Domain name - Domain name dispute resolution policy - Common law service mark - Identical - No legitimate right or interest - Bad faith registration - Bad faith use.

Complainant carries considerable goodwill attached to his name. Complainant provides investment banking and corporate advisory services under his name. Respondent registered the Domain Name stevenrattner.com. Complainant alleges he holds a common law service mark in the United States in connection with the name "Steven Rattner".

Held, Name Transferred to Complainant.

Common law service marks have received protection in domain name disputes where they have sufficiently been connected to a distinctive character. It is clear that stevenrattner.com is identical to Complainant's name and common law trademark.

Respondent fails to establish rights or a legitimate interest in the Domain Name. He is not commonly known by the Domain Name and provides insufficient evidence to show he has a legitimate non-commercial or fair use of that name. He is also not a licensee of Complainant, nor has he received any permission or consent to use the trademark. Complainant also has prior rights in the trademark which precede Respondent's registration of the Domain Name.

As registration for the Domain Name quickly followed a high profile announcement by Complainant and was registered under the designation BuyThisDomainName, registration was found in bad faith.

Respondent also demonstrated bad faith use of the mark by attempting to sell and later auction the name for valuable consideration in excess of out of pocket expenses.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Monty and Pat Roberts, Inc. v. Bill Keith, ICANN D2000-0299 (WIPO).
Jeanette Winterson v. Mark Hogarth, ICANN. D2000-0235 (WIPO).
Julia Fiona Roberts v. Russel Boyd, ICANN D2000-0210 (WIPO).
 

Richard, Panelist:

1. The Parties

Complainant is Steven Rattner, 998 Fifth Avenue, New York, New York, 10021 U.S.A..

Respondent is BuyThisDomainName a.k.a. John Pepin, 3 Delara Way, Woking, Surrey GU21 1NY, U.K.

2. The Domain Name and Registrar

The domain name at issue (the Domain Name) is "stevenrattner.com".

The registrar of the Domain Name is Alabanza, Inc., 10 E Baltimore St, Baltimore, Maryland, 21202, U.S.A..

3. Procedural History

On May 9th, 2000 the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated May 17th, 2000, a copy of which was also sent to the Respondent by e-mail. In a letter dated the same date the Center informed the registrar, Alabanza, Inc., that a complaint had been submitted to the Center regarding the Domain Name.

On May 19th, 2000 the Registrar confirmed that the Domain Name had been registered via the Registrar's registration services and that the Respondent was the current registrant of the Domain Name.

The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organisation Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on May 25th, 2000.

The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

In a letter dated May 25th, 2000 the Center informed the Respondent of the commencement of the proceedings as of May 25th, 2000 and of subsection 5(a) of the ICANN Rules which grants the respondent 20 days to respond to the Complaint. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.

On June 3rd the Center received an amended complaint from the Complainant [hereinafter the Amended Complaint] 

On June 6th, 2000 the Center received a response [hereinafter the Response] from the Respondent within the 20 day limit as provided for in the ICANN Rules. On June 9th, 2000 the Center issued a response deficiency notice requesting that the identified deficiencies be remedied by June 13th, 2000. On June 9th, 2000, the Center received an amended response [hereinafter the Amended Response] from the Respondent.

On June 13th, 2000 the Center received a letter from the Respondent detailing the Respondent's appreciation of the course of events in the dispute. On June 13th, 2000 the Center acknowledged receipt of the Response to the Respondent and the Complainant [hereinafter referred to collectively as the Parties]. The Center also informed the Parties that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions have been received by the Panel from either of the Parties since its formation.

The Panel is obliged to issue a decision on or prior to July 3rd, 2000, in the English language, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.

4. Procedural Matters

During the present proceedings the Complainant submitted an amendment to the Complaint. The Panel has reviewed the Amended Complaint in conjunction with the Complaint, the Response and the Amended Response and finds that it would be equitable for the Panel to consider both the Amended Complaint and the Amended Response, notwithstanding the Respondent's objection to the Amended Complaint of June 6th, 2000.

The Panel has also taken into consideration all other correspondence received from the Parties in the context of the present proceeding and basis its decision thereon. The Panel does this under its general powers of administration of the proceedings granted at section 10 of the ICANN Rules.

5. Factual Background

The Complainant is a physical person. The Complainant provides investment banking and corporate advisory services under his own name.
The Respondent is a physical person. No mention is made as to the area of business the Respondent is involved in.

