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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rinat L. Akhmetov v. Strategic Development Ltd.

Case No. D2006-0895

 

1. The Parties

The Complainant is Rinat L. Akhmetov of the Ukraine, represented by Akin Gump Strauss Hauer & Feld LLP, United States of America.

The Respondent is Strategic Development Ltd of Singapore.

 

2. The Domain Name and Registrar

The disputed domain name <akhmetov.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2006. On July 14, 2006, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 14, 2006, GoDaddy.com, Inc. 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”).

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 July 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2006. The Response was filed with the Center on August 9, 2006.

The Center appointed Philip N. Argy as the sole panelist in this matter on August 22, 2006. 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.

 

4. Factual Background

The Complainant was recognized in the Forbes 2005 list of wealthiest people in the world. The Complainant founded and owns one of Europe’s largest industrial holdings companies and controls and manages numerous large financial and industrial companies in Ukraine. The Complainant is the principal shareholder and president of the Donetsk soccer team. The Complainant is also an elected member of the Ukrainian parliament and a leader of one of Ukraine’s principal political parties.

The Respondent registered the domain name on January 31, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that he is an internationally-known financier, business person and politician and that the Complainant’s high-profile business activities began in 1995 and since that time have expanded to such an extent that the Complainant has become one of the wealthiest and well-known figures in the world, including in the United States of America.

The Complainant contends that he is very well known outside of Ukraine as he regularly advertises his businesses in print and television media in Europe, Ukraine, United States of America, Poland, Russia and elsewhere.

The Complainant contends that his business interests and activities are mentioned in the press primarily for their relationship to the Complainant. For example, Forbes has made reference to “Akhmetov & Co” when referring to the Complainant’s activities in connection with significant international business acquisitions.

The Complainant contends that he has used the “Akhmetov” name to promote commercial activities and has achieved fame in the United States of America, Ukraine and other countries through these commercial activities. The Complainant contends that the “Akhmetov” name has acquired a secondary meaning in the field of industrial business management such that the public associate the “Akhmetov” name with activities associated with the Complainant. As such, the Complainant contends that he enjoys common law trademark rights in the “Akhmetov” name. The Complainant contends that the “Akhmetov” name was a well-known common law mark of the Complainant well before the Respondent registered the disputed domain name.

The Complainant contends that he first became aware of the domain name when he sought to register <akhmetov.com> to promote his growing international commercial and public activities.

The Complainant contends that when he sought to register the domain name he found that it had been previously registered and contained a highly offensive, pornographic image. The domain name was available for sale to the highest bidder.

In May 2006, the Complainant sent an email to the Respondent objecting to the use of the domain name and offering to purchase the domain name in order to settle the dispute in good faith. The Respondent did not respond to this email. Following a letter of objection to the register of the domain name the website was deactivated but still remains under the ownership and control of the Respondent.

The Complainant contends that the disputed domain name is identical to the Complainant’s name, a mark in which the Complainant has prior rights. Further, the Complainant contends that use of the “Akhmetov” name in connection with commercial activities would result in confusion as to source, sponsorship or affiliation.

The Complainant contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contends that the only use the Respondent has made of the domain name is to divert unsuspecting viewers who are seeking information about the Complainant to unrelated websites containing offensive pornographic material. The Complainant cites a prior panel decision where the panel found that use of a celebrity name as a domain name for a pornographic site was considered bad faith. The Complainant contends that the Respondent’s only objective is to embarrass and harass the Complainant.

B. Respondent

The Respondent contends that it did not receive an email offer from the Complainant to purchase the disputed domain name and resolve the dispute in good faith. The Respondent further contends that there were no sexual images on the disputed domain name until June 9, 2006, almost one month after the Complainant’s initial email of May 11, 2006 and contends that the Complainant checked the disputed domain name every day for nearly a month until he found the redirection to the sexual image.

The Respondent contends that the disputed domain name is not identical or confusingly similar to the Complainant’s name being Rinat Akhmetov.

The Respondent contends that the Complainant does not have a common law right to the name “Akhmetov” as he has never operated or traded in the context of business using the “Akhmetov” name, but rather uses names such as ‘System Capital Management’ to operate his businesses. The Respondent refutes the proposition that the Forbes mention of “Akhmetov & Co” indicates a common law right in the mark. The Respondent further claims that the Complainant has not satisfied the burden of proof in relation to the establishment of a common law right.

The Respondent contends that the disputed domain name has no other users other than the Complainant and his associates checking it regularly and hence, the Respondent denies that the domain name has diverted traffic from the Complainant’s legitimate websites.

The Respondent contends that the surname “Akhmetov” is generic and outlines that it has previously been held that it is not bad faith to hold and offer for sale generic or descriptive names. Further, the Respondent contends that the sale and purchase of surname domain names for which the buyer does not have common law rights in the name is a legitimate business activity. The Respondent also claims there is nothing illegal about forwarding a website to a sexual image and to do so is just asserting the Respondent’s freedom of speech. In any event, the Respondent contends the redirection of the disputed domain name to the “www.madfucks.com” website was in error.

The Respondent contends that he has not in any way sought to tarnish the reputation of the Complainant.

