The Jack Russell Terrier Club of America,
Inc. v. Liz McKinney c/o Falling Branch
Claim Number: FA0302000144591
PARTIES
Complainant
is The Jack Russell Terrier Club of
America, Inc., Lutherville, MD (“Complainant”) represented by Ilana Subar of Whiteford Taylor &
Preston LLP. Respondent is Elizabeth W. McKinney Falling Branch,
Floyd, VA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <jrtca.net>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and that
to the best of their knowledge they have no known conflict in serving as
Panelists in this proceeding. Panelists are Hon. Tyrus R. Atkinson, Jr. and
Hon. Louis E. Condon with Hon. Carolyn Marks Johnson writing for the Panel.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 3, 2003; the Forum received a hard copy of the
Complaint on February 6, 2003.
On
February 4, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <jrtca.net> is
registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the name. Go Daddy
Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
February 10, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 3, 2003, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@jrtca.net by e-mail.
A
timely Response was received and determined to be complete on February 24, 2003.
Complainant’s
additional submission was timely received on March 3, 2003. Respondent’s
additional submission was timely received on March 10, 2003.
On March 13, 2003, pursuant to the request to have the
dispute decided by a three-member
Panel, the Forum appointed Hon. Louis E.
Condon, Hon. Tyrus R. Atkinson, Jr. and Hon. Carolyn Marks Johnson as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
Complainant
urges that it has rights in the JRTCA mark and that Respondent does not.
Complainant
further asserts that Respondent registered a domain name, <jrtca.net>,
which incorporates Complainant’s mark in its entirety. Complainant urges that
Respondent registered and used the domain name in bad faith.
B. Respondent
Respondent
is Liz McKinney of Floyd, VA. She registered the <jrtca.net>
domain name on October 16, 2001, a full year before Complainant registered its
service mark on August 6, 2002, and eight months before the service mark was
published for opposition May 14, 2002.
Respondent concedes the identical nature of the domain name but urges
that her domain name existed prior to the date Complainant’s mark received
official protection. Respondent urges that her right to and interest in the
domain name is based on a one-year use of the site as a repository for
information about a case between a California Jack Russell Terrier Club and the
Jack Russell Terrier Club of America, Inc., and that the use was not objected
to until this filing. She urges that JRTCA is open to people seeking membership
and that affiliates may also belong to other groups. Respondent urges that she
did not act in bad faith because she did not register the domain name to sell
it or to prevent Complainant from utilizing its mark in a corresponding domain
name. She contends that she has not disrupted the Complainant’s business
because she makes no commercial use of the site and includes a disclaimer at the
site.
C. Complainant’s Additional Response
alleges:
In
Complainant’s Additional Response, which was timely filed and was considered by
the Panel, Complainant points out that Respondent concedes that the domain name
is identical to Complainant’s mark. Complainant contends that Respondent cannot
show a right or interest in the domain name bearing the JRTCA mark because
Complainant has given no affiliate any right to use the mark. Further,
Complainant urges that Respondent cannot suggest that she acted in good faith
because the domain names to which her site directs those who access the domain
name in issue post false and negative information about the Complainant.
D. Respondent’s Additional Response alleges:
In
Respondent’s Additional Response, which was timely received and considered by
the Panel, Respondent restates her argument that the cite is non-commercial
since it is a repository for information and not a negative site and further
urges that Complainant is bound by admissions Complainant made in a federal
case between it and the Jack Russell Terrier Northern California club.
Respondent restates her lack of bad faith.
FINDINGS
Complainant is
The Jack Russell Terrier Club of America, Inc., of Lutherville, MD.
Complainant is the exclusive owner of the JRTCA
mark, first used in commerce in 1980, more than twenty years before
Respondent’s domain name was filed. Complainant holds registered trademark
number 2,603,914 from the United States Patent and Trademark Office.
Complainant filed for the trademark December 1, 2000, and received the
registration August 6, 2002.
Complainant holds other trademarks related to Jack Russell
Terriers.
