Jack Abramoff v. DCCC
Claim Number: FA1205001441731
Complainant is Jack Abramoff (“Complainant”), represented by Michael Clerkin of Clerkin & Sinclair, LLP, California, USA. Respondent is DCCC (“Respondent”), represented by William C. Rava of Perkins Coie LLP, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jackabramoff.com>, registered with GoDaddy.com, LLC.
The undersigned certifies 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.
M. Kelly Tillery, Esquire as Panelist and Chair
G. Gervaise Davis, Esquire as Panelist
Sandra J. Franklin, Esquire as Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2012; the National Arbitration Forum received payment on June 7, 2012.
On June 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jackabramoff.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 June 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2012 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@jackabramoff.com. Also on June 7, 2012, 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 June 28, 2012.
An additional submission was received from Complainant on July 2, 2012.
An additional submission was received from Respondent on July 9, 2012.
On July 5, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist and Chair and G. Gervaise Davis, Esquire and Sandra J. Franklin, Esquire as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
a) Complainant owns the rights to the JACK ABRAMOFF mark, which is used in connection with speaking engagements and the sale of books;
b) The <jackabramoff.com> domain name is identical to Complainant’s mark;
c) Respondent is not commonly known by the <jackabramoff.com> domain name;
d) The <jackabramoff.com> domain name redirects Internet users to Respondent’s website at the <dccc.org/pages/JackAbramoff/> domain name where Respondent sells, among other things, books;
e) The <jackabramoff.com> domain name is disruptive to Complainant’s business;
f) Respondent is creating a likelihood of confusion as to the source of the <jackabramoff.com> domain name with Complainant.
B. Respondent
Respondent makes the following contentions:
a) Complainant does not have rights in the JACK ABRAMOFF mark;
b) The <jackabramoff.com> domain name has been continuously used for political speech in accordance with Respondent’s mission to raise awareness of political corruption;
c) Any sale of goods on the <jackabramoff.com> domain name is solely in connection with fundraising efforts in order to support Democratic candidates and goals;
d) The <jackabramoff.com> domain name was not intended to be eventually sold to Complainant or a competitor of Complainant’s;
e) Respondent has not made a pattern of bad faith domain name registration;
f) Currently, and at the time of the <jackabramoff.com> domain name’s registration, Respondent and Complainant are not competitors;
g) Any competitive use of the <jackabramoff.com> domain name is merely incidental to the primary use of the disputed domain name;
h) Respondent has never used the <jackabramoff.com> domain name for commercial gain and there is no likelihood of confusion as to whether the source of the <jackabramoff.com> domain name is Complainant;
i) If Complainant does have rights in the JACK ABRAMOFF mark, these rights are pre-dated by Respondent’s registration of the <jackabramoff.com> domain name.
The Panel notes that Respondent registered the <jackabramoff.com> domain name on July 6, 2006.
1) Complainant has not met his burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
2) Complainant has not met his burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met his burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s 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.
Respondent argues that Complainant does not have rights in the JACK ABRAMOFF mark. Respondent argues that Complainant cannot have rights in his name simply by having a public presence in the political realm. Respondent argues that any public awareness of Complainant is in connection with the legal scandal Complainant was a party to and not for Complainant’s sale of books and speeches occurring years later following a jail sentence.
Complainant has provided no evidence of actual use of JACK ABRAMOFF as a trademark in connection with particular goods or services prior to the time Respondent registered the disputed domain name. Complainant claims to be “famous,” yet the record reflects he is, in fact, “infamous”. In any event, “fame” of an individual name does not equal trademark rights in and to that name. Complainant would have to prove secondary meaning therein to establish trademark rights. Complainant has not done so.
The Panel finds that Complainant does not have rights in the JACK ABRAMOFF mark pursuant to Policy ¶ 4(a)(i). See Townsend v. Birt, D2002-0030 (WIPO Apr. 11, 2002) (finding that the protection of an individual politician’s name, no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation).
