Keith Moyer v. Frank Leigh
Claim Number: FA1810001810359
Complainant is Keith Moyer (“Complainant”), represented by Ted Nguyen of Harder LLP, California, USA. Respondent is Frank Leigh (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keithmoyereditor.com>, registered with GoDaddy.com, LLC.
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 October 4, 2018; the Forum received payment on October 4, 2018.
On October 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <keithmoyereditor.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2018 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@keithmoyereditor.com. Also on October 9, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2018, 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.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
Complainant, Keith Moyer, is the Editor-in-Chief of the Las Vegas Review-Journal, the largest circulating daily newspaper in Nevada and has been ranked as one of the twenty largest newspapers in the United States by circulation. Complainant has common law rights in the KEITH MOYER mark, as it is Complainant’s personal name. Respondent’s <keithmoyereditor.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <keithmoyereditor.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name and underlying website to harass Complainant by posting criticism about Complainant. See Compl. Ex. 4.
Respondent registered and uses the <keithmoyereditor.com> domain name in bad faith. Respondent registered the domain name for the sole purpose of harassing Complainant, disrupt Complainant’s business, and profit from this disruption. See Compl. Ex. 4. Further, Respondent clearly had knowledge of Complainant as it references Complainant on the resolving webpage. See Compl. Ex. 4.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Keith Moyer, is the Editor-in-Chief of the Las Vegas Review-Journal, the largest circulating daily newspaper in Nevada which has been ranked as one of the twenty largest newspapers in the United States by circulation.
2. Complainant has established his common law trademark rights in the KEITH MOYER mark.
3. Respondent registered the <keithmoyereditor.com> domain name on September 14, 2018.
4. Respondent wrongly uses the domain name and underlying website to harass Complainant by posting criticism about Complainant, his family, the owner of the Las Vegas Review-Journal and others.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that he has common law rights in the KEITH MOYER mark, as it is Complainant’s personal name, and he does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate by evidence that it has established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning, even when a mark involves a personal name.
The Panel has had occasion recently to consider in AASKI Technology, Inc. v. Technology Department / Cloud Service, Inc. Forum Case Claim Number: FA1809001807368 9 (Oct. 26, 2018) two of the issues arising in the present case. The first issue is how a common law trademark may be proven. The Panel noted in the AASKI case that:
“UDRP panels have said on many occasions that on all issues in these cases, but particularly when the issue is whether a common law trademark has been made out, there must be good and cogent evidence to prove it.”
The Panel also said that the objective of adducing evidence on this issue was to show that the words claimed as the common law trademark “have acquired the secondary meaning that they identify Complainant’s goods and services.”
In the present case the only evidence is that presented by Complainant, which shows Complainant is identified with the newspaper, speaks for it and is seen as its alter ego. The KEITH MOYER marks is thus identified as the source of the goods and services Keith Moyer provides as Editor-in-Chief of the Las Vegas Review-Journal.
See also Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant submits that he has been Editor-in-Chief of the Las Vegas Review-Journal since February 5, 2016 and that he serves as a spokesperson for the publication and, by virtue of that position, is a generally known name throughout the state of Nevada, including Las Vegas. The Panel accepts that evidence and it is un-contradicted. Accordingly, the Panel finds that Complainant holds common law trademark rights in KEITH MOYER for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KEITH MOYER mark. Complainant argues that the <keithmoyereditor.com> domain name is identical or confusingly similar to its mark. The domain name contains Complainant’s KEITH MOYER mark and adds the term “editor”, which Complainant is well known to be in the circulation and readership area of the publication. Internet users being presented with the domain name would therefore assume that it is seeking to invoke the Keith Moyer of the KEITH MOYER mark, who is Editor-in-Chief of the Las Vegas Review-Journal.
The domain name also contains the “.com” generic top-level domain (“gTLD”). Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds that the <keithmoyereditor.com> domain name is confusingly similar to the KEITH MOYER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KEITH MOYER trademark and to use it in his domain name, adding the generic word “editor” that does not negate the confusing similarity with Complainant’s trademark but enhances it, as internet users would assume that the Keith Moyer referred to is the subject of the KEITH MOYER mark, who is Editor-in-Chief of the Las Vegas Review-Journal;
(b) Respondent registered the <keithmoyereditor.com> domain name on September 14, 2018;
(c) Respondent uses the domain name and underlying website to harass Complainant and others by posting criticism about Complainant, his family, the owner of the Las Vegas Review-Journal and others;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <keithmoyereditor.com> domain name as Respondent is not commonly known by the domain name. Where a response is lacking, relevant information to determine that issue includes the WHOIS and any other evidence tendered by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Frank Leigh” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been commonly known by the domain name or the KEITH MOYER mark. Panels may use this material as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <keithmoyereditor.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent uses the domain name and underlying website to harass Complainant by posting criticism about Complainant, his family, the owner of the Las Vegas Review-Journal and others. Criticism websites can, subject to the evidence, lead to a finding that a respondent lacks rights and legitimate interests in a domain name. But, as the Panel pointed out in AASKI Technology, Inc. v. Technology Department / Cloud Service, Inc.,(supra):
“First, Respondent has an undoubted right to freedom of speech on the internet and elsewhere, subject to the general law. What he does not have is the right to copy another party’s trademark or create a domain name confusingly similar to that trademark and link it with material that denigrates that trademark and those who are readily associated with it. But that is what he has done in the present case.”
It is also what Respondent in the present case has done, as the domain name contains the whole of Complainant’s trademark, is confusingly similar to it and is used to denigrate Complainant and others. In other words, Respondent has given the false impression that his domain name is the official domain name of Complainant and that its website speaks for Complainant, none of which is true. This negates any right that Respondent might be seen to have to criticize Complainant. See also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Complainant provides a screenshot of the resolving webpages, which displays among other things the title “J. Keith Moyer. Editor?” and contains material seriously disparaging and criticizing Complainant, his family, the owner of the Las Vegas Review-Journal and others See Compl. Ex. 4. As such, the Panel finds that Respondent’s use of the domain name to post that material does not amount to a bona fide offering of goods or services, or any legitimate noncommercial or fair use under the Policy.
The matter is worse with respect to the sustained and serious criticism on the website directed at Complainant’s children and the owner of the Las Vegas Review-Journal. That is so because Respondent has, on the evidence, embarked on some sort of vendetta against these people and in doing so he uses extremely derogatory language. He is of course free to engage in an exercise of free speech, subject to the law, but what he not free to do is pursue his vendetta under the false colors of actually being Complainant. In other words, he is presently holding out the domain name and website as being the domain name and website of the Editor-in-Chief of the Las Vegas Review-Journal and using it to engage in highly personal criticism of the family of the Editor-in-Chief of the Las Vegas Review-Journal and its owner. That is completely unacceptable.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and 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.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel accepts that it was the Respondent’s intention in registering and using the domain name to exploit and harass Complainant. There really can be no other more charitable interpretation to be put on the contents of the website. Moreover, it appears that Complainant is correct in submitting that Respondent’s conduct in devoting his website to the material that is presently on it is in violation of the Nevada law relating to harassment and stalking.
Secondly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the KEITH MOYER mark at the time of registering the <keithmoyereditor.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent clearly had knowledge of Complainant as it references Complainant on the resolving webpages. See Compl. Ex. 4. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Thirdly, registering and using the domain name for criticism when the target’s own trademark is included in the domain name is clearly bad faith, both in registration and in use.
Fourthly, in all probability, Respondent’s conduct brings the case within the provisions of Policy ¶ 4(b)(iv).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the KEITH MOYER mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it 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 <keithmoyereditor.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated November 2, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page