Reneau Charlene Ufford Kennedy, Ed.D v. Vee Lee
Claim Number: FA2203001988968
Complainant is Reneau Charlene Ufford Kennedy, Ed.D (“Complainant”), represented by Michael L. Lam, Hawaii, USA. Respondent is Vee Lee (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <drreneaukennedy.com>, <portlockpredator.com>, and <reneaukennedy.com>, 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.
Gerald M. Levine as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2022; the Forum received payment on March 18, 2022.
On March 22, 2022; March 23, 2022, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <drreneaukennedy.com>, <portlockpredator.com>, and <reneaukennedy.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2022 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@drreneaukennedy.com, postmaster@portlockpredator.com, postmaster@reneaukennedy.com. Also on March 28, 2022, 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.
A timely Response was received and determined to be complete on April 18, 2022.
On April 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Gerald M. Levine, 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Respondent requests that Complainant’s requested remedies be denied.
The parties are currently engaged in litigation in the United States District Court for the District of Hawaii, Kennedy v. Lee, Civil No. 20-00563-DKW-KJM). The action was filed on December 21, 2020 (the “Federal Action”). Plaintiff complains of defendant’s history of cyberstalking, harassment and cyberbullying. The complaint includes counts for trademark infringement, cybersquatting, false light, and defamation. While cybersquatting is alleged, the substantive issues before the court concern defamatory statements conveyed through domain names and social media platforms.
The Panel raises sua sponte the issue as to whether it should defer to the US district court and terminate this proceeding or proceed to a determination. The Panel notes that it has broad discretion where there are parallel proceedings. Rules, paragraph 18(a) provides:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
UDRP proceedings are expeditious and limited in scope. Unless the issue presented is outside the Policy’s jurisdiction, or the facts dictate against it, the matter should proceed to a determination. The issue in this matter is straight-forward, namely whether Respondent registered the disputed domain names for lawful expressive purposes or for the unlawful purpose of targeting Complainant. In contrast, the Federal Action concerns far broader issues as to whether the publication of Respondent’s statements made in domain name websites and social media are actionable for trademark infringement, false light, and defamation.
In addressing the issue of suspension or termination the WIPO Overview 3.0, section 4.14.1 states that “Appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay.” Section 4.14.2 states “Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties.”
This Panel shares the view expressed in the WIPO Overview. Where the limited issue raised by the parties is properly before the Panel there is no reason that it should not proceed to a determination on the merits. As so limited, the determination in no way impinges upon or detracts from the court’s jurisdiction or its determination of the substantive issues before it.
A. Complainant
Complainant is a clinical and forensic neuropsychologist practicing in the field of psychology since 1994 and practicing in Honolulu, Hawaii where she has resided since 1997. Complainant was the former Forensic Chief of the Hawaii Department of Health’s Adult Mental Health Division, independent forensic evaluations, policies and procedures for Courts and Corrections and for all forensic mental health. From 2006-2008, Dr. Kennedy was the Mental Health Administrator for the State of Hawaii Department of Public Safety, where she oversaw all policies, procedures and mental health practices in the State of Hawaii correctional system. Complainant owns a private psychology practice and since 2006, has been an expert witness and independent court examiner for sanity panels and custody evaluations for courts in the State of Hawaii.
Complainant is the service mark owner of DR. RENEAU KENNEDY. She alleges that Respondent has no rights or legitimate interests in <drreneaukennedy.com> and <reneaukennedy.com> (hereinafter, the Disputed Domain Names) and that Respondent registered and is using them in bad faith to publish disparaging and untruthful statements about her. Complainant and Respondent crossed paths in a custody case before the Family Court of the First Circuit, State of Hawaii, Vee Lee vs. Scott Alan Jones, Case No. FC-D No. 19-1-0041. As custody evaluator, Complainant personally evaluated Respondent, her ex-husband, Scott Alan Jones, and their three children. Her role as custody evaluator required Complainant to write a custody report based on such evaluation, and to testify in court regarding the issue of temporary custody of the Children. On September 23, 2019, the Family Court issued an order awarding temporary sole legal and physical custody of the Children to the husband.
