WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Victor Topa v. Whoisguard Protected / “Victor Topa”
Case No. D2015-2209
1. The Parties
Complainant is Victor Topa of Bad Homburg, Germany, represented by Klinkert Rechtsanwälte PartGmbB, Germany.
Respondent is Whoisguard Protected of Panama / “Victor Topa” of Bermatingen, Germany.
2. The Domain Names and Registrars
The disputed domain names <victortopa.com> and <victortopa.md> are registered with eNom and MoldData, SC, respectively (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2015. On December 4, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 4, 2015, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <victortopa.com> which differed from named Respondent and contact information in the Complaint. On December 9, 2015, MoldData, SC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of <victortopa.md> and providing the contact details. The Center sent an email communication to Complainant on December 10, 2015 providing the registrant and contact information disclosed by eNom, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on December 11, 2015.
The Center verified that the Complaint together with the Amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2016. Complainant submitted a brief supplemental filing to the Center on January 8, 2016 regarding Respondent’s identity, which the Panel has considered.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 21, 2016. 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.
On January 29, 2016, the Panel issued a Procedural Order inviting Complainant to submit additional evidence of trademark rights in his personal name, and providing Respondent with the opportunity to reply to such a filing. Complainant filed a response to the Procedural Order on February 4, 2016, to which Respondent did not reply.
4. Factual Background
Complainant is a natural person of Moldavian nationality with residence in Germany. He offers consulting services in the civil aviation business.
Complainant has submitted a total of three agreements entered into between Complainant in his personal name and various companies apparently active in the civil aviation business:
- Consulting Agreement (and related invoices) with German Aviation Capital GmbH, Frankfurt am Main/Germany of February 2012 (Annex 3);
- Consultancy Agreement with Cirrus International GmbH, Saarbrücken/Germany of April 2008 (Annex 4);
- Consulting Agreement with GALC FZE, Dubai/UAE of December 2015 (Annex 5).
The disputed domain names <victortopa.com> and <victortopa.md> were both created on October 25, 2015; at the time of the rendering of this decision, they redirect to the websites “www.victortopa.com” (in the English language) and “www.victortopa.md” (in the Romanian language), the content of which pretends to have been launched by Complainant himself, but has not been authorized by the latter at all.
Complainant requests that the disputed domain names be transferred to Complainant.
5. Parties’ Contentions
Complainant submits that the disputed domain names <victortopa.com> and <victortopa.md> are identical with his personal name “Victor Topa”, in which he claims to have established unregistered or common law trademark rights. Complainant contends to perform consulting services in his personal name in the civil aviation business on a regular basis and that he, therefore, constantly uses his personal name for commercial and trade purposes. Complainant claims that he has been recognized under his personal name in the business and trade world for many years and that he enjoys a public reputation and is well known and respected as a professional consultant in the aviation industry, receiving requests for the provision of his services on a frequent basis.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests whatsoever in Complainant’s personal name or the disputed domain names since Respondent is neither commonly known by the disputed domain names nor is he making any legitimate noncommercial or fair use thereof.
Finally, Complainant argues that the disputed domain names were primarily registered and are being used by Respondent for the purpose of disrupting Complainant’s business and, thus, in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
There is a consensus view among UDRP panels that with respect to the showing of a respondent’s lack of rights or legitimate interests, the complainant only needs to make out a so-called prima facie case; this is simply to avoid the sometimes impossible task of proving a negative, requiring information that is primarily within the knowledge of the respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). Other than that, even in cases of respondent default, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP, e.g., the existence of a trademark or service mark in which the complainant has rights. Therefore, Respondent’s default in the case at hand need not automatically result in a decision in favor of Complainant; although the Panel may draw appropriate inferences from such default. Complainant is required to support his assertions with actual evidence to succeed under the UDRP (see WIPO Overview 2.0, paragraph 4.6).
Now, therefore, the Panel comes to the following decision:
A. Identical or Confusingly Similar
There is no question that the disputed domain names <victortopa.com> and <victortopa.md> (apart from the here irrelevant generic Top-Level Domain “.com” and country code Top-Level Domain “.md”) are identical with Complainant’s personal name “Victor Topa”, in which Complainant purports to enjoy unregistered or common law trademarks rights. The issue for the Panel is to determine whether or not Complainant has demonstrated the existence of those rights.
The UDRP does not specifically protect personal names as such. However, in situations where a personal name unregistered as a trademark is being used for trade or commerce, a complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, however, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required (see WIPO Overview 2.0, paragraph 1.6). Relevant evidence of such “secondary meaning” includes: length and amount of sales under the personal name, the nature and extent of advertising, consumer surveys and media recognition, even if such “secondary meaning” only exists in a small geographical area (see WIPO Overview 2.0, paragraph 1.7).
Complainant contends to perform consulting services in his personal name in the civil aviation business on a regular basis and that he, therefore, constantly uses his personal name for commercial and trade purposes. Moreover, Complainant claims that he has been recognized under his personal name in the business and trade world for many years and that he enjoys a public reputation and is well known and respected as a professional consultant in the aviation industry, receiving requests for the provision of his services on a frequent basis.
All evidence brought by Complainant in his Complaint/Amended Complaint to support those assertions was a total of two consulting agreements entered into between Complainant in his personal name and (1) German Aviation Capital GmbH of Frankfurt am Main/Germany on February 2, 2012 (Annex 3) and (2) Cirrus International GmbH of Saarbrücken/Germany on April 22, 2008 (Annex 4).
