Soin International LLC v. Michael W. Solley; PrivateRegContact Admin/TECH

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Soin

International LLC v. Michael W. Solley, PrivateRegContact Admin/TECH

Case No. D2007-0094

1. The Parties

The Complainant is Soin International LLC, Rajesh K. Soin, of Dayton, Ohio, United States of America, represented by Thompson Hine LLP, United States of America.

The Respondent is Michael W. Solley of Emeryville, California United States of America

and Destin, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rajsoin.com> is registered with Melbourne IT

trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2007. On January 26, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On January 30, 2007, Melbourne IT trading as Internet Names Worldwide 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 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”).

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 January 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2007.

The Center appointed Jeffrey

M. Samuels as the sole panelist in this matter on February 26, 2007. The Panel

finds that it was properly constituted. 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.

4. Factual Background

Complainant Rajesh (Raj)

K. Soin is the chairman, president, and chief executive officer of Soin International,

L.L.C. The disputed domain name <rajsoin.com> was registered on April 9, 2005.

5. Parties’ Contentions

A. Complainant

Complainant urges that

the domain name in dispute is identical to a mark in which he has rights. While

acknowledging that the Policy does not specifically protect personal names,

Complainant contends that he may establish common law trademark rights in his

name if he uses the name in trade or commerce. Citing the panel’s decision

in Chung, Mong Koo and Hyundai Motor Co. v. Individual (hereinafter “Chung”),

WIPO Case No. D2005-1068, Complainant

indicates that the factors considered in determining the sufficiency of the

nexus between the name and the business include: (1) the extent to which the

commercial community identifies the individual with the company; (2) the extent

to which the individual is seen by relevant media and the public as the alter

ego and driving force behind the company; (3) the extent of the personal ownership

of the company by the individual, the degree of personal control that the individual

exercises over the enterprise; (4) the extent to which the individual is identified

with any major achievements of the enterprise and whether it can be said that

the individual and/or the company has a demonstrable interest in protecting

the individual’s name for commercial use.

All of these factors weigh in favor of protecting the name “Soin”, Complainant maintains. Complainant contends that he is a successful and high profile businessman and community leader known throughout the world for his business acumen and expertise in growth-oriented businesses covering multiple industries. He notes that he is the chairman, president, and chief executive officer of Soin International, L.L.C., a private multinational company headquartered in Dayton, Ohio. Soin International has many multimillion dollar, multinational subsidiaries and affiliates operating under its umbrella, including Soin Capital LLC and MTC Technologies, Inc. In 2000, the College of Business at Wright State University was named after Complainant.

According to the Complaint, Mr. Soin’s name has become very well known through its use in his high profile trade and commercial ventures, and has become inextricably linked to his enterprise. A “Google” search of “Raj Soin” returns approximately 96,000 results, many of which relate to Mr. Soin, the College of Business bearing his name and/or his businesses. See Complaint, Annex 11.

Complainant further asserts that “[t]here is no question that the domain name `www.rajsoin’ is identical to the name ‘Raj Soin’”.

Complainant argues that Respondent has no rights or legitimate interests in the domain name. Complainant points out that, as of January 18, 2007, the website at “www.rajsoin.com” is essentially blank, containing nothing but a graphic of a boat on the ocean and the words “Ho Ho Ho” displayed with the graphic. See Complaint, Annex 13. Complainant also indicates that he has never licensed his name to Respondent, that Respondent is not using the domain name in connection with a bona fide offering of goods or services, that Respondent is not commonly known by the domain name, and that there is no evidence that Respondent intends to make fair use of the domain name.

Complainant notes that Respondent served as the chief executive officer of MTC Technologies from May 2002 to October 2003, and worked with Mr. Soin.

With respect to the issue of “bad faith” registration and use, Complainant asserts that Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant for $500,000. In support of such assertion, Complainant notes that Respondent responded to a third-party email inquiry about purchasing the disputed domain name by stating that he is “holding it for another Raj Soin who agreed to pay me $500,000.00”. See Complaint, Annex 14. Respondent claimed that “the person in question owes me the money from a verbal contract he made that has not yet been fulfilled. I would only release the URL if the person in question keeps their word”.

B. Respondent

The Respondent did not

reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <rajsoin.com> is, for all intents and purposes, identical to Complainant’s name “Raj Soin”. However, this aspect of the Policy also requires evidence that the Complainant has trademark rights in the name.

As noted by the distinguished panelist in the Chung case relied upon by Complainant:

This question raises the contentious issue of whether a personal name that

has not been registered as a trademark can ever constitute a common law trademark.

The issue is contentious enough for it to be the subject of a series of UDRP

decisions and an issue discussed in the valuable WIPO

Overview of WIPO Panel Views on Selected UDRP Questions.1

The Overview summarises the current jurisprudence on this issue as follows:

“Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.

Relevant decisions:

- Julia Fiona Roberts v. Russell Boyd, WIPO

Case No. D2000-0210 <juliaroberts.com>, Transfer

- Jeanette Winterson v. Mark Hogarth, WIPO

Case No. D2000-0235 <jeanettewinterson.com> among others, Transfer

- Dr. Michael Crichton v. In Stealth Mode, WIPO

Case No. D2002-0874 <michael-crichton.com>, Transfer

“However: The name in question should be actually used in trade

or commerce to establish unregistered trademark rights. Merely having a famous

name (such as a businessman, or religious leader) is not necessarily sufficient

to show unregistered trademark rights.