Complainant registered the <jrtca.com> domain name
but has not developed it and Complainant has a presence on the Internet as
<terrier.com>. Complainant has rights under the trademark to act to
prevent others from using its mark in commerce and Complainant sent Respondent
a cease and desist letter November 20, 2002, and again on December 17, 2002.
Both parties addressed the fact that Respondent is
using Complainant’s JRTCA mark as a repository for information about a lawsuit
in California between the Complainant and another Jack Russell Terrier
entity. That suit involved issues
unrelated to this domain name dispute. The judge in that suit ruled in
Complainant’s favor but the judgment has been appealed and the appeal is
pending. Respondent has not denied
Complainant’s contention that Ms. McKinney is a former member of JRTCA and that
her membership was terminated by JRTCA. Ms. McKinney testified in the
California lawsuit against JRTCA. That suit and the outcome in that suit are
not relevant to this domain name dispute for any reason other than to show that
Respondent had notice of Complainant’s rights to use the JRTCA mark and to show
that Respondent has an ax to grind with Complainant that prompted her to post
the papers of that California lawsuit on the Internet and invite negative
comments.
Respondent suggests that she selected JRTCA as her
domain name to create a repository for documents about the case and that this
constitutes an exercise of free speech that is Constitutionally protected. By virtue of Respondent’s participation in
the underlying trial as a witness against Complainant, the Panel finds with
certainty that Respondent knew of Complainant’s interest in the JRTCA mark and
that Respondent made an intentional decision to use Complainant’s mark in the
domain name that she registered.
Respondent, Liz McKinney of Floyd, VA, was a member
of JRTCA until August of 1999. She registered the domain name that contains in
its entirety Complainant’s mark, <jrtca.net>, on October
16, 2001, knowing that Complainant had already registered jrtca.com. Respondent asserts that she has
Constitutional rights to free speech but the facts here are distinguishable
from those domain cases in which such rights have been recognized; Respondent
may not wrongfully use the mark of another to confuse Internet users into
thinking they are accessing Complainant’s site and that Complainant is the source
or sponsor of the content.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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, The Jack Russell Terrier
Club of America, Inc., has shown in this proceeding that it has rights in the
JRTCA mark and that it was well known by the acronym many years before
obtaining legal rights in the mark. Complainant urges that it is the exclusive
owner of a service mark registration for the JRTCA mark (Reg. No. 2,603,914;
registered on August 6, 2002). Although the Panel notes that Complainant’s JRTCA
registration occurred after Respondent registered the domain name, Complainant
first used the JRTCA mark as early as 1980, as was recognized by the U.S.
Patent and Trademark Office (“USPTO”) when Complainant received its trademark
rights. Additionally,
Complainant filed its application with the USPTO December 1, 2000, a date
preceding Respondent’s October 16, 2001, registration of the disputed domain
name. See SeekAmerica Networks
Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do
not require that Complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist. Rights in the mark can be established by pending
trademark applications); see also British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also Smart Design LLC v. Hughes, D2000-0993
(WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require
Complainant to demonstrate ‘exclusive rights,’ but only that Complainant have a
bona fide basis for making the Complaint in the first place).
Complainant
and Respondent concede that the domain registered by Respondent, <jrtca.net>,
is identical to Complainant’s JRTCA mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical to or confusingly similar); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> is plainly identical to
Complainant’s MYSTIC LAKE trademark and service mark).
Respondent
registered the <jrtca.net> domain name on October 16, 2001, nearly
a full year before Complainant registered its JRTCA service mark on August 6,
2002, and eight months before the service mark was published for opposition on
May 14, 2002. Some cases support the proposition that registration must precede
the domain name’s filing. See Ode
v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of
the unanimous view that the trademark must predate the domain name.”); see
also Amsec Ent. v. McCall,
D2001-0083 (WIPO Apr. 3, 2001) (finding Complainant’s pending trademark
applications do not establish any enforceable rights to the mark until a trademark
registration is issued); see also Johnny
Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 435 (7th
Cir. 1999) (finding that the filing of trademark application alone did not give
priority over previous common law users).
