DECISION

 

Benjamin Ladner v. Ben Wetmore

Claim Number: FA0407000305190

 

PARTIES

Complainant is Benjamin Ladner (“Complainant”), represented by Sherri N. Blount, of Morrison & Foerster, 2000 Pennsylvania Ave., NW, Suite 5500, Washington, D.C. 20006.  Respondent is Ben Wetmore (“Respondent”), 904 Abbots Lane, Denton, TX 76205.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <benladner.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:

 

Jeffrey M. Samuels, Chair

Honorable Charles K. McCotter, Jr. (Ret.), Panelist

David H. Bernstein, Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 28, 2004; the Forum received a hard copy of the Complaint on August 2, 2004.

 

On July 29, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <benladner.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 August 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 26, 2004 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@<benladner.com> by e-mail.

 

A timely Response was received and determined to be complete on September 15, 2004.

 

A timely “Additional Submission” was received from Complainant on September 20, 2004.

 

On September 29, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, the Honorable Charles K. McCotter, Jr. (Ret.), and David H. Bernstein as panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant Benjamin Ladner is a well-known public speaker, philanthropist, scholar, author, professor, and university administrator.  He currently serves as president of American University, located in Washington, D.C.

 

Complainant asserts that, since at least as early as 1965 and long prior to registration of the disputed domain name, Complainant has used the trademark BENJAMIN LADNER in commerce in connection with educational services, including conducting courses of study, scholastic research services, publication services, public speaking services, etc. around the world.  Such use, Complainant maintains, has provided him with common law trademark rights in the BENJAMIN LADNER mark.  According to Complainant, the BENJAMIN LADNER mark “has become a famous and distinctive mark within the field of educational services.”

 

Complainant argues that the disputed domain name, <benladner.com>, is confusingly similar to his BENJAMIN LADNER mark since the terms “Ben” and “Benjamin” are very similar in sight, sound, and commercial impression and the domain name incorporates substantially all of the Complainant’s mark.

 

Complainant asserts that Respondent does not have any rights or legitimate interests in the domain name. Complainant contends that Respondent has not used or made demonstrable preparations to use the <benladner.com> domain name in connection with the bona fide offering of goods or services, has not been commonly known by the name “Ben Ladner,” and is not making a legitimate noncommercial or fair use of the disputed domain name.  With respect to this latter point, Complainant contends that Respondent solicits money on the <benladner.com> web site and derives income from donations and advertising sales, ranging from $10 to $60 per ad each month.  According to Complainant, “[w]ithout conceding the point, the content appearing on the <benladner.com> website could arguably enjoy First Amendment and Fair Use protection” but that “such protection is not available here since Complainant benefits commercially from the website.”

 

With respect to the issue of “bad faith” registration and use, Complainant maintains that Complainant has intentionally attempted to attract, for commercial gain, internet users to the <benladner.com> website by creating a likelihood of confusion with the BENJAMIN LADNER mark.  Moreover, Complainant asserts, it is also clear that Respondent had prior knowledge of Complainant’s mark at the time the <benladner.com> domain name was registered.

 

B. Respondent

 

Respondent argues that Complainant has no protectable rights in the BENJAMIN LADNER mark since: (1) there is no secondary meaning in the BENJAMIN LADNER mark; (2) there has been no “commercial exploitation” of the mark; (3) Benjamin Ladner enjoys no fame not immediately tied to his office or institution; and (4) that, as an educator, administrator, and politician, Benjamin Ladner has no redress available under the UDRP.  In support of these assertions, Respondent reports that, upon a search of the “Lexis/Nexis” database, only three main media mentions of Complainant appeared over the past two years.  Respondent further reports that the 27 results over the past two years on “Nexis” resulting from a query of “Benjamin Ladner” relate primarily to incidents involving an American University adjunct professor, the campus radio station, and the web site involved in this instant dispute.

 

Respondent contends that he has legitimate interests in the domain name. He maintains that he founded the website for political reasons in the fall of 2001, having observed that chronic problems of customer service, academic quality, micromanagement and faculty and student independence were threatened primarily by the control exercised by Benjamin Ladner and his administrative appointments. Concerned about what he and fellow students perceived to be a decline in American University’s prestige and quality, Respondent founded the <benladner.com> web site to “document, disseminate, and criticize Benjamin Ladner’s administration of The American University.” The site’s “Mission Statement,” set forth in Annex E to the Response, states that “<benladner.com> `will do the job that President Ladner has failed to do and we will work to become some form of a nucleus where the AU community can come to find information, discuss issues and above all, continue to be informed.  Your president may be absent, but your Web site is always on’.”

