WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cara Hutson v. Ryan McSweeney
Case No. D2018-2548
1. The Parties
The Complainant is Cara Hutson of Victorville, California, United States of America (“United States”), represented by Website Attorneys, United States.
The Respondent is Ryan McSweeney of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <carahutson.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. The Center received two email communications from the Respondent on November 14, 2018 and a third communication on December 4, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on December 21, 2018. 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 American judge in the state of California, who was appointed as a Superior Court judge in San Bernardino County by Governor Arnold Schwarzenegger in 2007 after working as a prosecutor in the San Bernardino County District Attorney’s Office from 1994 to 2007. Thereafter, she has been re-elected twice to six-year terms (in 2010 and 2017) by the constituents of San Bernardino.
The disputed domain name <carahutson.com> was registered on June 8, 2016 and is not pointed to an active website.
5. Parties’ Contentions
The Complainant contends that she has acquired common law trademark rights in her personal name through the practice of law going back to at least her appointment to the bench in 2007, if not before during her work as a prosecutor.
The Complainant states that public figures in the legislative and executive branches of government have been found to have accrued trademark rights under the Policy by being in public service, as found, amongst others, by the majority of the panel in Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073.
To substantiate her allegations as to the common law trademark rights acquired in her name, the Complainant submits the following statements and supporting documents:
- the Complainant has adjudicated approximately 10,000 criminal cases and hundreds of civil cases involving restraining orders and her decisions have been reviewed numerous times;
- attached to the Complaint there are a brief biography of the Complainant, copy of the official trial court roster for the Superior Court of California and articles published in United States newspapers, such as articles taken from The San Bernardino Sun, The Sentinel and The Daily Bulletin, showing her name;
- the Complainant has made additional use of her mark through speaking engagements, weddings, and other non-adversarial events;
- as a result of the continuous use of her name as a mark in the practice of law, the Complainant has accrued, and is the owner of, a valid and subsisting common law trademark in CARA HUTSON as manifest by evidence of acquired distinctiveness, secondary meaning, and common law trademark rights set forth in the Complaint;
- the Complainant’s public service as a judge for more than ten years evidences the stature and notoriety of her mark which has grown in the mind of the public.
The Complainant states that the disputed domain name is confusingly similar to her mark, as it incorporates the mark in its entirety, with the addition of no generic textual elements that would distinguish it from the Complainant.
The Complainant claims that the Respondent does not have any rights or legitimate interests in the disputed domain name because:
- the Respondent was hiding his true identity behind a privacy protection service in Panama up until the time this Complaint was filed;
- the Complainant has reason to believe that the disputed domain name was registered at the behest of a criminal defendant in a case over which the Complainant presided as a judge, a defendant who is believed to have also registered the domain name <richardjosefson.com>, corresponding to the name of a San Bernardino District Attorney, Richard Josefson. The Complainant submits as Annex I to the Complaint screenshots of the website at “www.richardjosefson.com”, showing a webpage displaying only the attorney’s personal address and photographs of his home. Therefore, the Complainant concludes that both the disputed domain name and <richardjosefson.com> were registered ultimately for purpose of inducing other criminals to harm and take violent action against the District Attorney, the Complainant and/or their respective families;
- since registering the disputed domain name, the Respondent has resolved it only to a landing page containing pay-per-click ads related to the Complainant’s mark, thus showing that the Respondent registered the disputed domain name with knowledge of the Complainant’s notoriety and trademark rights in the disputed domain name;
- the Respondent’s unlawful conduct has and will damage the Complainant through potential physical harm at criminal hands, to the loss of profits and good will associated with the mark, as well as by damage to the Complainant’s reputation and diluting the mark itself. Moreover, the Complainant has suffered further damage through expenditures associated with bringing the Complaint;
- the Respondent has not carried on any legitimate business at the disputed domain name prior to receiving notice of this dispute and is not making legitimate noncommercial, or fair use of the disputed domain name pursuant to paragraph 4 of the Policy;
- the Respondent has not been commonly known by the name Cara Hutson and has acquired no trademark or service mark rights in the Complainant’s mark prior to notice of this dispute;
- the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use her mark or the disputed domain name;
- the Respondent is depriving the Complainant of use of her mark in her law practice, which includes both private and public services;
- panels in the past have found that a respondent’s use of a domain name in a way that amounts to an attraction of visitors intended for the complainant is evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv).
The Respondent denies the Complainant’s contentions stating that:
- prior to being notified of the Complaint, he was not aware of the Complainant or any other person named Cara Hutson, other than his sister;
- he has acquired the disputed domain name for his sister, whose name is Cara Hutson, along with three other Hutson based domain names for the other members of her family;
- the Respondent and his sister live in New Zealand and have no involvement with the United States of America or its legal system;
- the disputed domain name is not for sale;
- the Respondent does not own the domain name <richardjosefson.com> cited in the Complaint;
- the Respondent does not own any domain name to hinder anyone’s gain and does not run any pay-per-click ads;
- the Respondent’s domain name registration details are private since he wants to avoid random people and web scrappers/bots collecting his information for mass spam marketing.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “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:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant relies on common law rights in the name CARA HUTSON.
As highlighted in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning”.
Moreover, according to section 1.5.2 of the WIPO Overview 3.0, “the UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services. Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint”.
The Panel has carefully reviewed all the documents and statements submitted by the Complainant to demonstrate that she has standing to file a UDRP case (as detailed in section 5.A above) and finds that, while they provide some information about the Complainant’s biography and professional career, they are far from sufficient to prove that the Complainant’s name has become a distinctive identifier of the Complainant’s services.
Therefore, the Panel finds that the Complainant has failed to demonstrate common law rights in the name CARA HUTSON for purposes of standing to file a UDRP complaint.
In view of the above, it is not necessary for the Panel to address the second and third requirements provided by paragraph 4(a) of the Policy.
However, even assuming that the Complainant was deemed to have proven the ownership of common law trademark rights in the name CARA HUTSON, the Panel notes that the evidence submitted by the Complainant – including the lack of any screenshot showing the alleged use of the disputed domain name in connection with a pay-per-click website making reference to the Complainant or establishing the alleged common control of the domain name <richardjosefson.com> – would not be sufficient to establish that the disputed domain name was registered and used in bad faith with the intention to target the Complainant.
For the foregoing reasons, the Complaint is denied.
Date: January 11, 2019