Kendrick Moxon v Donald Myers
Claim Number: FA1407001571591
Complainant is Kendrick Moxon (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Donald Myers (“Respondent”), represented by Graham E. Berry, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kendrickmoxon.com>, registered with NAMESECURE.COM.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 24, 2014; the National Arbitration Forum received payment July 24, 2014.
On July 25, 2014, NAMESECURE.COM confirmed by e-mail to the National Arbitration Forum that the <kendrickmoxon.com> domain name is registered with NAMESECURE.COM and that Respondent is the current registrant of the name. NAMESECURE.COM verified that Respondent is bound by the NAMESECURE.COM registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2014, 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@kendrickmoxon.com. Also on July 28, 2014, 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 August 18, 2014.
Complainant filed an Additional Submission August 24, 2014, that the Panel finds complied with Supplemental Rule 7 and was timely submitted.
On August 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
Complainant:
Complainant makes the following contentions in this proceeding:
Complainant is KENDRICK MOXON, a lawyer in Los Angeles. He has practiced law in California since 1987, appeared on 60 Minutes and other tele-broadcasts as a legal commentator, and is widely known for his representation of high-profile clients—namely members and entities affiliated with the Church of Scientology. See Compl., at Attached Exs. G–K. Prior panel decisions, such as that in Australian Trade Comm’n v. Reader, D2002-0786 (WIPO November 12, 2002). The Panel notes that it is possible to have common law rights and that even if one’s mark has acquired secondary meaning in a relevant geographic area, it need not be renowned across the world. The domain name is identical to the KENDRICK MOXON mark.
Respondent lacks rights and legitimate interests. Respondent is no stranger to Complainant. Respondent harassed one of Complainant’s clients in the past. See Compl., at Attached Ex. D. Complainant also obtained a restraining order against Respondent for the acts towards another of Complainant’s clients. See Compl., at Attached Ex. E. Further, Respondent demanded $10,000.00 for this Internet domain name. Respondent’s right to free speech does not extend to the use of a domain name identical to a trademark for purposes of disparaging that trademark.
Respondent registered and used the domain name in bad faith. Respondent is using the domain name to post false and misleading information related to Complainant. These claims range from “America’s worst attorney?” to claims that Complainant may be involved in various murders. See Compl., at Attached Ex. M. Further, Respondent registered the domain name knowing well that Complainant had rights in a mark.
Respondent:
Respondent makes the following contentions in Response:
Complainant has no real trademark. Complainant may be well known in various social circles related to the Church of Scientology, but he is not well known beyond those circles. Trademark rights require at least some level of broader acceptance of the mark as an identifier.
Respondent has rights to use the domain name. Respondent has been subject to attacks by Complainant and his associates in the Church of Scientology. These include allegations ranging from claims that Respondent is an alcoholic, a thief, and a meth addict, among other claims. See Response, at Attached Ex. C. The Church of Scientology has even targeted Respondent’s counsel.
The domain name’s website has a clear disclaimer that Complainant is not associated with the domain name in any way.
Respondent’s actions through the <kendrickmoxon.com> domain name illustrate an act of free speech and are not jeopardizing Complainant’s career. Complainant is an established and lifelong member of the Church of Scientology and a substantial amount, if not all, of his work derives from that association.
Complainant waited too long to file this complaint. Back in 2010, when the domain name was first developed into a website, an attorney associated with the Church of Scientology forwarded a list of demands and Complainant worked with Respondent to meet several of these demands. It has now been over four years and only now is Complainant challenging the <kendrickmoxon.com> domain name.
Complainant’s Additional Submission
Complainant contends in its Supplemental Submission that the law of laches has no application under the Policy. Complainant also urges in the Additional Submission that Respondent’s disclaimer here does not identify itself as a ”gripe site.” Complainant also urges that once Complainant met the requirement of making a prima facie showing that Respondent has no rights, the burden of proof shifted to Respondent to establish the presence of such rights and Respondent has not done so.
