Kendall/Hunt Publishing Company v. headhunterbob
Claim Number: FA0111000102247
The Complainant is Kendall/Hunt Publishing Company, Dubuque, IA (“Complainant”) represented by James M. Heckmann, of Heckmann Law Offices, P.C. The Respondent is Robert Hill headhunterbob, Lovettsville, VA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kendallhuntsucks.com>, registered with Tucows, Inc.
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.
Anne M. Wallace, Q.C., Panel Chair, Honorable Carolyn M. Johnson and Honorable James A. Carmody, Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 15, 2001; the Forum received a hard copy of the Complaint on November 19, 2001.
On November 16, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <kendallhuntsucks.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 November 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2001 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 firstname.lastname@example.org by e-mail.
The Respondent did not submit a response to the Complaint.
On December 31, 2001, pursuant to Complaint’s request to have the dispute decided by a three-member Panel, the Forum appointed Anne M. Wallace, Q.C., the Honorable Carolyn M. Johnson and the Honorable James A. Carmody were named as the Panel.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The domain name complained of is "kendallhuntsucks.com."
Kendall/Hunt Publishing Company is an Iowa corporation and has been conducting business under that name and the nickname Kendall/Hunt since 1969. Kendall/Hunt Publishing Company is the registered owner of the domain name <kendallhunt.com> and has a substantial website at <kendallhunt.com>, which includes its catalog of products and services. Kendall/Hunt Publishing Company claims proprietary rights in the marks "Kendall/Hunt," “kendallhunt,” and all derivations thereof.
Although the marks are not registered marks with the USPTO, they have nonetheless gained secondary meaning in the marketplace. Kendall/Hunt Publishing Company has been in business under that name since 1969. The mark Kendall/Hunt has been in continuous use since then and has become known throughout the publishing industry within the United States and internationally. Goods and services are known and recognized by the public under that name as well as exhibited annually at approximately 30 national and regional conventions for the publishing industry. Kendall/Hunt Publishing Company expends in excess of $3 million dollars per year in marketing, advertising, and promoting its products, and in its fiscal year ending August, 2000, alone, spent approximately $200,000 dollars on maintenance of the website <kendallhunt.com>. A keyword search performed at the site <google.com> on August 3, 2001, produced the following results:
Keyword Number of Results
Kendall Hunt 86,500
Kendall Hunt Publishing Company 11,700
Additionally, a keyword search of the United States Copyright Office through the Library of Congress returned 5,226 items that have the Kendall/Hunt copyright.
The domain name <kendallhuntsucks.com> is confusingly similar to the Kendall/Hunt mark. Although it is not an identical mark, the Kendall/Hunt mark is the dominant element. UDRP Panels have held that when a service mark is the dominant element it can be concluded that the domain name is confusingly similar. Westfield Corp., v. Hobbs, D2000-0227 (WIPO May 18, 2000). Respondent's domain name registration on its face is clearly intended to be confusingly similar to Kendall/Hunt Publishing Company's marks, and is intended to divert Internet traffic from Kendall/Hunt Publishing Company's website and/or attract visitors by virtue of its similarity to the Kendall/Hunt Publishing Company marks. Respondent does not conduct business under any name similar to the Kendall/Hunt Publishing Company marks. Indeed, Respondent's website is not a commercial venture, nor does it promote a commercial venture. Therefore, Respondent cannot claim secondary meaning of his own in the mark.
Respondent registered this domain name in bad faith and it is being used in bad faith. Respondent's domain name <kendallhuntsucks.com> is on its face a pejorative domain name intended to disparage Kendall/Hunt Publishing Company's goodwill. Respondent's purpose is obvious upon viewing the website: it is intended solely to harm Kendall/Hunt Publishing Company. Complainant believes that Respondent's motivation in registering this domain name is solely revenge. Complainant and Respondent were engaged in litigation over a breach of contract issue. A judgment was entered in Complainant's favor against Respondent. Respondent's domain registration and posting of the website took place after the entry of that judgment.
The arbitration entitled Charles Jourdan Holding AG v. AAIM, D-2000-0403 (WIPO June 27, 2000) used three criteria to conclude when rights or legitimate interest in a domain name belong to a Respondent. No rights or legitimate interests exist where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name in question. Respondent Hill is not and never has been a licensee of Kendall/Hunt. Kendall/Hunt has never authorized or licensed Hill to use its corporate or trade name in any manner at all. See also, MedStaff Alternatives, Inc. v. Dustina Bennett, FA 97260 (Nat. Arb. Forum July 11, 2001. Furthermore, using the common law right to the domain name as previously established, as well as the registration date of the domain <kendallhunt.com>, it is clear that Kendall/Hunt’s rights in the marks preceded Respondent’s registration. Finally, Respondent is not, and never has been, known as Kendall/Hunt.