6. Discussion and Findings

The Complainant has not registered his name as a trademark. Therefore the Complainant is required to demonstrate that he has a common law trademark in his name. This Panel has found on several occasions that in certain circumstances a person can have a common law trademark in their own name. This will occur where the name in question was actually used in trade and commerce to establish unregistered trademark rights. Merely having a famous or recognized name is not sufficient to show that a common law trademark exists. In Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, it was stated that this requirement is “a considerable hurdle to vault” and many previous cases had failed because the complainant had only shown that their name was famous but not that it had been used as a trademark to denote a trader’s goods and services.

The Complainant has certainly established that he is well-known by his name “Rinat Akhmetov”. However, a complainant must also demonstrate that his name is used in connection with trade or commerce. Where the complainant is a famous actor, artist or author, it goes without saying that they have used their name as a marketable commodity. However, where the complainant is purely a business person, the question of whether they have used their personal name in connection with trade and commerce becomes more problematic. This is because business people do not always use their name to market their own or someone else’s goods and services.

In Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, the panel noted that cases involving business people who are the leaders of companies that do not carry on business under their own names are much more difficult for complainants to prove due to the difficulty in showing that such a complainant used his personal name for the purpose of merchandising or other commercial promotion of goods and services. The panel held that cases involving the names of business people “eventually…come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce”. The decision provided several guidelines or factors which would tend to suggest whether or not such a nexus has been established. These include:

- the extent to which the commercial community identifies the individual with the company;

- the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company;

- the extent of the personal ownership of the company by the individual;

- the degree of personal control that the individual exercises over the enterprise;

- the extent to which the individual is identified with any major achievements of the enterprise; and

- whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use (as was the case in Steven Rattner v. BuyThisDomanName (John Pepin), WIPO Case No. D2000-0402 where the Complainant provided investment banking and corporate advisory services under his own name).

The Complainant demonstrated through a number of media articles, including an article in Forbes, that he is generally seen as the alter ego or driving force behind his numerous companies and businesses, of which he has either sole or majority ownership. Additionally, the Panel notes that the Complainant has also published a number of Intelligence Reports under his name “Rinat Akhmetov” which are available for purchase. Therefore, the Complainant has demonstrated that he has used his name in connection with trade and commerce and therefore has a common law trademark in the name “Rinat Akhmetov”.

The next question is whether the Complainant has a common law trademark in respect of his surname only. The Complainant contends that he has a trademark in respect of his surname by itself, Akhmetov. He is therefore required to demonstrate the additional hurdle that his surname alone is sufficiently distinctive and famous. In all the media articles provided by the Complainant, the Complainant is initially identified by both his first name and surname. The Complainant is only referred to as “Akhmetov” for short after the first mention of his full name, as is conventional in media reports. This does not establish that the Complainant has common law trademark rights in respect of “Akhmetov”.

Additionally, the Complainant relies on the use of the phrase “Akhmetov & Co” in a Forbes article and argues that this usage is in the nature of a trademark. The Panel finds that this one example does not satisfy the Complainant’s burden of demonstrating that he has common law rights in the name “Akhmetov”. The Panel also notes that the Forbes article initially refers to the Complainant by his full name “Rinat Akhmetov”.

This Panel has conducted a brief search of the name “Akhmetov” and found that there are a number of famous persons with the surname Akhmetov. For example, Daniyal Akhmetov is the Prime Minister of Kazakhstan, Artiom Akhmetov is a famous chess player and Ruslan Akhmetov is a famous actor. It would appear, therefore, that the surname Ahkmetov by itself is neither distinctive nor identified solely with the Complainant. For the foregoing reasons, the Panel finds that the name “Akhmetov” is not sufficiently distinctive of the Complainant and that the Complainant has not established to the Panel’s satisfaction that he has common law rights to the name.

The question remains whether the disputed domain name is confusingly similar to the Complainant’s common law trademark RINAT AKHMETOV.

When comparing the Complainant’s mark to the disputed domain name, it is well established that the generic top-level domain, in this case “.com” must be excluded from consideration as being a generic or functional component in the domain name. Once the “.com” is excluded from the disputed domain name the remaining term is “Akhmetov". The Panel must decide whether “Akhmetov” is confusingly similar to the common law trademark RINAT AKHMETOV.

In showing whether the disputed domain name is similar to the Complainant’s mark, reference should not be made to the content of the website (See A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900). What needs to be established is whether the public would be confused as to whether the Complainant is the owner and operator of the website. As discussed above, the name “Akhmetov” in itself is not sufficiently distinctive of the Complainant, as it appears to be a common surname shared by a number of famous persons. As a result, the Complainant is unable to demonstrate that the public would be confused as to whether he, and not another person with the same surname, was the owner or operator of the site.

As the Complainant has failed to establish that the disputed domain name is identical or confusingly similar to his common law trademark RINAT AKHMETOV, it is unnecessary to consider whether the Complainant has carried its burden of showing whether the Respondent has a right or legitimate interest in the domain name or whether the domain name was registered and is being used in bad faith.

 

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.

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Philip N. Argy
Sole Panelist

Dated: September 5, 2006