Adam Milstein v. Benjamin Doherty
Claim Number: FA1511001647496
Complainant is Adam Milstein (“Complainant”), represented by Robert D. Mitchell of Tiffany & Bosco, P.A., Arizona, USA. Respondent is Benjamin Doherty (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adammilstein.com>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2015; the Forum received payment on November 17, 2015.
On November 20, 2015, 1API GmbH confirmed by e-mail to the Forum that the <adammilstein.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 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@adammilstein.com. Also on November 24, 2015, 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 December 13, 2015.
On December 18, 2015 the Forum received an Additional Submission on behalf of Complainant that was timely and in order.
On December 21, 2015 the Forum received an Additional Submission from Respondent that was timely and in order.
On December 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
On December 22, 2015, the Forum received an amended Additional Submission from Respondent that was timely and in order and superseded Respondent’s previous Additional Submission.
On December 31, 2015, the Panel issued Procedural Order No.1 to the parties. The terms of the Order and Respondent’s responses are discussed by the Panel in this decision.
On March 3, 2015, the Forum received an Additional Submission from Respondent in response to the Panel’s Procedural Order No.1.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant has rights in the ADAM MILSTEIN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,841,190, first use December 2, 2014, filed March 19, 2015, registered on October 27, 2015). Respondent’s <adammilstein.com> domain name is identical to the ADAM MILSTEIN mark because it contains the entire mark, less the space, along with the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
2. Respondent is not commonly known by the <adammilstein.com> domain name, as the domain is identical to Complainant’s name.
3. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website redirects Internet users to a third party website used to harass and defame Complainant.
Policy ¶ 4(a)(iii)
4. Respondent registered and uses the <adammilstein.com> domain name in bad faith because it registered the name to intentionally target Complainant and uses the domain to redirect Internet users to a third party website used to harass and defame Complainant.
B. Respondent
Respondent made the following contentions.
Policy ¶ 4(a)(i)
1.The domain at issue was registered in December 2014, almost one year before the trademark “Adam Milstein” was registered.
2.Complainant was conducting political activities with the name “Adam
Milstein” but not conducting commercial or philanthropic activities using that name as an unregistered trademark.
3. Complainant’s post facto registration of “Adam Milstein” as a trademark is a cynical attempt to bring his political activities within the purview of the UDRP and thus use the UDRP to silence legitimate criticism of his positions as a public figure.
4. The complaint is harassment of persons making legitimate political commentary regarding the public activities of the complainant and of journalists who report on the complainant’s political activism.
5.The very fact of the complaint constitutes an abuse of this administrative proceeding because it intends to harass the domain owner and journalists associated with the publication “The Electronic Intifada.”
6.Notwithstanding the fact that the complaint was not using “Adam Milstein” as a trademark, Complainant’s rights to his registered trademark cannot negate the rights of journalists to report on his activities which are of significant public interest.
7. Furthermore, U.S. trademark law grants non-owners nominative fair use rights to use a trademark in criticism and analysis of the product or services identified by the mark.
Policy ¶ 4(a)(ii)
1. Respondent affirms that he pays the registration fee to provide a legitimate information online service at the domain name “adammilstein.com.” Respondent receives no income from this service.
2. Since the facts published at “adammilstein.com” (Annex A) are uncontested by
Complainant, there can be no showing that Respondent actually or intended to mislead or divert consumers.
Policy ¶ 4(a)(iii)
1.The Complaint is unsupportable as the domain name was registered in
December 2014 while the “Adam Milstein” trademark was registered in October 2015, and “Adam Milstein” was not previously in use as a trademark or service mark for public figure Adam Milstein’s philanthropic or commercial activities.
2.It is impossible that Respondent’s “use of the domain name is to … tarnish the mark “Adam Milstein’” because that mark was not registered until almost a year after the registration was made.
3.The complaint asserts that the “clear intent of the Respondent’s use of the domain name is to defame Adam Milstein, tarnish the mark ‘Adam Milstein,’ disrupt the charitable work of Adam Milstein, and deter potential charitable donors.”
4.However, there is nothing defamatory about the contents of the article (Annex A). If they were false, Complainant should have taken action against the publisher. In the absence of any attempt to correct purported falsehoods, the
report must be recognized as factual and any claims of “defamation” cannot be supported.
5.Complainant does not deny any of the statements attributed to him or
challenge a single fact stated in the article.
6.It is self-contradictory that Milstein’s uncontested statements and uncontested acts, described in the article, “tarnish” his “mark.” Any tarnishing has been done by Complainant.
7. The Complainant is therefore an abuse of the UDRP process to tidy
up his image.
