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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philip Berber v. Karl Flanagan and KP Enterprises
Case No. D2000 0661
1. The Parties
Complainant: Philip Berber of 115 Wild Basin Road, Suite 300, Austin Texas, 78746, USA represented by Jenkins & Gilchrist of 600 Congress Avenue, Suite 2200, Austin Texas 78701,USA.
Respondent: Karl Flanagan, KP Enterprises of Apartment 3, College Wood Manor, Clane Co, Kildare, Ireland.
2. The Domain Name(s) and Registrar(s)
Domain Name: philipberber.com
3. Procedural History
The Complaint was filed on June 22, 2000. WIPO verified that the Complaint
satisfies the Rules and the Supplemental Rules and that payment was properly
made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2 (a). However, a formal Response was not filed by the due date and so the Respondent is in default. A very brief e mail was sent by the Respondent to WIPO on June 28, 2000 denying the Complainant's assertions in the Complaint.
The administrative panel was properly constituted on August 3, 2000. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The date scheduled for the issuance of the Panel's decision is August 16, 2000.
4. Factual Background
The Complainant is a successful businessman originally born in Ireland and now resident in the US. His name is Philip Berber. He received worldwide publicity when the online trading brokerage firm that he founded was sold to Charles Schwab & Co. for $488 million.
The Respondent registered the Domain Name PHILIPBERBER.com on February 23, 2000. He attached a website to the Domain Name which contained a photograph of the Complainant and a press article about his success.
5. Parties' Contentions
The Complainant states that:
(i) He holds common law trade mark rights in his name, Philip Berber;
(ii) The Domain Name is identical and confusingly similar to his name and the common law trade mark which the Complainant asserts;
(iii) The Respondent has no relationship with or permission from the Complainant for use of his name or mark, is not using the name to offer goods and services, is not commonly known by the name PHILIP BERBER and therefore the Respondent has no rights or legitimate interest in the Domain Name;
(iv) The Respondent was on notice that the Complainant owned common law rights in his name. The content of the article posted made it clear he was aware of the Complainant and "moreover, raises the suspicion that Respondent was attempting to prey upon the recent success of Complainant by extorting a payment from him. Nevertheless, regardless of the Respondent's motive, Respondent acted irresponsibly and in bad faith";
(v) the only live link on the site at the time of the Complaint was to email@example.com <mailto:firstname.lastname@example.org> . A site selling web sites and this is further evidence of use and registration in bad faith;
(vi) The web site contains links to the other URLS www.patmcdonagh.com <http://www.patmcdonagh.com/> and www.samirnaji.com <http://www.samirnaji.com/> these links take the user to a site upon which the respondent has posted information relating to the wealthy individual whose name appears in the URL. These sites contained the statement "Anyone interested in obtaining this domain name, please send an e mail to the address below".
(vii) The Respondent's activities form a pattern in which Respondent is preventing wealthy individuals from using their own names in a corresponding domain name and is attempting to profit from the use of such names.
The Respondent has not filed a Response and is in default. He has however filed an e mail stating that:
(i) The site has been constructed in good faith, having been put up for information purposes only, with content that is already in the public domain;
(ii) That the site is one of a number of sites which come under the Irish IT self made Multi Millionaire umbrella portal page linked from the www.dublin <http://www.dublin/> office.com domain;
(iii) That the request to him from the Claimant was for removal of the content referring to Mr Berber and was not a request to cease and desist use of the domain name;
(iv) That he was not "on notice that the Complainant owned common law rights in his name";
(v) That "hopefully, like myself, the ICANN organization will have little time to cater for the Jenkins law firm's suspicions;"
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure
Policy, the Complainant must prove 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.
a) Complainant's Rights
The Complainant is a well known businessman. The press reports surrounding the success of his business show that he has a significant reputation in the field of electronic trading of stocks over the Internet. Were anyone to try to set up an electronic stock trading business or to offer software related to this field no doubt Mr Berber would have an arguable case in passing off.
To this extent he can be said to have common law rights in his name.
b) Identical or confusing similarity
It is prima facie obvious that the Domain Name is virtually identical to the Complainant's PHILIP BERBER mark and, therefore, that they are confusingly similar.
c) Rights or Legitimate Interest of the Respondent
The Respondent has not filed a formal Response. The Respondent could post information about Mr Berber on the Internet without using the PHILIPBERBER.COM domain name and does not appear to have any rights or legitimate interest in the Domain Name.
d) Bad Faith
Paragraph 4 (b) of the Rules sets out non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
- the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; and
- the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. The Complainant points out that in the past the Respondent's sites had only a live link to a site selling web sites and contained language suggesting that the domain names in his possession were obtainable by interested parties. This would suggest that the Respondent was in the business of domain name dealing. The Respondent does not deny this in his e mail communication to WIPO. Further he appears to have registered the names of two other well known wealthy Irish businessmen. Accordingly, the Respondent appears to have registered and used the domain name in bad faith in accordance with paragraphs 4 (b) (i) and (ii) of the rules.
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainant's trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.
Accordingly, in light of the above, the panelist requires that the registration of the Domain Name PHILIPBERBER.COM BE TRANSFERRED to the Complainant.
Dated: August 8, 2000