Dr. James J. Spilker, Jr. v. Mark Spilker
Claim Number: FA1308001513443
Complainant is Dr. James J. Spilker, Jr. (“Complainant”), represented by Eric A. Handler of Donahue Gallagher Woods LLP, California, USA. Respondent is Mark Spilker (“Respondent”), represented by George W. Pfeiffer of Law Offices of George W. Pfeiffer, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2013; the National Arbitration Forum received payment on August 7, 2013.
On August 7, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@drjamesjspilker.com, postmaster@drjamesjspilker.net, postmaster@drjamesspilker.com, postmaster@drjamesspilker.net, postmaster@drjimspilker.com, and postmaster@drjimspilker.net. Also on August 15, 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 September 4, 2013.
An Additional Submission was received from Complainant on September 9, 2013 and on September 10, 2013 was determined to be compliant with Supplemental Rule 7.
On September 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names are confusingly similar to Complainant’s DR. JAMES J. SPILKER mark.
2. Respondent does not have any rights or legitimate interests in the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names.
3. Respondent registered and uses the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names in bad faith.
B. Respondent
1. Respondent does not concede that Complainant has rights in the DR. JAMES J. SPILKER mark, and third parties are unlikely to be confused by Respondent’s use of the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names.
2. Respondent is making a legitimate noncommercial or fair use of the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names because Respondent’s use is nominal.
3. Respondent did not register and is not using the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names in bad faith.
C. Complainant’s Additional Submission
1. Respondent’s use of the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names is not relevant to the Policy ¶ 4(a)(i) analysis.
2. Panels have routinely rejected First Amendment arguments made by respondents.
3. Respondent did not cite any UDRP precedent to support its contentions.
Complainant has common law trademark rights in his name, Dr. James J. Spilker, and variations thereof, used in connection with the provision of engineering services since 1958. Complainant has achieved international recognition, particularly in the field of Global Positioning Systems, through numerous publications, lectures, awards and leadership positions.
Respondent registered all of the disputed domain names on September 8, 2012, and uses two of them for a website criticizing Complainant, and the others to host links to third-party commercial websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant does not assert rights in a registered trademark. However, past panels have found that ownership of a registered trademark is not necessary for establishing rights under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel notes that it is possible to meet the burden of establishing rights under Policy ¶ 4(a)(i) by demonstrating common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant contends he has common law rights in the DR. JAMES J. SPILKER mark, used in connection with Complainant’s consulting business relating to GPS technology and telecommunications. Complainant states that he was one of the primary designers of the GPS technology now used by more than two billion people, and Complainant has been operating a consulting business since 1997. Complainant asserts that his personal name has also been used in connection with various books and articles written by Complainant, and over 100,000 copies of Complainant’s various written works have been printed. In Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001), the panel found that a complainant could establish common law rights in a personal name when “he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.” Complainant provided extensive information about his numerous publications, lectures, awards and leadership positions. See also Dr. Veronique Simon v. Loft Sam, FA 1446855 (Nat. Arb. Forum July 13, 2012) (finding that the complainant had common law rights in the VERONIQUE SIMON mark that was used in connection with her professional capacity as a physician and commercially in connection with her product lines). Therefore, the Panel finds that Complainant has established common law rights in its personal name, DR. JAMES J. SPILKER, under Policy ¶ 4(a)(i).
Respondent’s <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names are identical or confusingly similar to Complainant’s DR. JAMES J. SPILKER mark. The Panel notes that the <drjimspilker.com>, <drjimspilker.net> domain names use the word “jim,” which is a common derivation of the name “james” and is one that Complainant states it has regularly used. The disputed domain names also delete the spaces and punctuation between Complainant’s mark and add a generic top level domain of either “.com” or “.net.” These changes do not distinguish the disputed domain names from Complainant’s mark. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Dawson v. Doctor, FA 521036 (Nat. Arb. Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”). Therefore, the Panel finds that Respondent’s <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names are confusingly similar to Complainant’s DR. JAMES J. SPILKER mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its DR. JAMES J. SPILKER mark. Past panels have looked to whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS record for all of the disputed domain names lists “Spilker, Mark” as the domain name registrant, Complainant’s son. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). Therefore, the Panel finds that Respondent is not commonly known by the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names.
Complainant asserts that the <drjamesjspilker.com> and <drjamesspilker.com> domain names resolve to a “complaint website,” featuring allegations of “Child Abuse,” among other allegations. Complainant claims that these domain names are being used for the sole purpose of criticizing Complainant as the mark owner, in retaliation for Complainant’s sizable donation to Stanford University. Past panels have found that free speech protects the content of a website to which a domain name directs, but does not afford the Respondent rights or legitimate interests in the domain name itself when it is infringing on the trademark of another. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”); see also Paul Petrovich and Petrovich Dev. Co. v. Jazz Melody, FA 290894 (Nat. Arb. Forum Sept. 10, 2004) (finding legitimate or fair use impossible to establish when a domain name incorporates nothing more than another’s mark and a gTLD and is used to criticize the mark owner); see also Monty and Pat Roberts, Inc. v. Bill Keith, Case No. D2000-0299 (WIPO) (holding that one may truthfully criticize a mark owner but not via a domain name implying to Internet users who have not yet visited the website affiliated therewith that the affiliated website is somehow sponsored or endorsed by the mark owner – which us exactly what happens when the domain name consists of nothing but the mark owner’s mark plus a gTLD). Therefore, the Panel finds that Respondent does not have legitimate rights or interests in the <drjamesjspilker.com> and <drjamesspilker.com> domain names under Policy ¶ 4(a)(i).
Complainant alleges that Respondent is using the <drjamesjspilker.net>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names to host links to third-party commercial websites. Past panels have found that using a confusingly similar domain name to host third-party links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Thus, the Panel finds that Respondent is not using the drjamesjspilker.net>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names in connection with a bona fide offering of goods under Policy ¶ 4(c)(i) or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered multiple domain names in order to prevent Complainant from reflecting its mark in corresponding domain names. Complainant notes that Respondent registered six domain names incorporating variations of his name, thus frustrating Complainant’s ability to register domain names containing his name and mark. Past panels have found that a respondent who owns multiple infringing domain names in a proceeding has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent registered and is using the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names in bad faith under Policy ¶ 4(b)(ii).
Respondent is using the <drjamesjspilker.net>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names to host links to third-party commercial websites from which Respondent is presumably receiving click through revenue. Such conduct has been found to constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel finds that Respondent’s use of the <drjamesjspilker.net>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names to host links to third-party commercial websites constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant claims that the “complaint website” affiliated with Respondent’s <drjamesjspilker.com> and <drjamesspilker.com> domain names also demonstrates Respondent’s bad faith. Complainant contends that Respondent registered these domain names for the purpose of criticizing Complainant by making defamatory allegations against Complainant. This constitutes bad faith under Policy ¶ 4(a)(iii). See Diners Club Int’l, Ltd. v. Infotechnics Ltd. FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith). The Panel accordingly finds that Respondent registered and is using the <drjamesjspilker.com> and <drjamesspilker.com> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 23, 2013
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