The Barack Obama Foundation v. michael board
Claim Number: FA2107001955559
Complainant is The Barack Obama Foundation (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is michael board (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2021; the Forum received payment on July 16, 2021.
On July 19, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barackhobamapresidentialcenter.us, postmaster@barackobamapresidentialcenter.us, postmaster@obamapresidentialcenter.us. Also on July 20, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a non-profit organization that oversees the creation of the Barack Obama Presidential Center. Complainant has rights in the trademark OBAMA FOUNDATION through its use in commerce since 2014 and its registrations with the United States Patent and Trademark Office (“USPTO”), the earliest of which is dated January 10, 2017. Common law rights also exist in the BARACK OBAMA and OBAMA marks (“the OBAMA marks”) and President Obama has licensed these marks to Complainant. Respondent’s <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names, registered on May 14 and 15 of 2017, are identical or confusingly similar to Complainant’s OBAMA marks as they incorporate the marks in their entirety and add the letter “h”, and/or the words “presidential center” along with the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its OBAMA marks in these domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor does it make any legitimate noncommercial or fair use thereof. Instead, each of the domain names resolves to parked websites displaying pay-per-click links.
Respondent registered or uses the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names in bad faith. Respondent has also exhibited a pattern of bad faith registration and use of domain names that copy the OBAMA marks. Furthermore, Respondent disrupts Complainant’s business for commercial gain by hosting parked pay-per-click links on the disputed domain names’ resolving websites. Respondent also exhibits opportunistic registration in bad faith by registering the disputed domain names in anticipation of certain projects by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the disputed domain names; and
(3) each of the disputed domain names was registered or is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the OBAMA FOUNDATION mark through its registrations with the USPTO. Registration with the USPTO is typically sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant has submitted copies of two of its USPTO Trademark Registration Certificates for the mark OBAMA FOUNDATION. Based on this evidence the Panel finds that Complainant has rights in the OBAMA FOUNDATION mark under Policy ¶ 4(a)(i).
Complainant also claims, by license, common law rights in the trademarks BARACK OBAMA and OBAMA. Common law rights may suffice in lieu of a registered trademark in establishing rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Here, Complainant claims that “President Obama licensed the OBAMA Common Law Marks to the Obama Foundation”. However, there is no evidence submitted to support Complainant’s claim. The Panel notes that the USPTO file for the above-mentioned Trademark Registrations contains a signed statement by Barack Obama which states that “I, Barack Obama, consent to the registration by The Barack Obama Foundation of OBAMA FOUNDATION as a service mark with the United States Patent and Trademark Office.” As this is specifically limited to the stated mark, and as Complainant has not submitted evidence of its claimed license, the Panel is unable to find that Complainant has rights in the discrete trademarks BARACK OBAMA and OBAMA under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names are identical or confusingly similar to Complainant’s mark. Under Policy ¶ 4(a)(i), using the most prominent portion of an asserted mark and adding generic or specific words that relate to the complainant, along with the “.us” ccTLD, is generally insufficient to differentiate a disputed domain name from the mark it incorporates. See Charter Communications Holding Company, LLC v. Ammar Saleem, FA 1842970 (Forum June 6, 2019) (“The disputed domain name is confusingly similar to Complainant’s SPECTRUM TV mark because it incorporates the most prominent part of the mark, omits the ‘TV’ portion of the mark and adds the generic terms ‘cable’ and ‘offer,’ as well as the ‘.com’ gTLD.”); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). Each of the three disputed domain names incorporates the most distinctive element of Complainant’s OBAMA FOUNDATION mark and adds the words “presidential center” and the “.us” ccTLD. One domain name also adds the letter “h”. In light of the distinctiveness of Complainant’s mark and the close relationship between its activities and the additional words that appear in the disputed domain names, the Panel finds that each of Respondent’s domain names is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names, nor has Complainant authorized or licensed Respondent to use the OBAMA FOUNDATION mark in any way. Under Policy ¶ 4(c)(iii), relevant WHOIS data may inform consideration of how a respondent is commonly known. Further, a lack of evidence demonstrating otherwise may affirm a complainant’s assertion that it never authorized or licensed a respondent to use its mark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists ‘Mohamed elkassaby’ as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”) The WHOIS records for the disputed domain names identify Respondent as “Michael Board”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain names. Therefore, the Panel finds no evidence upon which to conclude that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(iii).
The Panel also finds nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name per Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent has not shown any rights or legitimate interests under Policy ¶ 4(c)(i).