The
Panel notes that the facts in this case are distinguishable from those cases
and more closely relate to that line of cases recognizing that the ICANN Policy
does not distinguish between registered and unregistered trademarks. Here, Ms. McKinney knew that Complainant had
exclusive rights to use the mark she included in the disputed domain name. This
constitutes abusive registration. British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”)(Emphasis added.).
Respondent
contended as well that her use of Complainant’s mark was permitted since the
disputed domain name does not cause the confusion alleged in the Complaint and
because Complainant primarily operates from the <terrier.com> domain
name. Further, Respondent urges that Complainant
held an identical <jrtca.com> domain name passively since June 1996. She
urges the Panel to find that Respondent’s use of the <jrtca.net>
domain name does not cause the level of confusion alleged in the Complaint. The
Panel finds that Respondent has established by this contention that she knew of
Complainant’s prior interest in the JRTCA mark as well as the existence of
Complainant’s jrtca.com domain name prior to registering the domain name in
issue, which is identical to Complainant’s mark. An Internet user accessing JRTCA would expect to find Complainant
and not Respondent and that user would be confused as to the source and
sponsorship of the documents and opinions accessed at the site.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant established in this
proceeding that it has common law and legal rights to and interests in the
JRTCA mark. The disputed domain name
resolves to a website entitled “Jack Russell Terrier Collected Archives,” a
repository of legal documents in connection with a lawsuit brought against
Complainant by a third party. Complainant alleges that after a full trial, the
court in the underlying case ruled in favor of Complainant but that the third
party appealed the case. Complainant charges that Respondent was a witness for
the third party that brought that lawsuit and that she was a member of JRTCA
until August 1999. Respondent did not deny these allegations. Complainant
argues that Respondent has used the JRTCA mark unfairly in order to attract
Internet users to a website that criticizes Complainant and that Respondent
encourages and allows other Internet users to anonymously post misinformation
about Complainant at the site. This does not constitute a legitimate use of a
domain name such as would create rights and legitimate interests. See 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 Complainant's DAVID WEEKLEY HOMES mark).
Complainant further asserts that
Respondent uses the <jrtca.net> domain name to bring attention to
Complainant’s pending litigation. Complainant argues that such use not only
diverts Internet users from Complainant’s legitimate website to the domain name
site registered by Respondent but that such use also tarnishes Complainant’s
reputation. Complainant argues that even if Respondent had First Amendment rights
to the content of the website, Respondent does not have the right to use
Complainant’s mark to identify the source of the comment. The Panel agrees that
while Respondent’s content may be protected speech, speech conducted under
another’s protected mark does not create rights or legitimate interests with
respect to the domain name. Respondent
can speak—she just cannot use Complainant’s mark to confuse Internet users that
the speech comes from Complainant. See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24,
2000) (rejecting Respondent’s asserted rights or legitimate interest in the
domain name <roboenterprises-investors.com>, noting that while the
content of Respondent’s website may enjoy First Amendment and fair use
protection, those protections do not create rights or a legitimate interest
with respect to a domain name that is confusingly similar to another’s
trademark); see also 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 Sears, Roebuck & Co. v. Hanna Law Office, D200-0669 (WIPO Sept.
8, 2000) (finding a high degree of initial interest confusion, where consumers
would be easily confused, when a respondent registers a domain name that is
identical to a complainant’s mark for an otherwise fair use).
Complainant urged that Respondent also
uses the infringing domain name to divert Internet users to other websites,
“most of which are operated by organizations whose missions and philosophies
are detrimental and contrary to the mission of [Complainant].” See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, its
use of the names was not in connection with the offering of goods or services
or any other fair use).
Complainant established that Respondent
is not commonly known by, or affiliated with, the JRTCA mark. Complainant
asserted that Respondent operates a kennel in Virginia under the name “Falling
Branch” and that she promotes that business at the website located at
<fallingbranch.com>. Therefore, the Panel may find that Respondent failed
to establish rights in this domain name pursuant to Policy ¶ 4(c)(ii) because
she is not known as JRTCA or jrtca.com or jrtca.net. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent has no rights in
a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent is not commonly known by the mark and never applied for a license or
permission from Complainant to use the trademarked name).
