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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

David Pecker v. Mr. Ferris

Case No. D2006-1514

 

1. The Parties

The Complainant is David Pecker, of New York, New York, United States of America, represented by American Media Inc., United States of America.

The Respondent is Mr. Ferris, of Cupertino, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <davidpecker.com> (the “Disputed Domain Name”) is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2006. On November 30, 2006 and December 11, 2006, the Center transmitted by e-mail to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On December 11, 2006, eNom, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for Respondent. 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 Respondent of the Complaint, and the proceedings commenced on December 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2007. The Response was filed with the Center on January 1, 2007.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 10, 2007. 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

Complainant states that he is Chairman and CEO of American Media, Inc. (“AMI”), publisher of, among other titles, National Enquirer, Star, Sun, Weekly World News, Globe Men’s Fitness, Muscle & Fitness, Flex and Shape.

The Disputed Domain Name was registered on February 23, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- Complainant is “a famous and highly respected businessperson in the publishing industry” with a 25-year career.

- Complainant has served in his current role at AMI since 1999 and previously had served as Chairman and CEO of Hachette Filipachi Magazines.

- Complainant has “completed more than 3.6 billion dollars in magazine transactions”.

- Complainant “is known nationally and internationally by the name David Pecker and his high profile name is linked inextricably with AMI and is cited frequently by the media”.

- An affidavit from Michael Antonello, assistant general counsel for AMI, states that a Google search for David Pecker’s name produces 389,000 results. Mr. Antonello further states that “Mr. Pecker’s name has been indelibly etched in the public mind with AMI. Mr. Pecker’s name is constantly being used to promote AMI. Considerable good will has attached to Mr. Pecker’s name and damage to his name would be irreparable”.

- Respondent used the Disputed Domain Name in connection with a parking service that provided “various links to ‘hardcore’ pornographic websites and an invitation to purchase the domain name”.

- Counsel for Complainant attempted to purchase the Disputed Domain Name from Respondent for US$100, but Respondent refused, stating that the minimum bid was US$1,000. Respondent later attempted to sell the Disputed Domain Name to Complainant for US$1,600. “That offer was rejected and negotiations continued until Respondent demanded Fifteen Thousand Dollars in order for him to forgo registering other domain names with the name ‘Pecker’.”

- Complainant “possesses a strong common law service mark in his name by virtue of his position as being one of the leaders in the publishing industry…. David Pecker’s personal fame and reputation have caused his name, as a leader in the publishing industry and as Chairman and CEO of AMI, to acquire a secondary meaning in the industry. Complainant’s name is used to promote AMI and the public understands his name as referring to AMI”.

- Respondent “has never been known by the name David Pecker” and “David Pecker did not authorize Respondent to use or register his name”.

- “Respondent has not made any legitimate non commercial or fair use of the domain name <davidpecker.com>. Respondent has not made use of the domain name in connection with any bona fide offering of goods and services. Indeed the sole use of the domain name has been to divert consumers to pornographic websites while at the same time making overtures to sell the disputed domain name.”

- “Complainant’s name has been tarnished by associating him with pornographic websites and Respondent has made a patent commercial use of the disputed domain name by using Complainant’s well known name in the publishing industry to attract Internet users to those pornographic websites.”

- Respondent has been indirectly involved as a domain name registrant in at least two previous domain name disputes.

- When Respondent offered to sell the Disputed Domain Name to Complainant, Respondent “had no website… nor was he offering any bona fide goods or services for sale in connection with the domain name”.

B. Respondent

Respondent contends, in relevant part, as follows:

- “When registering this domain, I had no knowledge that a David Pecker was an executive of a publishing company. There are many David Pecker’s in the Whitepages, and other such people search websites. After registering the domain, I had it parked at Sedo.com. The ads on Sedo.com were related to pornographic websites. This is because the word ‘pecker’ is within the domain name, and Sedo.com uses that as a keyword to try and display relevant ads.”

- Respondent’s indirect connection to the domain name disputes cited by Complainant was only due to “a default setting within my eNom.com account which I was unaware of”.

- “When working with Michael Antonello regarding this issue, he immediately stated that he was going to file Criminal Charges against me because of the ads being display on Sedo.com. To me this was outrageous as I was trying to work with him to resolve this potential issue.”

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).

Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – the Panel makes no findings with respect to the second or third elements of the Policy.

A. Identical or Confusingly Similar

To prevail under paragraph 4(a)(i) of the Policy, a complainant must convince the panel not only that the domain name is identical or confusingly similar to a trademark or service mark but that “the complainant has rights” in the mark. A number of disputes under the Policy have involved personal names, as here, and the panels’ decisions have been mixed on the issue of whether the complainants have rights in the names. See, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (finding common law rights in “Tom Cruise”); and The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184 (finding no rights in “Jerry Falwell”).

Indeed, the issue of rights in personal names has generated enough cases and raised enough questions that the matter has been addressed by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, which states: “While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 1.6, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited January 15, 2007).

Accordingly, the Panel must seek initially to determine whether Complainant in this case has used the name “David Pecker” for trade or commerce. Such a determination is consistent with previous panel decisions under the Policy. See, e.g., The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; and The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616.

In this case, Complainant has provided no evidence of his rights in the Disputed Domain Name other than broad assertions that he “is known nationally and internationally by the name David Pecker and his high profile name is linked inextricably with AMI and is cited frequently by the media”, and an affidavit from AMI’s assistant general counsel that Complainant “possesses a strong common law service mark in his name by virtue of his position as being one of the leaders in the publishing industry… David Pecker’s personal fame and reputation have caused his name, as a leader in the publishing industry and as Chairman and CEO of AMI, to acquire a secondary meaning in the industry. Complainant’s name is used to promote AMI and the public understands his name as referring to AMI”. While these statements may well be true, it is nevertheless incumbent on a complainant, except in the most obvious cases, to provide evidence in support of a claim to rights in a personal name for the purposes of the Policy. Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540. In view of the limited supporting evidence provided in the present case, the Panel's ability to assess the merits of the claim is accordingly limited. It is also unclear to the Panel on the evidence provided whether, as required by the Policy in such cases, Mr. Pecker “has ever used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services”. Joacim Bruus-Jensen v. John Adamsen, WIPO Case No. D2004-0458.

In any event, other than the broad assertions and affidavit cited above, “the Complainant has made little effort to convince the Panel that it has common law trademark rights in the disputed domain name”. Gene Edwards v. David Miller, WIPO Case No. D2003-0339. For example, the Complaint does not provide any exhibits showing Complainant’s use of the name as a trademark. Nor has Complainant provided any evidence other than the cited statements that the name is being used for trade or commerce.

In light of the above, the Panel is not convinced, based on the limited record before it, that Complainant has established rights in the name “David Pecker” for the purpose of this proceeding. Therefore, the Panel finds that Complainant has not succeeded in proving the first element of the Policy.

Complainant’s lack of success in this proceeding in proving its rights in the name “David Pecker” does not necessarily mean that Complainant has no remedy. “He may have claims under the Anticybersquatting Consumer Protection Act (‘ACPA’), which expressly provides for protection of personal names, or perhaps his actions lie in tort. Complainant is free to pursue his claims in U.S. courts.” The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184.

B. Rights or Legitimate Interests

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.

C. Registered and Used in Bad Faith

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Douglas M. Isenberg
Sole Panelist

Dated: January 15, 2007