been used in trade or commerce as a trademark or service mark. The lead case is Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 and concerned the domain names <chungmongku.com> and <chungmongku.net>. In that case the Complainants were the Chairman and Chief Executive Officer of Hyundai Motor Company and the company itself.
In finding that the individual had protectible rights in his name, the panel first reproduced in full Section 1.6 of the WIPO Overview set out above, then stated: “From this summary it may be deduced that the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet2 that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in commerce.”
In performing its analysis of whether the complainant has common law rights in a trademark, the panel performs a “nexus analysis” between the personal name and its use and association in commerce, analyzing such factors as “the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and or the company has a demonstrable interest in protecting the individual's name for commercial use.” Factors considered in its analysis of whether common law trademark rights exist include the state of mind and the conduct of the respondent:
“This conclusion is reinforced by the inference that the Respondent must have been of the same opinion when he registered the domain names. He registered both domain names using Mr. Chung's name. He did not register them using Hyundai's name. The only inference open is that he did this because he knew that people looking for a website on Hyundai were just as likely to look for it under Mr. Chung's name as under Hyundai's name. Indeed, having registered two domain names under Mr. Chung's name and none under Hyundai's name, he must be taken to have believed that people were more likely to look for Hyundai under Mr. Chung's name than under Hyundai's name.
Moreover, the Respondent can hardly be heard to say that the Complainants do not have a commercial interest in Mr. Chung's name when he took aim at Hyundai by registering two domain names in Mr. Chung's name.
As in the Marty Roberts Case, the Respondent has also directed the use of the name ‘. precisely at the market for Complainant's services. . .', being in the present case potential buyers of Hyundai motor vehicles.”
But respondent's state of mind and conduct are not at issue in the first prong of the UDRP analysis, whether the domain name at issue is confusingly similar to a trademark in which the complainant has rights. They may come into play in the second prong of the analysis, and they assuredly are the subject of the third prong of the analysis. But they have no place in a determination of whether the complainant has common law rights in a trademark. Nowhere does the panel discuss whether the name has been used in commerce as a trademark or service mark such that the name has acquired sufficient secondary meaning to designate it as the source of the goods or service with which it is associated.
Subsequent decisions have cited Chung, Mong Koo with approval and have abandoned the common law trademark analysis to focus on the fame of the individual and his importance to his company and his reputation in the industry. See, e.g., Soin International, LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, WIPO Case No. D2007-0094 and Kotak Mahindra Bank Limited v. Richard Brown, WIPO Case No. D2008-0243. In the present case, Complainant has cited this line of cases to the panel in support of its case.
Paragraph 4(a)(i) of the Policy sets out the first of the three prongs that a complainant must prove in order to be entitled to relief under the Policy. Paragraph 4(a)(i) of the Policy requires the complainant to prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights. It does not refer to a nexus between the personal name and its use in trade and commerce. It does not refer to the respondent's state of mind. It does not refer to the respondent's conduct. It does not refer to the respondent at all.
It does say that the complainant must prove that the complainant has rights in a trademark or service mark and that the domain name at issue is confusingly similar or identical to that trademark or service mark.
The panel believes that the Chung, Mong Koo line of cases creates a special exception for prominent business persons from the requirement that a personal name must be used as a trademark or service mark to be entitled to protection under the UDRP. The panel believes that such an exception is inconsistent with the WIPO Internet Domain Name Processes and their recommendations, with the WIPO Overview, with the majority view of panelists, and with paragraph 4(a)(i).
The typical cases in which individuals have been found to have a common law trademark or service mark in their personal names involve authors and celebrities: Julia Fiona Roberts v. Russel Boyd, WIPO Case No. D2000-0210 (actor); Cho Yong Pil v. ImageLand, Inc., WIO Case No. D2000-0229 (pop music star); Jeannete Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (author); Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 (author); Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (author); Experience Hendrix LLC v. Denny Hammerton and The Jimi Hendrix Fan Club, WIPO Case No. D2000-0364 (estate of deceased rock musician); Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598 (NFL quarterback); Nik Carter v. The Afternoon Fiasco, WIPO Case No. D2000-0658 (radio broadcaster); Helen Folsade Adu known as SADE v. Quantum Computer Services Inc., WIPO Case No. D2000-0794 (singer/songwriter); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and ‘Maddona.com', WIPO Case No. D2000-0847 (singer, performer, actor); Isabelle Adjani v. Second Orbit, WIPO Case No. D2000-0867 (actor); Jules I. Kendall v. Donald Mayer Re dkipkendall.com, WIPO Case No. D2000-0868 (professional golfer); Jaap Stam v. Oliver Cohen, WIPO Case No. D2000-1061 (professional footballer); Pierre van Hooijdonk v. S.B. Tait, WIPO Case No. D2000-1068 (professional footballer); Julie Brown v. Julie Brown Club, WIPO Case No. D2000-1628 (actor, script writer, producer of music videos); Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy, WIPO Case No. D2000-1673 (professional tennis players); Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, WIPO Case No. D2000-1838 (pop singer and performer); Margaret Drabble v. Old barn Studios Limited, WIPO Case No. D2001-0209; Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874 (author and screenwriter); Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248 (author). In every instance the personal name was used in connection with the services or goods produced by the individual, and in many cases the commercial value of the personal names were confirmed by their use in advertising or endorsements. These are clear examples of personal names being used as a trademark or service mark to designate the source of the services or goods produced by the individuals.