Complainant urged that Respondent was a
member of Complainant’s Club for some ten years until her affiliate’s
membership was terminated in August 1999. The Panel may find this circumstance
relevant in determining rights and legitimate interests under Policy ¶
4(a)(ii). See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct.
18, 2000) (finding that as a former employee, Respondent knew or should have
known Complainant’s mark was in use as an integral part of the corporate name
and as a trademark and that Respondent understood the legitimate interests and
rights of Complainant and, by contrast, its own lack of interest or right. This
is sufficient for Complainant to establish that Respondent had no rights or
interest in the domain name).
In its Additional Submission, Complainant
argued that Respondent failed to successfully delineate between a noncommercial
use and a legitimate noncommercial use. Complainant asserted that
Respondent’s use of the domain name is unfair, and therefore fails to fulfill
Policy ¶ 4(c)(iii)’s standard. Complainant also noted that Respondent’s domain
name does not clearly signify the critical purpose of the attached website.
Respondent
urged that she uses the <jrtca.net> domain name to “house
transcripts, filings and other related factual and publicly available
information regarding the lawsuit The Jack Russell Terrier Network of N.
California v. The Jack Russell Terrier Club of Am. (Case No.
C-98-20932-JW)” and that since no public commentary is included on the website
about Complainant and no commercial gain is had by her from the domain name,
she can establish rights through noncommercial and fair use under Policy ¶
4(c)(iii). That argument has been accepted in some cases. See Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum
May 17, 2001) (finding that Respondent has rights and legitimate interests in
the domain name where Respondent made a non-commercial use of <bajaboats.com>
and received no funds from users of the website connected to the domain name); see
also Lockheed Martin Corp. v.
Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has
rights in the <missionsuccess.net> domain name where she was using the
domain name in connection with a noncommercial purpose).
The
Panel declines to follow that line of cases where Respondent knowingly used
Complainant’s exclusive mark in order to create a forum for Respondent’s
speech, commercial or not, which could confuse the Internet user as to the
source of the speech.
Respondent refuted Complainant’s
allegations that the <jrtca.net> domain name diverts Internet
users to websites in competition with Complainant. Respondent maintained that
the disputed domain name provides links to the following domain names:
<jrtforums.com> (a non-commercial Internet website that offers public
forum discussion); <jrtnnc.com> (a former JRTCA affiliated Jack Russell
Terrier Club that has never registered dogs); <jackrussellrescue.com> (a
website dedicated to the relocation of abandoned Jack Russell Terriers); and
<jrtaa.org> (the American Kennel Club’s parent club for the Jack Russell
Terrier). Respondent argued that because Respondent’s domain name only links to
noncommercial and informative websites, the Panel should find Complainant’s
assertions unfounded. The Panel
disagrees. Respondent cannot overcome the hurdle of having used another’s
exclusive mark to create a connection with these other entities that have
reason to know Complainant and its JRTCA mark better than they know Respondent,
who is not known as JRTCA and is not known as <jrtca.net> or any
combination of names containing the letters that these acronyms represent.
Additionally,
Respondent claimed First Amendment protection for the domain name based on her
interpretation of a California district court decision Bally Total Fitness
Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998). Respondent
paraphrased the decision: “In Bally, the court held that the defendant’s
use of a trademark in an internet site for purposes of consumer commentary and
criticism did not infringe or dilute the plaintiff’s mark.” The Panel may find
that Respondent’s First Amendment assertion supports a finding of rights and
legitimate interests in the domain name under Policy ¶ 4(c)(iii) but not where
Respondent masquerades as Complainant by including Complainant’s mark in the
domain name to engage in such speech without indicating in the name that it is
a negative speech site. See N. Am. Wilderness Recovery, Inc v. Citizens With
Common Sense, FA 97058 (Nat. Arb. Forum July 1, 2001) (finding that
complaint sites using a complainant's mark may be fair use under certain
circumstances; for example, the use of a noncommercial suffix such as '.org' or '.net' may be sufficient to differentiate
when criticizing a commercial enterprise, although the use of
<wildlandprojects.org> was not because Respondent attempted to masquerade
as Complainant by including Complainant's logo and service mark on the
website); see also Pensacola Christian
Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec.