In order to determine the relevance, materiality and weight of this evidence (see Rules, paragraph 10(d)), the Panel undertook some limited factual research on the Internet into Complainant’s contractual partners to the consulting agreements and was immediately pointed to the fact that Complainant is/was personally involved in both companies, namely in German Aviation Capital GmbH as a managing director by the time that the consulting agreement of 2012 was entered into, as well as in Cirrus International GmbH as a so-called “Prokurist” (the holder of a special statutory authority under German law) sometime after the consulting agreement of 2008 was concluded. It goes without saying that Complainant certainly is/was not at all legally hindered to render consulting services e.g., to German Aviation Capital GmbH being a (separate) legal entity even if Complainant is/was engaged with said company as managing director. Yet, the duty for the Panel is to determine whether or not the two consulting agreements presented to the Panel as such qualify as proof of Complainant’s making use of his personal name in trade or commerce as a “distinctive identifier” of the consulting services rendered thereunder. However, where Complainant in his function as a managing director concludes a consulting agreement with his “own” company, there is no “distinctive identification” taking place of Complainant’s consulting services with his personal name, simply due to a lack of any factual third party contact outside of the existing relationship between the two parties to the consulting agreement that would allow third party awareness of Complainant’s personal name as a trademark, whether registered or not. Therefore, the mere act of having concluded the two consulting agreements put before the Panel in the Complaint/Amended Complaint alone, did not sufficiently prove that Complainant’s personal name acquired “secondary meaning” in the civil aviation industry.
The Panel, moreover, also looked into the total of four invoices of March, April and May 2012 referring to Complainant’s consulting services rendered to German Aviation Capital GmbH (provided as part of Annex 3 and by mistake as part of Annex 4). Here, the Panel found at least some indications that Complainant had e.g., met with third parties such as airlines or banks, but no further detailed information whatsoever was provided, plus that the period of time covered by these four invoices of less than four months in 2012 alone certainly did not allow the conclusion of a making use of Complainant’s personal name for trade or commerce over a substantial length of time or to a substantial extent (e.g., in advertisements or the like).
As a consequence of these findings, the Panel within its general powers set forth by Paragraph 10 of the Rules, decided to give the Complainant a fair opportunity to present his case in more detail and issued a Panel Order to submit additional evidence of (unregistered) trademark rights in his personal name.
Complainant then provided only one more consulting agreement with the company GALC FZE of Dubai/UAE (Annex 5). However, said agreement was entered into only in December 2015, meaning after the registration of both disputed domain names in October 2015. Moreover, it was not accompanied by any invoices or the like demonstrating that the agreement has been executed.
Besides, despite the fact that Complainant purports in his further submission of February 4, 2016 to have received requests for the provision of his services on a frequent basis, Complainant did not produce any further documents or other material that would have qualified as relevant evidence of a possible “secondary meaning” of Complainant’s personal name in terms of e.g., length and amount of sales thereunder, the nature and extent of advertising, consumer surveys and media recognition (see again WIPO Overview 2.0, paragraph 1.7). Ordinarily, individuals demonstrating unregistered trademark rights in their personal names would produce unsolicited third party documentation in form of press cuttings, (independent) invoices, etc. demonstrating third party awareness of their names as trademarks. Here, Complainant did not submit any such evidence of e.g., Complainant’s appearance on TV or in any other mass media (newspapers, Internet, etc.) or of any advertisement undertaken in relation to Complainant’s consulting services rendered under his personal name. Also, Complainant did not discuss e.g., Complainant’s professional background or give any detailed information on his doing business apart from the presentation of the blank contractual framework thereto.
Complainant indeed quotes in his further submission from the website under the disputed domain <victortopa.com> and argues that such website makes specific reference to Complainant’s “significant accomplishments as an aviation expert”. Looking into said website, however, and in particular into the very excerpt provided by Complainant as Annex 6, all information on Complainant there to be found with a somewhat positive connotation reads as follows: “I am Victor Topa. An aviator by profession. I am the former chief of the Civil Aviation Authority and former Secretary of Transportation in the Republic of Moldova”. This information, apparently provided by Respondent (whether true or not), however, seems to refer to Complainant’s (former) activities as a politician and not as a business consultant, and, therefore, does not directly address the issue at hand (whether “Victor Topa” is a distinctive identifier of Complainant’s goods or services). Complainant himself does not come forward with any presentation – beyond the consulting agreements and invoices previously referred to – of his own (supported by reliable evidentiary material) as to his use of his personal name not as a politician, but for trade or commerce, namely as a consultant in the civil aviation area.
To sum up, while common law or unregistered trademark rights under specific circumstances suffice to invoke the Policy, Complainant in the case at hand did not submit sufficient evidence of unregistered trademark rights in his personal name. The insufficiency of Complainant’s evidence in this regard is particularly apparent in light of the Panel’s Order allowing Complainant to present his case on the first element to the Panel in more detail. Against this background, the Panel would have expected Complainant to take the opportunity and, in particular, to produce unsolicited documentary evidence from third parties (usually having a higher value than documents created by the complainant and/or those close to the complainant) which Complainant did not. The Panel cannot accept Complainant’s mere assertions and the proffered contracts and invoices as sufficient to establish unregistered or common law rights in the case at hand (see e.g., Continental Casualty Company v. Andrew Krause / Domains by Proxy, Inc., WIPO Case No. D2008-0672; Mancini’s Sleepworld v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-1036).
Under these circumstances, the Panel finds that Complainant has failed to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
B. Rights or Legitimate Interests
In light of the Panel’s finding under A. above, it is unnecessary for the Panel to address this issue.
C. Registered and Used in Bad Faith
In light of the Panel’s finding under A. above, it is also unnecessary for the Panel to address this issue.
For the foregoing reasons, the Complaint is denied.
Stephanie G. Hartung, LL.M.
Date: February 15, 2016