Immigration Equality v. William Brent c/o ImmigrationEquality.us
Claim Number: FA0710001103571
Complainant is Immigration Equality (“Complainant”), represented by Anthony R.
Masiello, of Holland & Knight LLP.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <immigrationequality.us>, registered with Enom, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 26, 2007; the Forum received a hard copy of the Complaint on October 29, 2007.
On November 7, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <immigrationequality.us> is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on November 30, 2007.
On December 13, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant is a national not-for-profit immigration
rights organization. In 1994,
Complainant, through its
Complainant's mark IMMIGRATION EQUALITY is registered for Complainant's Services on the Principal Register of the U.S. Patent and Trademark Office, under Registration No. 3,173,798.
On June 23, 2003, Complainant registered the domain name <immigrationequality.org> and since 2003 Complainant has operated at that address an Internet website which offers its services, provides information relating to immigration issues, and reaches out to Complainant's constituents.
As a result of Complainant's use of its mark IMMIGRATION EQUALITY for over 13 years, Complainant has developed strong trademark rights in its mark.
Complainant's mark IMMIGRATION EQUALITY is a
"suggestive" mark, within the spectrum of distinctiveness recognized
At all relevant times, Respondent was fully aware of Complainant, Complainant's name, Complainant's use of the service mark IMMIGRATION EQUALITY, and Complainant's operation of a website at the domain name <immigrationequality.org>. Complainant has never licensed or otherwise authorized Respondent to use the mark IMMIGRATION EQUALITY or to register the domain name <immigrationequality.us>.
The domain name is identical or confusingly similar to Complainant's service mark. The domain name <immigrationequality.us> is identical to Complainant's trademark and service mark IMMIGRATION EQUALITY because it appropriates the entirety of Complainant's mark, the only difference being the deletion of the space between the two words IMMIGRATION and EQUALITY and the addition of the top level domain name ".us."
The issues discussed on Respondent's website relate to exactly the same fields of law, politics and public affairs in which Complainant provides its services under its registered mark IMMIGRATION EQUALITY. Respondent's website is directed to the same class of persons to whom Complainant provides its services, many of whom are already familiar with Complainant under its mark and name IMMIGRATION EQUALITY. In this way, Respondent has placed himself in direct competition with Complainant under a domain name that is legally identical to Complainant's established name and service mark. Such direct competition under an identical domain name is highly likely to cause confusion among Complainant's constituents and other persons interested in issues of immigration law and politics, especially within the highly specific and limited field of gay and lesbian immigration rights. Such persons are highly likely to mistakenly believe that Complainant is the source of the Respondent's website, or that Complainant has licensed Respondent to use its name and mark, or that Complainant has otherwise endorsed Respondent's website or is in some way connected with it.
The likelihood of confusion is exacerbated by the fact that Respondent's website has included references to Complainant and links to Complainant's online content. At times, Respondent's website has included a menu button labeled "Immigration Equality" referring to Complainant. Respondent's website has even (without authorization) advertised Complainant's services. Such commingling of Complainant's identity and services with Respondent's website is guaranteed to cause confusion among ordinary readers.
Respondent's unauthorized use of Complainant's name and mark have resulted in actual confusion in the field of immigration rights advocates. In 2006, Lambda Legal Defense and Education Fund, a third-party legal advocacy organization, wished to refer readers of its e-mail newsletter Of Counsel to Complainant's website. The May 31, 2006 issue of Of Counsel erroneously included a link to Respondent's website at <immigrationequality.us> instead of Complainant's website.
Confusion would further damage Complainant's reputation as a result of the belligerent and intemperate tone of the content that sometimes appears on Respondent's website. Complainant does not wish to be associated with such rhetoric; yet its name appears in the statement, clearly used to identify not Respondent, but Complainant.
Respondent has no rights or legitimate interests in the domain name. Respondent adopted the Domain Name with full knowledge of Complainant's long-established use of its name and mark IMMIGRATION EQUALITY. Prior to the registration of his domain name, Respondent was a dissatisfied user of the information services provided by Complainant. Respondent's knowledge that Complainant's mark was in use by Complainant is alone sufficient to establish that Respondent has no rights or interest in the domain name.