12, 2001) (finding that Respondent has rights and legitimate interests in a
domain name incorporating Complainant’s name at which commentary and criticism
of Complainant are offered, and at which users are free to post messages about
Complainant); see also Britannia Bldg. Soc'y v. Britannia Fraud Prevention, D2001-0505
(WIPO July 6, 2001) (finding that Respondent has legitimate interests in the
<britanniabuildingsociety.org> domain name because the low-level of
confusion was negligible due to its use in connection with a "genuine
criticism site," which displayed a disclaimer and link to Complainant's
official website).
In Respondent’s
Additional Submission,
Respondent further urged that the <jrtc.net> domain name and
connected website, which contains links to collected court documents, are
distinguishable from Complainant’s “parody” or “criticism” website arguments.
Respondent stated “Indeed there is no parody on that site,” but rather
collected court documents and therefore the domain name does not have to
indicate that the website is a criticism site.
The Panel does not agree with Respondent. Respondent did not register
this domain name site under her own name or even her own business entity’s
name. Respondent registered this site with knowledge that she was using
Complainant’s legal and exclusive trademark.
Such use permits the inference that Respondent knew or should have known
that using Complainant’s mark to criticize Complainant was not a bona fide or
legitimate use of Complainant’s mark in a domain name. See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as
a former employee, Respondent knew or should have known Complainant’s mark was
in use as an integral part of the corporate name and as a trademark and that
Respondent understood the legitimate interests and rights of Complainant and,
by contrast, its own lack of interest or right. This is sufficient for
Complainant to establish that Respondent had no rights or interest in the
domain name).
The Panel finds that Policy ¶ 4(a)(ii), requiring a
showing of rights and interests, has been satisfied.
Complainant
argued that Respondent registered and used the domain name in bad faith since
Respondent had knowledge of Complainant’s rights in the JRTCA mark prior to
seeking registration of the infringing domain name. Complainant asserted that
Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) because she had
actual notice of Complainant’s rights in the mark and corresponding domain
name, yet she registered the infringing domain name. Cf. William Hill Org. Ltd. v. Fulfillment Mgmt.
Serv. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith
registration and use (even though no pattern of conduct existed) where
“Respondent’s employee must have had the Complainant’s trademarks in mind when
choosing the disputed domain name and that the Respondent’s interest was to
deprive the Complainant of the opportunity to reflect its mark in that name
until the registration expired”); see also Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
Complainant
argued that Respondent is a competitor under the common meaning of the word
“competitor,” as one who acts in opposition to another. Thus, the Panel may
find that Respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iii). See Mission
Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining
“competitor” as “one who acts in opposition to another and the context does not
imply or demand any restricted meaning such as commercial or business
competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
Complainant
also urged that even though its primary website is located at
<www.terrier.com>, its JRTCA mark acquired significant recognition among
the relevant public sector. Because of this, Complainant asserted that
Respondent’s <jrtca.net> domain name and corresponding content
would likely be attributed to Complainant; thus, Respondent’s use of the domain
name tarnishes Complainant’s reputation. See Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001)
("Given the uniqueness and the extreme international popularity of the
[ODIE] mark, the Respondent knew or should have known that registering the
domain name in question would infringe upon the Complainant's goodwill"); see
also Monty & Pat Roberts, Inc. v.
Keith, D2000-0299 (WIPO June 9, 2000) (finding that “[T]he Panel does not
dispute Respondent’s right to establish and maintain a website critical of (the
Complainant) . . . . However, the panel does not consider that this gives
Respondent the right to identify itself as Complainant”); see also Baker
&Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002)
(finding that because Respondent’s <bakeranddaniels.com> domain name
merely incorporates Complainant’s trademark, without more, it is not protected
by the First Amendment).
Complainant
argued that Respondent’s disclaimer is not effective in diminishing the
confusingly similar nature of the <jrtca.net> domain name. See Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000)
(finding that since a disclaimer does not, and could not, accompany the domain
name, then the “domain name attracts the consumer’s initial interest and the
consumer is misdirected long before he/she has the opportunity to see the
disclaimer”); see also DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the
domain name consists of Complainant’s well-known trademark, does not counter
the expectation of Internet users that the domain name is sponsored by
Complainant).
