Office of Medical & Scientific Justice, Inc. v. J Todd DeShong
Claim Number: FA1302001486064
Complainant is Office of Medical & Scientific Justice, Inc. (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is J Todd DeShong (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com>, registered with WILD WEST DOMAINS, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2013; the National Arbitration Forum received payment on February 20, 2013.
On February 21, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names are registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2013 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@hivinnocencegrouptruth.com, postmaster@hivinnocenceprojecttruth.com. Also on March 1, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 21, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on March 26, 2013.
A timely Additional Submission was received from Respondent and determined to be complete on March 27, 2013.
On April 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
A. Service Marks and Rights on which the Complaint is Based
The instant Complaint is based upon Complainant’s ownership of United States Trademark Registration No. 4,164,161 for the mark HIV INNOCENCE GROUP.
On October 25, 2011 Complainant applied to register the mark HIV INNOCENCE GROUP with the United States Patent and Trademark Office (hereinafter “USPTO”). The mark received Serial No. 85/455,820. On June 26, 2012 the mark HIV INNOCENCE GROUP, as more fully identified by Serial No. 85/455,820 registered on the Principal Register and received Registration No. 4,164,161. As a result of this registration, as well as complainant’s longstanding use thereof, plaintiff has acquired exclusive rights in plaintiff’s trademarks.
On or about October 9, 2009 Complainant also registered the domain nameto launch its Internet presence in connection with the promotion of its services. On at least as early as January 10, 2010, Complainant launched its web site located at www.omsj.org.
1. The Domain Names are virtually identical to Complainant’s service mark
The Respondent’s use of the Domain Names, hivinnocencegrouptruth.com, and hivinnocenceprojecttruth.com, are confusingly similar to the Complainant’s registered service mark, HIV INNOCENCE GROUP, Reg. No. 4,164,161, in that the Domain Names consist of the same words as Complainant’s registered service mark merely adding the descriptive and/or generic terms thereto project and truth. Even if Internet users were aware that Respondent’s use, if any, of the Domain Name and/or pages posted thereto is not affiliated with Complainant’s organization after visiting pages posted to the Domain Name, Respondent’s registration and/or use of Complainant’s mark as a domain name creates what the Ninth Circuit has labeled “initial interest confusion.” See Brookfield Comm., Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1062-63. This occurs when Internet users enter the trademark or service mark as the domain name expecting to arrive at owner of that trademark or service mark’s website. When users arrive at the site, they are often confused, even if only momentarily, by the infringer’s website or lack thereof. Thus, when Internet users type in the virtually identical name of Complainant’s service mark “HIV INNOCENCE GROUP” in any number of the available search engines they cannot help but be confused, if only briefly, by Respondent’s misuse of Complainant’s mark as indexed by those search engines. See attached results from the search engine searches of Yahoo!® and Google® of the term “HIV INNOCENCE GROUP” conducted on November 27, 2012.
2. The Respondent has no rights or legitimate interest with respect to the Domain Name
Since at least 2009, Complainant has used the service mark HIV INNOCENCE GROUP throughout the United States to identify its private investigation services; investigation services, namely, providing detective and background investigation services to criminal defendants to assist in proving their innocence; investigation services, namely, providing detective and background investigation services in criminal and civil cases to assist a party in proving its case; expert witness services in legal matters in the field of HIV cases.
In recognition of Complainant’s widespread use of the HIV INNOCENCE GROUP mark, the “USPTO”, issued United States Trademark Registration No. 4,164,161 on June 26, 2012.
Respondent registered the Domain Names hivinnocencegrouptruth.com, and hivinnocenceprojecttruth.com, in July of 2011 more than two years after Complainant began use of its marks. Under these circumstances Respondent cannot claim or show any rights to the hivinnocencegrouptruth.com, and hivinnocenceprojecttruth.com domain names that are superior to Complainant’s rights in the HIV INNOCENCE GROUP mark as evidenced by Complainant’s prior use, filing for, and registration of its mark. Nor can Respondent demonstrate that it was unaware of the HIV INNOCENCE GROUP mark. To the contrary, as shown below, Respondent registered and is using the Domain Name for the purpose of promoting confusion among users looking for Complainant’s services offered in connection with its marks and to draw attention, by misdirecting traffic to its website, to its services offered in competition with those services provided by Complainant. Respondent clearly has no rights or legitimate interests in the domain name.
3. The Domain Name was registered and used in bad faith
Respondent registered and is using the Domain Names, hivinnocencegrouptruth.com, and hivinnocenceprojecttruth.com, in bad faith. Specifically, Respondent registered the Domain Name in bad faith fully aware of or, at a minimum, on constructive notice of the rights retained by Complainant at the time of registration of the Domain Name. Respondent’s use of the Domain Name was initiated directly in to disrupt the business of Complainant.
