George Pataki: Three-term NY governor wins back the domain GeorgePataki.com

Mr. George Pataki has won the UDRP filed at the Forum (NAF) to reclaim the domain GeorgePataki.com. Mr. Pataki was represented by attorney Jason Schaeffer of ESQwire.com; the domain law firm is a premium sponsor.

Introduction: George Pataki, an American politician, served three consecutive terms as the governor of New York. Between 1995 to 2006, Mr. George Pataki, an attorney by profession, delivered a balanced agenda to the state of New York. He is an active political figure, a public speaker, author, and has an active Twitter account.

The domain name GeorgePataki.com was registered in 1997; by 2000 the domain was resolving to an informational web site with the footnote of “Paid for by friends of Pataki.”

GeorgePataki.com remained in the possession of Mr. George Pataki until 2018, when it lapsed. The domain was somehow acquired by a third party, that began a campaign of impersonation by setting up a web site with content copied over from older versions of Mr. Pataki’s web site.

In recent years, the impersonator included links to gambling web sites and provided donation images to legitimize the look and feel of the fake web site, by displaying parts of its former web content.

In the UDRP, the Complainant’s counsel pointed out the existing common law rights to the GEORGE PATAKI mark, used from 1977 to 2018 to promote services such as speaking engagements and publications. The panelist agreed that the evidence of use establishes common law rights to the GEORGE PATAKI mark and brand.

The Forum panelist noted 2018, the date in the domain’s change in ownership, as the acquisition date by the Respondent; the Complainant thus established the element of “bad faith registration.” Furthermore, the element of “bad faith use” was established via the domain’s use as a means to pass off as the Complainant.

Final decision: Transfer the domain GeorgePataki.com to the Complainant.

It’s worth noting that while every UDRP case differs, the involvement of a qualified attorney to protect one’s intellectual property rights is the most crucial factor in the decision. Registering someone else’s name, typically a first name / last name combination as a domain, is clearly a bad decision.

George Pataki v. Trend Black
Claim Number: FA2112001978698

PARTIES
Complainant is George Pataki (“Complainant”), represented by Jason Schaeffer of ESQwire.com, P.C. The Domain Name Law Firm, New Jersey, USA. Respondent is Trend Black (“Respondent”), Malaysia.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <georgepataki.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.

Richard Hill as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the FORUM electronically on December 29, 2021; the FORUM received payment on December 29, 2021.

On December 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the FORUM that the <georgepataki.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 December 30, 2021, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@georgepataki.com. Also on December 30, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 25, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the FORUM appointed Richard Hill 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 states that he has been active as a political leader, paid speaker, consultant, published author, legal advisor, and lobbyist, including as candidate for Governor in the State of New York and as candidate for President of the United States of America. He asserts common law rights for the GEORGE PATAKI mark, in particular because he used the web site at <georgepataki.com> from 1977 through 2018 to promote his speaking engagements and publications. In July 2018, Complainant inadvertently allowed the domain name registration to lapse, at which time it was registered by Respondent, who uses it to resolve to a web site that reproduces much of the material that had been previously displayed on Complainant’s web site.

Complainant alleges that the disputed domain name is identical or confusingly similar to his GEORGE PATAKI mark because it fully incorporates the mark, merely adding in the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support his position.

According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the resolving website attempts to pass off as Complainant and displays material that is copyrighted by Complainant. Complainant cites UDRP precedents to support his position.

Further, says Complainant, Respondent registered and uses the disputed domain name for the bad faith purpose of attracting Internet users to Respondent’s website to impersonate and create a likelihood of confusion with Complainant. Respondent acted with actual knowledge of Complainant’s rights in the GEORGE PATAKI mark. Complainant cites UDRP precedents to support his position.

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

FINDINGS
Complainant has common law trademark rights for his name GEORGE PATAKI.

Complainant has not licensed or otherwise authorized Respondent to use its mark.

The disputed domain name was registered by Respondent well after Complainant acquired his trademark rights.

The resolving websites passes off as Complainant, displaying material copied from Complainant’s previous legitimate website.

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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (FORUM June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar
Complainant asserts common law trademark rights in his name, in particular through use of the web site at <georgepataki.com> from 1977 to 2018 to promote his activities, and presents evidence to support his allegations. Respondent did not reply to Complainant’s contentions. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Complainant has presented sufficient evidence to establish common law trademark rights in his name. See Foundation Systems of Michigan, Inc. v. Patrick McHale / McHale Construction, FA 1604289 (FORUM Mar. 15, 2015) (finding complainant’s eight (8) year use of domain name <drymich.com>, and “extensive advertising and expenditures surrounding the DRY MICH mark” were sufficient to establish common law rights); see also Surecom Corp. NV v. Rossi, FA 1352722 (FORUM Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of, complainant’s three (3) year use of domain name <cam4.com> and continuous use of CAM4 since 1999); see also Calvert v. Domain Strategy, Inc., FA 162075 (FORUM Aug. 1, 2003) (transferring the <kencalvert.com> domain name to Complainant, a U.S. Congressman).

The disputed domain name incorporates Complainant’s GEORGE PATAKI mark in its entirety, merely omitting the space and adding in the “.com” gTLD. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite such minor changes. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (FORUM July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests
Complainant has not licensed or otherwise authorized Respondent to use his mark. Respondent is not commonly known by the disputed domain name: where a respondent does not provide evidence to the contrary, evidence of a respondent not being commonly known by a domain name may be found through identifying WHOIS information that is unrelated to a domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (FORUM Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here the WHOIS information of record shows the registrant of the domain name as “Trent Black”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

Respondent uses the disputed domain name to pass off as Complainant. Specifically, Complainant provides evidence showing that the resolving website utilizes the same hero image, design, and header tabs as Complainant’s previous legitimate website which include, but not limited to: “Meet George” (Complainant); “Meet Libby” (Complainant’s wife); and “Donate”, confusing users into believing some affiliation between the domain name and Complainant. This is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (FORUM Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also BIG TICKET TELEVISION, INC. v. Ng\u1ecdc Pham, FA1907001851749 (FORUM 2019) (use of a domain name to divert internet traffic to a website that is a copy of Complainant’s official website is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (FORUM Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith
As a preliminary matter, the Panel notes that the disputed domain name was registered by Respondent in 2018. As stated in 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.”

Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

Indeed, as already noted, Respondent uses the disputed domain name to pass off as Complainant. Evidence of bad faith may be found, under Policy ¶ 4(b)(iii) and/or (iv), where a respondent uses a domain name to pass of as a complainant in order to deceive users as to the domain name’s association with a complainant. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (FORUM Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (FORUM Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).

DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <georgepataki.com> domain name be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist
Dated: January 25, 2022

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