The Complainant is Greg Brannon, United States of America (“United States”), represented by Fox Rothschild LLP, United States.
The Respondent is Greg Brannon, Canada.
The disputed domain name, <gregbrannon.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 27, 2019. The Panel finds that it was properly constituted. 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.
The Complainant characterizes himself as a famous politician and provides a link to his Wikipedia entry, which indicates that in addition to his political activities he is a qualified medical practitioner practising in the fields of obstetrics and gynaecology.
The Domain Name was registered on January 23, 2013, and is currently connected to a website appearing on its face to be devoted to support for the Complainant’s political goals.
The Complainant contends that the Domain Name is identical to his name “Greg Brannon” in respect of which he claims unregistered trade mark rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Complainant contends that he registered the Domain Name in 2013 and had been using it for a website supporting his political campaigns. At some stage the Complainant’s control of the Domain Name was misappropriated such that Complainant no longer has access to or authority over the Domain Name. A WhoIs search for the Domain Name shows that it is registered by an individual using the Complainant’s name, based in Canada, using the Domain Name for a website featuring material unapproved by the Complainant, but which is likely to lead people to believe that the website is associated with him.
For completeness it should be noted that while the Complainant asserts that control of the Domain Name was wrested from the Complainant, the Complaint contains no evidence in support of that claim. The Complaint contains no evidence that the Domain Name was ever held in the name of the Complainant and the Complaint contains no evidence as to how the Domain Name was used prior to its alleged misappropriation. In so saying, the Panel is not suggesting that the Complainant’s assertions are untrue, simply that they are not supported by any evidence.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered and is being used in bad faith.
Under this, the first element of the Policy the Complainant has first, to establish that he has relevant trade mark or service mark rights and then, secondly, to establish that the Domain Name is identical or confusingly similar to the mark in which he has trade mark or service mark rights.
The Complainant has no trade mark registrations of his name, but claims unregistered rights in respect of it. His claim is expressed in the following terms:
“Complainant, Greg Brannon, is a famous politician, as shown at [his Wikipedia entry] (Annex 4). Complainant registered the domain name “www.gregbrannon.com” with GoDaddy.com in 2013 for use with his political campaigns. Complainant has been using his name, GREG BRANNON, as his trademark in connection with dissemination of political information for many years and has acquired a valuable reputation therein.”
The Complainant’s first obstacle is that he is claiming trade or service mark rights in his personal name, but has no trade mark registrations covering it. Section 1.5.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Question, Third Edition (“WIPO Overview 3.0”) explains:
“The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.”
Merely having a famous name is not of itself sufficient to establish unregistered rights, so what must he do to establish such rights?
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
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.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
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. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
As can be seen above, the Complainant’s claim to unregistered trade or service mark rights in respect of his name is framed exclusively in relation to his fame as a politician. Another politician who brought a case under the Policy was Boris Johnson, then Mayor of London, Boris Johnson v. Belize Domain WhoIs Service Lt WIPO Case No. D2010-1954. His claim to unregistered trade mark rights in respect of his name qua politician failed. The panel stated:
“The fact that Complainant is a politician is not sufficient to give rise to trademark rights. However well known he may be as mayor of London, his use of his name as a candidate for public office does not constitute use of his name in connection with the offering for sale of goods or services in a way that would give rise to trademark rights. Similarly, in his role as mayor, he is engaged in a public service job, not a platform for commercial transactions and commercial exploitation of his name. See Kathleen Kennedy Townsend v. B.G. Birt, WIPO Case No. D2002-0030 (finding that “the protection of an individual politician's name, no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation”); Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510 (finding that respondent, a well-known New York politician, did not hold trademark rights in her name because there was “no indication that [her] name ha[d] ever been used or advertised as an indication of the source of any goods or services”). Because the only allegations related to the alleged BACKBORIS mark relate to Complainant’s candidacy for mayor, the Panel finds that Complainant has failed to establish common law trademark rights in the mark BACKBORIS.”
However, as can be seen from the Factual Background in that case, the complainant went to great lengths to demonstrate his use of his name in other areas:
“Complainant, Boris Johnson, is a UK-based journalist, author, broadcaster, speaker, media personality and politician, and is the current mayor of London. Complainant previously served as editor of the Spectator magazine (which, at the time, had a circulation of approximately 70,000 copies) and as a columnist at the Daily Telegraph newspaper (which, at the time, had a circulation of approximately 650,000 copies daily). As a broadcaster and media personality, he has appeared on various television shows, including the current affairs quiz show “Have I Got News For You” and the BBC series “The Dream of Rome” and “After Rome”. Complainant has published numerous books, including “Friends”, “Voters”, “Countrymen” – “Jottings on the Stump”; “Have I Got Views For You”; “Lend Me Your Ears”; “Life In the Fast Lane”; “Seventy Two Virgins”; “The Dream of Rome”; and “The Perils of the Pushy Parents”. The combined sales of Complainant’s books exceeds 250,000 copies. Complainant also is available for hire as an after-dinner speaker. A poll reported in the Sunday Telegraph national newspaper showed that Complainant has 86.5% name recognition in England.”
It was on the back of that evidence that Boris Johnson was found to have unregistered trade mark rights in his name.
The Complainant has made no attempt to establish trade mark or service mark rights in any area beyond his role as a politician. He makes no claim to be an author, let alone one of multiple books to his name. He is a qualified medical practitioner, but there is no evidence as to the manner in which his name is used in that field.
While it is plain that the Domain Name at the second level is identical to his personal name, there is nothing in the evidence before the Panel to justify a finding that he has trade mark or service mark rights in respect of his personal name. The Complaint fails.
Paragraph 15(a) of the Rules provides that “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.”
The Panel underlines this provision of the Rules in light of the extreme brevity of the Complaint, the fact that much of the story is unsupported with evidence and that while it may well be that on further investigation sufficient proof could be unearthed to support the Complainant’s claims, that is the responsibility of the Complainant, not the Panel.
In light of the finding under B above, it is unnecessary for the Panel to address this issue.
In light of the finding under B above, it is unnecessary for the Panel to address this issue.
For the foregoing reasons, the Complaint is denied.
Date: September 2, 2019
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