Claim Number: FA0904001256123
PARTIES
Complainant is
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <williamclinton.com>,
<williamjclinton.com> and <presidentbillclinton.com>,
registered with The Name It Corporation d/b/a Nameservices.net.
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 Panelist in this proceeding.
R.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 6, 2009; the National Arbitration Forum received a hard
copy of the Complaint on April 6, 2009.
On April 13, 2009, Tthe Name It Corporation d/b/a Nameservices.net
confirmed by e-mail to the National Arbitration Forum that the <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> domain
names are registered with the Name It Corporation d/b/a Nameservices.net and
that the Respondent is the current registrant of the names. The Name It Corporation d/b/a Nameservices.net
has verified that Respondent is bound by the The Name It Corporation d/b/a
Nameservices.net 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 April 22, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 12, 2009 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@williamclinton.com,
postmaster@williamjclinton.com and postmaster@presidentbillclinton.com by
e-mail.
A timely Response was received and determined to be complete on May 11,
2009.
An Additional Submission for Complainant was timely received on May 18,
2009.
Respondent timely files its Additional Submission in Response on May
22, 2009.
On May 18, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, the former President of the
§
His
election and service as the 42nd President of the
§
His
election and service as the Governor of the State of
§
His
authorship of a series of best-selling books, including Putting People First (1992); Between Hope and History (1996); and My Life (2004)
§
His
recognitions of Time’s Magazine’s Man of the Year in 1992
§
His
selection as the 17th Most Admired Person of the 20th
Century according to a Gallop poll
§
The
philanthropic foundations founded by him which bear his name (several of these
entities hold registered as federal trademarks)
Complainant asserts that this common law trademark was well-established
at least by 1992 and in use since that period.
As Complainant points out, the Respondent has registered three domain
names which are identical to the alleged common law trademark. Complainant, in its introductory materials,
goes on to assert that Respondent is known to deliberately register domain
names of politicians for various nefarious reasons.
Complainant also argues that the Respondent has no rights or legitimate
interest in the domain names and has not made any demonstrable preparation to
use the domain names in the context of any “bona
fide offering of goods or services.”
Respondent asserts that Complainant does not own any trademark
registrations reflecting the names and Respondent is not commonly known by the
names. Respondent is also, Complainant
asserts, not commonly known by the names.
Complainant also takes the opportunity to rebut any alleged use by
Respondent which is non-commercial or fair use.
Complainant follows by alleging a number of factors which could show
bad faith. The first evidence is the
identity of the domain name to the alleged common law mark. Complainant also argues that bad faith is
shown because the domains provide direct links to a website for the Republican
National Committee.
Finally, Complainant asserts that Respondent’s conduct in registering
famous names, particularly the names of politicians such as President Obama and
Senator John McCain shows “a pattern of registering famous names to prevent the
rightful owners the ability to register their names as domain names.”
B. Respondent
In Response, Respondent goes to the trouble of admitting and denying
each and every allegation contained in the Complaint. Respondent first asserts that there is no
evidence that there is a common law mark.
While Respondent is willing to admit that the Complainant is famous,
Respondent denies the facts alleged to support the existence of a common law
mark.
As to rights in the name, Respondent makes little attempt to assert
rights in the name and goes almost directly to the issues of bad faith. However, Respondent does assert that he has
used “the site in connection with a bona fide
offering of goods or services.”
Respondent asserts that the link to the Republican National Committee
website constitutes such an offering.
In denying bad faith, Respondent sets forth at length his activities in
registering the names of politicians and his use of the registration process in
this arena. He specifically denies that
any of the elements of bad faith set forth at UDRP 4(b) exist, for he has not
registered the domain name for the purpose of selling it, or to prevent the
owner of the mark from using the name in a corresponding domain name or in
order to disrupt business, or in order to attract Internet users for commercial
gain. Certainly, he says, there is no such
evidence presented.