Respondent has no rights or legitimate interests in the domain name at issue. He has not made a bona fide offering of goods or services, is not known by the domain name in any capacity, and has never made a legitimate noncommercial or fair use of the domain name. Respondent’s only intent is to tarnish Kendall/Hunt in some fashion and to disrupt its business
The Respondent did not respond to the Complaint.
C. Additional Submissions
The Panel finds that:
1. The domain name <kendallhuntsucks.com> is confusingly similar to the Complaint’s common law trade marks “kendallhunt” and “Kendall/Hunt”;
2. The Respondent has not established any right or legitimate interest in the domain name; and
3. The Respondent acquired and is has used the domain name in bad faith.
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
Complainant has established common law rights to the marks kendallhunt and Kendall/Hunt through its extensive use of the marks to identify its publishing services. The Panel is of the view that the addition of the suffix “sucks” does not defeat the confusingly similar requirement of the Policy: see ADT Services AG v. ADTSucks.com, D2001-0213 (WIPO Apr. 23, 2001); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, D2000-0662 (WIPO Sept. 19, 2000).
With respect to this element, the Panel agrees with the following reasoning in the Wal-Mart Stores Inc. case:
“Following this reasoning, Complainant contends that consumers are likely to believe that any domain name incorporating the sequence "Wal-Mart" or a close approximation thereof is associated with Complainant. In the ordinary case, when a generic term is appended to the trademark (such as the domain name walmartstores.com), this would be so. But the fame of a mark does not always mean that consumers will associate all use of the mark with the mark’s owner. No reasonable speaker of modern English would find it likely that Wal-Mart would identify itself using wal-martsucks.com. Complainant has no evidence of any potential confusion. The Panel specifically rejects Complainant’s argument that consumers are likely to be confused as to the sponsorship or association of a domain name that combines a famous mark with a term casting opprobrium on the mark.
Nevertheless, the Panel understands the phrase "identical or confusingly similar" to be greater than the sum of its parts. The Policy was adopted to prevent the extortionate behavior commonly known as "cybersquatting," in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior. Thus, the Panel concludes that a domain name is "identical or confusingly similar" to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity. …”
Applying this logic to the current situation, the Panel finds that the domain name <kendallhuntsucks.com> is confusingly similar to the Complainant’s marks cited above. See also Bloomberg L.P. v. Secaucus Group FA 97077 (Nat. Arb. Forum June 7, 2001) for a similar analysis.
Rights or Legitimate Interests
The Panel has reviewed and is in general agreement with the statements of the Panel in the Bloomberg L.P. case referred to above; i.e., that the use of a “sucks” domain name may be justified by fair use or legitimate noncommercial use considerations in the context of free speech. Each case, however, must be reviewed on its own merits.
On our reading of Paragraph 4(c)(iii) of the Policy, a non-commercial use will not be a fair use if its purpose is to “tarnish the trademark or service mark”. In this case, the Complainant has established a prima facie case on the evidence that Respondent has established the web site for the purpose of tarnishing the Complainant’s marks. Respondent certainly knew of Complainant’s marks when the domain name was registered since he registered the name for the purpose of putting up content to complain about the Complainant. We draw these conclusions from the material on the web site itself where Respondent uses Complainant’s name and gives information and opinion about Complainant for the apparent purpose of convincing others not to do business with the Complainant. In large bold print on the site, the following words appear: “The Top Ten Reasons NOT To Do Business With Kendall Hunt!”
Respondent has chosen not to provide a Response to the Complaint, so we are left with the inferences we are able to draw from the Complainant’s case. While we may protect the free speech interests of someone interested in presenting editorial opinion to the world, we cannot assume on these facts that Respondent acted merely to exercise his free speech or give such editorial opinion. Since Respondent did not favour the Panel with any reason for registration of the name, and in view of Respondent’s failure to reply, the Panel accepts Complainant’s allegations that Respondent acted to disparage Complainant’s goodwill for reasons that are not bona fide non-commercial and fair use of the domain name. The evidence establishes an intent to tarnish Kendall/Hunt in some fashion and to disrupt its business.
Registration and Use in Bad Faith
With respect to this element, the paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location
On a review of the evidence, none of the four enumerated circumstances exist in this case, for the following reasons:
1. There is no evidence that the name was acquired primarily for the purpose of sale.
2. There does not appear to be intent to prevent the owner from reflecting the mark, and in any event there is no pattern.
3. While we may conclude that the primary purpose of the registration was to disrupt the business of the Complainant, the Complainant is not a "competitor" of the Respondent within the meaning of the Policy.
4. Even if there was intention to attract Internet users to the site, the site is not being operated for commercial gain.
