DECISION

The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International

Claim Number: FA0310000198936

 

PARTIES

Complainant is The Reverend Dr. Jerry L. Falwell and The Liberty Alliance, Lynchburg, VA (“Complainant”) represented by John H. Midlen, Jr. of Midlen Law Center, 7618 Lynn Drive, Chevy Chase, MD 20815-6043.  Respondent is Lamparello International, New York, NY (“Respondent”) represented by Paul Alan Levy, of Public Citizen Litigation Group, 1600 20th Street, N.W., Washington, D.C. 20009.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fallwell.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelists in this proceeding.

 

Honorable Tyrus R. Atkinson, Jr., David E. Sorkin, and Estella S. Gold, Chair as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 1, 2003; the Forum received a hard copy of the Complaint on October 1, 2003.

 

On October 6, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <fallwell.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 27, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@fallwell.com by e-mail.

 

A timely Response was received on October 27, 2003.  However, Respondent failed to provide a signature with the Response as is required pursuant to Rule 3(b)(viii).

 

A timely Supplemental Response to Complaint from Respondent was received on November 10, 2003, in accordance with Supplemental Rule No. 7.

 

All of the above-listed Complainants, Respondents and Supplements have been considered by the Panelists.

 

On November 6, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Tyrus R. Atkinson, Jr., David E. Sorkin, and Estella S. Gold, Chair as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that it has legal rights in the name FALWELL as follows:

 

a.                   Complainant has a registered trademark in the name “Listen America with Jerry Falwell”, USPTO Reg. 2382656 which incorporates the last name of the Complainant, Falwell;

b.                  Complainant has a pending mark “Jerry Falwell”, USPTO Serial No. 78,202,927 which incorporates the last name of the Complainant, Falwell;

c.                   Complainant published a book entitled “Falwell” in 1997, which Complainant alleges was commercially marketed under the same name as the title;

d.                  Complainant commercially markets goods and services on the Web at <store.falwell.com>, as well as marketing trips to Israel and other subject matter under this personal name, Jerry Falwell.

e.                   Complainant alleges secondary meaning in the name FALWELL by reciting search engine results for his own domain name <falwell.com>;

f.                    Complainant alleges that the domain name registered by the Respondent, <fallwell.com> is confusingly similar to Complainant’s unregistered use of his last name and portions of the registered and pending mark recited above;

g.                   Complainant alleges that Respondent has no right or legitimate interests in the domain name which is phonetically identical to Complainant’s domain name as well as his personal last name, and that the use of this domain name misdirects internet traffic to the Respondent by creating confusion with Complainant’s marks; and

h.                   Complainant alleges that <fallwell.com> is being used in bad faith because Respondent should have been aware of Complainant’s trademarks and Respondent established its website out of anger with Complainant.

B. Respondent

Respondent alleges that Complainant’s UDRP Complaint is without merit because Complainant is using the UDRP to silence constitutionally protected communications.

a.                   Respondent alleges that Complainant has not used his last name as a trademark because Complainant does not use his name as a commercial source;

b.                  Respondent alleges that its use of the name “fallwell” is a legitimate, non-commercial or fair use of a domain name without intent for commercial gain and denies an intent to misleadingly divert consumers, or to tarnish the trademark or service mark at issue”;

c.                   Respondent alleges that its use of the name “fallwell” is nominative fair use in that Respondent alleges that it has a legitimate interest in using a domain name that identifies the subject of his criticism;

d.                  Respondent alleges that the website <fallwell.com> contains a disclaimer which resolves any initial interest confusion, and in addition, provides a link to Complainant’s website to avoid consumer confusion;

e.                   Respondent alleges that the book entitled “Falwell” is no longer in print, and therefore, is not commercially active; and

f.                    Respondent alleges that the domain name is not a typosquat, but a parody on the words “fall” and “well”.

FINDINGS

Preliminary Procedural Matters
The Panelists unanimously find on preliminary matters as follows:

 

1.                  That although the Response did not include a signature, as required under Rule 5(b)(viii), the Panel rules that the Response is admissible despite formal deficiencies because to find otherwise would be inconsistent with basic principles of due process.  See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002).  

2.                  That Respondent’s contentions of forum shopping and the case being time barred are without merit under the Policy.