Even assuming, en arguendo, the above uncontroverted facts do not establish actual notice by Respondent of the Complainant trademark rights, Complainant began use of the mark in connection with private investigation services; investigation services, namely, providing detective and background investigation services to criminal defendants to assist in proving their innocence; investigation services, namely, providing detective and background investigation services in criminal and civil cases to assist a party in proving its case; expert witness services in legal matters in the field of HIV cases in 2009 throughout the United States. See ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd. (WIPO Case No. D2007-1466). “Extensive prior use of a name provides constructive knowledge of the Complainant's trademark rights”. As such, although it is Complainant’s contention that the evidence establishes actual notice of said rights, at a minimum there can be no doubt as to Respondent’s constructive knowledge thereof.
Bad faith is found “where the defendant adopted its mark with the intention of capitalizing on plaintiff’s goodwill and any confusion between his and the senior user’s product.” Lang vs. Retirement Living Publishing Co., 949 F.2d 576, 583 (2d Cir. 1991). As such, Respondent capitalizes on Complainant’s goodwill by using Complainant’s registered service mark to lure unsuspecting Internet users to its site when the said users are searching for Complainant’s services.
Second, it is clear that Respondent registered and is using the Domain Name primarily to disrupt the business of Complainant, by using the Domain Name to redirect Internet traffic to its own web site which provides negative information about the Complainant and its services. Registering a domain name with knowledge of another company's rights in the name, and with intention to divert traffic is evidence of bad faith. Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160.
Redirecting Internet traffic to a Respondent's web page falls within the scope of paragraph 4(b)(iv) of the Policy whereby using a domain name the respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation, or endorsement of respondent’s website. Vodafone Group, Plc v. Phone-Express, WIPO Case No. D2004-0505. See also State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432 (Using a party's name to redirect Internet users to an unrelated commercial site for profit is recognized under the Policy as evidence of bad faith registration and use. Policy, Paragraph 4(b) (iv)); Waste Management, Inc. v. Recycle Now, Inc., WIPO Case Number D2002-0828 (Use of Complainant's mark to redirect web traffic is a strong indication of bad faith).
B. Free Expression Consideration
Respondents have, on occasion, asserted First Amendment or other free expression defenses claiming that the use of the plaintiff’s trademark is constitutionally protected when used to communicate a non-commercial message. See generally Planned Parenthood Fed’n of America, Inc. v. Bucci, 1997 WL 133313 *1440 (S.D.N.Y.) (defendant in domain name suit unsuccessfully asserted First Amendment defense). It is true that trademark law does not curtail or prohibit the exercise of the First Amendment right to free speech. However, a respondent’s use or uses of the a complainant’s mark or marks are entitled to First Amendment protection only when such use is part of a communicative message, not when respondent’s marks are used to identify the source of a product or service. Planned Parenthood, 1997 WL at *1440 (S.D.N.Y.); Yankee Publ’g, Inc. v. News Am. Publ’g, Inc., 809 F.Supp. 267, 275 (S.D.N.Y. 1992). By using Complainant’s mark as a domain name, Respondent identifies the website as being the product, or forum, of Complainant. Thus Respondent’s use of the mark HIV INNOCENCE GROUP is not part of a communicative message and is therefore not protected by the First Amendment or other principles of free expression.
E. Summary
Respondent has knowingly infringed upon Complainant’s service mark HIV INNOCENCE GROUP by registering and using the distinctive components thereof in conjunction with simply adding the elements “truth” and “project” as the Domain Name for the purpose of diverting unsuspecting Internet users from Complainant’s website to the web site of the Respondent. Respondent deceives Internet users who intend to access Complainant’s site into believing that the goods and services offered by Respondent are in some manner associated, sponsored, or affiliated with those related comments offered by the Complainant. Moreover, to the extent that Internet users realize after being redirected by Domain Name to the web sites located at hivinnocencegrouptruth.com, and hivinnocenceprojecttruth.com that said websites are not affiliated with Complainant, injury in the form of initial interest confusion has already occurred. For these reasons the Domain Names should be transferred to the Complainant.
B. Respondent
Before responding to the specific allegations, I would like to address the fact that the Complaint is neither wholly truthful nor accurate as attested under Roman Numeral XII Certification part #21. I will prove in the next few paragraphs that Complaint is neither wholly truthful nor accurate and therefore I believe this proceeding should be found in my favor. Giving false testimony, whether in person or in writing, in court or in arbitration, is perjury.
In several instances the Complaint states that the “mark” HIV Innocence Group has been used “since at least 2009”. Complaint also claims the “good will” of the service mark on its “widespread use” since 2009 as a basis for its approval and issuance as a registered trademark by the United States. Complainant’s application for Trademark/Service Mark that is also neither wholly truthful nor accurate. In the portion of the application Filing Basis SECTION 1(a), there are two areas that are neither wholly truthful nor accurate: FIRST USE ANYWHERE DATE and FIRST USE IN COMMERCE DATE. The entered information for both of these is “At least as early as 00/00/2009.”