 

Respondent further argues that he registered and uses the domain name in good faith.  He contends that he has always used the <benladner.com> site as a news and political publication centered around Complainant and the university; that there is no commercial gain for the web site, since it has never been profitable and any donations are plowed back into operating the site; and that there is no evidence of likelihood of confusion among users of the disputed web site. Respondent points out that the web site includes a disclaimer that it “is not endorsed nor supported by Benjamin Ladner” and that the tone and content “is clearly not for confusion, but to expose the University community to [President Ladner’s] largesse.”

 

Contending that this proceeding “is a clear attempt, following a pattern of harassment by the Complainant, to shut down a legitimate news and criticism site,” Respondent requests that the panel enter a finding of reverse domain name hijacking.

 

C. Additional Submissions

In his “Additional Submission,” Complainant takes issue with Respondent’s assertion that Complainant has not commercially exploited his name and does not offer goods or services in connection with the BENJAMIN LADNER mark. Complainant notes, for example, that he has a book that is available for purchase in stores and on the internet and has given numerous speeches throughout the country, for which he has been compensated.  Complainant observes that teaching, educational research, and publication and editing are all recognized services under the International Classification System.

 

Complainant also takes issue with Respondent’s assertion that Complainant’s status as an educator and administrator serves as a bar to relief under the UDRP.  Complainant refers to the statement in the “Final Report on the Second WIPO Domain Name Process” that “the clear weight of authority of many decisions is in favor of the application of the UDRP to the protection of personal names when they constitute trademarks.”

 

Complainant further maintains that Respondent is not making a legitimate noncommercial or fair use of the <benladner.com> domain name since paid advertisements are solicited from the campus community and other outside entities, including Google.  According to Complainant, Respondent admitted that money from the Google ads sits in escrow for dispersal to the current leadership of the web site.  This revenue, Complainant argues, represents a commercial gain received as a direct result of Respondent’s unauthorized exploitation of Complainant’s mark and the fact that the web site is not profitable does not render the site “noncommercial.”

 

FINDINGS

The Panel finds that Complainant has not established that he has trademark or service mark rights in the name “Benjamin Ladner,[1]” that Respondent has rights or legitimate interests in the domain name[2], and that the domain name was not registered and is not being used in bad faith.  The Panel further finds that this is not a case of reverse domain name hijacking.

 

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[3]

 

The Panel finds that Complainant is a noted educator and scholar who has published and spoken widely.  However, this does not mean that he has service mark rights in the BENJAMIN LADNER mark Under U.S. trademark law,[4] the term “service mark” means a mark used in the sale or advertising of  services to identify and distinguish the services of one person … from the services of others and to indicate the source of services….”[5]  While the federal trademark statute does not include a definition of the term “service,” through a series of decisions it has become a settled principle that the rendering of a service which is normally “expected or routine” based on one’s underlying business or occupation is not a service.[6] A service is generally defined as the performance of labor for the benefit of another.

 

In the Panel’s judgment, the activities relied upon by Complainant to establish service mark rights are of the nature that would normally be expected of an educator and scholar.   Thus, such activities do not constitute “services,” as that term has been defined in U.S. trademark law.  And this is true even if Complainant has been compensated for some of his scholarly activities.

 

Moreover, even if the Panel was to conclude that Complainant performs a “service,” in reviewing the evidence we see no use of the BENJAMIN LADNER mark that would be reasonably perceived by the relevant public as service mark usage.  Rather than serving to identify the source of any services, the BENJAMIN LADNER mark serves merely to identify an individual.

Finally, the Panel notes that the BENJAMIN LADNER mark would only be protectable upon proof of secondary meaning[7], that is, that the relevant public associates the name with the source of particular services.  We are not convinced that Complainant has shown sufficient secondary meaning in his name to warrant protection.