Therein, according to Complainant and not denied by Respondent lies the basis for the animus that motivates Respondent to use the disputed domain names as cyber armaments to discredit Complainant. After the one day trial, Complainant had no contact or communication with Respondent until October 26, 2020, when, according to Complainant, “Respondent began a deliberate, malicious and targeted campaign of online attacks against Complainant. These online attacks occurred on numerous [social media] platforms including, but not limited to, email, Instagram, facebook, google, WebMD, Vitals, YouTube and others through not just Respondent's personal accounts, but also through one or more of her aliases.”
The Panel notes that Complainant’s allegations (some of which relating to the Disputed Domain Names are misleading) essentially recycle the claims in federal court. The issue here, however, is narrower than the Federal Action. It is limited to whether Respondent has any right or legitimate interest in the Disputed Domain Names, and if not whether they were registered and are being used in bad faith.
B. Respondent
Respondent does not deny that she has expressed her contempt of Complainant on many social platforms but rests her defense on Constitutional and Policy grounds. She alleges that she is simply calling out Complainant as the cause for her losing custody of her children. Respondent “admits there are some truths of Complainant allegations . . . . Respondent also admits that the evidence submitted by Complainant shows that Respondent used the domain names to published (sic) pictures of Respondent, Respondent’s children, Respondent’s family, and not once did Respondent show even an image of Complainant on the domain names in question” (Respondent’s BOLD on “some”).
Respondent contends that “Complainant provides no evidence that these domain names would confuse any third party into believing that the domain names belonged to Complainant. But instead of someone who has a grievance about Complainant” (Respondent’s BOLD on “about”). She also alleges that “the evidence clearly shows what was published on the website linking to the domains was about Respondent’s personal and truthful experience that includes interactions with Complainant.”
Respondent argues that the content of the disputed domain names is such that “it would be allowed under the constitution for sure. Respondent is not trying to sell it to Complainant, or to anyone. Respondent was using it for the purpose of
sharing Respondent’s story.” Respondent analogizes her rights to fan sites. She believes that “fan sites are allowed because fans published (sic) favorable information about the topic, whether it is a fan site for Pepsi Cola or Pat Benetar.” She then asks the following pertinent question: “Are angry fans permitted to publish negative information about their lived and true experience with the product/actor/business?”
The answer to Respondent’s question is both “yes” and “no.” As further discussed below, the answer depends on the medium through which the “lived and true experience” is communicated.
1. Complainant has demonstrated that <drreneaukennedy.com> and <reneaukennedy.com> are either identical or confusingly similar to a mark in which she has a right. As Complainant has no trademark or service mark in “Portlock Predator” she has no standing to maintain a UDRP proceeding with respect to having <portlockpredator.com> transferred, and it is accordingly dismissed as to that domain name;
2. Respondent lacks rights or legitimate interests in <drreneaukennedy.com> and <reneaukennedy.com>; and
3. Respondent registered and is using <drreneaukennedy.com> and <reneaukennedy.com> 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 and is being used in bad faith.
Complainant includes in her submission a copy of a United States Patent Office Certificate for a service mark for DR. RENEAU KENNEDY, Reg. No. 6,601,368, Registered on December 28, 2021. The mark is registered on the Principal Register. There are three domain names in issue in the proceeding: <drreneaukennedy.com>, <reneaukennedy.com> and <portlockpredator.com>.
Paragraph 4(a)(i) of the Policy has two elements. For standing to maintain a UDRP proceeding Complainant must first establish that she has a trademark or a service mark, and second that the disputed domain names are either identical or confusing similar to that mark. Here, it can be seen that <drreneaukennedy.com> is identical to the registered mark and that <reneaukennedy.com> is confusingly similar to it. The dot com extensions are simply functional necessities that are ordinarily disregarded in comparing the second-level domain with the trademark. The Forward Association, Inc., v. Enterprises Unlimited, FA0008000095491 (Forum October 3, 2000) (“[Prefix www and gTLD suffix] are merely devices that every Internet site provider must use as part of its address.”).
