ADMINISTRATIVE PANEL DECISION
Ramsey Mankarious v. Stanley Pace
Case No. D2015-1100
1. The Parties
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.
6. Discussion and Findings
A. Identical or Confusingly Similar
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.
Date: August 11, 2015
The Neu Facebook