8. Complainant is “tarnishing” the trademark by continuing to publish
exactly the kinds of statements exposed in the article hosted at adammilstein.com.
9. If “Adam Milstein” is a mark under which “services” are provided, then it is
legitimate and fair for watchdogs to provide accurate information to potential “consumers” about those “services.”
10. Complainant wishes to engage in political commentary — his right —
while limiting the fair use of his name by those wishing to respond to his political commentary.
11. Respondent’s use of the domain name — for almost a year before the trademark “Adam Milstein” was registered — is and remains noncommercial, legitimate and fair.
C. Additional Submissions
Complainant
1. Under the UDRP it is not necessary to show that the trademark relied on was registered before the disputed domain name.
2. In any event, in the present case, Respondent registered the domain name knowing of Adam Milstein and with the intention of diverting internet users to Respondent’s anti-Adam Milstein website.
3. The nominative fair use defence relied on by Respondent does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark.
4. The present case is not one of journalistic criticism but one of usurping a trademark by registering the domain name to mislead and intentionally redirect internet traffic to a website disparaging of the trademark owner.
5. Bad faith may be shown in an appropriate case although the domain name was registered after the trademark.
Respondent
Respondent made the following further contentions
1. Complainant has not established the Respondent’s bad faith for the purposes of the Policy as no registered or unregistered trademark existed or could reasonably have been foreseen at the time the Respondent registered the domain name.
2. The mere fact that the Respondent was aware of the Complainant is insufficient grounds to prove bad faith without showing additional circumstances.
3. Complainant’s burden is not just to show that the Respondent knew of the Complainant’s existence but that he knew of his potential rights.
4. Complainant must show that Respondent knew or should have known that some relevant event which could enable commercial gain from the
Domain name was imminent (eg. a merger, construction of a new mall, launch of a new product or venture).
5. In the present case, the Complainant has shown no evidence that the Respondent knew or could reasonably foresee that rights in a trademark “Adam Milstein” were soon to arise.
6. The fact that the Complainant waited months after the Respondent registered the domain to file an application for the trademark is a further indication that the creation and or use of a trademark “Adam Milstein” was not imminent, or from the perspective of the Respondent reasonably foreseeable. Moreover, Complainant has not claimed that he has unregistered trademark rights.
7. Complainant could not provide evidence of a common law right sufficient to
meet the high burdens that UDRP Panels have required for the protection of personal names even if he chose to do so.
8. Accordingly, the domain name could not have been registered in bad faith because no registered or unregistered trademark existed or could reasonably have been foreseen at the time.
“Procedural Order No.1
Pursuant to Rule 12 of the Rules, the Panel in its discretion requests Respondent to provide to the Panel the following further statements and documents.
Statements
1. In the Complaint, Complainant states that the disputed domain name <adammilstein.com> (“the disputed domain name”) was registered on December 15, 2014 and the Complaint exhibits as Annex 1 the WHOIS Search result showing that the creation date of the disputed domain name was December 15, 2014. In the Response, Respondent states that the disputed domain name was registered “in December 2014.” With that background, Respondent is requested to state:
(a) Did Respondent register the disputed domain name on December 15, 2014?
(Answer)Yes.
(b) If so, for what term or period of time did Respondent so register the disputed domain name?
(Answer) 1 year.
(c) Has Respondent renewed the registration of the disputed domain name?
(Answer) Yes. It was automatically renewed without my intervention.
(d) If so, on what date did Respondent renew the registration of the disputed domain name?
(Answer) 7 November 2015
(e) Until what date did Respondent renew the registration of the disputed domain name?
(Answer) Automatic renewal is for one year, so it will expire on 16 December 2016.
2. The WHOIS Search result exhibited as Annex 1 to the Complaint states:” Updated Date:2015-09-22TO5.34.31Z”.
With that background, Respondent is requested to state:
(a) Is Respondent aware of what act or event occasioned the update of the WHOIS database on September 22, 2015; and, if so,
(Answer) Respondent is not aware of any act or event that updated the whois database. Respondent has not even accessed the registrar's web site since the original registration event on 15 December 2014.
(b) what was that act or event?
(c) Did Respondent update the WHOIS database on September 22, 2015 and, if so, in what respect?
3. The WHOIS Search result exhibited as Annex 1 to the Complaint states: “Last update of whois database: Fri 06 Nov 2015 22:13:48 GMT <<<”.
With that background, Respondent is requested to state:
(d) Is Respondent aware of what act or event occasioned the last update of the WHOIS database on November 6, 2015; and, if so,
(Answer) Yes.
(e) what was that act or event?
(Answer) This date is close to the renewal date, so it is reasonable to infer that the WHOIS database update was caused by the automatic renewal.