In the context of religious and business personages, the Panel believes that the two examples which follow perform the proper analysis to determine whether the personal name is being used as a common law trademark. First, in The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184, the domain names at issue were <jerryfalwell.com> and <jerryfallwell.com>. While recognizing that Reverend Falwell was a well known public figure, the panel nonetheless found that he had no common law trademark rights in his personal name:
“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services. The dissent notes that this failure is attributable not only to Dr. Falwell, but to The Liberty Alliance as well. There are many well-known ministers, religious figures, and academics. Are their sermons or lectures to be considered commercial goods? Complainant failed to provide any marketing brochures, trade advertisements, or other evidence of use as a trademark. On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the ‘Second WIPO Report'). In that report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. ‘Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society.' Second WIPO Report, paragraph 199.
Complainant is careful to avoid any suggestion that he has exploited his name for ‘materialistic' or ‘commercial' purposes. Complainant is an educator and religious minister. He has used his name to advance his views as to morality and religion. That Complainant has acquired a certain fame in the United States is without question. However, this kind of fame is not cognizable under the Policy. See, e.g., Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030 (April 11, 2002).”
The second example is the case of Wal-Mart Stores, Inc. and Mrs. Helen Walton v. Bestinfo/DavidWebb, WIPO Case No. D2005-0086. In that case the domain name at issue was <samwalton.com>. The name corresponded to the personal name of the founder of Wal-Mart, the largest retailer in the world. The case was brought in the name both of his widow and of the corporate entity which he founded. Without even the shadow of a doubt, in business circles generally and in the retail industry specifically Sam Walton was famous. However the panel analyzed the case without regard to his fame or cachet and did not perform a facts and circumstances analysis to see whether there was a nexus between Sam Walton's personal name and its use and association in trade and commerce or whether the state of mind or the conduct of the respondent confirmed that analysis. Rather, the panel performed the analysis that was called for by the WIPO processes and by paragraph 4(a)(i): whether the domain name at issue is identical or confusingly similar to “a trademark or service mark in which the complainant has rights”. (Emphasis added). In finding that the complainant corporation had common law trademark rights in the Sam Walton name, the panel cited evidence that the complainant corporation had been using the SAM WALTON mark for toy trucks that it marketed and that the Sam Walton name, philosophy, and signature were used in connection with and on the SAM'S CHOICE line of groceries which complainant sold. Thus the SAM WALTON mark served as a designation of source of goods and therefore it had acquired secondary meaning.
This is the analysis contemplated by the WIPO processes, the majority of the decisions in this area, and paragraph 4(a0(1) of the Policy. Accordingly, the Panel finds that Complainant in the present case has failed to establish that there are common law trademark rights in the name T. Pritzker or Thomas Pritzker.3 Having so found, it is unnecessary to address the issues of rights or legitimate interests and bad faith.
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Dated: October 12, 2009
1 The Panel has also noted that Complainant The Pritzker Organization has a registered trademark for THE PRITZKER ORGANIZATION with the United States Patent & Trademark Office (the “USPTO”). Complaint, Annex 10. However, this trademark has not formed a substantial component of Complainant's case as pled in these proceedings.
2 The definition of “cachet” to which the panel must be referring is “2. a. characteristic feature or quality conferring prestige b. Prestige” Webster's Ninth New Collegiate Dictionary (1987).
3 It may be that had the domain name been different and Complainant had pled its case expressly on the basis of its THE PRITZKER ORGANIZATION trademark, the Panel could have reached a different determination. However, in these proceedings, Complainant did not do so. Complainant is of course free to argue its case in subsequent proceedings on the basis of its THE PRITZKER ORGANIZATION mark if it so chooses.