Respondent registered the at-issue domain name on
July 9, 2005. Long before, on January 4, 2005, Respondent had joined the
"listserv" discussion group of Complainant's
On July 22, 2005, on Complainant's list server, Respondent announced the establishment of his competing website, and overtly acknowledged Complainant's existence, the efforts of its national office, Complainant's operations under the name IMMIGRATION EQUALITY, and the fact that most of the content of the new site was copied from Complainant's website.
After establishing his website, Respondent maintained contact with Complainant, making at least 49 additional postings to Complainant's listserv. When Complainant objected to the website on July 27, 2005, Respondent corresponded directly with Complainant's Legal Director, admitting his familiarity with Complainant's existing website and an earlier version of Complainant's website.
Respondent's dissatisfaction with Complainant's website located at <immigrationequality.org> related to his opinion that the website should have a facility for providing users a particular type of discussion forum. Respondent showed that his intention in registering the at-issue domain name and setting up his website was to coerce Complainant to change the way it was doing business. Respondent's intention in registering the at-issue domain name and setting up his website was to replace Complainant as a provider of information services on the subject of immigration, and to divert Complainant's constituents to his own website, where he would provide information services directly competing with those of Complainant. Such use is not a bona fide use of the domain name.
In order to demonstrate a legitimate interest under usTLD Policy Section 4(c)(ii), Respondent's actions must be "before any notice" of the dispute. However, since Respondent was aware of Complainant's mark before he registered the Domain Name, there was no time at which he could provide or prepare to provide bona fide services under the Domain Name without actual knowledge of Complainant's established mark.
Respondent has no other ground for claiming to have rights or legitimate interests in the at-issue domain name. Prior to registration of the at-issue domain name, Respondent had no ownership interest of any kind in any trademark or service mark resembling the at-issue domain name. Respondent has never been known as <immigrationequality.us> or by any similar name. Moreover, the use of Complainant's mark to compete directly against Complainant cannot constitute legitimate noncommercial use or fair use.
The domain name was registered and has been used in bad faith. Respondent's registration and use of the Domain Name have been in bad faith, because at the time of registration, Respondent knew of and had used Complainant's services; knew that Complainant's legal and trade name was "Immigration Equality"; knew that Complainant used the service mark IMMIGRATION EQUALITY as its primary trademark and service mark; knew that Complainant used the domain name <immigrationequality.org> in offering and providing its services; and yet, with full intention to compete directly with Complainant, Respondent registered the Domain Name which, Respondent knew, was essentially identical to Complainant's name, mark, and domain name.
A showing that a person knew of the senior user's mark, yet proceeded to register a virtually identical domain name is sufficient to prove bad faith registration and use.
Respondent's knowledge of Complainant is manifest from Respondent's admissions and contacts with Complainant, and from Respondent's website itself. At least as early as October 23, 2005, Respondent’s website included references to Complainant. Such references to a senior user on a website have been deemed sufficient evidence to prove bad faith registration.
Respondent's purpose in setting up his website was clearly to interfere with the business of Complainant, merely because Respondent disagreed with the way in which Complainant did business. Such intentional disruption of Complainant's business demonstrates bad faith registration and use of the Domain Name under usTLD Policy Section 4(b)(iii). Where a domain name is used to divert customers to Respondent's competing website, bad faith disruption under Section 4(b)(iii) has been found.
Respondent's website competes directly with Complainant because it focuses on the same legal issues and provides many of the same kinds of information. When a newcomer registers a domain name that is identical to his competitor's domain name, but in a different TLD, it is reasonable to conclude that he knew or should have known that his domain name registration would disrupt the business of Complainant.
Respondent has also demonstrated bad faith as defined in usTLD Policy Section 4(b)(i). Respondent has attempted to use his ownership of the at-issue domain name to extract valuable consideration from Complainant beyond the out-of-pocket costs related to the at-issue domain name. Respondent coercively offered to give up the at-issue domain name if Complainant would alter its business practices to suit Respondent's interests.
Respondent's efforts to use the Domain Name in order to pressure Complainant to alter its business according to Respondent's dictates is an outrageous intrusion into Complainant's right to do business as it sees fit, and crosses far beyond the line of bad faith.
Finally, Respondent is guilty of a form of bad faith analogous to that described in usTLD Policy Section 4(b)(iv), because he has intentionally attempted to attract Internet users to his website, for his own gain, by creating a likelihood of confusion with Complainant's mark. While Respondent may claim that his website is noncommercial and that he has therefore not enjoyed "commercial gain," nonetheless his personal interests have been served by his abuse of Complainant's mark. Bad faith use and registration are not limited to those types described in usTLD Policy Section 4(b).