Complainant originally called his organization HIV Innocence Project and did so from 2009 until at least May 11, 2011. Complainant used this term to gain credibility from the public by name association and name recognition with The Innocence Project, which is a highly respected organization that utilizes DNA Evidence to help free those people who have been falsely imprisoned. I have submitted an exhibit that shows that as late as April 2011 Complainant was calling his organization HIV Innocence Project. This exhibit is an online report by a news organization out of Kansas. This is a report on a case of Sgt David Gutierrez who was convicted of HIV Related Crimes and Mr. Baker’s attempt to get a new trial via the HIV Innocence Project. In this report, the reporter confusingly uses the names HIV Innocence Project and The Innocence Project interchangeably. The reporter also provides comments by Clark Baker. It was after this news report that the office of Dr. Robert Gallo alerted the legitimate Innocence Project to Mr. Baker’s unauthorized use of their name.
Exhibit #2 is an email dated May 11, 2011. This is an email from the office of Dr. Robert Gallo, the American scientist credited with the discovery of HIV. In this email, Nora Grannell states that she will alert The Innocence Project to Complainants use of their name. It was shortly after this time that Complainant switched the name from HIV Innocence Project to HIV Innocence Group.
Exhibit #3 is a screen shot from Mr. Bakers own website via the Wayback Machine dated August 10, 2010. This screen shot clearly shows the name HIV Innocence Project.
Exhibit #4 is a current screen shot from Complainants own website that still shows the name HIV Innocence Project. Complainant must have missed this when he changed the name of his site and attempted to remove all evidence that he had used the name HIV Innocence Project originally.
It is obvious that Complainant is trying to hide this fact from this arbitration proceeding and in so doing, admits that Complaint is deceptive at worst, or at the very least, is obfuscating the facts. The Complaint never mentions the fact that the original name of his organization was HIV Innocence Project and therefore cannot claim that any “goodwill” associated with that name would simply transfer to the new name HIV Innocence Group.
Lastly, it should be known that my site is strictly a Public Service, offering only well documented facts to support my allegations that Complainant is not truthful about his services or his supposedly successful track record in court cases. To support my assertions, I utilize Court Documents, News Reports and in two instances, Attorney emails. By doing so, I have proven that Complainant has not been involved in several of the cases his lists at his site. I have also proven that he has not successfully used the controversial tactics he claims to have used to win these judgments. That is the real reason this Copy Right Infringement Complaint has been filed, to censor the truth and my First Amendment Rights.
The clients that Complainant solicits to use his service are people who have been charged with a crime that could potentially put them in prison for decades. Complainant specifically claims to help people who are HIV positive and have been charged with sexual relations with another person or persons without disclosing their HIV positive status. Complainant is part of a group of people known by scientists as HIV/AIDS Denialists, although they prefer the term “dissident”. I will use the term “dissident” rather than “denialist” out of respect for these proceedings. These dissidents claim that HIV is harmless, that the medications are deadly toxic to every person who ingests them, and that the HIV tests are worthless. Complainant claims to prove in court that HIV tests are worthless and therefore the people are not actually HIV positive and therefore pose no risk to others. Because of the nature of the accusations and the potential of spending decades in prison, these people are desperate and scared. My site is a necessity for these scared desperate people so that they can adequately assess how to proceed with their defense. It is for this reason I am claiming Fair Use in that my site is a Public Service and my site communicates a message.
[a.] Respondent site is definitely not identical to Complainant site. The word “Truth” differentiates the two sites. In addition, Respondent site has a “Purpose of This Site” which specifically states the intention of Respondents’ site. Lastly, every post/page of the Respondent site has the title HIV Innocence Group Truth at the top and the subtitle: “Truthfully Deconstructing the HIV Innocence Group”. These three items (along with the actual content of the site) would leave no doubt in the mind of the viewer that Respondent site is in no way affiliated with Complainant site.
[b] Respondent has a very legitimate interest in the disputed domain name. Respondent site provides a much-needed Public Service to the desperate and scared people who have been accused of HIV related crimes that could put them in prison for decades. Respondent site documents the deceptive nature of Complainant’s supposedly successful record of accomplishment and strategy/tactics for representing defendants in HIV related proceedings. Similarity in domain names will bring up both sites and persons seeking Complainant’s services can easily find both sites and will have all information needed to decide how to proceed with their defense. Respondent site “communicates a message” which courts have upheld as “fair use.”
(i.) Respondent was using site since July 2011 and was first notified by Domains by Proxy in September of 2012, that Complainant was seeking information about owner of Respondent site. Respondent was using site with a bona fide offering of a Public Service with the intent of communicating a message as to the untruthfulness of Complainants services
(ii.) Respondent site is well known at least in the realm of those associated with the HIV/AIDS Dissident group and those of us working against them to accurately educate the public about the true science of HIV/AIDS.
(iii.) Respondent is making both a legitimate noncommercial as well as fair use of the domain name. Respondent has never asked for monies nor advertised at this site. Respondent is not attempting to divert consumers or tarnish the trademark at issue. Respondent is simply providing well-documented facts that show Complainant is not being truthful regarding its supposedly successful record of accomplishment nor is Complainant being truthful about the strategy/tactics it claims to employ in winning HIV Criminalization Cases and/or getting charges dropped before going to court.