Respondent contends that Complainant’s service mark postdated the registrations of the Disputed Domain Names. This would ordinarily be an issue for review and determination under Paragraph 4(a)(iii) of the Policy, but since Complainant has also demonstrated she has common law rights predating the registration of the Disputed Domain Names it is removed as an issue.
The <portlockpredator.com> domain name, however, is neither identical nor confusingly similar to Complainant’s service mark and for this reason it must be dismissed from the proceedings. In reaching this determination the Panel is drawing no conclusions as to whether the domain name and content published to social media platforms is actionable on the theories asserted in the federal action. That is for the Court to determine.
Accordingly, Complainant has satisfied Paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at Section 2.1. To satisfy its burden of proof under Paragraph 4(a)(ii) of the Policy, Complainant must demonstrate Respondent lacks rights or legitimate interests in the Disputed Domain Names. This burden can either be satisfied by complainant offering an unrebutted prima facie case or evidence conclusive that Respondent lacks rights or legitimate interests. Here, Complainant is aided in proof by Respondent’s admission that she registered the Disputed Domain Names for the specific purpose of telling her story, Complainant’s role in it, and expressing her contempt of Complainant’s professional judgment and its consequences.
In defense of this purpose, Respondent argues that her registrations of the Disputed Domain Names are protected under fair use principles set forth in Paragraph 4(c)(iii) of the Policy—“[Y]ou are making a legitimate noncommercial or fair use of the domain name, without intent . . . to tarnish the trademark or service mark at issue”—and the US Constitution. If Respondent’s defense is correct, she has established a legitimate interest in the Disputed Domain Name. See Scrum Alliance, LLC v. Contact Privacy Inc. Customer 1247644697 / Matthew Barcomb, D2021-2932 (WIPO October 25, 2021) (The Panel appreciates that the Complainant may not be amused by the Respondent’s website. It may even be the case that the Respondent’s criticisms are unfair. But, however offensive [it] . . . may be to the Complainant, the website and Disputed Domain Name (albeit to a much finer degree) cannot be seen as impersonating the Complainant on the facts of this case.”)
However, the facts here are not as they were in Scum Alliance as in this this matter there is an issue of impersonating Complainant by using domain names identical or virtually so to Complainant’s service mark. Respondent is of the opinion that regardless of the contents of the website to which the Disputed Domain Names could resolve if she elected to activate them she is protected from their forfeiture under the Policy and the First Amendment of the US Constitution.
There is no question that respondents in defense of cybersquatting claims have Policy and Constitutional rights to tell their stories, but the question in this proceeding is not as Respondent poses it but whether she can do so using as her vehicle domain names identical or virtually so to Complainant’s service mark?
Before answering this question, it is necessary to have a clear view of the facts. Complainant mischaracterizes the Disputed Domain Names. They are not active as she alleges. A review of their history on the Internet Archive’s Wayback Machine indicates that they never have resolved to active websites. While Respondent may have directed allegedly disparaging content via <portlockpredator.com> to the numerous social media platforms alleged it was not through the Disputed Domain Names.
While the Panel deplores these attempts to overhype the claim, the question remains whether Respondent has rebutted Complainant’s prima facie case. As a general proposition criticism and commentary of a complainant are protected speech, although not without limitation. In Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina, FA160200 1660728 (Forum March 22, 2016) the Panel held that "Freedom of speech must be balanced with some degree of control, manner and regulation to avoid the arising of abuses; limits must be set," citing The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, D2002-0823 (WIPO December 3, 2002).
As Respondent is in control of the Disputed Domain Names she has the power to activate them, and there being no injunction preventing her from doing so, publish the same content to the same social media platforms as she has done with <portlockpredator.com>. This conclusion logically follows since it is no more than Respondent has candidly threatened through the medium of impersonating Complainant.
WIPO Overview 3.0 Section 2.5.1 states that “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.” Also, “UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”
Here, the Disputed Domain Names are either identical or virtually so to Complainant’s service mark. There is no signal alerting Internet users to commentary or criticism of the Complainant. As Respondent has admitted, she registered the Disputed Domain Names to tell her story and by such means to publicize a negative verdict of Complainant’s alleged unethical conduct. While this clearly satisfied Respondent’s intention it is not a legitimate interest as that term is understood under UDRP law. The Panel in Jody Kriss, supra., continued: “It is true that gripe sites may give rise to a legitimate use and negate the notion of bad faith, but as has already been pointed out there must be doubt whether the sites in question in this case are gripe or criticism sites at all, as the content goes far beyond what is normally regarded as criticism and is more akin to abuse and with the obvious intention to damage Complainant’s business and trademarks.”
