WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Darer v. PPC Ltd., Private Protection Co. LTD., Gary Brown
Case No. D2012-2032
1. The Parties
The Complainant is John Darer of Stamford, Connecticut, United States of America, represented by Roche Pia LLC, United States of America.
The Respondents are:(i) PPC Ltd. of St. John's, Antigua, Antigua and Barbuda; (ii) Private Protection Co. LTD. of Beijing, China; and (iii) Gary Brown of St. John’s, Antigua, Antigua and Barbuda.
2. The Domain Names and Registrars
The disputed domain name <johndarer.com> is registered with eNom, Inc.
The disputed domain name <johndarer.net> is registered with Todaynic.com, Inc.
The disputed domain name <johndarer.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (collectively, the "Disputed Domain Names" and the “Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 15, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On October 15, 2012, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants of the respective Disputed Domain Names (as specified above) 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”), 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 15, 2012.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 26, 2012. 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
The Complainant is an individual based in the United States of America. The Complainant is referred to as a structured settlement expert and operates a financial consulting, settlement planning and brokerage service company called 4structures.com, LLC ("4structures"). The Complainant has over 29 years of experience in the financial services industry and contends that he is known as "the structured settlement watch dog".
The Disputed Domain Names were registered on the following dates:
(a) <johndarer.com> on February 29, 2012;
(b) <johndarer.net> on February 28, 2012; and
(c) <johndarer.org> on February 29, 2012.
As at the date of this decision, <johndarer.com> and<johndarer.org> both point to the “www.isjohndarerahypocrite.com” website (which is not currently active but rather contains a "default website page" message), whilst <johndarer.net> returns a DNS failure message. According to evidence provided by the Complainant, at the time of filing the Complaint, the Disputed Domain Names resolved to websites containing information which was critical of the Complainant and his services.
5. Preliminary Issue: Identity of the Respondent
The Complainant has alleged that while the Disputed Domain Names have been registered by three different registrants, that they are in fact controlled by a single domain name holder. In accordance with paragraph 3(c) of the Rules, the Complaint may relate to more than one domain name, provided that the Disputed Domain Names are registered by the same domain name holder. Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) (“WIPO Overview 2.0”) states that a single complaint may be filed against multiple respondents where (i) the disputed domain names or the websites to which they resolve are under common control; and (ii) the consolidation would be fair and equitable to all parties.
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 allowed the consolidation of multiple domain names registered by different registrants on the basis that the complaint had shown that it was more likely than not that the underlying registrants were in fact the same (given the commonality of certain contact details as well as website content). The panel in that case noted that common ownership or control has been found by previous panels where multiple domain names were registered using fictitious names (citing Yahoo!, Inc v. SomsakSooksripanich and Others, WIPO Case. No. D2000-1461, among others); where common contact information has been provided (citing ISL Marketing AG and the Federation Internationale de Football Association v. J.Y. Chung, Worldcip2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034, among others); and where the content of the websites was substantially identical or directed Internet users to a common "home page" (citing CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071, among others).
The Panel finds that the facts of this case support a finding that the Disputed Domain Names were more likely than not controlled by the same person/entity:
(i) the registration information for the Disputed Domain Names (as confirmed by the Registrars) contains similarities. In particular, the registrant of the <johndarer.com> domain name was listed as "PPC Ltd./Greg Brown" with an address of "111 Friars Hill Rd., Woods Center, St. John's, Antigua 100000" and the <johndarer.org> domain name was registered by "Gary Brown" with an identical address (with the exception of a slightly different postal code);
(ii) the Disputed Domain Names were registered within a span of 2 days;
(iii) the <johndarer.com> and <johndarer.org> domain names both point to www.isjohndarerahypocrite.com; and
(iv) the Complainant submitted affidavit evidence to the effect that he was the plaintiff in John Darer v. John Does 1-25 d/b/a johndarer.com, johndarer.net and johndarer.org, Case No. 3:12-cv-00383-JCH, (commenced in the US District Court for the District of Connecticut on March 14, 2012 and closed without prejudice to renewal on September 25, 2012), where it was revealed during discovery that the same email address was previously used in connection with the registration and/or operation of each of the Disputed Domain Names. Further, in response to subpoenas in such proceedings, internet service providers and IP anonymiser services utilized in connection with the Disputed Domain Names informed the Complainant that the IP addresses used to register and/or operate the Disputed Domain Names previously pointed towards one individual/entity.
The Panel, having regard to the circumstances specified above, is of the view that it is more likely than not that the registrants of the Disputed Domain Names are in fact one entity and that the Disputed Domain Names are subject to common control. Accordingly, the Panel is willing to accept the Complainant's request for the three Disputed Domain Names to be incorporated in a single complaint. The registrants of the Disputed Domain Names shall therefore be referred to in the remainder of this Decision as the single "Respondent".
6. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(i) the Complainant has used his name "JOHN DARER" (the "Name") as an indication of the source of goods or services supplied by the Complainant in interstate trade and commerce for 29 years, and as a result the Name has become distinctive of the source;
(ii) the Complainant advertises, markets, promotes and sells his services utilising the Name;
(iii) the relevant consumers, including those in the structured settlement industry, associate the Name with the Complainant's services and had done so long before the Disputed Domain Names existed; and
(iv) the Disputed Domain Names are identical to the Name in which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names:
(i) The Complainant has reason to believe that the Disputed Domain Names have been registered by one or more competitors/individuals in the structured settlement industry;
(ii) the Respondent has no right to use the Name to compete with the Complainant or disparage the Complainant and/or the Name;
(iii) the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Disputed Domain Names were not registered in the name of "John Darer";
(iv) the Respondent had knowledge of the Name as the content on the websites to which the Disputed Domain Names resolve comprise of false information regarding the Complainant; and
(v) the Respondent does not use the Disputed Domain Names in connection with any bona fide offering of goods or services as they are used to injure the Complainant's reputation.
(c) The Disputed Domain Names were registered and are being used in bad faith:
(i) the Respondent registered the Disputed Domain Names for the primary purpose of disrupting the business of the Complainant;
(ii) the Respondent registered the Disputed Domain Names in bad faith as: (i) false, incorrect and/or conflicting contact information was used when registering the Disputed Domain Names; (ii) privacy protection services were used when registering the Disputed Domain Names; and (iii) the Respondent frequently changed the WhoIs information for the Disputed Domain Names, usually after an attempt by the Complainant to contact the Respondent;
(iii) the Respondent is using the Disputed Domain Names in bad faith as they are being used to host websites that create confusion for users who are seeking information about the products, services and/or opinions of the Complainant; and
(iv) the Disputed Domain Names point users to the Respondent's various websites containing negative material about the Complainant (including false and negative biographies of the Complainant), for commercial gain.
The Respondent did not submit a formal Response to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
7. Discussion and Findings
According to paragraph 4(a) of the Policy, to succeed in the Complaint, the Complainant has the burden of proving all of the following:
(a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(c) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
In order for the Complainant to succeed in proving the first element under the Policy, he must first establish that there is a relevant trade mark or service mark in which he has rights. The Complainant does not contend to have registered trade mark rights in respect of the Name, but rather argues that he has unregistered rights in his name by virtue of his use of this name in connection with the provision of services in the structured settlement industry. It is well established that the Policy protects rights in unregistered marks (see Seek America Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131; Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322). Further, previous Panels have found that a complainant can establish common law rights in a personal name, where the name has become a distinctive identifier of goods or services offered by the complainant (see Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Carmen Electra a/k/a Tara Leigh Patrick v. Network Operations Center, WIPO Case No. D2003-0852).
As the Complainant has not registered the Name as a trade mark, in order for the Complainant to succeed in establishing the first element, he must prove that he has common law rights in the Name. The Panel notes that while the Complainant has made broad assertions that the Name has become a distinctive identifier of the services offered by the Complainant, the Complainant has failed to provide sufficient evidence in support of such assertions. In addition to affidavit evidence, where the Complainant re-states the assertions made in the Complaint regarding his view that the Name had become a unique identifier of his services, the Complainant has only provided links to 3 videos on Youtube (the "Videos") in support of this contention, which have received less than 1,000 views in total at the date of the Decision. While the Complainant himself provides commentary and guidance regarding structured settlements in the Videos, the Panel notes that near the end of each video, the Complainant does not advertise his services, but rather the services of his company, 4structures. Section 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes it clear that "merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier of the business engaged in…), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.".
The present case shares many factual similarities with the previous WIPO case of Allen Fagin v. Crystal Cox, WIPO Case No. D2011-0678, which involved the registration of a domain name identical to the complainant's personal name, used to host a criticism website about the complainant. In that case, the panel found that the complainant, a partner of a law firm, did not acquire common law trade mark rights in his personal name as there was no evidence that he conducted business independently of the law firm. The panel in that case commented on the lack of relevant evidence, such as whether any money was spent advertising the complainant's name (as opposed to the name of the firm) or whether the complainant billed clients in his own name.
In the absence of any other evidence submitted by the Complainant in the present proceedings, the Panel is unable to find that the Complainant conducts business independently of 4structures. While the Complainant may be well known in the structured settlement industry as providing services using the company 4structures, the Panel has not been provided with sufficient evidence to suggest that the Complainant conducts business using the Name.
Accordingly, the Panel does not accept that the Complainant can claim rights in his personal name as an unregistered common law trade mark, as there is no evidence that it has become a unique identifier of the Complainant's services. The Panel finds that the Complainant has failed to satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As the Complainant has failed to satisfy paragraph 4(a)(i) of the Policy, the Complaint thus fails and the Panel finds that it does not need to consider the second requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(i) of the Policy, the Complaint thus fails and the Panel finds that it does not need to consider the third requirement under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: December 10, 2012