I. Complaint begins by addressing the "confusing" similarity of the domain names.
Complaint states that this will cause "initial interest confusion." Complaint uses the case of Brookfield Comm., v. West Coast Entm’t Corp as evidence in this arbitration. However, this is not adequate for this proceeding for several reasons.
First, in Brookfield, the plaintiff and defense both used identical names, Movie Buff. In this arbitration, the word "truth" differentiates the two sites. (I will address this difference in more detail later.)
Second, in Brookfield, both plaintiff and defense offered almost identical products or services. In this arbitration, Complainant and Respondent do not offer even similar services. Complainant offers investigation and background services, while Respondent only provides a Public Service of information.
Lastly, the Brookfield case was very controversial, has been criticized by scholars, and judges because the Ninth Circuit Court did not apply the Eight Factor Sleekcraft test. After the criticism, courts began to employ the Eight Factor Sleekcraft test. The Ninth Circuit Court later gave more weight to three of those factors in the internet context. The three most important Sleekcraft factors are (1) the similarity of the marks, (2) the relatedness of the goods or services and (3) the parties' simultaneous use of the Web as a marketing channel. Again, I will reiterate that the two domain names in this arbitration are not identical and will be addressed in more detail later. In addition, in this arbitration there is neither similarity nor relatedness of goods or services. Lastly, I do not market my site at all, whereas the Complainant has a logo that is employed at several of his colleagues' sites.
II. Complaint addresses the "rights or legitimate interest with respect to Domain Name" of the Respondent.
Complainant begins this section by once again erroneously stating that "since at least 2009 Complainant has used the service mark HIV INNOCENCE GROUP" and goes on to base the issuance of U.S. Trademark Registration on its "widespread use." Complainant also erroneously states, "Respondent registered the Domain Names...more than two years after Complainant began use of its mark." I have earlier established this is not true and that Complainant actually began using the term HIV Innocence PROJECT in 2009 and used that until at least May 2011.
Complainant also claims Respondent has "no rights or legitimate interest with respect to Domain Names" because Respondent registered the site(s) "for the purpose of promoting confusion among users...by misdirecting traffic to its website (and) to its services offered in competition with those services provided by Complainant." This is completely erroneous because Respondent offers no service or services that compete with Complainant. Respondent does not offer investigative services or background checks of any kind. Respondent's site is solely a Public Service providing information to viewers and to communicate a message to viewers as to the less than successful track record Complainant claims to have and to the fact that the tactics Complainant claims to employ are not the tactics Complainant actually utilizes.
III. Complaint states that Domain Name was registered and used in bad faith.
The first case used in the Complaint is ABB Asea Brown Boveri Ltd. v. A.B.B. Transmission Engineering Co., Ltd. This case does not wholly apply to this arbitration as the Plaintiff in that case had already been found to be “well-recognized, distinctive and famous by previous panels." Complainants mark has not been designated as well recognized and definitely not famous. Complainant in this arbitration has not gained such stature and designation. As my site has well documented, Complainant has greatly inflated the actual number cases in which he has truly participated and therefore does not deserve the designation of well recognized.
The next case Complainant cites is Lang v. Retirement Living Publishing Co. Complaint uses this case to establish that Respondent has attempted to "capitalize on Complainants good-will." As I have stated, I do not believe Complainant has established good-will, otherwise Complainant would not greatly inflate the number of cases he has supposedly been involved.
This case also demonstrates whether a trademark owner receives judicial protection depends on "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." The court looked at the 8-factor Sleekcraft test. The second of these tests looks to whether the similarity of the marks is likely to provoke confusion among prospective purchasers. My research found that in making this determination, a court should look at the general impression created by the marks, taking into account all factors that potential purchasers will likely perceive and remember. The district court found that despite similarities, there seemed to be little chance that consumers will confuse Lang's publishing company with Retirement Living's magazine. Both designations include as their focal point the words "New Choices." However, Lang's name always includes the word "Press," whereas Retirement Living's mark always includes the words "For The Best Years." The typeface also serves to distinguish the two designations. In the case presented here, the word TRUTH sets the two sites apart just as the words “Press” and “For the Best Years” do in the Lang case the Complainant tries to use against me to bolster his case. In addition, as the typeface would distinguish the two products in Lang, in this arbitration, the entire look, layout and feel of the two different websites would be even bigger visual clues that the two sites were not the same. However, the information contained in the two sites is so vastly different that no reader would be genuinely confused.
In the case of Lang that the Complainant attempts to use against me, there were over 400 phone calls and several letters that demonstrate confusion. However, in this Complaint, there is not one single Exhibit nor example provided that demonstrates any actual confusion has occurred. Furthermore, The Lanham Act seeks to prevent consumer confusion that enables a seller to pass "off his goods as the goods of another." As Judge Lasker stated in Beneficial Corp. v. Beneficial Capital Corp., 529 F.Supp. 445, 450 (S.D.N.Y.1982), "trademark infringement protects only against mistaken purchasing decisions and not against confusion generally."
In Digital Spy Limited v. Moniker Privacy Services and Express Corporation
the complainant has indeed established “good will”: For example, its business has won an award, its website has increasing monthly usage, and it receives regular premium advertising contracts from significant United Kingdom companies.