Complainant next argues that Respondent does not use the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names for any bona fide offerings of goods or services, and that it does not make any legitimate noncommercial or fair use thereof. Under Policy ¶¶ 4(c)(ii) and (iv), using a disputed domain name to host a parked website displaying pay-per-click links is generally not considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the disputed domain names’ resolving websites which feature pay-per-click links leading to a variety of third-party commercial websites. Respondent has filed no Response nor has it made any other submission in these proceedings to refute Complainant’s prima facie case. Therefore, based on the available evidence, the Panel finds that Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor does it make any legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(ii) and (iv).
A foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its asserted mark at the time it registered the disputed domain names. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) Complainant submits that “[t]he famous nature and unique qualities of the OBAMA Marks, which were adopted many years prior to the registration of the Domain Names, renders it wholly implausible that Respondent created the Domain Names independently.” While there can be no dispute that the names Obama and Barack Obama are famous around the world, the question here is whether Respondent had prior knowledge of Complainant’s asserted OBAMA FOUNDATION mark. Complainant has submitted a screenshot of a Wikipedia entry titled “Obama Foundation” in which it is noted that this organization “oversees the creation of the Barack Obama Presidential Center…” From the use of the words “presidential center” in each of the disputed domain names, the Panel finds it to be a near certainty that Respondent was aware of Complainant and its activities at the time that it registered the disputed domain names and that this forms a solid foundation upon which to base a claim of bad faith registration under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered or uses the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host a parked website displaying pay-per-click links is generally considered evidence of bad faith disruption and attraction for commercial gain. See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). The Panel notes that Complainant has submitted screenshots of the disputed domain names’ resolving websites which feature a variety of pay-per-click links to third-party commercial websites. This appears to disrupt Complainant’s business by diverting users who are seeking the official Obama Foundation. It further shows that Respondent is seeking commercial gain through confusion with Complainant’s trademark. Respondent has not participated in this case and so it offers no alternative explanation for its actions. Therefore, the Panel finds, by a preponderance of the available evidence, that Respondent registered or uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), registration of multiple disputed domain names in a single proceeding, as well as ownership of other domain names which appear to violate the Policy, may demonstrate a pattern of bad faith registration and use. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA 1558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding … was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)); Oracle International Corporation v. Dong Chen Payments L.D.C., FA 1827285 (Forum Mar. 11, 2019) (“Registration of multiple other domain names that obviously infringe on third-party trademarks may be evidence of bad faith under Policy ¶ 4(b)(ii)”). The Panel notes that there are multiple confusingly similar domain names at issue in this case and Complainant provides evidence that Respondent has registered seven other domain names incorporating a portion of its mark such as <obamapresidentialcenter.com>; <thebarackobamapresidentiallibrary.com>; <thebarackhobamapresidentialcenter.com> and others. From this evidence, the Panel agrees that Respondent has registered the disputed domain names in order to prevent Complainant from reflecting its mark in a corresponding domain name and that it has engaged in a pattern of such conduct under Policy ¶ 4(b)(ii).
With respect to two of Respondent’s seven other domain names mentioned above, Complainant notes that Respondent is offering to sell these for $50,000 each. It submits evidence of “for sale” advertisements listing these domain names at the stated price. While these two domain names are not at issue in the present case, and thus do not create the scenario envisioned by Policy ¶ 4(b)(i), the Panel notes that the factors listed in ¶ 4(b) are not exhaustive. Commonwealth Bank of Australia v. Howard Johns Consultancy P/L, DCO2014-0033 (WIPO Jan. 27, 2015) (“The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found…”) Therefore, the Panel considers Respondent’s actions in offering to sell other domain names that are similar to those presently at issue as supporting evidence of its intention and state of mind in the present dispute.
Finally, Complainant argues that Respondent registered the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names with opportunistic bad faith. Under Policy ¶ 4(a)(iii), registering a disputed domain name shortly after an event that creates value in that specific domain name and its associated trademark may demonstrate opportunistic bad faith. See Twitch Interactive, Inc. v. Jason Hardwick, FA 1601323 (Forum Feb. 25, 2015) (finding that the respondent had engaged in opportunistic bad faith pursuant to Policy ¶ 4(a)(iii), where the respondent registered the <twitchtv.net> domain name just two days after the complainant’s launch announcement for TwitchTV which received widespread news coverage). It is noted that Complainant is currently in the process of organizing a Presidential center to house the archives of former US President Barack Obama. Therefore, the Panel agrees that it is highly likely that Respondent registered the disputed domain names in anticipation of such project and with opportunistic bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barackhobamapresidentialcenter.us>, <barackobamapresidentialcenter.us>, and <obamapresidentialcenter.us> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 18, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page