(f) Did Respondent update the WHOIS database on November 6, 2015 and, if so, in what respect?
(Answer) The Respondent did not update the WHOIS database but assumes the update for 6 November 2015 is related to the automatic renewal.
4. The WHOIS Search result exhibited at Annex 1 to the Complaint provides among other things the following information on the registrant of the disputed domain name:
Registry Registrant ID:
Registrant Name: Benjamin Doherty
Registrant Organization:
Registrant Street: Po Box 11671
Registrant City: Wellington
Registrant State/Province: IL
Registrant Postal Code: 6142
Registrant Country: NZ
Registrant Phone: +64.11111111
Registrant Phone Ext:
Registrant Fax:
Registrant Fax Ext:
Registrant Email: domains@bangpound.org
With that background, Respondent is requested to state whether the above information is accurate in every respect and, if not, which parts of it are inaccurate and in what respect?
(Answer) Benjamin J Doherty is my name and email sent to the address “domains@bangpound.org” is received directly by me.
The registrant street, city, postal code and country are all provided by the registrar's WHOIS privacy feature that masks physical location information. For privacy and security, I avoid publishing personal physical location data online while still accurately identifying myself and providing easy means to reach me.
5. In the Complaint, Complainant states that “Respondent is using the domain name adammilstein.com to divert internet traffic to a website run by the Electronic Intifada See Annex 4.”
With that background, Respondent is requested to state:
(a) To the knowledge of Respondent, is the internet address of the Electronic Intifada www.electronicintifada.net ?
(Answer)Yes
(b) Did Respondent cause the disputed domain name to resolve to www.electronicintifada.net?
(Answer)Yes.
(c) If so, on what approximate date did Respondent cause the disputed domain name to so resolve to that website?
(Answer) The domain name was directed to that web site at the same time when the domain name was purchased in December 2014.
(d) Between what approximate dates has the disputed domain name resolved to the website in question?
(Answer) Since 16 December 2014.”
The Panel accepted all of the additional submissions and took them into account in reaching its decision.
1. Complainant and Respondent are resident in the United States.
2. Complainant has rights in the ADAM MILSTEIN service mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,841,190, first use December 2, 2014, filed March 19, 2015, registered on October 27, 2015) ( “the ADAM MILSTEIN mark”).
3.Respondent registered the disputed domain name on December 15, 2014 and renewed the registration on 7 November 2015.
4. On or about 16 December 2014 Respondent caused the domain name to resolve to the website of The Electronic Intifada at www.electronicintifada.net and it has remained so resolved to that website since then.
5. Respondent has no rights or legitimate interests in respect of the disputed domain name.
6.The disputed domain name has been registered and is 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 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.
The first question that arises is whether Complainant has a trademark or service mark on which it may rely. Complainant claims rights in the ADAM MILSTEIN mark through its registration as a service mark with the USPTO (Reg. No. 4,841,190, first use December 2, 2014, filed March 19, 2015, registered on October 27, 2015). Complainant has provided evidence of this registration in Annex 3. Accordingly, the Panel finds that Complainant has rights in the ADAM MILSTEIN mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
A complainant in UDRP proceedings may also rely on an unregistered or common law trademark. In the present case, however, Complainant has relied only on his registered trademark and has not sought to argue that he also has common law trademark rights.
The second issue that arises is whether the disputed <adammilstein.com> domain name is identical or confusingly similar to Complainant’s ADAM MILSTEIN mark. Complainant argues that it is identical, as the domain name reproduces the entire mark, less the space between the two words in the trademark, and the gTLD “.com” which are not taken into account for the purpose of making the comparison between the domain name and the trademark. The Panel finds that the domain name is identical to Complainant’s ADAM MILSTEIN trademark mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
In opposition, Respondent has argued that Complainant has been conducting political activities with the name “Adam Milstein”, but that he has not used that name for conducting commercial or philanthropic activities using that name as an unregistered trademark. As has already been pointed out, Complainant has not submitted that it has a common law or unregistered trademark in ADAM MILSTEIN and relies solely on its registered trademark, so that argument does not arise for decision. In so far as this argument relates to the trademark registered with the USPTO, that argument cannot be used to attack the validity of the registered service mark, if that is the reason for raising it. The mark was registered with the USPTO for “Philanthropic and charitable services, namely providing classes, seminars, and workshops in the field of democracy and freedom values, anti-semitism, religious principles as a basis to building coalitions between different faiths, the U.S.-Israeli alliance and the issues facing Israel today, in class 41(U.S. CLS.100,101 AND 107).” Clearly the trademark is valid and it is well established that a UDRP panel cannot go behind the registration of a trademark by a competent national authority or seek to weaken its operation or effect. The mark is valid and this part of the first element has thus been established.