However, HIV Innocence Group has not demonstrated that it has earned any “good will” other than the fact that Mr. Baker has listed a litany of cases he claims to have been involved and the cases were won based on his involvement. However, my sites were set up to prove that Mr. Baker was not involved in the majority of the cases he listed and in the few that he was involved, the case outcomes were not positive based on the tactics he claims. I could not have been “capitalizing on the plaintiff’s goodwill” when said goodwill was mostly imaginary.
In State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432, the Respondent used the identical name of the Complainant and when users clicked on that link, it redirected them to a completely different site that sold prescription drugs. My site is not only NOT identical to Complainants site, it does not redirect the user to another site at all, much less one that sells a product.
Also in the case of Waste Management, Inc. v. Recycle Now, Inc., WIPO Case No. D2002-0828, users were redirected to a completely different site. Again, that is not the case here. In addition, in Waste Management, the defendant tried to sell its site back to Waste Management for $50,000. That does indeed demonstrate bad faith, but it is not applicable in this arbitration proceeding.
IV. Free Expression Consideration
Complainant offers the case of Planned Parenthood Fed'n of America, Inc. v. Bucci and simply states, "the defendant in domain suit unsuccessfully asserted First Amendment defense." However, that is an oversimplification and does not give the entire story.
First, the defendant in Planned Parenthood v Bucci had the exact domain name of PlannedParenthood.com. Viewers were also immediately greeted with a homepage that said “Welcome to Planned Parenthood”. My site is not identical as it does have the added word truth. When a viewer comes to my site, they are greeted with the title of HIV Innocence Group Truth along with a subtitle stating: Truthfully Deconstructing the HIV Innocence Group. My site also opens with a first post titled: Purpose of This Site that spells out specifically why this site exists. Complainant provided only a partial of this page in its Exhibit 10. It is my belief the Complaint only provides a partial of this page as another example of misleading this arbitration proceeding. I have supplied the Purpose of This Site in its entirety in Exhibit #6.
In should also be said that Planned Parenthood case, the defendant was also "plugging" a book for someone else. My site does not promote anything. My site provides Public Information and to communicate a message that are both considered acceptable Fair Use components.
C. Additional Submissions
On March 26, 2013, Complainant submitted an additional submission, which said:
I. Respondent’s Response and Complainant’s Additional Submission
1. As a threshold issue, it is noted that the Respondent has not challenged either (1) the Complainant’s rights in its trademarks HIV INNOCENCE GROUP, (2) or that the Respondent’s registration of the disputed domain names was not in bad faith.
2. On or about March 20, 2013 Respondent J. Todd Deshong (hereinafter “Respondent”) submitted its Response to the Complaint which instituted the instant proceeding. In brief, the Respondent’s arguments as to why the domain name at issue should not be transferred are as follows:
(1) The domain name dispute must fail insofar as Complainant does not have legitimate rights in the mark HIV INNOCENCE GROUP and that the Complainant originally used the terms HIV INNOCENCE PROJECT to garner credibility from the public by name association and name recognition with an organization known as The Innocence Project, See Response at p. 3, π 1, 2, 3, 4, and p. 4, π 1;
(2) The domain name dispute should fail insofar that the Respondent’s site is being used as a public service, and not used in bad faith. See Response at p. 4, π 2.
All of the Respondent’s arguments are unpersuasive.
3. The insinuation that the Complainant began using its mark in bad faith in reference to The Innocence Project is irrelevant to this matter. The Respondent simply has no standing in this argument as the Respondent is not affiliated with, or a member of The Innocence Project.
4. Moreover, the fact that the Complainant has a Federally registered trademark for HIV INNOCENCE GROUP as more fully set forth in United States Trademark Registration No. 4,164,161 provides prima facie evidence that the Complainant has rights in the mark at issue.
5. The Respondent’s statement that he is using his domain name as a Public Service and not in bad faith is false. The Respondent claims, “Respondent has a very legitimate interest in the disputed domain name. Respondent’s site provides a much-needed Public Service to the desperate and scared people who have been accused of HIV Related crimes that could put them in prison for decades. Respondent’s site documents the deceptive nature of Complainant’s supposedly successful record accomplishment and strategy/tactics for representing defendants in HIV Related proceedings. Similarity in domain names will bring up both sites and persons seeking Complainant’s services can easily find both sites and decide how to proceed for their defense. Respondent’s site “communicates a message” which courts have upheld as “Fair use.” See Response at p. 5, π b. Unfortunately, the Respondent has not demonstrated the concept of fair use. The Respondent twists and contorts his words by saying that he is a legitimate criticizer of the Complainant’s website. The arguments of legitimate interest and fair use cannot be used if the information provided on the Respondent’s website borders on libel.
6. Furthermore, the Respondent did not register the domain hivinnocencegrouptruth.com until July 12, 2011 and registered the domain hivinnocenceprojecttruth.com on July 13, 2011. Wherein the Complainant has used its federally registered trademark for HIV INNOCENCE GROUP as more fully set forth in United States Trademark Registration No. 4,164,161 since 2009, long prior to either of the Respondent’s domain registrations.