3.                  That Complainant’s supplemental pleadings should be accepted and were reviewed.

While most facts in this matter are undisputed, the majority on the Panel finds the following on the disputed facts:

1.                  Complainant has made commercial use of his last name “Falwell” as an unregistered mark in the marketing of the book “Falwell: An Autobiography” at least as early as 1997, as well as more recently, in the use of a commercial website. 

2.                  The name “fallwell” is phonetically identical to Complainant’s last name, which Complainant has used as a trademark in the marketing of copyrighted material. 

3.                  It is undisputed that Complainant has achieved the highest level access on commonly used search engines on the Web, and the majority of the Panel finds that such search engine access amounts to secondary meaning as defined by the Lanham Act.

4.                  Although Respondent alleges that “fallwell” represents the joining of the word “fall” and the word “well”, Respondent’s acknowledgement through the use of its disclaimer of the likelihood of misdirected Internet traffic, leads the majority of the Panel to conclude that use of the domain name <fallwell.com> will result in initial interest confusion

5.                  Based upon the presentation of evidence from <web.archive.org>, the Panel finds that Respondent did not begin to use the website associated with <fallwell.com> until 1999, some two years after Complainant initiated commercial use of his last name as a trademark.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2.                  the 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 and/or Confusingly Similar

The Panel finds a strong similarity to Complainant’s position in the case of Planned Parenthood Assn. of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997), aff’d without op., 152 F.3d 920 (2d Cir. 1998).  The Court found in Planned Parenthood that when a domain name is used on a website that promotes or preaches social, religious, or political beliefs, the Lanham Act would not be triggered unless there is some provision of services or commercial aspect to the website.  The 1997 Planned Parenthood case was the first time that a court directly faced the issue of finding a commercial use when an otherwise infringing domain name is used on a political or religious website.  Defendant in that matter was a religious talk show host who vigorously espoused the right-to-life position.  Defendant admitted in that case that his purpose was to intercept potential viewers of plaintiff’s website and expose them to the right-to-life message of the book featured at the site.  On appeal, the Second Circuit noted that while the prohibitions of the Lanham Act §43(a) are limited to “commercial” activities, the prohibition of §32(1)(a) on infringements of registered marks has no such “commercial activity” requirement.  See United We Stand Am., Inc. v. United We Stand Am., N.Y., Inc., 128 F.3d 86, 44 U.S.P.Q.2d 1351(2d Cir. 1997); see also Jews for Jesus v. Brodsky, 993 F.Supp. 282, 46 U.S.P.Q.2d 1652(D.N.J. 1998), aff’d without op. 159 F.3d 1351 (3d Cir. 1998) (where the court held that the defendant intended to intercept, through the use of deceit and trickery, the audience sought by the plaintiff organization).

 

Respondent, understanding that users of the Internet were likely to be deceived into believing that <fallwell.com> was associated with Complainant or who misspelled Complainant’s name, posted a disclaimer to redirect Internet traffic intended for the Complainant. In People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F.Supp.2d 915 (E.D. Va. 2000) Judgment aff’d 263 F.3d 359, 60 U.S.P.Q.2d 1009, 1112 (4th Cir. 2001), the district court found that the challenged domain name was likely to prevent Internet users from reaching PETA’s own website because if they mistakenly access defendant’s website, they may “fail to continue to search for [PETA’s] own home page due to anger, frustration, or the belief that [PETA’s] homepage does not exist.”  Furthermore, Respondent acknowledges his motivation in his anti-Falwell message, expressing anger in response to the content of Complainant’s site. 

 

Complainant asserts that it has established rights in the JERRY FALWELL mark by filing an application with the U.S. Patent and Trademark Office (“USPTO”) on January 13, 2003 (Ser. No.  78202927).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

 

Complainant contends that it has established rights in the LISTEN AMERICA WITH JERRY FALWELL mark through its registration with the USPTO on September 5, 2000 (Reg. No. 2382656).  Complainant further alleges that it has established common law rights in the mark by using the mark in commerce since April 13, 1998.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with Complainant that common law trademark rights exist); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER).