Respondent in further opposition has also argued that the registration of Complainant’s trademark is “post facto”, meaning that it was registered after the registration of the domain name. This argument has been raised many times in UDRP cases over the years, but the regular practice of panellists appointed to hear these disputes is to defer the consideration of such issues until dealing with rights and legitimate interests and bad faith. The reason for doing so is that the first issue, which is presently under consideration, is solely an inquiry into whether the complainant “has” a trademark, i.e. has one at the time the question is being considered and not whether it previously had a trademark or whether it acquired one after the domain name was registered. Clearly, if the relevant trademark was not registered until a later time when the domain name had already been registered, this may have consequences that have to be considered. But those questions, on the plain words of the Policy, must be left until the panel deals with rights and legitimate interests and bad faith. That view is well supported by previous UDRP decisions. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
The same must be said for Respondent’s other arguments under this, the first element, namely that Complainant in bringing the complaint is making “a cynical attempt to bring his political activities within the purview of the UDRP” and thus use the UDRP to silence legitimate criticism of his positions as a public figure,
that the complaint is harassment of persons making legitimate political commentary and an abuse of the proceeding, and that Respondent can rely on the defence of nominative fair use. All of those questions are substantial ones, as will be seen and they will be dealt with later in this decision under rights and legitimate interests and bad faith.
The Panel therefore finds that Complainant has made out the first of the three elements that he must establish.
It is now well established that 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 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.”).
The Panel finds that Complainant has made out a prima facie case because Complainant has a trademark and Respondent has incorporated the whole of the trademark into his domain name, making the domain name identical to the trademark. Moreover, it is clear that Respondent is not commonly known by the <adammilstein.com> domain name and Respondent does not argue that he is commonly known by the domain name. Additionally, Complainant has not authorized Respondent’s use of the ADAM MILSTEIN mark in the domain name. The prima facie case required has therefore been established
The far more substantial and difficult question, however, is whether Respondent has rebutted the prima facie case against him. Respondent has put forward several arguments in his Response designed to show that he has a right or legitimate interest in the domain name. The first is that there is, “a right for persons making legitimate political commentary regarding the public activities of the complainant and of journalists who report on the complainant’s political activism”. The second consists of “the rights of journalists to report on his (Complainant’s) activities which are of significant public interest”. The third is that “he pays the registration fee to provide a legitimate information online service at the domain name “adammilstein.com.”” The fourth is that it is legitimate and fair for watchdogs to provide accurate information to potential “consumers” about those “services.” The fifth is to assert the right of “those wishing to respond to his political commentary.” Respondent also puts the general proposition that “U.S. trademark law grants non-owners nominative fair use rights to use a trademark in criticism and analysis of the product or services identified by the mark.” In presenting his case, Respondent subsumed these points in a general case that his free speech rights gave him a right or legitimate interest in the domain name as he was making a legitimate noncommercial or fair use of the domain name within the meaning of paragraph 4(c)(iii) of the Policy.
Respondent also submitted an Additional Submission, but this deals with the issue of bad faith and in particular whether there can be bad faith registration if, as Respondent contends, Complainant’s trademark was registered only after and not before the registration of the domain name. Respondent also properly conceded in response to the Procedural Order that he had caused the domain name to resolve to the website at www.electronicintifada.com “at the same time when the domain name was purchased in December 2014.”
Before proceeding it is instructive to note that in each case, Respondent does not contend that it is he who has made the commentary in question, but “persons”, “journalists”, “watchdogs” and “those wishing to respond to his (Complainant’s) political commentary.”
“Freedom of speech or expression is a strongly protected constitutional right in the United States. Yet individuals do not enjoy absolute freedom of expression with respect to terms protected as trademarks or service marks. Rights granted to trademark owners operate as a limited restriction on freedom of speech (see, e.g., Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560). The strong free speech right may come into tension with trademark rights, and it is the role of courts and administrative panels to sort out the proper balance.”
How that balance has been sorted out has led to sustained argument and produced a series of differing and sometimes conflicting results. In so far as it is possible to categorize them, they have fallen into at least two categories and possibly a third. One view is that the free speech defence applies only to the content of the website to which the disputed domain name resolves and not to the domain name itself. Thus, if the domain name is identical or confusingly similar to the complainant’s trademark, there has been a tendency among some panelists to find that the registrant of the domain name does not have a right or legitimate interest in the domain name itself, as it is in effect presenting itself as the individual or company whose name is embodied in the domain name which it is said is not protected. The second view is that a registrant may have such a right or legitimate interest based on free speech to register even the identical or confusingly similar domain name as well as the contents of the website. Decisions concerning US parties have generally favoured the latter view, resulting in decisions holding that the registrant has a right or legitimate interest in the domain name as well as the website, although decisions have understandably gone either way and on occasions with dissenting opinions, depending on the individual and differing facts and circumstances of the particular case.