Trademark rights in the U.S. are based upon use. See Allard Enters. v. Advanced Programming Res., Inc., 146 F.3d 350, 359 (6th Cir. 1998) (citing Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260 (5th Cir. 1975) (“the exclusive right to a trademark belongs to one who first uses it in connection with specified goods”)). One cannot claim or enforce trademark rights in a mark that it has not used, and one cannot secure a U.S. Federal Trademark Registration absent “use in commerce.” 15 U.S.C. § 1051 (Lanham Act – “the owner of a trademark used in commerce may request registration of its trademark on the principal register…”).
That ‘use in commerce,’ however, must be lawful and legal use of the mark in commerce. In re Stellar Int’l, Inc., 159 U.S.P.Q. 48 (TTAB 1968). “It has long been the policy of the [US]PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful.” Greagri, Inc. v. USANA Health Services, Inc., 474 F.3d 626, 630 (9th Cir. 2007) (adopting USPTO policy). “To hold otherwise would be to put the government in an anomalous position of extending the benefits of trademark protection to a seller based upon actions the seller took in violation of that government’s own laws” thereby creating bad public policy that rewards those parties who fail to comply with regulations. Id.
This theory is identified today as the “unlawful use defense” and is essentially an extension of the age-old ‘unclean hands’ defense, wherein:
“unclean hands really just means that in equity as in law the plaintiff’s fault, like the defendant’s, is relevant to the question of what if any remedy the plaintiff is entitled to. An obviously sensible application of this principle is to withhold an equitable remedy that would encourage or reward illegal activity.”
Shondel v. McDermott, 775 F.2d 859, 868 (7th Cir. 1985). As a result, and when applied in a trademark context, the result is identical:
“It is well settled that if a person wishes his trade-mark property to be protected by a court of equity, he must come into court with clean hands, and if it appears that the trade-mark for which he seeks protection is itself a misrepresentation to the public, and has acquired a value with the public by fraudulent misrepresentations in advertisements, all relief will be denied to him.”
Worden v. California Fig Syrup Co., 187 U.S. 516 (1903) (emphasis added).
Although not the most popular subject of legal opinions (presumably as those who have fraudulently acquired trademark rights may be wary of enforcing them), courts across the country follow the same rule when assessing the merits of a plaintiff’s assertion of trademark rights when those rights were acquired based on a violation of U.S. law. See e.g., Desert Beauty, Inc. v. Mara Fox, 617 F. Supp. 2d 185, 190 (S.D.N.Y. 2007) (unlawful use defense has origins in common law doctrine of unclean hands and prevents the government from having to extend the benefits of trademark protection to a seller who violates that government’s laws); see also Havana Club Holding, S.A. v. Galleon, S.A., 1998 U.S. Dist. LEXIS 4065, at *19 (S.D.N.Y. Mar. 31, 1998) (the availability of injunctive relief is affected “when a plaintiff attempts to enforce a right acquired through inequitable conduct”); see also Erva Pharmaceuticals, Inc. v. American Cynamid Company, 755 F. Supp. 36, (D.P.R. 1991) (to assert trademark rights, the prior use that the trademark is based upon must have been lawful); see also J.Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 19.124 (West, 2010 Ed.) (addressing history of the unclean hands – unlawful use defense); see also GoClear LLC v. Target Corp., 2009 U.S. Dist. LEXIS 6649, at *11-13 (N.D.Cal. Jan. 22, 2009) (Court found a product bearing trademark CLEAR X, advertised as a non-chemical acne solution, was actually a “drug” within meaning of FDCA which may not be introduced in interstate commerce unless approved under 21 U.S.C. § 355.) .
Any trademark rights which Complainant purports to have established prior to the Respondent’s registration and use of the disputed domain name appear to have been as the result of substantial illegal activity. Thus, he can have no trademark rights therein.
Without trademark rights, Complainant cannot sustain his burden of proof on this first requirement.
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because he has failed to establish rights in the mark, the Panel may decline to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). However, the Panel believes further analysis will help to satisfy the parties.
The Panel also holds that Complainant has not established a prima facie case in support of his arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that its use of the domain name provides it with rights or legitimate interests in the disputed domain name. Respondent argues that it uses the domain name exclusively in connection with political speech. Respondent asserts that it has concerns with Complainant’s attempt to re-characterize himself as being reformed and that corruption needs not to be forgotten. Respondent asserts that it therefore uses the domain name to display information regarding Complainant’s association with a political scandal. Respondent contends that the few goods it sells on the site accessed by disputed domain name are de minimis, for fundraising purposes, and generate no commercial gain for Respondent.
