The Complainant is Ramsey Mankarious of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs IP Limited, UK.
The Respondent is Stanley Pace of Flower Mound, Texas, United States of America ("US"), represented by Howard M. Neu, Esq., US.
The disputed domain name <mankarious.com> is registered with Wild West Domains, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2015. On June 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 July 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2015. The Response was filed with the Center July 20, 2015.
The Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraph 5(b)(iv) and (v), the Respondent requested a three-member Panel. In accordance with the Supplemental Rules, paragraph 8, the Center accordingly appointed Adam Taylor, Gabriela Kennedy and John Swinson as panelists in this matter on August 5, 2015. The Panel finds that it was properly constituted. Each member of 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.
For some twenty five years, the Complainant has worked as an executive in major hotel investment businesses. Currently, the Complainant is chief executive of Cedar Capital Partners ("CCP"), a London-based specialist hotel investment firm which he founded in 2004. CCP acquires and manages hotels on behalf of investors. CCP's portfolio incudes the Savoy Hotel in London, the Four Seasons in Geneva and the Mandarin Oriental in Prague.
The Complainant originally acquired the disputed domain name in February 2000 and used it for his business and personal email address until it lapsed in 2015 apparently due an error by the Complainant's technology provider.
The Respondent registered the disputed domain name on April 11, 2015.
On April 20, 2015, the Complainant's agent emailed the Respondent enquiring if the disputed domain name was for sale and, if so, at what price. The Respondent responded on May 1, 2015, asking simply: "What is your offer?" On May 5, 2015, the Complainant's agent replied saying that he would be prepared to offer "towards the lower end of the scale" and asking for "ball park figures". The agent sent a follow-up email on May 15, 2015.
As at the time of filing the Complaint, the disputed domain name resolved to a parking page with a link to a domain name marketplace, through which bids could be submitted to buy the disputed domain name.
The Complainant has established a global reputation as specialist in the luxury hotel investment industry, achieved through the Complainant's extensive activities whilst working within the hotel investment industry. As a result of his extensive and high-profile activities and positions, the Complainant has acquired a significant reputation in the name "Mankarious", which has become synonymous with his activities within the industry. He has become a renowned and very well-known personality.
The Complainant regularly presents at high-profile conferences worldwide relating to the hotel investment industry and he has held board and advisory positions in high profile and influential organisations within the hotel and hospitality industry. The Complainant has authored numerous articles in high profile publications relating to the hotel industry.
The Complainant's use of the disputed domain name for email communications with high profile contacts has significantly contributed to the Complainant's reputation in the name "Mankarious". When the disputed domain name lapsed, the Complainant had been in the process of designing a website to be hosted at the disputed domain name which he intended to use for further profile-raising.
The disputed domain name is identical to the name "Mankarious", in which the Complainant has acquired a significant business reputation over the past twenty five years. The Complainant has also acquired a significant reputation in the disputed domain name through his continuous and exclusive use of it over a fifteen year period.
Given the Complainant's significant reputation in the name "Mankarious", there is no believable or realistic reason for the Respondent's registration or use of the disputed domain name other than to take advantage of the Complainant's established reputation.
There is no evidence that the Respondent is preparing to use the disputed domain name in connection with any bona fide offering of goods or services or for any other purpose.
So far as the Complainant is aware, the Respondent has acquired no rights or legitimate interests in the mark MANKARIOUS.
The disputed domain name was registered or acquired by the Respondent primarily for the purpose of preventing the Complainant from continuing to use the disputed domain name in the way in which he had been using it for the previous fifteen years, and/or for the purpose of selling, renting or otherwise transferring the dispute domain name back to the Complainant for valuable consideration.
The Respondent has engaged in a pattern of conduct of registering domain names in bad faith.
A summary of the Respondent's contentions is as follows:
The Complainant fails to refer to any registered or unregistered trade mark for "Mankarious". The Complainant claims a "significant business reputation" but the Complainant has not demonstrated that the name has become famous or that it has taken on a secondary meaning.
The Respondent is in the business of registering and using surnames for email address and has accumulated over 10,000 such domain names.
Despite the correspondence between the parties regarding purchase of the disputed domain name, the Complainant suddenly filed the Complaint to obtain the disputed domain name at no cost.
The Respondent was not aware of any alleged common law trade mark rights when he registered the disputed domain name and the Complainant has not provided any evidence indicating otherwise. The Respondent is located in Texas, US, and could not have registered the disputed domain name in bad faith.
The Respondent has continuously parked the disputed domain name with a reputable aggregator and has used it to refer to only to websites that may be of interest for potential rentals, not to the Complainant's business. The Respondent did not register the disputed domain name to sell to the Complainant, disrupt its business, prevent it from registering its trade mark as a domain name or confuse customers.
The Respondent acquired the disputed domain name because it comprises a common word with a meaning appropriate for a site and projects that it is developing. The Respondent parked the disputed domain name with Sedo while it is in development.
The Complainant relies on a "significant business reputation" in his surname "Mankarious" arising from his high-profile position and activities in the hotel investment industry overs some twenty five years as well as from his use of the disputed domain name for an email address for fifteen years, before it accidentally expired and was registered by the Respondent in April 2015.
Paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states as follows:
"Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.
However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights."
The Complainant has supplied limited evidence in support of his claim to a "business reputation" but, even assuming for the moment that the Complainant's assertions are all true, there is still nothing to suggest that the Complainant's name has ever been used as a distinctive identifier of goods and services. On the contrary, the Complaint indicates that the Complainant has always provided his services in his capacity as an executive of various investment firms, none of which are named after him.
On the evidence before the Panel, the Complainant falls squarely into the category of a businessperson (potentially) having a famous name but who does not actually use his/her name as an identifier for the business engaged in, which, as noted in paragraph 1.6 of WIPO Overview 2.0, is insufficient to constitute unregistered trade mark rights.
The Panel therefore finds that the Complainant has failed to establish the first element of paragraph 4(a) of the Policy and considers it unnecessary to consider the other elements of paragraph 4(a).
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Presiding Panelist
Gabriela Kennedy
Panelist
John Swinson
Panelist
Date: August 11, 2015