Spokane Civic Theatre v. James Ryan
Claim Number: FA1109001409107
Complainant is Spokane Civic Theatre (“Complainant”), represented by Michael P. Matesky of Christensen O'Connor Johnson Kindness PLLC, Washington, USA. Respondent is James Ryan (“Respondent”), Washington, USA, self-represented.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <spokanecivictheatre.org> and <spokanecivictheater.org>, registered with 1 & 1 Internet AG.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Honorable Richard DiSalle (Ret.) and Richard W. Hill as Panelists; Debrett Gordon Lyons as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2011; the National Arbitration Forum received payment on September 26, 2011.
On September 28, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <spokanecivictheatre.org> and <spokanecivictheater.org> domain names are registered with 1 & 1 Internet AG and that Respondent is the current registrant of the names. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@spokanecivictheatre.org, postmaster@spokanecivictheater.org. Also on September 29, 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 10, 2011.
Complainant submitted an Additional Submission which was received by the Forum on October 12, 2011. Respondent also submitted an Additional Submission which was received by the Forum on October 13, 2011.
On October 19, 2011 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Richard DiSalle (Ret.) and Richard W. Hill as Panelists and Debrett Gordon Lyons as Presiding Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
According to Complainant, this is a dispute in which a former employee of a non-profit community theatre company was terminated after 8 weeks on the job, and then sought revenge and bargaining leverage by registering his former employer's trademark as domain names, so that he could misdirect Internet users to his defamatory website lashing out at his former employer.
Complainant alleges that Respondent acknowledges that he is "using the Internet as a weapon," intentionally diverting people who seek out Complainant's site, and even accepts that his actions may be seen as "a nasty little maneuver." He also acknowledges that he is using the disputed domain names to "keep the pressure on" Complainant regarding his demands related to his employment termination, and that if he gets the concessions he has demanded he will stop using the disputed domain names for his defamatory website.
Complainant asserts trademark rights in the term SPOKANE CIVIC THEATRE which has been used since 1947. Since at least 1998, Complainant has promoted its entertainment services and the SPOKANE CIVIC THEATRE mark via a website available at the <spokanecivictheatre.com> domain name.
According to Complainant, the disputed domain names are identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. In particular, he was not associated with Complainant when he registered the disputed domain names and he is not known by those names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
In particular, Complainant asserts that Respondent’s short-term employment with Complainant was terminated in consequence of which Respondent first registered the disputed domain names and then used them to redirect internet users to another website, <civicdoody.com>, where Respondent makes false and defamatory criticisms of Complainant, its directors and employees. That website accuses Complainant's Director of being "narcissistic, dictatorial, and malevolent" and attacks members of Complainant's theatre community for "let[ting] the wrong people scratch, claw, and bite their way to the top simply because they're the only people who seem determined to get there."
Complainant cites UDRP cases to the effect that intentionally registering another's trademark as a domain name, without including any distinguishing term in the domain name, goes beyond any supposed free speech rights, does not constitute a "legitimate noncommercial or fair use" under Policy ¶ 4(c)(iii), and cannot establish a right or legitimate interest under Policy ¶ 4(a)(ii).
According to Complainant, the disputed domain names do not at all make clear their relation to a defamatory criticism site.
Further, says the Complainant, Respondent's use of the disputed domain names is not "fair" or "noncommercial" because he using the domain names as leverage to extract concessions from Complainant regarding his employment termination. Complainant cites UDRP precedents to support its position.
According to Complainant, its mark is being tarnished and its business is being disrupted, which constitutes bad faith use under the Policy. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent stated that he made an offer to surrender the disputed domain names in exchange for a release against Complainant’s claim of trademark infringement. Complainant refused the offer, choosing instead to expand its claims to include defamation, cyberstalking and cyberharassment. Respondent reiterated his offer, which was again refused.
Respondent broadly denies any claim of wrongdoing under the Policy and argues in particular that he has a free right of speech to criticize Complainant and is entitled to do so under what is essentially a descriptive and generic domain name. Further, he denies that his statements are defamatory.
Respondent points out that there is a well-known divergence of opinion regarding the permissibility of using domain names for the express purpose of criticizing the holder of a trademark similar to the domain name.
Respondent describes in some detail the circumstances relating to the termination of his employment. The Panel considers that those circumstances are not relevant for the present case, so it will not summarize them here.
