Thomas Pritzker fails to obtain transfer of 'tpritzker.com'

International
In Pritzker v Brown (Case D2009-0911, October 12 2009), a case decided under the Uniform Domain Name Dispute Resolution Policy (UDRP), a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of the domain name 'tpritzker.com' to the complainant, Thomas Pritzker.   
 
The complainant is a prominent businessman and the chief executive officer of the Pritzker Organization LLC (also a party to the complaint). The Pritzker family owns the Hyatt chain of hotels, but is also known for its philanthropic activities. The complainant became the chief business manager of the family interests after his father's death in 1999.
 
The domain name 'tpritzker.com' was registered in 2006 and offered for sale on an auction website. It was pointing to a website on which a few lines of text made reference to the complainant and the Pritzker family. The complainant sent two cease and desist letters without receiving any reply from the registrant. As a result, the complainant filed a complaint under the UDRP, but the registrant did not respond.
 
To obtain a transfer of a domain name under the UDRP, a complainant needs to prove all of the three following circumstances:
  • the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • the respondent has no rights or legitimate interests in respect of the domain name; and
  • the domain name has been registered and is being used in bad faith.
The main issue in this case (and in many cases relating to personal names) related to the first limb of the UDRP. The complainant asserted that he had common law trademark rights in the names Pritzker and Thomas Pritzker, and contended that the domain name 'tpritzker.com' was identical or confusingly similar to that common law trademark. The panel underlined that the fundamental question raised by this case was whether and how personal names should be protected under the UDRP. The panel agreed that the Pritzker family had acquired renown and respect for its business and philanthropic activities, but had to decide whether that was sufficient to grant protection under the UDRP. In order to do so, the panel undertook a detailed examination of various previous UDRP decisions on the issue.
 
The panel underlined that the report published as a result of the Second WIPO Domain Name Process indicated that a personal name could be protected only if it could be demonstrated that the name served as a trademark or service mark (thus satisfying the first limb of the UDRP). This could be achieved either by registration or by the acquisition of so-called common law rights, which occur when a name is used in trade or commerce and has acquired a secondary meaning. The report noted that "using a personal name in association with certain goods or services can create distinctiveness and a secondary meaning in the name". In the report, WIPO recommended that the UDRP process should be limited to personal names that acted as trademarks or service marks, and commented as follows:
 
"It is clear that many sensitivities are offended by the unauthorized registration of personal names as domain names. It is clear also that UDRP does not provide solace for all those offended sensitivities, nor was it intended to do so, as originally designed. The result is that there are some perceived injustices. Persons 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."
 
The panel further underlined that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, drafted in 2005, also supported this view. However, the panel noted that in more recent cases, notably Chung Mong Koo v Individual (Case D2005-1068), panels had taken a different approach when considering the protection of personal names under the UDRP and had applied a slightly different test to decide whether a personal name should be protected, even though the name was not necessarily used in trade or in commerce as a trademark or service mark. The panel pointed out that these decisions used a "nexus analysis" between the personal name and its use and association in commerce, for example considering factors such as:
  • the extent to which the commercial community identified the individual with the company;
  • the extent to which the individual concerned was seen as the driving force behind the company; and
  • the extent of personal ownership of the company by the individual. 
Furthermore, this analysis often included the state of mind and/or conduct of the respondent. However, the panel criticized this approach and pointed out that the state of mind or conduct of the respondent should not be considered under the first limb of the UDRP. The panel stated that such issues were more relevant when considering the two other limbs of the UDRP, and had no place in the determination of whether a common law trademark right existed.
 
In addition, to support this view, the panel pointed out that the first limb of the UDRP made no reference to any of the factors taken into account by panels in the Chung Mong Koo line of cases. As a result, the panel considered that such cases created a special exception for prominent businessmen which was inconsistent with the view of WIPO, the majority of panels and Paragraph 4(a)(i) of the UDRP, which explicitly required the existence of a trademark (whether registered or common law).
 
The panel went on to give examples of cases where complainants had failed because, even though they were famous, they had been unable to demonstrate that they had developed common law trademarks in their personal names. The panel was of the opinion that this was the correct analysis and decided to follow this view. As a result, the panel found that the complainant had failed to establish common law trademark rights in the names T. Pritzker or Thomas Pritzker and denied the transfer of the domain name. It was thus unnecessary to consider the other two limbs of the UDRP.
 
This decision demonstrates that it is not always possible to predict the outcome of cases involving certain issues under the UDRP, personal names being one such key issue. Certain panels seem prepared to expand the scope of the UDRP and provide protection to prominent people based on the so-called "nexus analysis", while others consider that such an analysis runs contrary to the exact wording of the UDRP and its explicit reference to trademarks. In the case at hand, the outcome may well have been different for the complainant had another panel been appointed that was prepared to take a more liberal interpretation of the UDRP.
 
David Taylor, Jane Seager and Elsa Dobler, Lovells LLP, Paris

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