The two views are usefully explained, together with decisions supporting each view, in the recently published Domain Name Arbitration[1], by Gerald M. Levine at pages 394-401.
The author, however, also describes a third view, “a middle path” as it were, based on “a more nuanced examination of the evidence”, and one that takes into account the “totality of the circumstances”. Although UDRP decisions are not precedents in the judicial sense, a strong logical case is made out for this approach in Fundacion Calvin Ayre Foundation v. Erick Deutsch, WIPO Case D2007 -1947 and Midland Heart Limited v. Uton Black, WIPO Case D2009-0076. The present Panel finds the third view a useful one, particularly as it is consistent with the overriding obligation of the panelist to determine the case having regard to the entirety of the evidence and the circumstances. The two decisions just referred to suggest several criteria to use to assess whether the respondent registrant has a legitimate interest in the disputed domain name. They are all relevant, but two of them are particularly useful and in any event should be at the heart of this issue. They are: “(a) Has the domain name been registered and is it being used genuinely for the purpose of criticizing the owner of the mark?” and
(b) Does the registrant believe the criticism to be well founded?”
Those two criteria focus attention on a substantial defect in Respondent’s case that it has a right or legitimate interest in the domain name and leads the Panel to conclude that Respondent has not succeeded in making out that case. The evidence shows that Respondent registered the domain name and “at the same time” immediately caused it to resolve to the website at www.electronicintifada.com, to which it has continued to resolve to the present day. In effect, Respondent has outsourced or delegated in advance to the publisher of and contributors of The Electronic Intifada his right to criticize Complainant by saying whatever they wish about Complainant and in the future. Whatever they say, if it is on the website at www.electronicintifada.com, it is presented to internet users under the imprimatur that Respondent has created by taking Complainant’s name without his permission, embodying it in a domain name and linking it to that site. Moreover, as the Panel understands it, there is no way for Respondent to restrict it to genuine criticism or to verify if it is genuine and well-founded criticism or not. Certainly, there is such process demonstrated by the evidence. The evidence is limited to a series of articles in The Electronic Intifada written by others, but not by Respondent, that refer to Complainant and the issues and activities in which he has been involved. Those articles are highly critical of Complainant and his activities and are disparaging of him.
In any event, Respondent has clearly not used the website to carry his own criticism of Complainant unless he has simply adopted in advance whatever others might write about Complainant. Thus, the domain name resolves not to the home page of the site but to a page published on 15 December 2014 that is certainly aimed at Complainant, but is written not by Respondent but by Abraham Greenhouse. It should also be added that the page of the site that greets internet users carries an active link to the entirety of the site which, when activated, leads the visitor to a series of articles critical and disparaging of Complainant published up to and including November 29, 2015, including one written after the registration of Complainant’s trademark on October 27, 2015, and written not by Respondent but by a series of other writers, including Mr. Greenhouse. That being so, it is difficult to see how Respondent could possibly know in advance that what he was permitting the site to publish under the domain name <adammilstein.com> about Complainant would be genuine or well-founded criticism or not. Nor is there any evidence to suggest that Respondent took any steps to ensure that what would be said about Complainant on the site in the future would be genuine and well-founded criticism or that he checked after the event to see whether they were genuine and well-founded criticism or not.
Indeed, on a close examination of Respondent’s own version of how the contents of the site amount to protected criticism, he states not that he is using it for his own criticism of Complainant, criticism that he has written himself, but that the site has been used for “persons”, “journalists”, “watchdogs” and “those wishing to respond to his (Complainant’s) political commentary.” Whatever the ambit of the right to criticise using another party’s trademark, it cannot go as far as an unlimited right to invite others to be at large to say in the future whatever they wish about Complainant and irrespective of whether it is true or false, defamatory, abusive or otherwise, genuine or well-founded criticism or not.
UDRP decisions are not precedents in the judicial sense, and they all depend on their own circumstances which vary from case to case, but there have been numerous decisions consistent with the above approach. Many of those decisions are collected in Levine, (supra), under the heading “Extreme Expression”.[2] It is not necessary to discuss them in detail, but the remarks in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez Case No: D2002-0823 (albeit dealing with the issue of free speech between non-US parties) are apposite:
“Freedom of speech must be balanced with some degree of control, manner and regulation to avoid the arising of abuses; limits must be set.”
