gloriafeldt.com

The Complainants are Planned Parenthood Federation of America, Inc. and Gloria Feldt, both giving an address at 810 Seventh Avenue, New York, NY 10019, United States of America, represented by the law firm of Simpson Thacher & Bartlett of New York, New York.

The Respondent is Chris Hoffman of Pacific Palisades, California, United States of America.

The disputed domain name <gloriafeldt.com> is registered with Gandi SARL, in Paris, France.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 23, 2002. On November 26, 2002, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On November 27, 2002, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

On January 14, 2003, the Complainant submitted an Amended Complaint to the Center (hereinafter the "Complaint").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 22, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2002.

The Center appointed M. Scott Donahey, Frederick M. Abbott and D. Brian King as Panelists in this matter on January 21, 2003. The Panel finds that it was properly constituted. Each member of 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.

On February 4, 2003, the Panel issued Procedural Order No. 1, which reads as follows:

Having reviewed the Complaint, the Administrative Panel notes that the Complainant has not addressed the Report of the Second WIPO Internet Domain Name Process (the "Second WIPO Report"), The Recognition of Rights and the Use of names in the Internet Domain Name System (September 3, 2001/http://wipo2.wipo.int) in either its Complaint or amended Complaint. As, according to the Administrative Panel, this document appears relevant to the disposition of the case, it invites the Complainant to file a short submission, not exceeding 10 pages, addressing the question of the Complainant's entitlement to relief in light of the position taken on the protection of personal names in the Second WIPO Report.

Absent exceptional circumstances, Complainant is required to send its reply to this Procedural Order to the Center by February 12, 2003.

Any submission by the Complainant to the Center that is required as a result of this Procedural Order, [sic] must be copied to the Respondent in accordance with Paragraphs 2(b) and 2(h) of the Rules. Any such submission shall be made to the Center in hard copy and (except to the extent not available for annexes) in electronic form using the following e-mail address: [email protected].

On February 12, 2003, the Center received Complainants' Submission in Response to Procedural Order No. 1.

Complainant Gloria Feldt is the President of Complainant Planned Parenthood Federation of America, Inc. ("Planned Parenthood"). Complainant Planned Parenthood is a not-for-profit corporation organized and existing under the laws of the State of New York.

For almost 30 years, Complainant Feldt has spoken publicly in support of women’s reproductive rights. Complainant Feldt has established relationships and contacts based on her personal reputation and credibility. Complainant Feldt has been profiled in the press as a pioneer of the reproductive freedom movement and is the author of many articles on the subject, as well as the author of a book that was scheduled for publication in January 2003 on the subject of reproductive freedom. She has given testimony before legislative and administrative agencies on the subject. Complainant Feldt has given numerous public lectures and speeches at colleges, universities, and other institutions and has appeared on many television and radio news shows.

Complainant Planned Parenthood is a non-profit organization incorporated in 1922, dedicated to reproductive health care services and information for men and women. It has more than 850 health care centers in 49 states and the District of Columbia. It spends significant amounts in the promotion and advertising of its service mark.

Respondent registered the domain name at issue on August 29, 2002. Complaint, Annex A. Respondent is not affiliated with Complainants, nor did he seek their permission to register the domain name at issue. Complaint, Annex C. Respondent is using the domain name at issue to resolve to a web site that contains statements critical of Complainant Planned Parenthood and a woman's right to an abortion. The web site contains statements that Complainants regard as "false and horrendously inflammatory" about Complainant Planned Parenthood. The web site does not mention Complainant Feldt. Complaint, Annex F.

Respondent has previously registered domain names the registration of which was found to be in bad faith under the UDRP. See, e.g., America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; Women on Waves Foundation v. Chris Hoffman, WIPO Case No. D2000-1608. Respondent has reportedly engaged in the sale of domain names, some of which were allegedly identical to trademarks.

On August 12, 2002, Complainants sent Respondent a cease and desist letter to which Respondent failed to respond[1].

As Respondent failed to submit a response, he provided no factual allegations.

