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CMG Worldwide, Inc. v. Pitanguy PlasticSurgical Clinic [2003] GENDND 563 (3 June 2003)

National Arbitration Forum


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”).


The domain name at issue is <>, 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 <> 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 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 <> domain name is identical to Complainant’s PITANGUY mark.

2. Respondent does not have any rights or legitimate interests in the <> domain name.

3. Respondent registered and used the <> 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 <> 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.

Identical and/or Confusingly Similar

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.

a.  Common Law Rights in 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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