It seems to the Panel that Respondent has registered the domain name and used it in the manner described with no control, manner or regulation to avoid the abuse and no limits at all. Rather, he has, without any control, supervision or limits registered a domain name using Complainant’s name and created an active link to the whole of the website to enable whatever might be said about Complainant in the future on the website to be accessed by internet users.
In the Sutherland Institute case (supra), the panelist was dealing with a situation where the complainant was an organization named the Sutherland Institute which, among other issues, promoted the cause against same sex marriage and the registrant of the domain name had registered the domain name <sutherlandinstitute.com> and used it to promote the opposing view and in effect to criticize the complainant. The registrant had also used the domain name to set up a website that had the potential to confuse internet users as to whether the site was the site of the complainant or its rival, an issue that also arises in the present case. The panelist resolved the issue by deciding that the principle involved was as follows:
“From the standpoint of determining whether Respondent is engaged in legitimate non-commercial use of the disputed domain name, the basic question is whether Respondent is justified in (a) calling itself “Sutherland Institute” in the disputed domain name, and (b) creating a website with the evident purpose of causing Internet user confusion regarding whether its website is operated by Complainant, until a close examination of the website contents should (but apparently does not always) reveal that it is not operated by Complainant.”
The panelist decided that: “The Panel is not convinced that Respondent's free speech interests take such significant precedence over Complainant's interest in being properly identified by the public as to cause Respondent to have a legitimate interest in the disputed domain name, as such. The Panel determines that Respondent has not made legitimate noncommercial use of the domain name because of the extent to which the domain name and its website are designed to induce Internet user confusion.”
Those remarks are, in the opinion of the Panel, equally applicable to the present case. In the present case, as in the Sutherland Institute case, the domain name registrant has taken the entirety of the trademark and used it with no additions or qualifications at all and no indication in the wording of the domain name that it is a criticism site or one inimical to the interests of Complainant and has replicated it as a domain name. He has in effect held out to the world that the domain name is Complainant’s domain name that in the ordinary course of events will lead to Complainant’s website. Put in somewhat different words, Respondent has in effect called himself Adam Milstein, just as the registrant in the Sutherland Institute case in effect called itself the Sutherland Institute. In the opinion of this panelist, accordingly, Respondent has not established that he has “a legitimate interest in the disputed domain name, as such.”
Likewise, “Respondent has not made legitimate noncommercial use of the domain name because of the extent to which the domain name and its website are designed to induce Internet user confusion.” The domain name itself clearly induces internet user confusion because Respondent has encouraged internet users, falsely, to believe that the domain name is the domain name of Adam Milstein and, because it is linked to a website, that website is one to which Adam Milstein himself has directed them. Also for the reasons given, the use that Respondent has made of the domain name by delegating the contents of the commentary on Complainant to others and for the future is not legitimate.
A similar view to this was taken in 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.”). A similar view was also taken in Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”).
Consistent with those and other decisions and with the known facts, the Panel finds that the domain name is likely to create confusion about the source of the resolving website, and the Panel thus finds that Respondent fails to provide a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel’s view on this issue is underlined by three additional considerations. First, the page of the website first presented to the user on arrival at the website contains an article which is highly critical of Complainant when the text is examined. But it is supported by two “tweets” apparently from Complainant himself and accompanied by what purport to be photographs of Complainant. These features, although obviously not conclusive, add to any confusion already created by the fact that the domain name consists entirely of Complainant’s name and that it is not being used for any purpose apart from resolving to The Electronic Intifada website.
Secondly, the site contains a series of articles disparaging of Complainant published up to and including November 29, 2015 and thus, in one such case, after the registration of the trademark on October 27, 2015. But nowhere on the site, so far as the Panel is able to see, is there a disclaimer negating any notion that Complainant is associated with the site or the domain name that led to it.
Thirdly, it should be understood that the view taken by the Panel does not in any way negate or limit the right of Respondent, The Electronic Intifada, or for that matter anyone else, subject to the law, to criticize Complainant where it is clear that they are doing so under their own imprimatur. What it limits is the right to do so by registering a domain name that purports to be Complainant himself and using it for criticism that, confusingly, may or may not be genuine and well-founded criticism.
Accordingly, for these reasons, the Panel finds that Respondent has not rebutted the prima facie case that Respondent does not have a right or legitimate interest in the disputed domain name that embodies the trademark of Complainant.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. The Policy is not an exclusive list of bad faith, but is, instead, merely illustrative and the Panel may consider the totality of the circumstances present. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
That principle seems to be applicable to the present case, at least so far as the claim is concerned, as Complainant does not claim that the facts bring it specifically within any of the criteria set out in Policy ¶ 4(b) but, rather, it relies on the general concept of bad faith. Accordingly, the Panel need not examine the specific criteria in detail and will confine itself to considering whether the evidence supports a finding of registration and use in bad faith within the generally understood meaning of that expression.