Complainants contend that the domain name at issue is identical to a service mark in which Ms. Feldt has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

The Respondent did not reply to the Complainants’ contentions.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both Complainants and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainants have met their burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

Uniform Rule 12 provides: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." Without seeking leave of the Panel, the Complainants submitted an Amended Complaint. In the interests of fully considering Complainants’ arguments, the Panel exercised its discretion to accept and consider the Amended Complaint. In addition, the Panel exercised its discretion under Uniform Rule 12 to invite Complainants to submit an additional document specifically addressing Complainants’ entitlement to relief in light of the position taken on the protection of personal names in the Second WIPO Report. The Panel has accepted and considered that submission as well.

Complainants nowhere allege that anyone other than Complainant Feldt has rights in the alleged service mark GLORIA FELDT. See, Complaint, paragraphs 13, 14, 15, 19, 21, and 22. Accordingly, the claims of Complainant Planned Parenthood must be dismissed.

Complainants do allege that Complainant Feldt has service mark rights in her personal name. In making the allegation they cite Complainant Feldt’s notoriety, her promotion of the right of a woman to choose regarding reproduction, the recognition her views have been accorded in national media, and the many relationships and contacts she has established on the basis of her personal reputation. The question before the panel is whether Ms. Feldt’s activities give rise to a service mark in light of the Second WIPO Report.

In seeking to determine whether the protection of personal names under the UDRP should be expanded to include right of personality, WIPO examined the way that personal names were treated in different legal systems around the world. Second WIPO Report, ¶ 171. It found that the law rarely protects personal names as such. Id., ¶ 172. The protection that did exist for personal names varied widely from country to country. Id., ¶ 173.

The Second WIPO Report noted that Panel decisions had elected to protect personal names in cases where the laws recognized the registration of personal names as trademarks or service marks or where countries recognized the common law acquisition of trademarks or service marks through use and the acquisition of secondary meaning as the source of goods or services. Id., ¶¶ 181 – 184. The Report noted that commentators were split as to whether the UDRP should be broadened to protect non-commercial uses of personal names. Id., ¶¶ 189 – 198. In light of this split of opinion, WIPO noted:

The most cogent of the arguments against modification of the UDRP is, we believe, the lack of an international norm protecting personal names and the consequent diversity of legal approaches deployed to protect personal names at the national level. We consider that this diversity would place parties and Panelists in an international procedure in an untenable position and would jeopardize the credibility and efficiency of the UDRP.Id., ¶ 201.

In recommending against modification of the current treatment of personal names under the UDRP, WIPO noted that "[p]ersons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society." Id., ¶ 199.

In the Complaint, Complainants allege that "[b]ecause of the respect and notoriety attached to her name, [Ms. Feldt] has acquired valuable service mark rights in it," citing three United States Federal Courts of Appeals decisions. Complaint, ¶ 14. However, none of the cited cases dealt with the claim of a personal name as a service mark[2]. Accordingly, they do not support the cited statement.

In reviewing the UDRP cases in light of the Second WIPO Report, perhaps no matter has been so thorough and well-reasoned as the decision of the Panel in Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540 (decided June 11, 2001, analyzing cases existing at that time in light of the Interim Second WIPO Report). The Panelist divided the personal name cases into six categories. The category that includes the most cases is that involving persons from the entertainment industry. The second most numerous category was that of professional athletes. The four other categories, with few cases in each (some overlapping) were authors, business people, royalty and politicians[3]. The Panel found that the cases effectively required that for a personal name to be eligible for trademark or service mark status it needed to be used "for the purpose of merchandising or other commercial promotion of goods or services." Id., ¶ 6.24.

Later cases have held that in order for a personal name to acquire trademark or service mark status in a jurisdiction that recognizes common law marks, the personal name must be used in connection with the commercial offering of goods or services and must have acquired secondary meaning as the source of such goods or services. Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872 at page 3 ("In light of the Second WIPO Domain Name Process, it is clear that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and or services, i.e. Common law trademark rights."). See, also, The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184 (<jerryfalwell.com> and <jerryfallwell.com>), and The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (<alberteinstein.com>).

Complainants have failed to show that the personal name at issue, "Gloria Feldt," has been used in connection with the commercial offering of goods or services or that the personal name in question has acquired secondary meaning as the source of such goods or services. It is certainly true that Ms. Feldt has acquired a reputation as an articulate spokesperson for freedom of reproductive choice. However admirable that might be, it is not enough to acquire a common law trademark or service mark. Accordingly, the panel finds that Complainant Feldt does not have rights in a trademark or service mark.