II. Summary
As set forth before, Respondent has knowingly infringed upon Complainant’s service mark HIV INNOCENCE GROUP by registering and using the distinctive components thereof in conjunction with simply adding the element “truth” as the Domain Name for the purpose of diverting unsuspecting Internet users from Complainant’s website to the web site of the Respondent. In doing so, Respondent provides Internet users who intend to access Complainant’s site a written defamation of the Complainant, which is not synonymous with fair use. Moreover, to the extent that Internet users realize after being redirected by Domain Name to the web sites located at hivinnocencegrouptruth.com and hivinnocenceprojecttruth.com that said website is not affiliated with Complainant, injury in the form of initial interest confusion and libel has already occurred.
Respondent has effectively conceded the majority of the allegations herein and has not set forth, with any sufficiency, any basis as to why the prima facie case set forth by Complainant should be deemed inadequate.
For these reasons the Domain Names should be transferred to the Complainant
On March 27, 2013, Respondent submitted an additional submission which said:
2. As a threshold issue, it is noted that the Respondent (1) has indeed challenged Complainant’s rights in its trademark HIV INNOCENCE GROUP. As stated in Original Response, Complainant has NOT used HIV Innocence GROUP since 2009 as it has stated in a) Original Complaint b) Application for Trademark, and now c) Additional Submission. Complainant actually used a different term HIV Innocence PROJECT from 2009. Therefore, as stated in my Original Response, their assertion to the contrary is neither wholly truthful nor accurate.
(2) Respondent’s registration of the disputed domain names was definitely NOT in bad faith as proven in Original Response.
Furthermore, In Part 3 of Complainants Additional Submission they erroneously give a “Brief” of my original Response.
My Original Response was based almost wholly on the fact of perjury committed by Complainant not only in the Original Complaint, but also on the Application for Trademark, and now here in their Addition as well. Complainant’s Additional Submission once again falsely states that the term HIV Innocence GROUP has been used since 2009. My Original Response clearly proves that Complainant used the term HIV Innocence PROJECT since 2009 and did so until at least May 2011. The fact that Complainant never admits this proves the deceptive nature of the Original Complaint, this Additional Submission AS WELL AS the Trademark Application. This refusal to admit use of the original term HIV Innocence PROJECT also proves that Complainant is trying to obfuscate the facts of this Arbitration.
Furthermore, Original Respondent Annex #2 (email from Deputy Director of The Innocence Project, Meryl Schwartz) shows that Mr. Baker was contacted by The Innocence Project twice in 2010 to stop using the name HIV Innocence Project but Mr. Baker ignored them and used HIV Innocence PROJECT until at least May of 2011.
All of Respondent’s arguments are indeed persuasive.
4. Complainant’s Additional Submission states: “Complainant began using its mark in bad faith in reference to The Innocence Project is irrelevant to this matter” because “Respondent is not affiliated with, or a member of The Innocence Project”. This is once again obfuscating the argument. Nowhere in my Original Response do I claim to be “affiliated with, or a member of The Innocence Project”. The relevance is that Complainant used the term and never acknowledged that it did so. Instead, Complainant tries to mislead this arbitration by stating it used a term from 2009 that IT DID NOT USE. Complainant tries to mislead this proceeding by claiming it used the term HIV Innocence GROUP solely, when in fact, this is blatantly untrue.
5. Complainant’s Additional Submission attempts to claim that because Complainant has a Federally registered trademark for HIV Innocence GROUP that this is prima facie evidence that Complainant has rights to the mark at issue. Although I am no attorney, I do not believe this to be true. As I stated in my Original Response, the Trademark Application was neither wholly truthful nor accurate in that applicant did NOT use the term HIV Innocence GROUP since 2009 as stated in two separate places on the application. That would make the application invalid, and therefore, applicant may not have been granted trademark status.
6. I will not reiterate why I believe my site operates under Fair Use because it is a Public Service offering information in the form of well-documented facts. I believe I have adequately done so in my Original Response. However, I would like to draw the attention of the arbitrator to Complainant’s Additional Submission (part 6) where Complainant accuses me of libel, stating “Respondent’s website borders on libel.” Also in the Summary: “…injury in the form of initial interest confusion and libel has already occurred.”
This is incredibly confusing to me in that the Original Complaint NEVER even hinted at libel. Why would this additional submission now accuse me of libel? If Complainant is now going to bring up something as serious as libel, why would Complainant not provide proof of such an unjust, malicious claim? Complainant does not provide one example nor one Exhibit/Annex in support of such a heinous claim. This is just one more example of Complainant trying to obfuscate the proceedings as well as being neither wholly truthful nor accurate.
III. Summary
Respondent site is not now nor was it ever intended to divert unsuspecting Internet users from Complainant’s site and the Original Complainant along with Annexes and Additional Submission have not proven as much.
Respondent site was NOT set up for the purpose of libel and if Complainant truly believed this were the case, Original Complaint would have stated as such because this is a very serious accusation.