 

Rights or Legitimate Interests

The Panel concludes that Respondent has rights or legitimate interests in the domain name <benladner.com> insofar as the web site is being used for bona fide, noncommercial criticism of Complainant.  The evidence clearly establishes that Respondent’s <benladner.com> site is devoted to criticism of the administration of President Ladner.  Such actions, the Panel believes, are fully protected by the First Amendment of the U.S. Constitution.  While the Panel is aware that there is a split among ICANN panels on the question presented in this case,[8] it notes, as did the panel in Howard Jarvis Taxpayers Association v. Paul McCauley[9], Case No. D20004-0014 (WIPO April 22, 2004), that in cases involving U.S. parties and/or panelists, a number of panels[10] have ruled that the First Amendment protects trademark top-level domain names when they are used for legitimate criticism sites. 

 

The Panel is also aware that at least three federal circuit courts of appeals in the U.S. have recently ruled, in the context of proceedings brought under the “Anticybersquatting Consumer Protection Act,”[11] 15 U.S.C. §1125(d), that criticism sites may constitute noncommercial use of the domain name in issue even where the domain name itself does not communicate criticism.  See TMI Inc. v. Maxwell[12], 368 F.3d 433 (5^th Cir. 2004), (reversing transfer of trendmakerhome.com site used to criticize plaintiff’s TrendMaker Home houses); see also Lucas Nursery & Landscaping v. Grosse, 359 F.2d 806 (6^th Cir. 2004) (refusing to order transfer of lucasnursery.com domain where it was used for legitimate criticism site and defendant showed no intent to mislead visitors or commercially profit from use of domain name); see also Nissan Motor Co. v. Nissan Computer Co., 378 F.3d 1002 (9^th Cir. 2004) (injunctive relief denied where defendant placed links on nissan.com and nissan.net sites to other sites that post negative commentary about Nissan Motors).[13]

 

The fact that Respondent solicits donations and ads does not make Respondent’s site commercial in nature.  In his affidavit (see Annex I to Response), Respondent contends that he has “never received any monies resulting from the existence of <benladner.com>” and that any revenue received from advertising went to pay future expenses or have not been disbursed.  The U.S. Court of Appeals for the Ninth Circuit has emphasized that commercial use in commerce “refers to a use of a famous and distinctive mark to sell goods other than those produced or authorized by the mark’s owner (Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9^th Cir. 2002)), and that commercial use “requires the defendant to be using the trademark as a trademark, capitalizing on its trademark status.”  Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 880 (9^th Cir. 1999).  Clearly, this is not the situation here.  Rather, Respondent is merely exercising his free speech rights under the First Amendment.

 

The relevant policy requires a respondent to make a noncommercial use “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”  There is no evidence that Respondent intended to misleadingly divert consumers.  As noted in Howard Jarvis, the concept of “misleadingly diverting consumers” refers to the kind of confusion that arises in the trademark infringement context when a competitor diverts consumers to its site and, potentially, diverts sales. Such is not the case here. 

 

Finally, Respondent’s site does not tarnish Complainant’s mark.  First, as the Panel held in connection with the first UDRP factor, Complainant has no mark.  Moreover, even if Complainant was found to own trademark rights, Respondent’s use of the domain name does not “tarnish” such mark, as that term has been defined by the courts.  In order to find that a mark has been “tarnished,” courts[14]generally require evidence that the mark is being used in association with unwholesome or vulgar concepts, such as drugs, sex, or violence.

 

Registration and Use in Bad Faith

The Panel concludes that Respondent has not registered and used the domain name in bad faith.  Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, internet users to the <benladner.com> site by creating a likelihood of confusion with Complainant’s mark.  However, the Panel finds that Complainant does not own protectable rights in the BENJAMIN LADNER mark and that it is unlikely that anyone could confuse the source of Respondent’s web site once they arrive at such site.  In response to Complainant’s assertion of initial interest confusion, the Panel refers to Northland Insurance Co. v. Blaylock, 115 F. Supp.2d 1108 (DC Minn. 2000), wherein it was held that a criticism site, www.northlandinsurance.com, could not generate initial interest confusion.

 

Reverse Domain Name Hijacking

The Panel declines to enter a finding of reverse domain name hijacking under Rule 15(e).  Given the unsettled state of the law on the issues presented in this proceeding[15], we cannot say that the instant challenge was brought in bad faith. See Howard Jarvis.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel[16] concludes that relief shall be DENIED.

 

 

 

Jeffrey M. Samuels, Chair

Hon. Charles K. McCotter, Jr., Panelist

David H. Bernstein, Panelist

Dated: October 13, 2004

 

 

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