DECISION

Thomas Young v. Henry Chan

Claim Number:  FA0403000250006

PARTIES

Complainant is Thomas Young (“Complainant”), Furst Maximilian Strasse 8, D-88353 Kisslegg, Germany.  Respondent is Henry Chan (“Respondent”), P.O. Box SS 6348, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thomasyoung.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically March 29, 2004; the Forum received a hard copy of the Complaint April 5, 2004.

On March 30, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <thomasyoung.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@thomasyoung.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <thomasyoung.com>, is identical to Complainant’s THOMAS YOUNG mark.

2. Respondent has no rights to or legitimate interests in the <thomasyoung.com> domain name.

3. Respondent registered and used the <thomasyoung.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant’s personal name is Thomas Young.  Complainant states that for seven years he has worked as a seminar and conference leader in Europe.  Complainant asserts that he operates such conferences under the legal entity known as BUREAU THOMAS YOUNG.  Complainant urges that he has used the THOMAS YOUNG mark to identify these conferences and to advertise and market them throughout Europe for the last five years. 

Respondent registered the disputed domain name <thomasyoung.com> December 10, 2002.  Respondent is using the domain name to advertise links to a variety of well-known websites such as E-bay.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant has no trademark or service mark registrations of the mark THOMAS YOUNG.  However, under the Policy, a complainant can establish rights in unregistered marks.  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Unregistered marks are afforded protection under the Policy if a complainant can establish common law rights in the mark.  Common law rights are established through a mark’s inherent distinctiveness or the secondary meaning associated with a mark.  See Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.).

In the instant case, the mark being relied upon by Complainant is a personal name used in business.  Personal names can operate as trademarks or service marks but must satisfy the requirements aforementioned.  Under the Policy, personal names have satisfied the secondary meaning analysis.  See Marino v. Video Images Prod., et al., D2000-0598, (WIPO Aug. 16, 2000) (finding secondary meaning associated with the DAN MARINO mark); see also Williams v. Byrne, D2000-1673 (WIPO Feb. 5, 2001) (finding common law rights in the VENUS WILLIAMS and SERENA WILLIAMS marks); see also Roberts v. Boyd, D2000-0210 (WIPO May 30, 2000) (finding common law rights in the JULIA ROBERTS mark).

In the instant case however, Complainant provided no extrinsic evidence to support the notion that the THOMAS YOUNG mark has acquired secondary meaning.  Mere assertions are inadequate under the Policy to establish rights in unregistered marks. See GLB Servs. Interactivos S.A. v. Ultimate Search, Inc., D2002-0189 (WIPO May 29, 2002) (“[I]n the present case, there is insufficient evidence of a common law trademark.”); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Athough Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . Although Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions.”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).

Although it is likely that Complainant could produce such evidence and support the allegations with extrinsic proof, Complainant did not do so here and failed to establish rights in the THOMAS YOUNG mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Since Complainant failed to establish Policy ¶ 4(a)(i), it is unnecessary to examine Policy ¶ 4(a)(ii).  Respondent also did not show such rights.

Registration and Use in Bad Faith

Since Complainant failed to establish Policy ¶ 4(a)(i), it is unnecessary to examine Policy ¶ 4(a)(iii). 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 2, 2004

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