Gloria Feldt; Planned Parenthood Federation of America, Inc v. Chris Hoffman

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris

Hoffman

Case No. D2002-1073

1. The Parties

The Complainants are Planned Parenthood Federation of America, Inc. and Gloria Feldt,

both giving an address at 810 Seventh Avenue, New York, NY 10019, United

States of America, represented by the law firm of Simpson Thacher & Bartlett

of New York, New York.

The Respondent is Chris Hoffman of Pacific Palisades, California, United States

of America.

2. The Domain Name and Registrar

The disputed domain name <gloriafeldt.com> is registered with Gandi SARL,

in Paris, France.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on November 23, 2002. On November 26, 2002, the Center transmitted

by email to Gandi SARL a request for registrar verification in connection with

the domain name at issue. On November 27, 2002, Gandi SARL transmitted

by email to the Center its verification response confirming that the Respondent

is listed as the registrant and providing the contact details for the administrative,

billing, and technical contact. 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").

On January 14, 2003, the Complainant submitted an Amended Complaint to the

Center (hereinafter the "Complaint").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2002.

In accordance with the Rules, paragraph 5(a), the due date for the Response

was December 22, 2002. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on December 23, 2002.

The Center appointed M. Scott Donahey, Frederick M. Abbott and D. Brian King

as Panelists in this matter on January 21, 2003. 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.

On February 4, 2003, the Panel issued Procedural Order No. 1, which reads as

follows:

Having reviewed the Complaint, the Administrative Panel notes that the Complainant

has not addressed the Report of the Second WIPO Internet Domain Name Process

(the "Second WIPO Report"), The Recognition of Rights and the Use

of names in the Internet Domain Name System (September 3, 2001/http://wipo2.wipo.int)

in either its Complaint or amended Complaint. As, according to the Administrative

Panel, this document appears relevant to the disposition of the case, it invites

the Complainant to file a short submission, not exceeding 10 pages, addressing

the question of the Complainant's entitlement to relief in light of the position

taken on the protection of personal names in the Second WIPO Report.

Absent exceptional circumstances, Complainant is required to send its reply

to this Procedural Order to the Center by February 12, 2003.

Any submission by the Complainant to the Center that is required as a result

of this Procedural Order, [sic] must be copied to the Respondent in accordance

with Paragraphs 2(b) and 2(h) of the Rules. Any such submission shall be made

to the Center in hard copy and (except to the extent not available for annexes)

in electronic form using the following e-mail address: domain.disputes@wipo.int.

On February 12, 2003, the Center received Complainants' Submission in Response

to Procedural Order No. 1.

4. Factual Background

Complainants

Complainant Gloria Feldt is the President of Complainant Planned Parenthood

Federation of America, Inc. ("Planned Parenthood"). Complainant Planned

Parenthood is a not-for-profit corporation organized and existing under the

laws of the State of New York.

For almost 30 years, Complainant Feldt has spoken publicly in support of women’s

reproductive rights. Complainant Feldt has established relationships and contacts

based on her personal reputation and credibility. Complainant Feldt has been

profiled in the press as a pioneer of the reproductive freedom movement and

is the author of many articles on the subject, as well as the author of a book

that was scheduled for publication in January 2003 on the subject of reproductive

freedom. She has given testimony before legislative and administrative agencies

on the subject. Complainant Feldt has given numerous public lectures and speeches

at colleges, universities, and other institutions and has appeared on many television

and radio news shows.

Complainant Planned Parenthood is a non-profit organization incorporated in

1922, dedicated to reproductive health care services and information for men

and women. It has more than 850 health care centers in 49 states and the District

of Columbia. It spends significant amounts in the promotion and advertising

of its service mark.

Respondent registered the domain name at issue on August 29, 2002.

Complaint, Annex A. Respondent is not affiliated with Complainants, nor did

he seek their permission to register the domain name at issue. Complaint, Annex

C. Respondent is using the domain name at issue to resolve to a web site that

contains statements critical of Complainant Planned Parenthood and a woman's

right to an abortion. The web site contains statements that Complainants regard

as "false and horrendously inflammatory" about Complainant Planned

Parenthood. The web site does not mention Complainant Feldt. Complaint, Annex

F.