The Panel finds that Respondent has rights or legitimate interests in the domain name because it has made a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose). Such use is classic political speech, protected by the First Amendment, and, for trademark purposes constitutes nominative fair use.
The Panel also finds that Complainant has 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).
The Panel concludes that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), and that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the domain name in bad faith, Respondent has not violated any of the factors listed in Policy ¶ 4(b) nor 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)).
Respondent argues that it did not register and is not using the domain name with the intent of making a future sale of the disputed domain name to Complainant or Complainant’s competitors. The Panel finds that, as a result, Respondent did not register and is not using the domain name in bad faith under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses).
Respondent additionally contends that it has not developed a pattern of registering and using domain names in bad faith.
The Panel finds that Respondent’s lack of a pattern of bad faith registrations allows the Panel to infer a lack of bad faith to this extent in the present dispute. Therefore, the Panel finds that Respondent did not register and is not using the domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s registration and use of the domain name is disruptive to Complainant’s business. On the other hand, Respondent argues that it is not now nor previously was a competitor of Complainant. Respondent argues that, at the time of the domain name registration by Respondent, any public awareness of Complainant or connected to the JACK ABRAMOFF mark was only in connection with political corruption and felony charges. Therefore, Respondent argues that it could not have registered the domain name with the intent to disrupt Complainant because Complainant was not engaged in any commerce at that time. Respondent further asserts that it is currently not a competitor of Complainant’s because the books that are sold on the domain name website do not generate revenue for Respondent and are not related in substance to Complainant.
Therefore, the Panel finds that Respondent did not register and is not using the domain name in bad faith as the disputed domain was and is not disruptive under Policy ¶ 4(b)(iii). See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
Respondent contends that it did not register and is not using the domain name in bad faith. Respondent asserts that it did not intend to create a likelihood of confusion in order to commercially gain. Respondent argues that the domain name is used strictly for public speech. Respondent argues that the small sale of books on the domain name is used to fundraise for Democratic political candidates and that Respondent receives no part of this amount. Respondent contends that it is a non-profit entity organized for the purposes of political speech and support of political candidates. Respondent contends that “federal law has made clear that political contributions and fundraising do not constitute commercial activity but are more properly characterized as protected political speech.” Respondent argues that courts have routinely held that activities that result in political contributions or are designed to solicit such contributions are not categorized as “commercial” and offers Mastercard Int’l Inc. v. Nader 2000 Primary Comm. Inc., 2004 WL 434404, at *7 (S.D.N.Y. Mar. 8, 2004), and Am. Family Life Ins. Co. v. Hagan, 266 F. Supp. 2d 682, 697 (N.D. Ohio 2002), as support for these claims. Additionally, Respondent contends that, given that the content on the website of the disputed domain name is critical of Complainant, there is no likelihood of confusion that Complainant may endorse or sponsor the domain name.
The Panel finds that Respondent did not register and is not using the domain name in bad faith since Respondent is making only noncommercial use of the disputed domain name without any likelihood of confusion, pursuant to Policy ¶ 4(b)(iv). See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith where the respondent operated the fan club website without commercial gain, therefore the requirements of Policy ¶ 4(b)(iv) could not be established).
Respondent argues that, at the time of the registration of the domain name, Complainant was not using the JACK ABRAMOFF name in connection with any goods or services and was simply known for the legal scandal surrounding him. Respondent asserts that Complainant’s book was not published until November 2011 and all of Complainant’s speaking engagements post-date the book publication. Therefore, Respondent argues that the domain name’s registration predates any rights that Complainant may now have in the JACK ABRAMOFF mark.
The Panel finds that Respondent could not have registered the <jackabramoff.com> domain name in bad faith because the registration predated Complainant’s possible acquisition of any trademark rights in the JACK ABRAMOFF mark pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
Complainant having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jackabramoff.com> domain name REMAIN WITH Respondent.
M. Kelly Tillery, Esquire, Panelist and Chair
Sandra J. Franklin, Esquire, Panelist
G. Gervaise Davis, Esquire, Panelist
Dated: July 27, 2012
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