Relevant decisions:

- Israel Harold Asper v. Communication X Inc., WIPO

Case No. D2001-0540 <izzyasper.com> among others, Denied

- Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO

Case No. D2003-0248 <gurusrichinmoy.com>, <aboutsrichinmoy.com>,

Transfer.”

From this summary it may be deduced that the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce. It will instantly be seen that this is a considerable hurdle to vault and that the reason why some cases have failed to establish trademark rights in a personal name is that the evidence has shown only that the name is famous and not that it has been used in trade or commerce.

A recent decision that illustrates this dichotomy is Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, File No. FA0502000414641, (NAF March 18, 2005), where it was held that Senator Clinton had common law trademark rights in her own name, not simply because she was famous, for that would not have got her over the hurdle, but because she was also, as the panelist said, “…a best-selling author (who) has written four novels including, It Takes a Village: and Other Lessons Children Teach Us, which was published in 1996 and has sold 622,000 copies, and “Living History”, which has sold 1.68 million hard copies and 525,000 paperbacks since its 2003 publication”. In other words, her name had been used to sell books written in her capacity as an author.

Likewise, in Nick Cannon v. Modern Limited - Cayman Web Development,

WIPO Case No. D2005-0757, it was

held that the complainant had trademark rights in his own name because he

could rely on “… his movie experience (six films, from 2002 to

2005) and his extensive career as an actor, writer, producer, and musical

composer and performer under his name since the 1980s… The Panel verified

the number of appearances of the Complainant’s name “Nick Cannon”

on <google.com> on August 21, 2005, and at least one hundred thousand

appearances of the Complainant’s name were observed. The Panel finds

that the Complainant has demonstrated substantial use of the name ‘Nick

Cannon’ in association with his professional career and consequently

enjoys common law trademark rights in ‘Nick Cannon’. The evidence,

as well as the representations of the Complainants, are consistent with UDRP

decisions cited by the Complainants; see Julia Fiona Roberts v. Russell

Boyd, WIPO Case No. D2000-0210;

Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO

Case No. D2000-1415.”

The Complainants also rely on Philip Berber v. Karl Flanagan and KP Enterprises,

WIPO Case No. D2000-0661, and Steven

Rattner v. BuyThisDomainName (John Pepin), WIPO

Case No. D2000-0402, which are to the same effect.

On the other hand, cases involving business people who are the leaders of companies

that do not carry their own names are much more difficult for complainants

to prove. Thus, in the leading case cited in the Overview, Israel Harold

Asper v. Communication X Inc., WIPO

Case No. D2001-0540, the prominent Canadian business person and

philanthropist Mr. Israel Asper was held not to have acquired trademark rights

in his name because “… (he had) not shown on a preponderance of

the evidence that he uses his personal name for the purpose of the merchandising

or other commercial promotion of goods or services, or that he intended to

do so”.

However, as the panelist in the Asper Case observed, “The cases

involving claims by or on behalf of business people do not demonstrate a pattern.”

Thus, although the complainant in Asper failed, the complainant in

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

Case No. D2000-0300, succeeded, for it, the Complainant company, was able

to show a clear commercial attachment to the use of the name of its founder

and, in the case of Steven Rattner, the complainant showed that he

provided investment banking and corporate advisory services under his own

name and that he would therefore have an obvious interest in protecting his

name for commercial use.

Eventually, such cases come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce. In undertaking that exercise, it is useful to consider a number of guides, for they can be no more than that, that will tend to suggest one way or the other, whether such a nexus has been established and might over time help to establish the “pattern” of consistent authority that the panelist in the Asper Case lamented is presently absent. Those factors would include the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

Applying the factors articulated in Chung, the Panel concludes that the evidence supports a determination that Complainant has trademark rights in the name “Raj Soin”. The evidence, including the Declaration of Rajesh K. Soin, indicates, for example, that Raj Soin is the founder, chairman, and chief executive officer of Soin International, that his name has become known through its use in high profile trade and commercial ventures and has become inextricably linked to his enterprises, and that a Google® search of “Raj Soin” includes over 10,000 “hits” that relate to him, the College of Business that bears his name and/or his business. Thus, the evidence establishes a sufficient nexus between the name itself and its use and association in trade and commerce.

B. Rights or Legitimate Interests

The Panel concludes that Complainant has established that Respondent has no rights or legitimate interests in the domain name. There is no evidence that Respondent is using the domain name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the domain name, or that Respondent intends to make fair use of the domain name.

C. Registered and Used in Bad Faith

The Panel further determines that Respondent registered and is using the domain name in bad faith. The evidence indicates that Respondent, in response to an email inquiry to purchase the disputed domain name by a third party also named Raj Soin, replied as follows: “I appreciate the interest. However, I am holding for another Raj Soin who agreed to pay me $500K.” Apparently, Respondent believes that Complainant owes him such sum and asserted that he would only release the URL if Complainant keeps his word.

Based on such facts, the Panel finds that Respondent registered the disputed

domain name primarily for the purpose of selling the domain name registration

to the Complainant for $500,000 and that such action falls within paragraph 4(b)(i)

of the Policy. As noted by Complainant, “Respondent is essentially holding

this domain name hostage for half a million dollars”.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <rajsoin.com> be transferred to the Complainant.

Jeffrey M. Samuels

Sole Panelist

Dated: March 7, 2007

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