national arbitration forum

 

DECISION

 

Mothers Against Drunk Driving v. Tom Alciere

Claim Number: FA1104001383107

 

PARTIES

Complainant is Mothers Against Drunk Driving (“Complainant”), represented by Justin S. Cohen of Thompson & Knight LLP, Texas, USA.  Respondent is Tom Alciere (“Respondent”), New Hampshire, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <maddca.org>, <maddfl.org>, <maddne.org>, <maddny.org>, and <maddpennsylvania.org>, registered with Misk.com, Inc.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2011; the National Arbitration Forum received payment on April 12, 2011.

 

On April 15, 2011, Misk.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <maddca.org>, <maddfl.org>, <maddne.org>, <maddny.org>, and <maddpennsylvania.org> domain names are registered with Misk.com, Inc. and that Respondent is the current registrant of the names.  Misk.com, Inc. has verified that Respondent is bound by the Misk.com, Inc. 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 April 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2011 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@maddca.org, postmaster@maddfl.org, postmaster@maddne.org, postmaster@maddny.org, and postmaster@maddpennsylvania.org.  Also on April 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 May 18, 2011.

 

On May 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

 

Mothers Against Drunk Driving or MADD, the Complainant in this matter, is a non-profit organization devoted to stopping drunk driving.  Founded in 1980, Complainant has over 600 chapters and two million members in the United States.  Complainant holds a registered trademark for its MADD mark with the United States Patent and Trademark Office which it registered in September 1983. 

 

Complainant states that the disputed domain names are confusingly similar to its MADD trademark because the domain names incorporate fully the mark, adding only geographic identifiers such as “CA,” “FL,” “NE,” “NY,” and the full name of a state, “Pennsylvania.”

 

Complainant states that Respondent does not have rights or legitimate interests in the domain names because the Respondent, Tom Alciere, is not commonly known by the domain names.  Furthermore, Complainant states that it has never given Respondent authority to use its mark.  Complainant also contends that the resolving websites which criticize Complainant and its activities are not legitimate noncommercial or fair uses of its mark.

 

Finally, Complainant contends that Respondent, by incorporating Complainant’s mark in the domain names in order to criticize and disrupt Complainant’s activities, is evidence of bad faith registration and use.

 

B.   Respondent

 

Respondent contends that his domain names “can easily be distinguished” from the Complainant’s mark.

 

Respondent states he did not register the domain names to disrupt Complainant’s activities nor is a competitor of Complainant.  Respondent argues that he is using the domain names “to publish information to other persons who desire to stop drunk driving” and to provide “consumers with accurate information about Complainant’s activities.”

 

Respondent contends that the Complainant “seeks to trick consumers with [its] deceptive moniker . . . when in truth the Complainant is not composed entirely of mothers, and Complainant is not against drunk driving.  The Complainant is devoted to promoting bigotry and unprovoked, state-sponsored violence against even the most responsible alcohol drinkers younger than 21.  Respondent, on the other hand, is a man against drunk driving . . . .”

 

FINDINGS

 

Complainant holds a registered trademark for the MADD mark which it registered in September 1983.  Respondent registered the domain names in dispute in June 2007 and December 2009.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant maintains it holds rights in the MADD mark.  It is well established that rights can be established through registration with a trademark authority.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  Complainant has shown that it holds numerous trademark registrations for its MADD mark (including other marks incorporating the MADD mark) with the USPTO (e.g., Reg. No. 1,250,706 issued Sept. 6, 1983).  Thus, Complainant has demonstrated its rights in the MADD mark through registration with a trademark authority pursuant to Policy ¶ 4(a)(i).

 

Complainant additionally maintains that Respondent’s disputed domain names are confusingly similar to its MADD mark.  Complainant argues that the disputed domain names all incorporate the MADD mark and only change it by adding the geographic abbreviations CA, FL, NE, NY, and the full state name, Pennsylvania, along with the generic top-level domain (“gTLD”) “.org.”  The addition of a geographic term does not adequately distinguish the disputed domain name from Complainant’s mark.  See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”)  Moreover, a gTLD is not a factor when determining confusing similarity.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). 

 

This case is different than the situation where the domain name itself incorporates language that demonstrates an unmistakable disagreement with the trademark owner such that there could be no confusing similarity between a registered mark and a domain name.  For example, in Twentieth Century Fox Film Corporation v. DISH Network LLC, FA 1350483 (Nat. Arb. Forum Nov. 22, 2010), a majority of the Panel found that domain names such as <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com> were not confusingly similar to the FOX mark.  The Panel reasoned as follows:

 

Of all of the ICANN elements, the issue of confusing similarity “implicates issues of trademark law to the greatest extent.”  Robert A. Badgley, Domain Names Disputes § 6.07 (2002).  Thus, the Panel begins by looking for guidance to court decisions under the Anticybersquatting Consumer Protection Act (the “ACPA”), 15 U.S.C. § 1125(d) which creates civil liability for a party who registers a domain name which, among other things, is confusing similar to a “famous mark.”  Under the ACPA, to determine whether there is a likelihood of confusion between a domain name and a trademark, courts compare the plaintiff’s mark with the name of the website.  Ringcentral, Inc. v. Quimby, 711 F.Supp.2d 1048, 1060 (N.D. Cal. 2010).  If the name of the website at issue “itself makes clear that it is not affiliated with the plaintiff’s mark, there can be no likelihood of confusion.”  Id. 

 

Thus, courts have held that the following domain names do not create a likelihood of confusion with the trademark owner’s rights: <taubmansucks.com>, Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003); <ballysucks.com>, Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D.Cal. 1998).