According to the Whois database the Respondent registered the Domain Name on March 3rd, 2000. On March 1st, 2000 the Complainant had announced his resignation as deputy Chairman of Lazard Frères, a story which was carried in a number of major newspapers and other media throughout the world on March 1st and 2nd, 2000.

Shortly thereafter the complainant became aware that the Respondent had registered the Domain Name. A representative of the Complainant then contacted the Respondent on or around April 27th, 2000 to inquire into the possibility of acquiring the Domain Name. The Respondent initially replied that he would part with the Domain Name for an amount "...around low 5 figures..." eventually settling on £7500 as the required amount for purchasing the Domain Name. The Complainant did not reply to the Respondent's offer.

On April 30th, 2000 the Respondent informed the Complainant that he was putting the Domain Name up for auction on names123.com. On May 4th, 2000 the lowest bid required to obtain the Domain Name was £2000.

On May 3rd, 2000 the Complainant through counsel informed the Respondent that he would resort to arbitration pursuant to the ICANN Policy if the Respondent did not agree to settle the transfer of the Domain Name for the sum of $400. This led to a number of correspondence from the Respondent to the Complainant and telephone conversations between the Parties regarding the legal basis on which the Complainant was intending to proceed but ultimately no settlement was reached.

6. Parties' Contentions

The following review of the Parties' contentions is that reflected in the Amended Complaint and Response as well as correspondence.

A. Complainant

The Complainant does not rely on a registered trademark but rather, at paragraph 12(1)(h) of the Amended Complaint, alleges that STEVEN RATTNER is a very strong common law service mark in the United States. The Complainant supports this allegation by highlighting his activities as a high profile investment banker and financial advisor as well as a fundraiser for politicians at paragraphs 12(1)(a), (c), (e) and (f) of the Amended Complaint as well as highlighting, at paragraph 12(1)(d) and Annex E to the Amended Complaint, the media attention which has been paid to the Complainant. The Complainant continues by maintaining, at paragraph 12(1)(g) of the Amended Complaint, that considerable goodwill is attached to his name and that any damage to this goodwill would be irreparable.

The Complainant alleges at paragraph 12(2)(b) of the Amended Complaint that the Respondent does not and has not operated a web site under the Domain Name. At paragraph 12(2)(c) of the Amended Complaint continues by alleging that the Respondent's lack of genuine interest is reflected in the Domain Name being offered for sale on a domain name auction site and contending, at paragraph 12(2)(d) of the Amended Complaint, that the Respondent does not use the Domain Name as part of its legal name, corporate name or any commonly known identifier.

The Complainant alleges at paragraph 12(2)(j) of the Amended Complaint that the Respondent placed the name up for auction in response to the Complainant's refusal to purchase the Domain Name for the price quoted by the Respondent.

Finally, at paragraph 12(3)(e) of the Amended Complaint the Complainant alleges that the Respondent acquired the Domain Name purely for the purposes of selling, renting or otherwise transferring it to the Complainant for valuable consideration in excess of out of pocket expenses.

B. Respondent 

The Respondent maintains at paragraph 1 of the Amended Response that he had no intention of selling the Domain Name until approached by the Complainant's representative but rather was intending to use the Domain Name for his own purposes.

The Respondent goes on to maintain at paragraph 3 of the Amended Response that the Complainant has no legitimate right himself to the Domain Name as the Complainant has no trade or service mark in the Domain Name. To this end the Respondent argues: that prior to his resignation from Lazard Fréres the Complainant was not promoting his own name for use in business; that the Complainant is commonly referred to as "Steve Rattner"; that the Complainants actual name is "Steven Lawrence Rattner"; and that there are many individuals named "Steven Rattner".

At paragraph 4 of the Amended Response the Respondent continues by maintaining that he has a legitimate right and interest in the Domain Name. This is based on the Respondent's assertion that he has a friend named Steven Rattner with whom he had intended to ground a hotel and that he had, in fact, registered the Domain Name for his friend.

7. Discussion and Findings

Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:

i. that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights; 
ii. that the Respondent has no legitimate rights or interests in the Domain Name; and 
iii. that the Domain Name was registered and used in bad faith. 

These three elements are considered below.