Respondent has NOT “effectively conceded the majority of the allegations”. To the contrary, Original Response effectively broke down the majority of the Cases that Complainant used in an attempt to prove their allegations. In each and every Case, Complainant did not provide specifics of said Case to adequately support their allegations. On the other hand, Respondent detailed why those Cases were not wholly sufficient to prove allegations. In addition, Respondent did indeed provide specifics as to why those Cases should be considered to support Response. For example, see the Sleekcraft test supplied in the Response.
(1) the domain name registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is not being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
It should be noted a UDRP panel does not resolve competing trademark claims. A panel only considers the very limited issues allowed under the UDRP. For the purposes of this decision, the Panel does not decide which party (or either party for that matter) is correct in its view about the other party.
Complainant claims rights in the HIV INNOCENCE GROUP mark based on its registration of the mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 4,164,161 filed October 25, 2011, registered June 26, 2012). Complainant’s registration confers rights in the mark under Policy ¶4(a)(i) dating back to October 25, 2011, the date on which Complainant filed its trademark application. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶4(a)(i) dates back to Complainant’s filing date.”). The rights conferred pursuant to Complainant’s USPTO registration do not predate Respondent’s July 2011 registration of the disputed domain names.
Complainant claims it has used the service mark HIV INNOCENCE GROUP throughout the United States to identify its private investigation services since at least 2009. Complainant’s business consists of providing detective and background investigation services to criminal defendants to assist in proving their innocence, detective and background investigation services in criminal and civil cases to assist a party in proving its case, and expert witness services in legal matters in the field of HIV cases. Complainant registered the domain name <omsj.org> to launch its Internet presence on October 9, 2009 in connection with the promotion of its services. Complainant launched its web site located at <omsj.org> as early as January 10, 2010. Complainant’s trademark registration lists 0-0-2009 as the first use in commerce for the HIV INNOCENCE GROUP mark, meaning the mark was first used some time prior to 2009.
While this claim is made in Complainant’s trademark application, Respondent rebutted it. Respondent provided evidence to support its claim Complainant was still operating under the alternate “HIV Innocence Project” name after Complainant’s claimed first use of the HIV INNOCENCE GROUP mark in commerce through a news report from a Kansas news organization, purporting to show Complainant was known as “HIV Innocence Project” at least as late as April 2011; an email from the office of Dr. Robert Gallo (the American scientist who is credited with the discovery of HIV), purporting to state Dr. Gallo’s office will alert the legitimate Innocence Project organization of Complainant’s use of their name; a screen shot from Complainant’s own <omsj.org> website dated August 10, 2010, purporting to show Complainant was going by the name “HIV Innocence Project” at that time; and a current screen shot from Complainant’s own <omsj.org> website, purporting to show Complainant’s website still displays the “HIV Innocence Project” name. Complainant submitted no additional evidence in support of its claim once these issues were raised (although Complainant filed a reply). Based upon this lack of specific proof, the Panel does not find Complainant had common law rights at the time Respondent acquired the disputed domain names.
Respondent claims its <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names are not identical to Complainant’s HIV INNOCENCE GROUP mark because the word “truth” differentiates the domain names. The Panel finds Respondent’s addition of the term “truth” to Complainant’s mark in each of the disputed domains distinguishes the domains from the mark under Policy ¶4(a)(i), similar to adding the less polite word “sucks.” See Prudential Ins. Co. of Am. v. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) (holding that the <prudentialmotors.com> domain name, which incorporated the PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to the complainant or the insurance and financial industry and was thus not confusingly similar to the complainant’s mark). The <hivinnocenceprojecttruth.com> domain name also replaces the term “group” in Complainant’s mark with the term “project.” See Webvan Group, Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).
The Panel finds Policy ¶4(a)(i) not satisfied.
Complainant has not established a prima facie case in support of its argument that Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent claims its websites housed at the disputed domain names are strictly a public service, offering only “documented facts” to support Respondent’s allegations Complainant is not truthful about its services or its successful track record in court cases. Using court documents, news reports, and attorney emails to support its assertions, Respondent claims it has proven Complainant has not been involved in several of the cases Complainant lists on its site and Complainant has not successfully used the controversial tactics Complainant claims to have used to win these judgments. Respondent urges its site represents a “fair use” because it allows people who are charged with HIV-related crimes and are facing the potential of spending decades in prison to adequately assess how to proceed with their defense (in part by determining whether or not to hire Complainant). Respondent claims the similarity between its domain names and Complainant’s mark is necessary because it allows Internet users searching for information about Complainant’s services to also find the related critical information provided by Respondent. Through exposure to both sites, Respondent believes users will have access to the information they need in deciding how to proceed with their defense. Respondent claims its use of the domains is also strictly noncommercial because Respondent has never asked for monies nor advertised on the sites housed at the disputed domain names. Moreover, Respondent contends its websites do not offer services competing with (or are even similar to) the services offer by Complainant. Complainant offers investigation and background services, while Respondent only provides information about Complainant’s services. In view of the foregoing, the Panel concludes Respondent is making a legitimate noncommercial use of the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names under Policy ¶4(c)(iii) (regardless of who is correct), indicating Respondent has a legitimate interest in the domains pursuant to Policy ¶4(a)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (“The use of domain names for non-commercial purposes is a recognized method of proving rights and legitimate interests on the part of such user even when the use may cause some disadvantage or harm to other parties.”).
