Vince Andrich v. AnonymousSpeech AnonymousSpeech
Claim Number: FA1109001406333
Complainant is Vince Andrich (“Complainant”), represented by Bennet G. Kelley of Internet Law Center, California, USA. Respondent is AnonymousSpeech AnonymousSpeech (“Respondent”), represented by Steven L. Krongold, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vinceandrich.net>, registered with eNom, Inc.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2011; the National Arbitration Forum received payment on September 8, 2011.
On September 07, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <vinceandrich.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@vinceandrich.net. Also on September 13, 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 October 3, 2011.
An additional submission was filed by the Claimant and received on October, 12, 2011. This submission was received after the deadline for submissions under Supplemental Rule 7. Accordingly, the Tribunal will not consider the additional submission.
On October 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Vince Andrich is the common law mark of Claimant. Since winning the Mr. Nevada contest in 1988, Mr Andrich has become widely known in the fields of body building, nutrition, and supplements by reason of his work as a national level body builder; as a senior executive with several prominent sports fitness firms including the Andrich Group; and as an author.
In each of these contexts, the mark is prominently used. All of this demonstrates the extent to which, by virtue of his long-standing use of his mark, he has gained prominence in the fields of nutrition and fitness and his mark has gained distinctiveness.
B. Respondent
Respondent states that personal names that have been registered as trademarks are generally protected under the UDRP. Complainant here does not have a registration on his name. Complainant has shown insufficient evidence of extensive use of his personal name in trade or commerce.
Respondent is making a legitimate noncommercial use of the domain name.
Respondent has a constitutional right of free speech and a statutory right of fair use. Consequently, Respondent’s use of the domain name cannot constitute bad-faith.
C. Additional Submissions
Claimant filed an additional submission beyond the deadline for submissions in violation of Supplemental Rule 7. The Panel has decided not to accept the submission.
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.
In order to establish rights in a trademark, registration of the trademark with a federal trademark authority is unnecessary. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. 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). The Panel finds that Complainant has sufficiently established common law rights in the mark and accordingly finds that Complainant has rights in its VINCE ANDRICH mark pursuant to Policy ¶ 4(a)(i).
In order to acquire common law rights, the evidence must sufficiently show continuous use and the acquisition of secondary meaning in the respective mark.
Complainant argues that it has common law rights in the VINCE ANDRICH mark. Complainant alleges that it has been using its mark since 1988 when Complainant won the Mr. Nevada contest. Since then, Complainant claims that it has continuously used its mark, which has become widely known in the fields of body building, nutrition, and supplements through Complainant’s work as a national level body builder. Complainant also asserts that he serves as a senior executive with several prominent sports fitness firms, including The Andrich Group. Lastly, Complainant contends he is the author of books, periodicals, and blogs in connection with his status in the fitness and nutrition industry.
The Panel has reviewed the evidence and finds that the Complainant’s use was continuous and ongoing and that secondary meaning was established. The Panel also finds that Complainant’s use has created public awareness in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001)("[S]etting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness.").
Complainant contends that Respondent’s <vinceandrich.net> domain name is identical to Complainant’s VINCE ANDRICH mark. Previous panels have found that the addition of the generic top-level domain (“gTLD”) is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark). Additionally, panels have previously held that the elimination of spaces in marks fails to distinguish the domain name from the mark incorporated within it. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
The Panel finds that Respondent’s <vinceandrich.net> domain name is composed of Complainant’s mark, without the space between words, combined with the gTLD “.net.” These changes do not distinguish the disputed domain name from Complainant’s VINCE ANDRICH mark. The Panel therefore finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The 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. Entm’t 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <vinceandrich.net> domain name. The WHOIS record for the <vinceandrich.net> domain name lists “AnonymousSpeech AnonymousSpeech” as the domain name registrant. Complainant argues that Respondent has not been licensed to use the VINCE ANDRICH mark. Panels have found in the past in such cases as Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), that the WHOIS record and the complainant’s claims are illustrative of whether a respondent is commonly known by a disputed domain name.
The Panel finds, based on the WHOIS record and Complainant’s claims, that Respondent is not commonly known by the <vinceandrich.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <vinceandrich.net> domain name to criticize Complainant by having Respondent’s agents make scandalous accusations against Complainant. While Respondent has the right to free speech founded in the First Amendment, the Panel finds after a full review of the context of the dispute, including the confusing similarity of the disputed domain name, that Respondent’s use of the said disputed domain name to post criticism of Complainant is unprotected and not a legitimate noncommercial use.
Accordingly, the Panel finds that Respondent has neither rights nor legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); 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).
Registration and Use in Bad Faith
Complainant alleges that Respondent has registered and used the disputed domain name in bad faith. Policy ¶ 4(b) provides a list of factors which may be considered for bad faith, but past panels have found this list not to be exhaustive. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). As such, this Panel will consider the totality of the circumstances when making a determination of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent has registered and is using the <vinceandrich.net> domain name in bad faith. Complainant alleges that Respondent’s registration and use of the disputed domain name is for the purpose of making scandalous accusations about Complainant. Past panels have found that the registration and use of a domain name to make statements which criticize Complainant demonstrates bad faith under 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 Policy ¶ 4(a)(iii).”); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
The Panel finds that Respondent registered and uses the domain name to maintain a complaint or criticism website about Complainant. The Panel finds that the disputed domain name is confusingly similar to Claimant’s mark. Respondent could have used other means to criticize, and/or publicize about, Complainant. The significance being that Claimant has a commercial operation which viability would be interrupted by the confusing similarity of the domain name. Respondent’s right to freedom of speech and the First Amendment protection would not allow this abuse. Respondent, at the minimum, should be required to use a less intrusive method to criticize the Claimant.
The Panel finds that Respondent’s activities demonstrate bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vinceandrich.net> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: October, 26, 2011
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