Respondent has previously registered domain names the registration of which

was found to be in bad faith under the UDRP. See, e.g., America Online, Inc.

v. Chris Hoffman, WIPO Case No. D2001-1184;

Women on Waves Foundation v. Chris Hoffman, WIPO

Case No. D2000-1608. Respondent has reportedly engaged in the sale of domain

names, some of which were allegedly identical to trademarks.

On August 12, 2002, Complainants sent Respondent a cease and desist letter

to which Respondent failed to respond[1].

Respondent

As Respondent failed to submit a response, he provided no factual allegations.

5. Parties’ Contentions

A. Complainants

Complainants contend that the domain name at issue is identical to a service

mark in which Ms. Feldt has rights, that Respondent has no rights or legitimate

interests in respect of the domain name at issue, and that Respondent has registered

and is using the domain name at issue in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel

is to use in determining the dispute: "A Panel shall decide a complaint

on the basis of the statements and documents submitted and in accordance with

the Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both Complainants and Respondent are domiciled in the United States,

and since United States’ courts have recent experience with similar disputes,

to the extent that it would assist the Panel in determining whether Complainants

have met their burden as established by Paragraph 4(a) of the Policy, the Panel

shall look to rules and principles of law set out in decisions of the courts

of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

(1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

(2) that the Respondent has no rights or legitimate interests in respect of

the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

Uniform Rule 12 provides: "In addition to the complaint and the response,

the Panel may request, in its sole discretion, further statements or documents

from either of the Parties." Without seeking leave of the Panel, the Complainants

submitted an Amended Complaint. In the interests of fully considering Complainants’

arguments, the Panel exercised its discretion to accept and consider the Amended

Complaint. In addition, the Panel exercised its discretion under Uniform Rule

12 to invite Complainants to submit an additional document specifically addressing

Complainants’ entitlement to relief in light of the position taken on the protection

of personal names in the Second WIPO Report. The Panel has accepted and considered

that submission as well.

A. Identical or Confusingly Similar

Complainants nowhere allege that anyone other than Complainant Feldt has rights

in the alleged service mark GLORIA FELDT. See, Complaint, paragraphs

13, 14, 15, 19, 21, and 22. Accordingly, the claims of Complainant Planned Parenthood

must be dismissed.

Complainants do allege that Complainant Feldt has service mark rights in her

personal name. In making the allegation they cite Complainant Feldt’s notoriety,

her promotion of the right of a woman to choose regarding reproduction, the

recognition her views have been accorded in national media, and the many relationships

and contacts she has established on the basis of her personal reputation. The

question before the panel is whether Ms. Feldt’s activities give rise to a service

mark in light of the Second WIPO Report.

In seeking to determine whether the protection of personal names under the

UDRP should be expanded to include right of personality, WIPO examined the way

that personal names were treated in different legal systems around the world.

Second WIPO Report, ¶ 171. It found that the law rarely protects personal names

as such. Id., ¶ 172. The protection that did exist for personal names

varied widely from country to country. Id., ¶ 173.

The Second WIPO Report noted that Panel decisions had elected to protect personal

names in cases where the laws recognized the registration of personal names

as trademarks or service marks or where countries recognized the common law

acquisition of trademarks or service marks through use and the acquisition of

secondary meaning as the source of goods or services. Id., ¶¶ 181 – 184.

The Report noted that commentators were split as to whether the UDRP should

be broadened to protect non-commercial uses of personal names. Id., ¶¶

189 – 198. In light of this split of opinion, WIPO noted:

The most cogent of the arguments against modification of the UDRP is, we believe,

the lack of an international norm protecting personal names and the consequent

diversity of legal approaches deployed to protect personal names at the national

level. We consider that this diversity would place parties and Panelists in

an international procedure in an untenable position and would jeopardize the

credibility and efficiency of the UDRP.Id., ¶ 201.

