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MichalMenert .com : #UDRP failed despite “anal sex toy” store use of the #domain

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Michal Menert is a music producer with his own Wikipedia entry, and yet, according to a panelist at the National Arbitration Forum, he’s not famous enough!

Mr. Menert filed a UDRP against the domain MichaelMenert.com, that was registered in 2010. In previous years, the domain was used as a storefront for merchandise and tickets.

Things changed this year, when the domain displayed an online anal sex toy platform, including butt plugs, prostate massagers and dildos. Naturally, the Complainant was not thrilled by this type of online presence under his exact name. Did the panelist fail to see the Google results for “Michal Menert?”

Google results for “Michal Menert” make it clear that the artist’s name is famous.

It surely seems so.

The sole panelist, David E. Sorkin, stated that owing a name is not enough, and that the artist’s claims to the MICHAL MENERT mark are not strong in order to be awarded the domain via the UDRP process:

It appears to the Panel that Respondent is attempting to create some sort of confusion by repurposing a domain name that was formerly used to promote Complainant (although Complainant notably has failed mention anything about the former use of the domain name nor the circumstances surrounding its acquisition by Respondent). However, it is not clear that this confusion relates to a trademark, nor even that Respondent had any particular knowledge of Complainant or his claimed mark. Complainant thus fails to demonstrate bad faith registration and use for purposes of the Policy.

The decision was to allow the Respondent to keep the domain. Full details on the decision for MichalMenert.com follow:

Michal Menert v. Garmon Dafydd

Claim Number: FA1905001841388

PARTIES

Complainant is Michal Menert (“Complainant”), represented by Jesse Kaplan of FREEDMAN + TAITELMAN, LLP, California, USA. Respondent is Garmon Dafydd (“Respondent”), North Carolina, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <michalmenert.com>, registered with Godaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 1, 2019; the Forum received payment on May 1, 2019.

On May 1, 2019, Godaddy.com, LLC confirmed by email to the Forum that the <michalmenert.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@michalmenert.com. Also on May 3, 2019, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On May 28, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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

Complainant is a recording artist, music producer, and performer/DJ. He began producing music commercially in the early 2000s and has released eleven albums. He has also toured extensively over the years, performing his music commercially and selling his music and merchandise. Complainant uses his name, MICHAL MENERT, in connection with these activities, and maintains a website at <menertmusic.com> that provides information about his shows and offers tickets, music, and merchandise for sale. Tickets for his shows are also offered for sale through various other websites.

Respondent is the registrant of the disputed domain name <michalmenert.com>. Complainant states that the domain name “for some time” was dormant, and in approximately November 2018 Complainant learned that it was being used for an online anal sex toy store. Complainant states that he has never authorized or consented to the use of his name or mark for this purpose.

Complainant contends on the above grounds that the disputed domain name <michalmenert.com> is confusingly similar to his MICHAL MENERT mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The Panel finds that Complainant has not demonstrated that he has trademark rights nor that the disputed domain name was registered and is being used in bad faith. The Panel further that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

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.”

Paragraph 4(a) of the Policy requires that Complainant must 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.

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(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to “produce clear evidence to support its subjective allegations”).

Identical and/or Confusingly Similar

Complainant contends that he has common law trademark rights in MICHAL MENERT and that the disputed domain name <michalmenert.com> is confusingly similar to his claimed mark.

Although a trademark registration is not required to prevail under the Policy, a complainant’s burden is fairly steep if its claimed rights arise solely at common law. The claimed mark must have been used as to identify the source of goods or services, and as a result of such use, must have become distinctive of that source.

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.

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3.

Where the claimed mark is a personal name, the complainant must provide evidence that it serves as a distinctive identifier of the source of goods or services rather than merely as a name or “personal identity marker.” B C Furtney v. Afterthought Productions, FA 1226494 (Forum Nov. 17, 2008) (rejecting claim of rights in BC FURTNEY on basis that it served merely as “personal identity marker” for horror film producer rather than as source indicator); see also Josh Schachter v. Sue Pearl Wang, FA 1403527 (Forum Oct. 26, 2011) (rejecting claim of rights in JOSHUA SCHACHTER on basis that it was known and understood merely as personal name of technology industry pioneer rather than as source identifier); R. E. “Ted” Turner & Ted Turner Film Properties, LLC v. Mazen Fahmi, D2002-0251 (WIPO July 2, 2002) (rejecting claim of common law rights in TED TURNER, despite substantial evidence of Complainant’s fame and widespread commercial use of TURNER).

An entertainer may acquire common law trademark rights in his or her personal name, but must provide specific evidence to support the claim of acquired distinctiveness. Compare, e.g., Pete Wentz v. Phil Lynch, FA 1082087 (Forum Nov. 8, 2007) (finding common law rights in PETE WENTZ based upon evidence of complainant’s global fame and recognition as musician, author, entrepreneur, and founding member of famous music group Fall Out Boy, with sales of “millions of copies” of sound recordings); Willard C. Smith II v. Domain Manager, D2007-0442 (WIPO May 25, 2007) (finding common law rights in FRESH PRINCE based upon evidence of complainant’s global fame and use of the claimed mark in connection with popular television series and album sales exceeding 5 million copies), with, e.g., Charles Rapier v. Dark Moon Management, D2004-0221 (WIPO June 14, 2014) (rejecting musician’s claim of common law rights in CHARLIE RAPIER based upon lack of evidence of recognition, “such as a level of sales of music recordings, volume of ticket sales to live performances, or consumer survey”).

Here, Complainant has offered no evidence of fame or public recognition (via consumer surveys, media recognition, or otherwise), ticket or merchandise sales volumes, or advertising expenditures. Complainant’s conclusory allegations are insufficient to demonstrate rights in his claimed mark. Accordingly, the Panel finds that Complainant has failed to meet his burden of showing that he has rights in a relevant mark for purposes of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests and Registration and Use in Bad Faith

Although the Panel’s finding with regard to the first element is dispositive, the Panel nonetheless considers it appropriate to briefly address the other two elements.

With regard to rights or legitimate interests, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Complainant has made a prima facie case, and Respondent has failed to come forward with any evidence of rights or interests. Accordingly, the Panel finds that Complainant has sustained his burden of proving that Respondent lacks the requisite rights or legitimate interests.

With regard to registration and use in bad faith, under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

It appears to the Panel that Respondent is attempting to create some sort of confusion by repurposing a domain name that was formerly used to promote Complainant (although Complainant notably has failed mention anything about the former use of the domain name nor the circumstances surrounding its acquisition by Respondent). However, it is not clear that this confusion relates to a trademark, nor even that Respondent had any particular knowledge of Complainant or his claimed mark. Complainant thus fails to demonstrate bad faith registration and use for purposes of the Policy.

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <michalmenert.com> domain name REMAIN WITH Respondent.

David E. Sorkin, Panelist

Dated: June 3, 2019


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