According to Respondent, his criticism site contains a prominent disclaimer, namely:
[PLEASE NOTE: This is obviously NOT the official site of Spokane Civic Theatre. That can be found at www.spokanecivictheatre.com. This site is here for the purposes of commentary and criticism. There is nothing for sale on this site, nor is the site itself for sale. If you would like to purchase tickets for Footloose, Jane Eyre In Concert, Thoroughly Modern Millie, Turn of the Screw, A Christmas Carol, The Best Little Whorehouse in Texas, Catfish Moon, The Count of Monte Cristo, BINGO, Duck Hunter Shoots Angel, or Annie, please visit THIS LINK to Spokane Civic Theatre's ticketing page.]
C. Additional Submissions
In its Additional Submission, Complainant alleges that Respondent, in his Response, consented to transfer the disputed domain names. Consequently, the Panel should order the transfer without analyzing the three elements of the Policy.
In his Additional Submission, Respondent denies that he unconditionally agreed to transfer the disputed domain names.
Complainant owns common law trademarks in the term SPOKANE CIVIC THEATER.
Respondent worked for a short period for Complainant and was dismissed.
Respondent registered and is using the disputed domain names to criticize Complainant’s management and certain actions taken or not taken by Complainant.
The website at the disputed domain names contains a prominent disclaimer to indicate that it is not Complainant’s website.
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.
However, before dealing with these three elements, the Panel will first address a preliminary issue, namely whether Respondent has consented to transfer the disputed domain names.
Complainant alleges that Respondent has consented to transfer the disputed domain names. But the Response clearly states that Respondent is willing to transfer the disputed domain name only in exchange for certain actions or promises by Complainant. That is, Respondent’s offer is conditional. Since the Complainant has not stated that it accepts Respondent’s conditions, there is no agreement on the transfer and the Panel need not consider this point any further.
Complainant has presented evidence and arguments to indicate that it has been operating under the SPOKANE CIVIC THEATRE mark since it began operating in 1947 and that it has acquired common law trademark rights in that 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 Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
This is sufficient to establish that Complainant has rights in the mark for the purposes of the Policy. See 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); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The disputed domain names are obviously identical or confusingly similar to Complainant’s trademark once the gTLD, “.org” is subtracted. See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Respondent contends that the disputed domain names are comprised of common and generic terms and thus cannot be deemed identical and/or confusingly similar to Complainant’s mark. However, because this argument is not applicable under this element of the Policy, the argument will be considered under the other two elements of the Policy. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) examining respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii).
Accordingly, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
On the evidence before it, the Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Respondent argues that he has a legitimate right to use the domain name in question for a non-commercial or fair use to criticize Complainant’s business. Respondent argues that his purpose for using the domain name is criticism of the civic activity of the theater in the city of Spokane. Respondent laments that he was fired by the executive artistic director at the theater through the activities of a blackmailing e-mailer. Regardless, Respondent asserts that his speech is protected, and that he has a legitimate right to use the domain names in question to criticize Complainant and its business. Further, Respondent argues that he is not using the domain names to achieve a commercial gain, and that its use fits firmly under Policy ¶ 4(c)(iii).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), in cases involving only U.S. parties (as in the present case), panelists tend to agree that, irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial. See Wipo Overview, available at http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#24.
As the panel stated in Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000), there is "no reason to require domain name registrants to utilize circumlocutions like <trademarksucks.com> to designate a website for criticism or consumer commentary". Indeed, as the panel stated in Nat’l Alliance for the Mentally Ill Contra Costa v. Fouts, FA 204074 (Nat. Arb. Forum Dec. 6 2003), referring to the legislative history of the Policy, the “goals of the Policy are limited. Domain name registrations are basically first-come-first-served, and the purpose of the Policy is limited to rectifying cases of obvious cyber-squatting”.
In particular, absent an intention to misleadingly divert consumers or tarnish the trademark, Respondent has the right under 4(c)(iii) of the Policy to create a website under the disputed domain names in order to criticize Complainant.
It is clear that there has not been any commercial gain or misleading diversion of consumers. For certain, Complainant does not like what Respondent has done. It may even have remedies outside the Policy, but these do not concern this Panel.