In recommending against modification of the current treatment of personal names

under the UDRP, WIPO noted that "[p]ersons who have gained eminence and

respect, but who have not profited from their reputation in commerce, may not

avail themselves of the UDRP to protect their personal names against parasitic

registrations. The UDRP is thus perceived by some as implementing an excessively

materialistic conception of contribution to society." Id., ¶ 199.

In the Complaint, Complainants allege that "[b]ecause of the respect and

notoriety attached to her name, [Ms. Feldt] has acquired valuable service mark

rights in it," citing three United States Federal Courts of Appeals decisions.

Complaint, ¶ 14. However, none of the cited cases dealt with the claim of a

personal name as a service mark[2]. Accordingly,

they do not support the cited statement.

In reviewing the UDRP cases in light of the Second WIPO Report, perhaps no

matter has been so thorough and well-reasoned as the decision of the Panel in

Israel Harold Asper v. Communication X Inc., WIPO

Case No. D2001-0540 (decided June 11, 2001, analyzing cases existing

at that time in light of the Interim Second WIPO Report). The Panelist divided

the personal name cases into six categories. The category that includes the

most cases is that involving persons from the entertainment industry. The second

most numerous category was that of professional athletes. The four other categories,

with few cases in each (some overlapping) were authors, business people, royalty

and politicians[3]. The Panel found that

the cases effectively required that for a personal name to be eligible for trademark

or service mark status it needed to be used "for the purpose of merchandising

or other commercial promotion of goods or services." Id., ¶ 6.24.

Later cases have held that in order for a personal name to acquire trademark

or service mark status in a jurisdiction that recognizes common law marks, the

personal name must be used in connection with the commercial offering of goods

or services and must have acquired secondary meaning as the source of such goods

or services. Dr. Michael Crichton v. Alberta Hot Rods, WIPO

Case No. D2002-0872 at page 3 ("In light of the Second WIPO Domain

Name Process, it is clear that the Policy is not intended to apply to personal

names that have not been used commercially and acquired secondary meaning as

the source of goods and or services, i.e. Common law trademark rights.").

See, also, The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary

Cohn, Prolife.net, and God.info, WIPO Case No.

D2002-0184 (<jerryfalwell.com> and <jerryfallwell.com>), and

The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO

Case No. D2002-0616 (<alberteinstein.com>).

Complainants have failed to show that the personal name at issue, "Gloria

Feldt," has been used in connection with the commercial offering of goods

or services or that the personal name in question has acquired secondary meaning

as the source of such goods or services. It is certainly true that Ms. Feldt

has acquired a reputation as an articulate spokesperson for freedom of reproductive

choice. However admirable that might be, it is not enough to acquire a common

law trademark or service mark. Accordingly, the panel finds that Complainant

Feldt does not have rights in a trademark or service mark.

B. Rights or Legitimate Interests

Because the Panel has determined that Complainants have failed to meet their

burden of proof as to the first requirement, the Panel does not reach this issue.

C. Registered and Used in Bad Faith

See, supra.

The Panel is cognizant that the narrow scope of the Policy in relation to personal

names is frustrating to some. Fortunately, in the United States, frustrated

parties can seek relief under the Anticybersquatting Consumer Protection Act,

which provides expressly for protection of personal names. See, 15 U.S.C.

§ 1129.

Frederick Abbott, CONCURRING:

I write separately in this proceeding because, while I share the Panel majority’s

conclusion, I have come to that conclusion by a somewhat different line of reasoning.

In light of the importance of the subject matter of this case, I think it worthwhile

to record this difference.

First, my understanding of the discussion of personal names in the Report of

the Second WIPO Domain Name Process does not lead me to conclude that the WIPO

Secretariat (the International Bureau) recommended an approach different than

the one evolving under the UDRP: that is, the gradual accumulation of a body

of decisions that distinguish in particular circumstances whether a personal

name will be protected under the domain name system. The question that the Second

Report addressed was whether personal names "as such" should be accorded

additional protection. For reasons referred to by the Panel majority, the Second

Report concluded that recommending additional protection was not warranted.

Thus, just as country names are not protected "as such"[4],

that is, as identifiers of nation states, personal names are not protected "as

such" under the UDRP.