Because the Panel has determined that Complainants have failed to meet their burden of proof as to the first requirement, the Panel does not reach this issue.

The Panel is cognizant that the narrow scope of the Policy in relation to personal names is frustrating to some. Fortunately, in the United States, frustrated parties can seek relief under the Anticybersquatting Consumer Protection Act, which provides expressly for protection of personal names. See, 15 U.S.C. § 1129.

I write separately in this proceeding because, while I share the Panel majority’s conclusion, I have come to that conclusion by a somewhat different line of reasoning. In light of the importance of the subject matter of this case, I think it worthwhile to record this difference.

First, my understanding of the discussion of personal names in the Report of the Second WIPO Domain Name Process does not lead me to conclude that the WIPO Secretariat (the International Bureau) recommended an approach different than the one evolving under the UDRP: that is, the gradual accumulation of a body of decisions that distinguish in particular circumstances whether a personal name will be protected under the domain name system. The question that the Second Report addressed was whether personal names "as such" should be accorded additional protection. For reasons referred to by the Panel majority, the Second Report concluded that recommending additional protection was not warranted. Thus, just as country names are not protected "as such"[4], that is, as identifiers of nation states, personal names are not protected "as such" under the UDRP.

"Gloria Feldt" is not registered as a service mark in the United States[5]. From the standpoint of countries such as the United States that accord protection to "common law" marks, a personal name may be protected under the UDRP if it has taken on the characteristics of a trademark or service mark: that is, if it has become well known among the relevant public (i.e., acquired sufficient secondary meaning) to distinguish the goods or services of one enterprise from those of others[6]. Whether a personal name has acquired sufficient secondary meaning so as to take on the legal characteristics of a trademark or service mark will depend on a variety of factors, including the distinctiveness of the name, the extent of its usage in connection with goods or services, and the degree to which the name is recognized by the relevant public in connection with goods or services. Because a personal name might be common among the general public, the burden to demonstrate secondary meaning might be high in a particular case.

Complainant Gloria Feldt has in this proceeding established that she is a public figure who is well known among those familiar with reproductive rights issues. That, however, does not address the principal fact question before the Panel. The question before the Panel for purposes of the UDRP is whether "Gloria Feldt" has acquired secondary meaning as a service mark.

The Panel majority asks whether "Gloria Feldt" has been used "commercially" in connection with a service. Because the organization with which Ms. Feldt is associated is a non-profit provider of services, I would clarify that use of the term "commercial" should not be understood to suggest that only for-profit enterprises, or individuals, may acquire rights in common law service marks[7]. To use a nation-state-neutral point of reference, the definition of a trademark in the WTO TRIPS Agreement, Article 15, does not place a condition of "commerciality" in the sense of profit-seeking on prospective trademark holders[8]. If Ms. Feldt is providing reproductive rights "services", we should not hold her to the requirement of doing so for a profit.

The burden on Ms. Feldt is to demonstrate that her name has acquired secondary meaning in connection with providing a service. Planned Parenthood, the organization for which she serves as president, is clearly providing a service and is the holder of rights in a service mark (a fact that has been judicially acknowledged in the United States). That does not, however, establish that the name "Gloria Feldt" is sufficiently known among a relevant public in connection with the provision of a service.

The evidence adduced by Ms. Feldt shows that she works tirelessly to promote women’s reproductive rights, that she is often invited to speak on this subject at major universities, that she has been portrayed in many news articles and other media in her role as president of Planned Parenthood, and that she has written a book (not yet published) concerning her work. All of this establishes that Ms. Feldt is well known as the president of Planned Parenthood and as a champion of women’s reproductive rights. That is not quite the same as being sufficiently identified with the provision of a "service".

Is Gloria Feldt "personally", as distinct from Planned Parenthood, known as a "service provider"? This is a difficult question. Ms. Feldt is in part a service provider, and her name is used in connection with services. She undoubtedly counsels individual women concerning their reproductive rights and options, both as president of Planned Parenthood and in an individual capacity. She also undoubtedly advises women that counseling and other services are available through Planned Parenthood. This does not persuade me (or my fellow Panelists) of a sufficient nexus between her name and the distinct provision of services so as to establish common law rights in a mark. If the part of Ms. Feldt’s activities relied on to establish service mark rights were sufficient, many or most presidents of many or most business organizations would have rights in their personal names as service marks because of their roles as officers of associated enterprises. This does not appear to be a result consistent with the general objectives of common law service mark protection, which is to identify the source of services and perhaps also goodwill associated with the provider[9].