Complainant established rights in the mark contained in its entirety within the disputed domain name.
The Panel finds that Respondent has shown no such rights or legitimate interests.
Respondent registered a domain name that is identical to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 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.
Identical or Confusingly Similar
The Panel notes that Complainant does not claim to have a registered mark, but that is not necessary under the Policy. 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)).
Complainant claims he is KENDRICK MOXON, a lawyer in Los Angeles. Complainant notes he has practiced law in California since 1987, has appeared on 60 Minutes and other tele-broadcasts as a legal commentator, and is widely known for his representation of high-profile clients. See Compl., at Attached Exs. G–K. Prior panel decisions, such as that in Australian Trade Comm’n v. Reader, D2002-0786 (WIPO November 12, 2002), note that it is possible to have common law rights and that even if one’s mark has acquired secondary meaning in a relevant geographic area, it need not be renowned all across the world. The Panel here weighs Complainant’s apparent noteworthiness in representing various clients, particularly the Church of Scientology, in finding whether sufficient evidence supports a finding that a KENDRICK MOXON mark exists for purposes of Policy ¶ 4(a)(i). See id.; see also Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant further claims the disputed domain name is identical to the KENDRICK MOXON mark. The Panel agrees that the domain name is clearly identical to this mark under Policy ¶ 4(a)(i) because the domain name consists of the entire KENDRICK MOXON mark, minus the mark’s spacing, and with the addition of the generic top-level domain ("gTLD") “.com.” See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
Respondent suggests that insufficient evidence supports any finding of a KENDRICK MOXON trademark. Respondent claims that although Complainant may be well known in various social circles related to the Church of Scientology, that he is not well known beyond those circles and that trademark rights require at least some level of broader acceptance of the mark as an identifier. The fact that Respondent registered <kendrickmoxon.com>, as a domain name constitutes some evidence that Respondent acted in a manner that suggests that Respondent believes enough notoriety and “goodwill” attaches to Complainant’s name that others will be attracted to his site by Complainant’s name. Had Respondent’s explanations here had any factual basis, Respondent would attempt to show that he could have registered this domain using Respondent’s mark rather than Complainant’s and attracted the same notoriety. In fact, Respondent’s conduct and use suggests secondary meaning in Complainant’s mark and this Panel so finds. The Panel finds that Complainant has shown secondary meaning in Complainant’s mark.
The disputed domain name is identical to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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.”).
The Panel notes that Respondent at no point claims or could claim to be commonly known as the <kendrickmoxon.com> domain name. As such, the Panel agrees that no basis supports a finding under Policy ¶ 4(c)(ii) of rights or interests in the Respondent. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent is no stranger to Complainant. Respondent harassed one of Complainant’s clients in the past. See Compl., at Attached Ex. D. Complainant also obtained a restraining order against Respondent for acts toward another of Complainant’s clients. See Compl., at Attached Exs. C, E. The Panel notes the domain name resolves to a website critical of the Complainant. See Compl., at Attached Ex. H. The Panel agrees that evidently powerful emotions and views are involved as to both parties to this dispute. However, the Panel agrees that the use of a domain name identical to a common law trademark is not the appropriate venue for such a discussion—indeed, there are other possible combinations of words or phrases that Respondent could use to express his message. See, e.g., Philip Morris USA Inc. v. DAVID DELMAN, FA 155882 (Nat. Arb. Forum Apr. 29, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 155881 (Nat. Arb. Forum Apr. 29, 2014); Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Jan. 29, 2014).
The Panel notes that Respondent urges that it includes a disclaimer on the resolving page informing Internet users that the website is not associated with Complainant. See Response, at Attached Ex. A. The Panel finds that this disclaimer does not sufficiently mitigate confusion under Policy ¶ 4(a)(ii). See AltaVista Co. v. AltaVisa, 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”).