Respondent throughout asserts that his registration and use of the
domain names constitutes fair use and should be considered constitutionally
protected speech under the First Amendment the United States Constitution.
C. Additional Submissions
Complainant’s Additional
Submission
The Complainant filed a timely Additional Submission. In its Additional Submission, Complainant
focuses upon its argument that there is a common law mark citing a number of
cases, but not adding any particular facts.
As to rights in the name, Complainant focuses in its Response on the
issue of fair use of the domain name in an attempt to show that, irrespective
of the political context of this dispute, that Respondent still has shown no
rights in the name.
Finally, there is a long discussion of events that allegedly show
Respondent’s bad faith. Those include
articles about Respondent reprinted from newspapers. Finally, the Additional Submission concludes
by arguing that when a web user attempting to reach a website related to the
Complainant winds up on a website sponsored by the Republican National
Committee, such a result is evidence of bad faith. In fact, Complainant suggests in its
Additional Submission that an Internet user might be confused and think that
former President Clinton had become a Republican. After all, says Complainant, Senator Arlen
Spector recently left the Republican Party and became a Democrat.
Respondent’s Additional
Submission
Respondents timely Additional Submission first focuses on the issue of
common law marks, arguing that most of the famous person common law mark
opinions are defaults. As to bad faith,
Respondent notes that he has never acted in bad faith. When requested, for example, he surrendered
domain names to the United States Government.
Respondent also states that he registered domain names of famous persons
in part to make a point concerning the ease of registration of such domain
names. He further notes that he has
never sold a politician’s domain name.
He also states that he has worked with Senator Hatch and others to
promote the idea that some domain names deserve protection under the federal
statutes, including the names of famous places and politicians.
FINDINGS
Reluctantly, the Panelist concludes that
President Clinton has established a common law mark in his name. A mark is a secondary identifier of the
source of goods and services. President
A finding that a common law mark exist means,
because of the near identity of domain names and mark, that the marks are
identical to or confusingly similar to the domain names. Therefore, the Panelist finds that this
personal name is a common law mark and that the first element of the UDRP has
been established.
As to rights in the name, the Panelist finds
that the facts are persuasive.
Respondent has no rights in the name.
The non-commercial preparation for use of redirecting traffic addressed
to these domain names to the Republic National Committee site just is not
enough. Respondent meets none of the
other elements of rights in the name. In
fact, Respondent is not even making fair use of the name by establishing an
anti-President
This leaves bad faith. The Panelist simply cannot find bad faith in
this case. None of the elements of bad
faith are met. The Respondent’s conduct
in registering, acquiring and utilizing these domain names is simply not within
the UDRP definition of bad faith. The
facts alleged by Complainant are simply unpersuasive. Evidence of bad faith (i) requires a showing
that the names were registered or acquired for the purpose of selling or
transferring the name to the mark holder; (ii) in order to prevent the mark
holder from registering the domain; (iii) to disrupt a competitor’s business;
or (iv) to attract Internet users by confusing
them. The only one of these that could
possibly apply is (ii), which requires a showing of a pattern of conduct. While Respondent’s conduct in registering the
names of politicians does reflect a pattern, Respondent has adequately rebutted
any inference of bad faith.
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.
A trademark registration is uneccessary where Complainant can prove
common law rights by establishing that its mark has acquired secondary
meaning. See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist); see also
Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Additionally, Complainant asserts
common law rights in the WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i) through its history of use. Complainant provides evidence that it has
used the WILLIAM CLINTON mark in connection with service as the 42nd
President of the
Respondent’s <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> domain names are identical or confusingly similar to Complainant’s
WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). Respondent’s <williamclinton.com> domain name contains Complainant’s mark in
its entirety, omits a space, and adds the generic top-level domain (“gTLD”)
“.com.” The omission of a space and the
addition of a gTLD fail to distinguish the <williamclinton.com>
domain name from the WILLIAM CLINTON mark, and are therefore identical pursuant
to Policy ¶ 4(a)(i).