It is not disputed that Respondent is using his web site as a bargaining tool in order to attempt to obtain a settlement (not necessarily monetary) from Complainant. But the material provided by Complainant regarding the web site at the disputed domain names does not seem to go beyond protected free speech.
The sequence of events seems to be: (1) Respondent was fired; (2) Respondent created his web site; (3) Respondent received a cease-and-desist letter; (4) in response to that letter Respondent offered to transfer the domain names in exchange for certain actions.
Thus, the offer to transfer the disputed domain names would appear to be a bona fide offer to settle the case and not an instance of blackmail. In other words, since Respondent’s offer of a transfer under certain conditions was triggered by Complainant’s cease-and-desist letter, that offer cannot be held against Respondent.
Further, the majority of the Panel, considers that there is no tarnishment, in particular given the descriptive nature of the disputed domain names and the fact that Respondent clearly and prominently identifies his websites as being criticism sites.
Complainant cites numerous UDRP cases to support its position. For example, it cites FMR Corp v. Native Am. Warrior Soc’y, D2004-0978 (WIPO Jan. 20, 2005), and Asset Loan Co. Pty Ltd v. Rogers, D2006-0300 (WIPO May 2, 2006) (use of domain name as leverage to obtain personal benefit satisfies the bad-faith criterion set forth in Policy ¶ 4(b)(iv)). But that case must be distinguished from the present case, because in that case respondent was using the disputed domain names for commercial gain to make a profit. Neither of these elements is found in the present case. As the panel said in the KMR Corp. case:
Pure gripe sites will generally satisfy the conditions of paragraph 4(c)(iii) of the Policy, which provides that a registrant has a legitimate interest in respect of a domain name if he makes “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Though there is some grammatical ambiguity, the words “without intent for commercial gain” modify both “to misleadingly divert consumers” and “to tarnish the trademark or service mark at issue.” In other words, the intention to tarnish another person’s or entity’s mark deprives the registrant of protection under this provision only if it is done with intent for commercial gain.
And, regarding supposedly defamatory statements, the Panel in the KMR Corp case stated:
The Complainant mentions the Respondent’s allegedly false statements on his web site. These falsehoods are particularly objectionable, in the Complainant’s opinion, because they contradict the findings of the NASD panel after an evidentiary hearing at which the Respondent was represented by counsel. The Respondent replies that this proceeding is not the proper place to determine whether his claims are defamatory, a point that the Complainant commendably concedes. See Complaint at para. 25 n.1. Indeed, the Howard Jarvis proceeding [Howard Jarvis Taxpayers Assoc. v. McCauley, D2004-0014 (WIPO April 22, 2004)] involved a very similar claim that the respondent’s web site lied about the outcome of litigation between himself and the complainant, noted that “it may be true that Respondent’s statements are libelous under United States law,” but concluded: “The Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites.”
Some of the other cases cited by Complainant involve non-US parties. As noted above, the majority of the Panel chooses to follow the majority view regarding US-based parties.
The majority of the Panel therefore finds that Respondent has legitimate rights and interests in the disputed domain names under Policy ¶ 4(c)(iii). See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (“The Panel finds that the Respondent’s use of the Domain Name to designate a website for criticism and commentary about the Complainants constitutes legitimate noncommercial use and fair use within the meaning of the Policy.”); see also Shell Int’l Petroleum Co. Ltd. v. Donovan, D2005-0538 (WIPO Aug. 8, 2005) (“The use of a domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to use his free speech rights and express his opinion in this way, subject to other laws of course (copyright, libel, etc.).”).
Since the majority of the Panel has concluded that Respondent has legitimate interests in the disputed domain names, it also finds that Respondent did not register or use the disputed domain names bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name; see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The majority of the Panel finds that Complainant has failed to establish at least one of the elements required under the ICANN Policy and so concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <spokanecivictheatre.org> and <spokanecivictheater.org> domain names REMAIN WITH Respondent.
Richard W. Hill
Panelist
Debrett Gordon Lyons, Presiding Panelist
Dated: November 1, 2011
Honorable Richard DiSalle dissented from the majority at least on the point of rights or legitimate interests, being of the view that Respondent had showed none. In particular, he did not find that it was necessary for Respondent to use the domain names in order to express free speech. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005).
Honorable Richard DiSalle (ret.)
Panelist
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