To the question Respondent poses as to whether “angry fans [are] permitted to publish negative information about their lived and true experience with the product/actor/ business?” the answer is Yes, but not through the medium of domain names identical or virtually so with Complainant’s trademark. WIPO Overview, 3.0 Section 2.5.1: “Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.” Section 2.6.2 states: “Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation.
For the reasons above stated, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names. Accordingly, Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
Complainant argues that Respondent registered and is using the Disputed Domain Names in bad faith. Respondent has not denied that she registered the Disputed Domain Names to target Complainant and by telling her story disparage Complainant’s professional judgment. It has already been determined that Respondent lacks rights or legitimate interests in the disputed domain names, but that alone is not sufficient to answer the Paragraph 4(a)(iii) question: Did Respondent in registering the Disputed Domain Names breach her representations that “(b) the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; [and] (c) you are not registering the domain name for an unlawful purpose”? UDRP Paragraph 2 concludes with the statement that “[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The UDRP sets forth four circumstances that support a finding of bad faith registration and use. Of the four circumstances, Paragraph 4(b)(iv) of the Policy is relevant to this discussion:
“[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Use of a domain name to confuse users as to the “source, sponsorship, affiliation, or endorsement” while displaying content critical to complainant’s services may be evidence of bad faith under Policy Paragraph 4(a)(iii) in that it creates “a likelihood of confusion” and by Respondent’s candor, deliberately so. Respondent’s registration and use (or potential use) of the Disputed Domain Names was intended to deceive Internet searchers seeking Complainant’s services by confronting them with her message as opposed to what they would have expected to find on the resolving website. See Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Forum August 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”).
The Panel in Council of American Survey Research Organizations [CASRO] v. The Consumer Information Organization, LLC, aka Pinelands Web Services., D2002-0377 (WIPO July 19, 2002) stated that in its view Respondent’s use of the trademark to “disparage that mark, the mark’s product, the mark owner, or his business practice” was unacceptable. The Panel held that not all so-called criticism is “legitimate” or “fair” within the terms of the Policy. While the “right to criticize is fully enjoyed when expressed on the author's own web site under a domain name unique to the author . . . the right to criticize does not carry with it the right to tarnish another's mark, as we find Respondent is here doing, by the use of that mark as the domain name for a web site to criticize and disparage the mark and its proprietor.”
Respondent admits she registered the Disputed Domain Names for purposeful use as vehicles to tell her story, thereby to deceive Internet users into believing they would be accessing Complainant’s website. This is ambush by impersonation. The fact that the disputed domain names are currently inactively held does not inhibit a finding of bad faith or abusive registration of the Disputed Domain Names. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel construed the term “use” to include inactive holding when it is “not possible to conceive of any plausible actual or contemplated active use of the domain name by respondent that would not be illegitimate.”
Here, Respondent is not deprived of any Constitutional or Policy right. She has told her story voluminously through <portlockpredator.com> which apparently resolves to the numerous social media platforms already mentioned. Whether the publication of her story and alleged disparagement of Complainant is actionable under the theories advanced in the Federal Action is not before this Panel, but the answer to the question that is before the Panel is clear, indeed foretold by Respondent’s admission of her purpose in registering the Disputed Domain Names.
For the above reasons, the Panel finds that Respondent registered and is using the disputed domain names in bad faith. Accordingly, Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to <drreneaukennedy.com> and <reneaukennedy.com>, and denied as to <portlockpredator.com>.
Accordingly, it is Ordered that the <drreneaukennedy.com> and <reneaukennedy.com> domain names be TRANSFERRED from Respondent to Complainant and that <portlockpredator.com> REMAIN WITH Respondent.
Gerald M. Levine, Panelist
Dated: May 9, 2022
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