Complainant maintains that Respondent registered the domain name in bad faith because his sole purpose was to disparage Complainant and tarnish the ADAM MILSTEIN mark, which it is claimed he did by linking the domain name to the website of The Electronic Intifada, which contains disparaging content about Complainant. Complainant puts this part of his submission in the following way:
“…the Respondent was aware of Complainant Adam Milstein and the clear aim of the registration was to divert internet traffic to a website containing negative and defamatory information regarding Complainant Adam Milstein.”
As to bad faith use, Complainant says: “In addition, Respondent is using the domain name adammilstein.com in bad faith by redirecting internet traffic to an anti-Adam Milstein website. Accordingly, unsuspecting internet users searching for “Adam Milstein” or typing in adammilstein.com are diverted to a website disparaging Adam Milstein. For example, the first headline on the redirected webpage is “Why did Israel Intervene for Convicted Felon Adam Milstein?” See Annex 4. The webpage contains a plethora of negative and disparaging content regarding Adam Milstein, including inflammatory headlines such as: “Buying Influence,” “Where do you hide a dead body?” “Philanthropy: a device to defraud” and “You’re a Liar.” See Annex 4. Accordingly, individuals searching for “Adam Milstein” related to charitable and philanthropic services in the Jewish community are diverted to a pro-Palestinian website maligning Adam Milstein. Complainant Adam Milstein and Respondent Benjamin Doherty, along with the Electronic Intifada, are on different sides of a political and cultural issue. The clear intent of Respondent’s use of the domain name is to defame Adam Milstein, tarnish the mark “Adam Milstein,” disrupt the charitable work of Adam Milstein, and deter potential charitable donors.
As Complainant concedes that this bad faith does not clearly fall into one of the specified categories, it maintains that the purpose and use of the domain name being to disrupt, disparage and discredit Complainant, this amounts to general bad faith registration and use which is sufficient.
As will have been seen, the Panel agrees with this assessment of what must be inferred as the intention of Respondent and the result of his registering the domain name using Complainant’s name, without permission, thereby representing that it was the domain name of Complainant and then linking it to The Electronic Intifada website where the disparaging material is contained.
Respondent denies this. He maintains that bad faith registration cannot be proved because the domain name was registered before the ADAM MILSTEIN mark was registered and therefore he could not have been ill-motivated towards a trademark that did not exist at the time he registered the domain name.
Complainant in his supplementary submission, however, argued that bad faith registration can be established even where the trademark was not registered until after the domain name, when, as in the present case, the respondent was aware of the complainant and it was clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.
The Panel’s conclusion on these submissions is twofold.
First, the conduct that Respondent engaged in was clearly in bad faith. Respondent registered a domain name, using Complainant’s name as the entirety of the domain name, without his permission and created a domain name which deliberately gave the false impression that it was the domain name of Complainant. He then linked it to the website of The Electronic Intifada, a website with which he himself was associated and without a disclaimer. It would be naïve to think that Respondent did not know the type of criticism to which Complainant would be subjected and the type of material that would appear about Complainant on that website. But even if he did not know it at the beginning, which is almost impossible to believe, he must surely have seen it on several occasions between December 15, 2014 and the present date, as he has caused the domain name to be resolved automatically to The Electronic Intifada website during the whole of this time when Complainant has been subjected to some quite severe denigration. In summary, Respondent was declaring in effect during the whole of this time that the domain name was the domain name of Complainant and that internet users should be directed to a website where they would see whatever might be put on the website about Complainant in the future and clearly with the intention that this would disparage Complainant and create confusion for internet users.
That conduct commenced at the time of the registration of the domain name and has continued to the present. Accordingly, Respondent registered and used the disputed domain name in bad faith in the generally understood meaning of that expression.
Before proceeding, it should be said that this finding does not and is not intended to limit anyone’s right of free speech, which of course is an extensive one, particularly in the United States. What is at issue here is the deliberate creating of a false impression by registering a domain name using the entirety of another person’s name without permission and linking it to a website containing disparaging material about the person whose name has been used to create the domain name.
That, however, is not the end of this issue in so far as the issue of the registration of the domain name is concerned.
The general view on this issue has been that a domain name could not have been registered in bad faith if there were no relevant trademark on foot at the time, as it was generally impossible for bad faith to be formulated towards a trademark that did not exist.