 

Complainant argues that it has established common law rights in the JERRY FALWELL and FALWELL marks because Complainant published a book for sale in 1997 called “Falwell, An Autobiography.”  Complainant has provided articles from newspapers to prove that Complainat is refered to as FALWELL.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

 

Furthermore, Complainant asserts that the <fallwell.com> domain name is confusingly similar to each of the marks discussed above because the domain name merely mispells the FALWELL mark by adding the letter “l” to the mark, which is a common typographical error committed by Internet users who attempt to access Complainant’s <falwell.com> website.  SeeVictoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

 

Also, Complainant claims that the <fallwell.com> domain name is confusingly similar to Complainant’s mark because the domain name is phonetically identical to the FALWELL mark.  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO!, Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

 

Lastly, Complainant asserts that Respondent’s disclaimer on its website is insufficient to prevent Internet user confusion because it causes “intitial interest confusion,” and therefore cannot circumvent the Panel from finding the domain name confusingly similar to Complainant’s mark.  See AltaVista Co. v. AltaVista, 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”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of Complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by Complainant).

 

Rights or Legitimate Interests

Complainant asserts that Respondent is not commonly known by the <fallwell.com> domain name or the FALLWELL mark, and therefore lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

Also, Complainant asserts that Respondent’s domain name is misleading and is being used for commercial gain. The Panel determines that the <fallwell.com> domain name is misleading and is being used to defeat Complainant’s commercial benefit, in its mark.  The Panel concludes that Respondent lacks rights or legitimate interests in the domain name because such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).   

 

In addition, Complainant contends that Respondent’s free speech conducted under Complainant’s protected mark does not create rights or legitimate interests with respect to the domain name.  Complainant argues that Respondent’s use of the <fallwell.com> domain name does not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. 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 Complainant's DAVID WEEKLEY HOMES mark); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . .  is a very different thing from having a right or legitimate interest in respect of [a domain name that is virtually identical to Complainant’s mark]”).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent’s admission that it registered the <fallwell.com> domain name out of anger toward Complainant is evidence of bad faith.  The Panel may find that the admission is evidence that Respondent knowingly registered the domain name with the intent to infringe on Complainant’s mark, and therefore registered the domain name in bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”).

 

In addition, Complainant asserts that Respondent is using the <fallwell.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the domain name competes with Complainant’s <falwell.com> website for Internet traffic.  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although Respondent’s complaint website did not compete with Complainant or earn commercial gain, Respondent’s appropriation of Complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).

 

The majority of the Panel finds that Respondent has engaged in typosquatting by registering and using the  <fallwell.com> domain name to redirect Internet users to Respondent’s website by taking advantage of Internet users who commit common typographical errors when they attempt to access Complainant’s <falwell.com> website.  Typosquatting is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fallwell.com> domain name be TRANSFERRED  from Respondent to Complainant.

 

 

 

___________________________________________________

 

Estella S. Gold, Panelist
Signing for the Majority
Honorable Tyrus R. Atkinson, Jr., Panelist
Dated: November 20, 2003

 

 

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DISSENTING OPINION

 

I respectfully dissent.

 

Respondent selected the disputed domain name because of its similarity to the name of a controversial public figure whom Respondent intended to criticize, and is using it for that purpose.  The fact that Complainants have some trademark rights in various forms of Dr. Falwell’s name is merely incidental.  Respondent is using a variant of Dr. Falwell’s name in a nominative sense in order to identify him as the focus of a noncommercial web site; Respondent is neither trading on Dr. Falwell’s fame nor exploiting the value of his name, as a trademark or otherwise.  Respondent’s registration and use of the disputed domain name, therefore, cannot be said to be in bad faith.

 

Furthermore, in my view Complainants have also failed to meet their burden of proof on the question of rights or legitimate interests.  At best Complainants have a legitimate dispute with Respondent regarding its right to use a variant of Dr. Falwell’s name as a domain name for purposes of criticism—but much more likely, Complainants have no actionable claim whatsoever against Respondent.  In either case, this is not an appropriate matter for resolution under the UDRP, which was designed to handle only a “relatively narrow class of cases of ‘abusive registrations.’”  Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, ¶ 4.1(c).

 

[T]he fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw.  The policy relegates all “legitimate” disputes—such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name—to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.

 

Id.

 

I would dismiss the Complaint.

 

 

 

David E. Sorkin, Panelist

November 20, 2003