Further, Complainant points out that Respondent demanded $10,000.00 for this Internet domain name. See Compl., at Attached Ex. F. The Panel views this demand as evidence of a lack of rights, even taking into account that evidence suggests that a bargaining process was involved here and it is not clear whether Respondent made any first offer to sell. See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Complainant established a prima facie case to support its arguments that Respondent lacks rights and legitimate interests in the disputed domain name 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 it has rights to use the domain name and is making a legitimate noncommercial and fair use. Respondent has been subject to attacks by Complainant and his associates in the Church of Scientology. Respondent claims these include allegations ranging from Respondent’s being an alcoholic, a thief, and a meth addict, among other claims. See Response, at Attached Ex. E. Respondent claims his use of the domain name is merely another front in the feud between the two. Respondent also maintains that since 2010 he has made no commercial gain from the website, but instead provides noncommercial criticism. Respondent does not concede that some Court granted a Restraining Order against him to stop his activities. The Panel finds that Respondent’s use is does not give rise to legitimate rights. But see BioCryst Pharms., Inc. v. Patel, D2005-0674 (WIPO Aug. 4, 2005) (denying transfer of the <biocrystpharmaceuticals.com> domain name where the respondent was using the domain name to provide non-commercial criticism about the complainant).
Respondent also notes use of a disclaimer to alert users that the page is not affiliated with Complainant. See Response, at Attached Ex. A. Previous panels have considered the utility of disclaimers in the Policy ¶ 4(a)(ii) analysis. See, e.g., Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (finding that the respondent’s website contained an express disclaimer of any affiliation with the complainant, and that the respondent had rights or legitimate interests in the <best-of-vanguard.com> domain name and did not register it in bad faith). Here, Respondent admits the differences and discord in Respondent’s relationship with Complainant and accordingly, it is difficult for this Panel to accept that you may dislike someone and use the Internet in their own name to spread negative information about them to such an extent it draws Temporary Restraining Orders and still act in good faith.
The Panel finds that Respondent has shown no rights to Complainant’s mark and no legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel again weighed the exchange in Complainant’s Exhibit F in determining the severity of Respondent’s intent to get $10,000 for the domain name. Despite the inability to determine from which party the offer to purchase first came, Respondent’s offer to sell it for $10,000.00 in the absence of proof that the amount sought is less than Respondent’s reasonable cost of registration and any development supports findings of bad faith registration and use. The Panel so finds pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant claims Respondent registered and used the domain name in bad faith. Respondent is using the domain name to post false and misleading information related to Complainant. These claims range from “America’s worst attorney?” to claims that Complainant may be involved in various murders. See Compl., at Attached Ex. M. The Panel again agrees that Respondent’s interest in free speech in this instances does not extend so far as to use Complainant’s own name, i.e. trademark, and that such knowing use of the domain name to criticize Complainant goes far enough to constitute Policy ¶ 4(a)(iii) bad faith. See Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (“Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.”).
Further, Complainant claims Respondent registered the domain name knowing full well that Complainant had rights in a mark. The Panel agrees; Respondent was aware of Complainant’s rights. The Panel finds that Respondent registered and used the disputed domain name in bad faith registration under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Taking into consideration the full range of the Policy’s factors that constitute bad faith pursuant to Policy ¶ 4(b) along with the specifics shown for this relationship of the parties, the Panel finds bad faith under the totality of the evidence, pursuant to Policy ¶ 4(a)(iii).
Laches
Respondent alleges that Complainant has waited too long to file this complaint. Back in 2010, when the domain name was first developed into a website, an attorney associated with the Church of Scientology forwarded a list of demands and Complainant worked with Respondent to meet several of these demands. It has now been over four years, according to Respondent, since then and only now is Complainant challenging the <kendrickmoxon.com> domain name.
The Panel finds that despite the two approaches to the doctrine of laches and its application to cases under the Policy, laches under neither would apply in this case. Respondent’s suggestion that four years is sufficient to show laches, or a failure to make a timely objection to Respondent’s domain name is somewhat disingenuous inasmuch as Respondent reports the two started negotiating four years ago. The Panel finds no laches. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kendrickmoxon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 4, 2014.
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