Respondent
urged that bad faith could not be shown because she did not register the <jrtca.net>
domain name to sell it to Complainant or a competitor of Complainant and
she did not register the domain name to prevent the owner of the trademark from
reflecting its mark in a corresponding domain name. Respondent stated: “Even
when all of the domain names using the JRTCA service mark were available,
[Complainant] did not register any of them.” Unless Respondent acted in bad
faith, Respondent would prevail due to Complainant’s burden to satisfy all three
showings. See Caterpillar Inc. v.
Off Road Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (refusing to find bad faith registration where
Complainant failed to submit any evidence that the domain name was registered
in bad faith).
Respondent
argued that she did not register or use the domain name in bad faith under
Policy ¶ 4(b)(iii) because she is not a competitor of Complainant and because
the other organizations whose links are located on Respondent’s website are not
competitors of Complainant. Respondent
contended that not only is her use of the domain name non-commercial, there is
no likelihood of confusion between Respondent’s website and Complainant’s mark
because the critical commentary is accompanied by an explicit disclaimer
prominently displayed on the <jrtca.net> website. A line of cases
suggests that under other circumstances, Respondent could prevail in showing a
lack of bad faith. See Caterpillar
Inc. v. Off Road Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith when
Respondent put a very visible disclaimer on its website located at
<catparts.com>, because the disclaimer eliminated any possibility that
Respondent was attempting to imply an affiliation with Complainant and
Complainant’s CATERPILLAR mark); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17,
2000) (finding no bad faith where Respondent has an active website that has
been in use for two years and where there was no intent to cause confusion with
Complainant’s website and business); see also Legal
& General Group Plc v. Image Plus,
D2002-1019 (WIPO Dec. 30, 2002) (finding initial interest confusion is
displaced by the criticism content at Respondent's website and that such a
"low level of confusion is . . . a price worth paying to preserve the free
exchange of ideas via the Internet").
But Respondent’s submission permits the inference that her website
posts information under Complainant’s name and that it also directs the
Internet user to others who are involved in protecting, breeding, showing and,
one assumes, selling Jack Russell Terriers.
These facts suggest competition in an area of commerce and the fact that
the product is a living thing does not make it non-commercial. Further, the cases cited do not involve
domain names that trade on the exclusive mark of another.
Respondent
also argued that Complainant’s claims that the <jrtca.net> domain
name, website and corresponding content tarnished Complainant’s mark are
unfounded. Respondent asserts that the information displayed on its website is
public information and therefore is allowed to be maintained for public view.
Respondent contends that the goals of the Policy are limited and do not extend
to insulating trademark holders from contrary and critical views when such views
are legitimately expressed without an intention for commercial gain. Some cases
take that view in other circumstances. See
Bridgestone
Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (citing Lucent
Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d at 535-536) (As a general proposition, “the same facts
establishing fair use and the exercise of free speech negate a finding of bad
faith intent”); see also Britannia
Bldg. Soc'y v.
Britannia Fraud Prevention,
D2001-0505 (WIPO July 6, 2001) (finding legitimate interests in Respondent's
favor because "the goals of the Policy are limited and do not extend to
insulating trademark holders from contrary and critical views when such views
are legitimately expressed without an intention for commercial gain").
Looking
to the totality of the circumstances, as it must, the Panel notes that
Respondent was a former affiliate of Complainant, who knew that Complainant had
rights in the mark; that she used Complainant’s exclusive mark in her domain
name; that she testified against Complainant in litigation and that her side
lost; that she registered a domain name using Complainant’s exclusive mark to
create a forum to distribute negative information about a competitor and that
she invited other competitors to post negative remarks. These facts support
findings that Respondent acted in bad faith. Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED. Accordingly,
it is Ordered that the <jrtca.net> domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, for the Panel
Hon. Louis E.
Condon and Hon. Tyrus R. Atkinson, Jr., Panelists
Dated: March 26, 2003.
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