 

ICANN panels, albeit with some exceptions, e.g., Baylor Univ. v. Sysadmin Admin, FA 1153718 (Nat. Arb. Forum Apr. 11, 2008) (finding that the domain name <ihatebaylor> was confusingly similar to the BAYLOR mark), have applied these principles.  For example, in Citigroup, Inc. v. Allman, FA 1066738 (Nat. Arb. Forum Oct. 16, 2007), the Panel found that domain names incorporating the word “rip-off” with the complainant’s mark did not create a confusing similarity. The panel reasoned that under U.S. trademark law it is permissible to combine a mark with a critical terms to express criticism of the mark’s owner and “in particular because there is no likelihood of confusion.”  Id.  In Royal Bank of Scotland Group plc v. natwestfraud.com, D2001-0212 (WIPO June 18, 2001), the panel found that the domain name <natwestfraud.com> was not confusingly similar to the complainant’s NATWEST mark.

 

Applying the foregoing principles, a majority of the Panel concludes that the domain names in dispute are not confusingly similar to Complainant’s mark because a user of the Internet could not reasonably conclude that the domain names are affiliated with the Complainant.  A majority of the Panel finds that the use of the term FOX in the domain names is part of a phrase that does not emphasize the term FOX and demonstrably reflects some dispute with FOX.  This is not a case where FOX is the only distinctive element of the domain name and all the rest of the terms are merely descriptive or generic.

 

In contrast to the foregoing decision, here, Respondent’s domain names incorporate Complainant’s mark in the entirety, including only geographic designations, without any other words that would reflect criticism that would distinguish the domain names from Complainant’s mark.  Thus, Respondent’s disputed domain names are confusingly similar to Complainant’s MADD mark under Policy ¶ 4(a)(i).[1]

 

Rights or Legitimate Interests

 

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  The Panel finds that Complainant has made a prima facie case.

 

Complainant asserts that Respondent is not commonly known by the disputed domain names.  Complainant has shown that the WHOIS information identifies Respondent as “Tom Alciere,” which is not similar to the disputed domain names.  Complainant also asserts it has never granted Respondent permission to use its MADD mark within the disputed domain names and that Respondent is in no way affiliated with Complainant.[2] Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names, under Policy ¶ 4(c)(ii), as nothing in the record indicates otherwise.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

The central question presented in this dispute is whether Respondent’s use of domain names that are confusingly similar to Complainant’s MADD mark to redirect Internet users to websites that criticize and condemn Complainant’s cause against drunk driving is a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 

 

There are two views on this question.  Some UDRP decisions hold that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or which conveys an association with the mark.  The opposing view is that, regardless of whether the domain name as such conveys criticism, the Respondent has a legitimate interest in using the trademark as part of a domain name which resolves to a criticism site, if the use is fair and non-commercial.  See generally Overview of WIPO Panel Views on Selected UDRP Questions, § 2.4.

 

On the facts of this case, the Panel concludes that the former position is correct.  The disputed domain names, all containing Complainant’s mark, with only geographic identifiers, direct Interest users to Respondent’s sites which contain highly inflammatory statements and critical comments regarding Complainant.  For example Respondent’s sites contain statements such as the following:

 

·         No matter how intensely you MADD activists hold your opinions, that does not entitle you to resort to unprovoked violence to intimidate Mr. and Mrs. Twenty, who are not members of your cult, into living a healthy, alcohol-free lifestyle.

·         You despicable creeps [have] organized yourselves into a hate group under the misnomer, Mothers Against Drunk Driving . . . .

·         Ironically, the families of double victims often team up with MADD to promote more injustice against responsible people younger than 21.

·         Why do the MADD bigots hate everybody under 21?

 Although Respondent certainly has the First Amendment right to express his views (and nothing in this Decision interferes with that right), the Panel finds that he does not have the right to use the good will and name identification that Mothers Against Drunk Driving has established over the past 30 years to advance his criticism of Complainant.[3]  Although the Panel acknowledges there are contrary authorities, the Panel finds that the following decisions, not exclusive by any means, support the Panel’s interpretation of Policy ¶ 4(c)(iii):

 

The Panel finds Respondent’s use of Complainant’s mark in an identical disputed domain name in order to display opinion and satire regarding Complainant’s cases is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”). 

 

The Office of the Kings County District Attorney v. Dom Altam, FA1313554 (April 30, 2010) (emphasis added).

 

 

Respondent uses the <randallterry.org> domain name as a complaint site directed at Complainant.  While Respondent’s actual use may be protected by his First Amendment rights, previous panels have found that the use of a complainant’s protected mark is not authorized. The Panel determines that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). 

 

Randall Terry v. Jeff White, FA1361707 (Jan. 7, 2011) (emphasis added).

 

Accordingly, the Panel finds that Respondent has not established that the domain names satisfy the requirements of Policy ¶ 4(c)(iii). 

 

Registration and Use in Bad Faith

 

For similar reasons, the Panel concludes that Respondent’s registration of the domain names is evidence of bad faith under Policy ¶ 4(b)(iii).  The Panel agrees with the reasoning of the decision in Council for Refractive Surgery Quality Assurance a nonprofit California corporation (USAEyes) v. Brent Hanson, FA1237910 (Nat. Arb. Forum Jan. 19, 2009). 

 

The Panel also finds that Respondent’s use of the <usaeyes.us> domain name to display a website criticizing Complainant and its business activities indicates bad faith registration or use pursuant to Policy ¶ 4(a)(iii).  See Diners Club Int’l, Ltd.  v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to [UDRP] ¶ 4(a)(iii).”); see also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.”).

 

Respondent’s domain names were registered and are used in bad faith under Policy ¶ 4(b)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <maddca.org>, <maddfl.org>, <maddne.org>, <maddny.org>, and <maddpennsylvania.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  May 31, 2011