Given that none of the four enumerated policy criteria with respect to bad faith have been met, that leaves the Panel with the question of whether there is bad faith for some other reason. On our reading of the Policy, each Panel is responsible to determine whether there has been bad faith. The four cited examples are situations where, if the evidence exists, the Panel must find bad faith. This does not, however, preclude the Panel finding that other circumstances amount to bad faith in a particular case. The paragraph says, "in particular but without limitation".
Complainant alleges that Respondent registered the domain name in bad faith to cast aspersions on Complainant’s goodwill. Complainant also suggests Respondent is passively holding the domain name. Until recently, the web site contained disparaging comment against Complainant. Currently, the web site is no longer operating. We have no explanation from the Respondent as to why this is the case.
The Complainant’s evidence establishes a prima facie case that Respondent is using the domain name for a personal vendetta against the Complainant for the purpose of disparaging Complainant’s name and mark. Without any explanation from the Respondent otherwise, the Panel finds that use of the domain name in this fashion amounts to bad faith within the meaning of the Policy.
A majority of the Panel finds in favour of the Complainant in this case, and in accordance with Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <kendallhuntsucks.com> be transferred to the Complainant.
Anne M. Wallace, Q.C., James Carmody & Carolyn Marks Johnson, Panelists
Dated: January 14, 2002
This is the classic parody site set up to criticize the business activities of a trademark owner. Even though the practice of putting “sucks” on the back of a trademark is widely believed to be childish, at best, it is a protected form of critical speech, absent bad faith attempts to divert customers for commercial gain, extortion attempts to sell the site to the trademark owner or its competitor or other manifestations of bad faith. Mere criticism of the trademark owner on the parody site does not constitute bad faith or disparagement of the trademark.
The Respondent did not do the UDRP process, this Panel or his own position the courtesy of filing a Response defending his motives in registering or maintaining the domain name at issue, <kendallhuntsucks.com>. The default nature of the proceeding makes this a difficult case. However, even though we must find issues of fact in favor of the Complainant, the defaulting Respondent should prevail. This panelist agrees with the portion of the Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, D2000-0662 (WIPO Sept. 19, 2000) case which explains: “But the fame of a mark does not always mean that consumers will associate all use of the mark with the mark’s owner. No reasonable speaker of modern English would find it likely that Wal-Mart would identify itself using wal-martsucks.com. Complainant has no evidence of any potential confusion. The Panel specifically rejects complainant’s argument that consumers are likely to be confused as to the sponsorship or association of a domain name that combines a famous mark with a term casting opprobrium on the mark.” Wal-Mart goes on to reach a conclusion that cybersquatting existed in that case for reasons not present here (admitted registration in bad faith, for example).
In our case, the Complainant has not convinced this panelist that the domain name at issue is identical or confusingly similar to its common law trademark. This is the Complainant’s clear burden under paragraph 4(a)(i) of the Policy, and it has not been met through showing of actual public confusion or likelihood of confusion.
The reasoning of Panelist David Sorkin in Bloomberg L.P. v. Secaucus Group, FA 97077 (Nat. Arb. Forum June 7, 2001), dealing with <michaelbloombergsucks.com>, seems to apply to our case: “In my view, it is unnecessary to inquire into the nature, legitimacy, or timing of [r]espondent’s activities, because the disputed domain name on its face fails to fall within the scope of the UDRP, being neither identical nor confusingly similar to any trademark owned by [c]omplainant.”
Even if the further inquiry be “unnecessary,” I submit that the Complainant has not met its burden to allege facts which would satisfy paragraph 4(a)(iii) or 4(b) of the Policy (bad faith). The only bad faith activity alleged by the Complainant amounts to registering and maintaining a site which is critical of Complainant’s publishing business practices. This is the exercise of free speech and not bad faith. The Majority acknowledges that the Respondent was not alleged to be engaged in any of the four enumerated bad faith activities (Policy paragraph 4(b)(i-iv). At the time of filing the Complaint, the Respondent was actively using the site associated with the domain name at issue to criticize the book publishing activities of the Complainant. The Complainant does not allege passive holding as a ground for finding bad faith. Since filing this UDRP proceeding, the site has at least temporarily been abandoned. While the Complainant may welcome the abandonment and while it may become clear in several months that the Respondent has been passively holding the site, I cannot agree with the Majority that the evidence of passive holding, which presented itself after the commencement of this proceeding, can constitute a justifiable instance of Panel-defined bad faith. Since I believe there is no other basis for bad faith presented, the Complainant has failed to meet its burden under paragraph 4(a)(iii) of the Policy.
Since it is far from clear that UDRP panels, such as this one, have res judicata effect in their decisions, had the Complainant lost in this proceeding, it might have considered a second filing of this case with appropriate supplemental allegations and proof.
Accordingly, I must respectfully decline to vote in favor of the transfer of
<kendallhuntsucks.com> to the Complainant.
Honorable James A. Carmody