"Gloria Feldt" is not registered as a service mark in the United

States[5]. From the standpoint of countries

such as the United States that accord protection to "common law" marks,

a personal name may be protected under the UDRP if it has taken on the characteristics

of a trademark or service mark: that is, if it has become well known among the

relevant public (i.e., acquired sufficient secondary meaning) to distinguish

the goods or services of one enterprise from those of others[6].

Whether a personal name has acquired sufficient secondary meaning so as to take

on the legal characteristics of a trademark or service mark will depend on a

variety of factors, including the distinctiveness of the name, the extent of

its usage in connection with goods or services, and the degree to which the

name is recognized by the relevant public in connection with goods or services.

Because a personal name might be common among the general public, the burden

to demonstrate secondary meaning might be high in a particular case.

Complainant Gloria Feldt has in this proceeding established that she is a public

figure who is well known among those familiar with reproductive rights issues.

That, however, does not address the principal fact question before the Panel.

The question before the Panel for purposes of the UDRP is whether "Gloria

Feldt" has acquired secondary meaning as a service mark.

The Panel majority asks whether "Gloria Feldt" has been used "commercially"

in connection with a service. Because the organization with which Ms. Feldt

is associated is a non-profit provider of services, I would clarify that use

of the term "commercial" should not be understood to suggest that

only for-profit enterprises, or individuals, may acquire rights in common law

service marks[7]. To use a nation-state-neutral

point of reference, the definition of a trademark in the WTO TRIPS Agreement,

Article 15, does not place a condition of "commerciality" in the sense

of profit-seeking on prospective trademark holders[8].

If Ms. Feldt is providing reproductive rights "services", we should

not hold her to the requirement of doing so for a profit.

The burden on Ms. Feldt is to demonstrate that her name has acquired secondary

meaning in connection with providing a service. Planned Parenthood, the organization

for which she serves as president, is clearly providing a service and is the

holder of rights in a service mark (a fact that has been judicially acknowledged

in the United States). That does not, however, establish that the name

"Gloria Feldt" is sufficiently known among a relevant public in connection

with the provision of a service.

The evidence adduced by Ms. Feldt shows that she works tirelessly to promote

women’s reproductive rights, that she is often invited to speak on this subject

at major universities, that she has been portrayed in many news articles and

other media in her role as president of Planned Parenthood, and that she has

written a book (not yet published) concerning her work. All of this establishes

that Ms. Feldt is well known as the president of Planned Parenthood and as a

champion of women’s reproductive rights. That is not quite the same as being

sufficiently identified with the provision of a "service".

Is Gloria Feldt "personally", as distinct from Planned Parenthood,

known as a "service provider"? This is a difficult question. Ms. Feldt

is in part a service provider, and her name is used in connection with services.

She undoubtedly counsels individual women concerning their reproductive rights

and options, both as president of Planned Parenthood and in an individual capacity.

She also undoubtedly advises women that counseling and other services are available

through Planned Parenthood. This does not persuade me (or my fellow Panelists)

of a sufficient nexus between her name and the distinct provision of services

so as to establish common law rights in a mark. If the part of Ms. Feldt’s activities

relied on to establish service mark rights were sufficient, many or most presidents

of many or most business organizations would have rights in their personal names

as service marks because of their roles as officers of associated enterprises.

This does not appear to be a result consistent with the general objectives of

common law service mark protection, which is to identify the source of services

and perhaps also goodwill associated with the provider[9].

The Monty Roberts decision[10]

has been referred to by Complainant, as well as by the Second Report, and it

may be worthwhile to distinguish the circumstances of that case and this one.

The complainant in Monty Roberts established that his personal name was "famous"

in connection with the provision of horse training services. The individual

subject of the decision (i.e., Monty Roberts) directly provided horse

training services using a technique he had developed. His name was connected

with his training technique as much or more-so than the name he used to describe

it ("Join-Up"). By contrast, Complainant "Gloria Feldt"

is well known as a champion of women’s reproductive rights, but her name does

not appear to be known in connection with a service as such, but rather with

the right to partake of a service (that is, to exercise choice).