Respondent claims its use of the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names is also protected under its right to free speech and Complainant’s initiation of this proceeding represents an improper attempt to stifle that right. Respondent claims by only offering helpful information to promote the public welfare on its website, the principles of free speech provide Respondent with legitimate rights and interests in the contested domains under Policy ¶4(a)(ii). The Panel finds Respondent’s use of the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names to operate a site which criticizes Complainant’s practices falls within the protection of free speech and Policy ¶4(a)(ii). See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that the respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where the respondent linked the domain name to a “complaint” website about the complainant’s products).
Respondent registered the domain names using a privacy service. In light of the obvious animosity between the parties, the controversial nature of the websites and the non-commercial nature of this dispute, the Panel finds Respondent still acquired rights to the disputed domains even while using a privacy service.
The Panel finds Policy ¶4(a)(ii) not satisfied.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has rights or legitimate interests in the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names pursuant to Policy ¶4(a)(ii) and the Panel finds Respondent did not register or use the disputed domain names in 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.”).
Respondent has not registered or used the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names in bad faith because Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶4(a)(iii)).
Respondent argues it has not registered or used the disputed domain names in bad faith because Respondent and Complainant do not offer similar services. Respondent is actually referring to Complainant’s actual marks and is criticizing Complainant’s services and website. Respondent did not register or use the disputed domain names in bad faith under Policy ¶4(b)(iii), because Respondent and Complainant do not actually compete within the meaning of the Policy. See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006) (finding no bad faith registration and use where the respondent used the complainant’s trademark in its domain name in order to provide information on the complainant’s Options Exchange, and the respondent was not attempting to brand itself as related to the domain name or to steal business or customers from the complainant’s Options Exchange).
Respondent argues it has not registered or used the disputed domain names in bad faith because Respondent does not generate revenue from its websites. Respondent’s websites do not redirect to third-party sites, nor do they sell any products or services. Respondent’s websites only comment about Complainant (whether or not the comments are true). The Panel finds Respondent does not use the disputed domains in connection with the generation of a commercial gain and finds Respondent cannot be found to have registered or used the domain in bad faith pursuant to Policy ¶4(b)(iv). See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith where the respondent operated the fan club website without commercial gain, therefore the requirements of Policy ¶4(b)(iv) could not be established).
Respondent further argues it only uses the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names to provide critical commentary on Complainant’s practices. This free speech cannot amount to bad faith registration and use. See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (“[T]he same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent.”).
Free speech issues aside, Respondent also argues it did not register or use the dispute domains in bad faith because there is no likelihood of confusion between Respondent’s websites and Complainant. Respondent claims its sites include a “Purpose of This Site” section which specifically states the intention of Respondent’s site. Respondent claims Complainant has only provided a partial screenshot of Respondent’s websites, carefully omitting Respondent’s “Purpose of This Site” section to mislead the Panel. Additionally, Respondent contends every page of its sites bears the title “HIV Innocence Group Truth” at the top with the subtitle “Truthfully Deconstructing the HIV Innocence Group.” Respondent contends the entire look, layout, and feel of Respondent’s websites provides visual clues the sites are not affiliated with Complainant’s sites. Respondent maintains the actual content of its site leaves no doubt that Respondent’s site is not affiliated with Complainant because Respondent’s sites exist only to cast doubt upon the validity of Complainant’s statements and practices. Finally, Respondent notes Complainant has not provided any evidence that any confusion has actually occurred. In light of this and other evidence in the record, the Panel finds Respondent did not register or use the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names in bad faith under Policy ¶4(a)(iii) because no initial interest confusion is created. See Legal & Gen. Grp. Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding initial interest confusion was displaced by the criticism content at the 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"); see also Elm Grove Dodge Chrysler Jeep, Inc. v. Schedule Star, FA 352423 (Nat. Arb. Forum Dec. 27, 2004) (finding no bad faith registration or use where the respondent “only registered the disputed domain names to voice concerns and complaints about Complainant” and “[n]o one reading the web site would be confused as to sponsorship”).
Finally, Respondent’s registration of the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names predates the rights in the HIV INNOCENCE GROUP mark established by Complainant through its registration of the mark with the USPTO. Complainant did not establish common law rights which predate both Complainant’s USPTO filing and Respondent’s registration of the disputed domain names, so Respondent could not have registered or used the disputed domain names in bad faith. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
The Panel finds Policy ¶4(a)(iii) not satisfied.
Reverse Domain Name Hijacking
The Panel finds Complainant has engaged in reverse domain name hijacking because it was clear Respondent was legitimately using Complainant’s mark to make 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. Complainant clearly knew this before it began this proceeding. Complainant did not disclose this obvious fact in its Complaint.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 6, 2013
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