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Generic Top Level Domain Name (gTLD) Decisions |
CMG Worldwide, Inc. v. Pitanguy Plastic
Surgical Clinic
Claim
Number: FA0304000155888
Complainant is
CMG Worldwide, Inc., Indianapolis, IN, USA (“Complainant”) represented
by Lawrence V. Molnar, of CMG Worldwide. Respondent is Pitanguy
Plastic Surgical Clinic, Seoul, KR (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <pitanguy.com>, registered with Network
Solutions, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 25, 2003; the
Forum received a hard copy of the
Complaint on April 28, 2003.
On
April 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <pitanguy.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. registration agreement and
has thereby
agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the
"Policy").
On
April 29, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
May 19, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via
e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts,
and to postmaster@pitanguy.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 29, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable
Charles K. McCotter,
Jr. (Ret.) 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."
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pitanguy.com>
domain name is identical to Complainant’s PITANGUY mark.
2. Respondent does not have any rights or
legitimate interests in the <pitanguy.com> domain name.
3. Respondent registered and used the <pitanguy.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, CMG
Worldwide, Inc., claims to represent Ivo Pitanguy, a surgeon and educator
domiciled in Brazil. Complainant contends
that it is charged with the
responsibility of enforcing any rights Mr. Pitanguy may have in his name, and
of protecting those rights
against unauthorized use.
Ivo Pitanguy
specializes in aesthetic and reconstructive surgeries and procedures, and is
renowned as a surgeon for the rich and famous.
He is the director of the Ivo Pitanguy Clinic, a private institution
that has operated for over 30 years in Brazil.
He is also the Head Professor of the Master’s and Post-Graduate Courses
in Plastic Surgery of the Post-Graduate Medical School of
the Pontifical
Catholic University of Rio de Janeiro and the Carlos Chagas Institute of
Post-Graduate Medical Studies. Ivo Pitanguy
has authored over 800 publications,
including Brazilian and foreign journals.
Respondent,
Pitanguy Plastic Surgical Clinic, registered the <pitanguy.com>
domain name on March 24, 1998.
Respondent uses the disputed domain name to host an informational
website for the “Pitanguy Plastic Surgical Clinic.”
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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.
Although this is a default case, two issues are troublesome. The first issue is whether any enforceable
rights exist in the PITANGUY mark. Specifically, it is questionable whether
Complainant
has established common law rights in the surname “Pitanguy.” The
second issue is whether Complainant has standing to bring a claim
under the
UDRP based on the PITANGUY mark.
Policy ¶ 4(a)(i)
requires a Complainant to prove that it “has rights” in a mark that is
identical or confusingly similar to the disputed
domain name. That mark need
not be registered in order to be considered valid under the UDRP. As stated by J. Thomas McCarthy:
The
ICANN dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant
has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights
will suffice” to support a domain name
Complaint under the Policy. McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000).
See also
British Broadcasting Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and
service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service
marks”).
However, in lieu
of a trademark registration, Complainant must show that it has established
common law rights in a mark in order to
bring a dispute under the UDRP. When it
comes to surnames, which are not considered inherently distinctive, proof of
secondary meaning
is required in order to establish enforceable rights in a
mark. See McCarthy on Trademarks and Unfair Competition, § 13:1
“Personal Names as Mark Introduction” (4th ed. 2002) (stating that
the basic rules pertaining to the protection of personal names require actual
proof of secondary meaning
for protection). Secondary
meaning grows out of long association of the name with the business, and
thereby becomes the name of the business as such;
is acquired when the name and
the business become synonymous in the public mind; and submerges the primary
meaning of the name as
a word identifying a person, in favor of its meaning as
a word identifying that business. McCarthy, § 13:2. Furthermore, in respect to a famous or well
known name, likelihood of success in an action for passing off is sufficient to
show common
law rights. Julian Barnes v.
Old Barn Studios Limited, D2001‑0121 (WIPO March 26, 2001) (all that
is required for a famous or very well-known person to establish a common law
trademark
is likelihood of success in an action for passing off in the event of
use in trade without authority).
However, the
Panel need not determine whether Complainant has shown common law rights,
because Complainant has failed to show standing
to bring this proceeding.
b. Complainant’s Standing to Bring a Claim
Under the UDRP
In order to
affect a transfer of a domain name under the UDRP, Complainant must show that
it possesses rights in a mark that is identical
or confusingly similar to the
disputed domain name. Complainant alleges that it represents Ivo Pitanguy, and
asks that the disputed
domain name be transferred to it, not Mr. Pitanguy.
Complainant provides no evidence to the Panel that it has any arrangement to
represent Mr. Pitanguy, or that any rights in the PITANGUY mark have been
assigned or licensed to Complainant.
Absent any additional evidence, Complainant does not have standing to
bring this claim under the UDRP. See Backstreet Boys Prod., Inc. v. Zuccarini, D2000-1619 (WIPO Mar. 27, 2001) (dismissing the
Complaint because Complainant did not own the trademark); see also NBA Prop., Inc. v. Adirondack Software Corp.,
D2000-1211 (WIPO Dec. 8, 2000) (denying Complaint because Complainant was not
the owner of the trademarks). As the
present Complainant has not shown
“rights” in the PITANGUY mark for the purposes of the UDRP, the
Complaint should be dismissed without prejudice. See CMG Worldwide, Inc. v. Humphrey Bogart Club, FA 144631 (Nat. Arb. Forum May 27, 2003).
As Complainant has failed to show standing in
respect to a trademark or
service mark in which Complainant has rights, it is unnecessary for the Panel
to address the second and third elements
of legitimate interests and bad faith.
Complainant
having failed to show standing, the Panel concludes that relief shall be DENIED
without prejudice.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 3, 2003
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