Complainants were invited by the Panel to address the Second Report and by

implication to strengthen the connection between Gloria Feldt and the provision

of services. Complainants’ counsel has advised us:

"Complainants have satisfied their burden in the Amended Complaint by

demonstrating the ‘distinctive character or notoriety’ of Ms. Feldt’s name by

national exposure and public awareness of her in association with her years

with Planned Parenthood and her widely known advocacy of women’s rights. … Ms.

Feldt’s name is intimately intertwined with the services offered by Planned

Parenthood. Her speeches and television appearances are promotions of Planned

Parenthood’s messages and services. Indeed, that is likely the reason Respondent

targeted her name."

Complainants’ own summary of their argument is not persuasive on the central

fact that they must establish. There is no question but that Planned Parenthood

provides a service for which it is well known. Gloria Feldt may be well known

in connection with Planned Parenthood. She does not appear to be well known

in her individual capacity because she provides a service. For that reason,

her name has not acquired common law service mark status. She is very well known

as an advocate of women’s reproductive rights.

Administrative Panelists under the UDRP are asked to decide questions under

a deliberately limited set of criteria. Our capacity to make the world a better

place is not so great as required here.

7. Decision

For all the foregoing reasons, the Complaint is denied.

M. Scott Donahey

Presiding Panelist

Frederick M. Abbott

Panelist

concurring with separate opinion

D. Brian King

Panelist

Dated: February 21, 2003

1. Complainants fail to explain how a cease

and desist letter was sent to Respondent more than two weeks before Respondent

registered the domain name at issue.

2. The first cited case, The Morningside

Group Ltd. v. Morningside Capital Group, LLC, 182 F. 3d 133, dealt with the

Hong Kong based Chan family's service mark MORNINGSIDE used in the name of various

family businesses. In the second case, Murphy v. Provident Mutual Life Insurance

Co., 923 F. 2d 923, the Court of Appeals upheld the dismissal of a claim by

a third party administrator who marketed to insurance companies using as a common

law trademark a bursting thermometer with the word "hot." The third case involved

the claim of an advertising company for the common law mark THE NOW GENERATION.

In re Advertising & Marketing Development Inc., 821 F. 2d 614.

3. Recent cases have included a religious

leader (The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn,

Prolife.net, and God.info, WIPO Case No. D2002-0184)

and an internationally acclaimed scientist (The Hebrew University of Jerusalem

v. Alberta Hot Rods, WIPO Case No. D2002-0616).

4. See Her Majesty the Queen, in right of

her Government in New Zealand v. iSMER, WIPO Case

No. DBIZ2002-00270, decided Oct. 2, 2002 (under the STOP Policy) and Her

Majesty the Queen, in right of her Government in New Zealand, as Trustee for

the Citizens, Organizations and State of New Zealand, acting by and through

the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade

v. Virtual Countries, Inc, Case No. D2002-0754,

decided Nov. 27, 2002.

5. A personal name may be registered on the

Principal Register of the U.S. Patent and Trademark Office so long as it meets

the criteria of serving as a trademark or service mark. Surnames generally are

not considered "inherently distinctive" and secondary meaning must be established.

See THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS, LAWDESK EDITION, § 13:28 (Version

2.7 December 2002).

6. See, id. at §§ 13:2-13:4.

7. Cf. McCarthy, id. at § 9:5.

8. Article 15.1 of the WTO Agreement on Trade-Related

Aspects of Intellectual Property Rights provides, inter alia, that: "Any sign,

or any combination of signs, capable of distinguishing the goods or services

of one undertaking from those of other undertakings, shall be capable of constituting

a trademark."

9. Some analogous issues were raised and

addressed, though only in a preliminary way, in NYSE v. DavidGahary, (SNDY 2000),

196 F. Supp. 2d 401 (considering whether the name of the chairman of the New

York Stock exchange was protectable as a service mark).

10. Monty and Pat Roberts, Inc. v. Bill

Keith, WIPO Case D2000-0299 (June 9, 2000)

and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO

Case D2000-0300 (June 13, 2000). This Panelist served as sole Panelist in

the Monty Roberts proceedings.