Identical or Confusingly Similar to Trademark

As stated above, the Complainant does not rely on a registered trademark but rather alleges that STEVEN RATTNER is a very strong common law service mark in the United States. Common law rights have been found sufficient for the purposes of the Complaint in a number of cases (see e.g. Monty and Pat Roberts, Inc. v. Bill Keith, Case D2000-0299, Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235, and Julia Fiona Roberts v. Russel Boyd, Case No. D2000-0210).

Traditionally at common law personal names used in the context of a business have often been protected by the Courts, and English jurisprudence provides examples of some even quite common names being afforded protection. It is perhaps important to point out, however, that protection at common law is determined on a case by case basis and depends greatly on the factual basis of each individual case. At common law, as the primary task is to determine if there is confusion in the mind of the consumer, the notoriety of a particular mark is gauged relative to a number of factors, including the territory within which the mark is used, the products for which it is being used, etc..

The above tradition has been continued by Panelists in the context of domain name disputes. For example, in Monty and Pat Roberts, Inc. v. Bill Keith, Case D2000-0299, it was held that, for a claim to be brought under the ICANN Policy based on a personal name, the Complainant must establish the distinctive character of the name. The panelist in that decision goes on to equate the distinctive character with the whether or not the person in question is sufficiently famous in connection with the services offered by that complainant. The Panel agrees with this manner of proceeding and based on the materials provided by the Complainant finds that the Complainant holds a common law mark in connection with investment banking and corporate advisory services which is well known.

The Panel's finding is notwithstanding the Respondent's assertion that the Complainant goes generally by the name "Steve Rattner" and therefore can only claim rights in this name. The evidence provided by the Complainant in support of his claim shows clearly that the Complainant is known typically as "Steven Rattner". The Panel also finds the Respondent's argument that the Complainant would only be entitled to claim rights his full name, i.e. "Steven Lawrence Rattner" as unfounded and of little force in the present proceedings.

Given that the Domain Name is for all intents and purposes identical to the Complainant's name and common law trademark, the Panel is of the opinion that the Complainant has met the burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.

No Rights or Interest

Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.

The Panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under all three heads of paragraph 4(c). The Panel finds that the Respondent has failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent also failed to show that he is commonly known by the Domain Name or provide sufficient evidence showing that he had a legitimate non-commercial or fair use of the Domain Name. Additionally, the Panel finds that that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark; and the Complainant has prior rights in that trademark which precede Respondent's registration of the Domain Name.

The Panel also chooses to disregard the Respondent's argument that he registered the Domain Name for use potentially in coordination with a business venture with a like named friend. Although the Panel realises that "Steven Rattner" may be a relatively common name in the United Kingdom, the Respondent produced no evidence of any kind in support of his justification. Therefore the Panel finds on the balance that the existence of the Respondents friend and of the business venture has not been proven to their satisfaction.

Bad Faith

Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith.

The Panel is well aware of a practice which has developed recently of registering names and events in the news, literally moments after they become news. The Panel finds that the registration of the Domain Name smacks greatly of this practice as the correlation between the dates of the high profile resignation of the Complainant from Lazard Frères, the Complainant's announcement that he was intending to ground an investment consulting partnership and the registration of the Domain Name by the Respondent are simply too great to be merely coincidental. It is also of note that the Respondent used the designation BuyThisDomainName when registering the Domain Name, which gives further evidence as to the state of the Respondent's mind when he first registered the Domain Name. Therefore, the Panel is of the opinion that the Respondent actions in registering the Domain Name are consistent with those of a party acting in bad faith.

The Panel is also of the opinion that the Respondent is currently using the Domain Name in bad faith. As the Panel has decided not to accept the Respondent's assertion that the Domain Name was registered for use in a business venture the only conclusion the Panel is able to come to is that the Respondent obtained the Domain Name for the purposes of selling it to the Complainant for valuable consideration in excess of out of pocket expenses. This finding is further supported by the Respondent's attempts to sell and later auction off the Domain Name after being approached by the representative of the Complainant.

8. Decision

For the foregoing reasons, the Panel decides:

· that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights; 
· that the Respondent has no rights or legitimate interests in respect of the Domain Name; and 
· the Domain Name has been registered and is being used by the Respondent in bad faith. 

Accordingly, the Panel finds that the Complaint should be allowed and the Domain Name "stevenrattner.com" be transferred to the Complainant and so directs Alabanza, Inc., to do so forthwith.