See Red
Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (concluding that
the <redhat.org> domain name is identical to the complainant’s RED HAT
mark because the mere addition of gTLD was insufficient to differentiate the
disputed domain name from the mark); see
also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat.
Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms
and the addition of a gTLD do not establish distinctiveness from the
complainant’s mark under Policy ¶ 4(a)(i).
Respondent’s <williamjclinton.com>
domain name contains Complainant’s mark, adds a “j,” and adds the gTLD
“.com.” Lastly, Respondent’s <presidentbillclinton.com> domain
name contains an abbreviated form of Complainant’s WILLIAM CLINTON mark, adds
the term “president,” and adds the gTLD “.com.”
The addition of the term “president,” or the
use of an abbreviated version of Complainant’s mark in a disputed domain name
creates a confusing similarity between the disputed domain name and
Complainant’s mark. See Coca-Cola Co. v.
Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he
abbreviation of the trade-mark which the public has used and adopted as
designating the product of the [trademark owner] is equally as much to be
protected as the trademark itself . . .”); see also Google, Inc. v.
DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).”); see also Vanguard Group Inc. v. Proven Fin. Solutions,
FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both
the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed
domain name to negate a finding of confusing similarity under Policy ¶
4(a)(i)). The addition of a gTLD is
irrelevant in distinguishing a disputed domain name from a mark. See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the
mere addition of the generic top-level domain “.com” is insufficient to
differentiate a disputed domain name from a mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a
generic top-level domain is irrelevant when considering whether a domain name
is identical or confusingly similar under the Policy.”). Respondent’s disputed domain names are
confusingly similar to Complainant’s WILLIAM CLINTON mark pursuant to Policy ¶
4(a)(i).
Complainant has made a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii). The burden shifted to Respondent to show he
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.”).
Complainant has
shown that Respondent is not commonly known by the disputed domain names.
Complainant states that Respondent is known as “web of deception,” which
is also how Respondent is identified in the WHOIS information. Complainant also claims that Respondent is
not affiliated in any way with Complainant.
Respondent is not commonly known by the disputed domain names pursuant
to Policy ¶ 4(c)(ii).
See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17,
2006) (concluding that the respondent was not commonly known by the
<coppertown.com> domain name where there was no evidence in the record,
including the WHOIS information, suggesting that the respondent was commonly
known by the disputed domain name); see also St.
Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007)
(concluding a respondent has no rights or legitimate interests in a disputed
domain name where there is no evidence in the record indicating that the
respondent is commonly known by the disputed domain name).
Respondent lacks all
rights and legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s rebuttal fails. Respondent’s disputed domain names resolve to
an official website related to the Republican Party, which is the party in
direct opposition to the political party Complainant endorses. Such use of the disputed domain names does
not equate to a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see
also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Compare S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); and EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent is allegedly using the disputed domain names in order to intentionally attract Internet users to an opposing website by creating confusion among Internet users who are seeking Complainant’s WILLIAM CLINTON mark. Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with Complainant, giving the impression Complainant is affiliated with its political competitor. The Panelist declines to find that this is a violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use. Compare Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); and State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). Links to the Republican National Committee website are simply not within the scope of this Policy.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has not registered or
used the disputed domain names in bad faith; Respondent has not violated any of
the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would
constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916
(WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to
sell the domain name for profit, has not engaged in a pattern of conduct
depriving others of the ability to obtain domain names corresponding to their
trademarks, is not a competitor of the complainant seeking to disrupt the
complainant's business, and is not using the domain name to divert Internet
users for commercial gain, lack of bona fide use on its own is
insufficient to establish bad faith); see also Starwood Hotels & Resorts
Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9,
2005) (finding that the complainant failed to establish that respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish UDRP ¶
4(a)(iii)).
DECISION
Having established all three elements required under the ICANN Policy,
the Panelist concludes that relief shall be DENIED.
R.
Dated: June 1, 2009
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