The Monty Roberts decision[10] has been referred to by Complainant, as well as by the Second Report, and it may be worthwhile to distinguish the circumstances of that case and this one. The complainant in Monty Roberts established that his personal name was "famous" in connection with the provision of horse training services. The individual subject of the decision (i.e., Monty Roberts) directly provided horse training services using a technique he had developed. His name was connected with his training technique as much or more-so than the name he used to describe it ("Join-Up"). By contrast, Complainant "Gloria Feldt" is well known as a champion of women’s reproductive rights, but her name does not appear to be known in connection with a service as such, but rather with the right to partake of a service (that is, to exercise choice).

Complainants were invited by the Panel to address the Second Report and by implication to strengthen the connection between Gloria Feldt and the provision of services. Complainants’ counsel has advised us:

"Complainants have satisfied their burden in the Amended Complaint by demonstrating the ‘distinctive character or notoriety’ of Ms. Feldt’s name by national exposure and public awareness of her in association with her years with Planned Parenthood and her widely known advocacy of women’s rights. … Ms. Feldt’s name is intimately intertwined with the services offered by Planned Parenthood. Her speeches and television appearances are promotions of Planned Parenthood’s messages and services. Indeed, that is likely the reason Respondent targeted her name."

Complainants’ own summary of their argument is not persuasive on the central fact that they must establish. There is no question but that Planned Parenthood provides a service for which it is well known. Gloria Feldt may be well known in connection with Planned Parenthood. She does not appear to be well known in her individual capacity because she provides a service. For that reason, her name has not acquired common law service mark status. She is very well known as an advocate of women’s reproductive rights.

Administrative Panelists under the UDRP are asked to decide questions under a deliberately limited set of criteria. Our capacity to make the world a better place is not so great as required here.

For all the foregoing reasons, the Complaint is denied.

1. Complainants fail to explain how a cease and desist letter was sent to Respondent more than two weeks before Respondent registered the domain name at issue.
2. The first cited case, The Morningside Group Ltd. v. Morningside Capital Group, LLC, 182 F. 3d 133, dealt with the Hong Kong based Chan family's service mark MORNINGSIDE used in the name of various family businesses. In the second case, Murphy v. Provident Mutual Life Insurance Co., 923 F. 2d 923, the Court of Appeals upheld the dismissal of a claim by a third party administrator who marketed to insurance companies using as a common law trademark a bursting thermometer with the word "hot." The third case involved the claim of an advertising company for the common law mark THE NOW GENERATION. In re Advertising & Marketing Development Inc., 821 F. 2d 614.
3. Recent cases have included a religious leader (The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184) and an internationally acclaimed scientist (The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616).
4. See Her Majesty the Queen, in right of her Government in New Zealand v. iSMER, WIPO Case No. DBIZ2002-00270, decided Oct. 2, 2002 (under the STOP Policy) and Her Majesty the Queen, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, Case No. D2002-0754, decided Nov. 27, 2002.
5. A personal name may be registered on the Principal Register of the U.S. Patent and Trademark Office so long as it meets the criteria of serving as a trademark or service mark. Surnames generally are not considered "inherently distinctive" and secondary meaning must be established. See THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS, LAWDESK EDITION, § 13:28 (Version 2.7 December 2002).
6. See, id. at §§ 13:2-13:4.
7. Cf. McCarthy, id. at § 9:5.
8. Article 15.1 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights provides, inter alia, that: "Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark."
9. Some analogous issues were raised and addressed, though only in a preliminary way, in NYSE v. DavidGahary, (SNDY 2000), 196 F. Supp. 2d 401 (considering whether the name of the chairman of the New York Stock exchange was protectable as a service mark).
10. Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case D2000-0299 (June 9, 2000) and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case D2000-0300 (June 13, 2000). This Panelist served as sole Panelist in the Monty Roberts proceedings.