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January 13, 2011 / Nate Harris

What’s In a Name? Not Trademark Rights, if You’re Bill Bronsky.

Summary of William J. Bronsky, Coraline Bronsky Panis, OBA v. Mr. Matthew Barsauckas and Mrs. Jane Anne Barsauckas aka McKernan, Click It Online Limited dba Clickituk.com, billbronsky, billbronsky-oba, coralinebronskypanis.com

(WIPO Case No. D2010-1835)

Filed: October 28, 2010; Decided: December 21, 2010 (Panelist: Staniforth Ricketson)

Disputed domain names: <billbronsky.com>, <billbronsky-oba.com>, <coralinebronskypanis.com>

The Parties

Complainant Bill Bronsky is the Managing Director of fellow Complainant The Office for Business Architecture (OBA). [To be honest, I have no idea who Coraline Bronsky Panis is, though I’m guessing it is Mr. Bronsky’s daughter? Or sister?]

The Respondents Matthew Barsauckus and Mrs. Jane Anne Barsauckus aka McKernan are “related by kin” to the Complainants, and have been involved in disputes regarding loans made between the parties. In fact, these disputes have led the parties into ongoing litigation in the the Scottish Court of Sessions.

Procedural Matters

The Panel is clearly frustrated that the parties have submitted, without leave of the Panel, several supplemental filings. The Panel reminds the parties that supplemental filings often have the effect of goading the other party into filing additional supplemental filings, which runs contrary to the Policy’s intent of offering a low-cost proceeding. “In the interests of fairness,” the Panel decides to accept each party’s first supplemental submission, but declines to consider the Complainants’ second submission, which was submitted (inopportunely) on the same day the Panel issued its ruling accepting the first supplemental submissions but warning that “no further documents of this kind will be received.”

The Panel notes that it has discretion under Paragraph 18(a) of the Policy to  consider whether, as the Respondents request, the proceeding should be suspended or terminated pending the Scottish court case. Decisions on this issue go both ways. However, Panels typically decline to suspend proceedings where the issues or remedies sought in the UDRP proceeding are different than those in the judicial setting. Here, however, the court case does not appear to deal with the central issue of the UDRP proceeding: whether the Respondents are entitled to register the disputed domains. Accordingly, “the Panel can identify no reason why it should suspend or terminate the present proceeding, and therefore exercises its discretion under paragraph 18(a) of the Rules to proceed to a decision.”

Identical or Confusingly Similar

The first prong requires that the disputed domain names must be “identical or confusingly similar to a trade or service mark in which the complainant has rights.” The burden is on the Complainants to “to point some evidence of a reputation or goodwill attaching to the use of the mark in relation to particular goods or services”; evidence that a person has  a well-known personal name that enjoys “general goodwill” is not sufficient. Sufficient evidence could include “the range of services or goods in relation to which the marks had been used, the duration and extent of that use, the volume of sales and transactions conducted under the marks, examples of advertisements and other material evidencing use of the marks, website usages, and the like.” Here, there is no such evidence; the Complainants have not demonstrated that their personal names have acquired trademark status.

Because the Complainants have not satisfied the first prong, the Panel declines to consider the second and third prongs.

Decision

The Complaint is denied.

Commentary

There’s a lot of procedural stuff going on here, and I think the Panel navigated it pretty well. However, I’m not sure why the Panel allowed the first supplemental submissions of the parties. That seems to set the (bad?) example that supplemental submissions are okay as long as both parties get to weight in.

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