Into this analysis, however, has been introduced the issue of whether a
renewal of the domain name registration after the trademark had been
registered should be regarded as a registration and whether, as a consequence, bad faith after the renewal could be seen as bad faith registration and hence meeting the requirement of the general rule that there must be a trademark registered prior to the registration of the domain name.
The notion that a renewal might in an appropriate case be seen as a registration comes from the continued obligation imposed on registrants under paragraph 2 of the UDRP, which is incorporated into registration agreements between ICANN’s approved registrars and parties who register domain names. It provides that:
“2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
The history and development of this issue is conveniently set out in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688. The Panel as presently constituted has also had occasion to grapple with this difficult issue in Saratoga Publishing LLC v. Rich Richbart / Saratoga Online Inc, FA1503001608704 ( Nat. Arb. Forum, April 27, 2015) .The Panel on that occasion expressed its view on this issue as follows:
“The argument has arisen because the UDRP Policy states in paragraph 4(a)((iii) that the Complainant must prove that the domain name “has been registered and is being used in bad faith”. However, paragraph 2 of the Policy states (omitting some words) that by applying to register a domain name or asking to renew the domain name, the registrant represents and warrants that to its knowledge the registration will not infringe upon or violate the rights of any third party and that it, the registrant, has the responsibility to determine whether the registration infringes or violates someone else’s rights. As that obligation applies to a renewal, does it then follow that a bad faith renewal amounts to bad faith registration and therefore meets the requirement to prove bad faith registration?
It is true that in some cases it may be that a renewal will be treated as a registration and that the renewal, if the facts support it, may then be regarded as a registration in bad faith, such as where the respondent, after registration of a trademark by the complainant, uses the domain name to set up a cybersquatting website with links to Complainant’s competitors, an act of bad faith. That was the case in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No.D2009-1688, the reasoning in which the Panel finds persuasive.”
It was not the case in Saratoga because the registrant had just kept renewing the domain name without using it at all.
That statement cannot be entirely correct if it is meant to assert that Respondent had no part at all in the renewal. The registration agreement in evidence certainly makes provision for an automatic renewal. But it also provides that “The renewal of any Registered Name is solely and completely your responsibility alone.” So the registrant is clearly expected to do something if it wants the domain name to be renewed. More importantly, the registration agreement also provides that:
“ Automated Renewal. Contingent on the full domain renewal fee being paid by you and received by 1API (as cleared funds) at least thirty (30) days prior to the expiration date of a domain name, Registered Names by default are set to be automatically renewed.”
Thus, the registrant must activate the automatic renewal process, which he must be presumed to have done so in this case. In any event, the fact is that Respondent renewed the registration, no matter what degree of intervention took place.
The question still remains whether on the particular facts of this case the renewal should be regarded as a registration. This is a difficult question to answer and the Panel has again found helpful the reasoning in the Eastman Sporto case which found that the renewal in that case should be regarded as a registration. In Eastman Sporto, the registrant had changed the content of the website to “textbook cybersquatting”, so the panelist found that the renewal was an act of bad faith registration. In the Saratoga Case, the registrant had done nothing with the domain name before or after the renewal, leading to the finding that there had been no bad faith registration.
In the present case Respondent engaged in bad faith conduct after the renewal. Indeed, Respondent replied to the Procedural Order by saying that the domain name has remained resolved to the Electronic Intifada website since 16 December 2014. The Electronic Intifada website lists the articles on its website dealing with Complainant. One such article is dated 29 November 2015 which is of course after the date when the trademark was registered and after the domain name registration was renewed. That article is not as critical of Complainant as some of the other articles, but is disparaging of Complainant in so far as it alleges that he supports a political party in India that is said to be “virulently Islamophobic.” In any event, the article must be taken to be part of the result that Resondent allowed and encouraged by using Complainant’s name as the entirety of the domain name, without his permission, giving rise to the assumption that the domain name was the domain name of Complainant and linking it to the Electronic Intifada website and the series disparaging articles about Complainant.
The Panel concludes, because of the structure that Respondent himself effected, that his intention after the renewal of the domain name registration was in bad faith and constitutes bad faith registration under Policy ¶ 4(a)(iii). In his renewal of the registration of the domain name he warranted to the registrar that “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;…” That statement was false, as by that time Complainant’s trademark was registered and he had acquired full rights as a trademark owner and yet Respondent continued to use the entirety of Complainant’s trademark in his domain name without permission.
Its continued use since then has aslo been in bad faith, constituting bad faith use under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that he must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adammilstein.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 11, 2016
[1] Legal Corner Press, New York, 2015. The foreword to this publication was written by the present panellist.
[2] At PP 413-416
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