Respondent contends as follows:
The at-issue domain name should NOT be considered identical or confusingly similar. Since 1994 Complainant has always been known as Immigration Equality, because their trademark application and registration also indicates such. However, in a newsletter (Dec. 2003), it clearly indicates otherwise and states that Complainant will only become known as Immigration Equality in the future at the start of the new year (2004) as part of a "new beginning" and goes on to say that being known as such is part of that change. In other words, they couldn't have been known as Immigration Equality before this.
Respondent's website <immigrationequality.us> is about the subject of immigration equality, while <immigrationequality.org>, and <immigrationequality.net>, the Complainant's websites, are about the business and association services provided by the Complainant for which the trademark is protected.
The at-issue domain name provides three things: (1) information about the general subject of immigration equality including updates concerning Uniting American Families Act; (2) links to resources where readers can find more information; (one of which is the Complainant); (3) a discussion forum; and (4) my personal story. Actual site printed, plus first page news and blog discussion forum.
The disputed domain does not provide (1) information regarding law or policy, (2) association services (3) consultation in any field (3) attorney referrals or (4) any legal services. These last four things are the scope of Complainant's mark.
There is more than one appropriate use for the domain name. Complainant's mark is a descriptive mark and not a suggestive one. The use of a term that is part of the public lexicon without referring to Complainant is appropriate and is generally practiced. Complainant's mark is contestable.
The registered trademark is not the same as the domain name because the registered trademark is specifically protected only as it relates to Complainant's business, not about the subject of immigration equality itself. Commentary on subjects cannot be regulated like Complainant is attempting to do. The registered domain name serves a different function other than that of Complainant's registered trademark. Complainant is just one source of information on the topic of immigration equality. There are many others that reference "immigration equality" without referencing Complainant's mark or its associated business.
Respondent has rights and legitimate interests in the domain name. Respondent's website has been used in connection with a bona fide service since its inception long before any notice of this dispute, with an already established legitimate use of the domain name, and without intent for commercial gain in any way and certainly not by misleadingly diverting consumers or by tarnishing the trademark or service mark at issue.
The domain <immigrationequality.us> has more than one plausible use that does not interfere with Complainant's mark. Because Respondent does not use the domain name for commercial purposes, he has established rights in the disputed domain as a legitimate discussion forum.
IMMIGRATION EQUALITY is not a suggestive mark, but a highly descriptive mark, which is precisely why Complainant attempts to propose secondary meaning, has been established (which it hasn't done). If indeed suggestive, like Greyhound is, there would be no reason for this. Complainant’s trademark describes the purpose or outcome of the services provided by Complainant. It is also a widely used word combination to describe what people want when they are lacking equal immigration rights.
Respondent’s registration of the domain name predated Complainant's federal registration by one and a half years. Although Complainant's registration indicates a first use in commerce date prior to Respondent’s registration, others have used the term "immigration equality" prior to Respondent’s domain name registration and prior to Complainant's trademark registration.
The domain name was not registered and is not being used in bad faith. Respondent's intentions have never been to replace Complainant as a source of legal advice, consultation, association services, or attorney referrals. Respondent is however, the heart and soul and face of the subject of immigration equality - that’s it. Complainant purposefully did not disclose entire emails and responses made by Respondent; only bits and pieces. Had they done so, the likelihood of their success in bringing forth this Complaint would have been tilted in Respondent's favor because it presents legitimate use and good faith.
The purpose of Respondent's website was clear from the beginning and Complainant acknowledges that it was a good idea to produce such a website. No disruption of Complainant's business has been shown to have ever occurred, because we offer no products or services similar to Complainant’s, only information.
Complainant's own remarks encouraged Respondent and affirmed that his decision to create such a platform was a natural thing to do. Complainant said, "we're excited by your energy and commitment..." "we agree that having an independent website...creates community...and...could be a valuable resource....and we applaud your efforts to create this resource." Their letter only confirmed that the disputed domain name was not registered in bad faith BUT instead was registered in good faith with the intention of being used in connection with legitimately fair and natural use of the domain name.
Respondent does not operate the domain name for commercial gain nor is Complainant a competitor. Therefore, Respondent must have registered the disputed domain name in good faith.
The Complaint does not allege any set of facts that arguably constitute bad faith. Respondent is not a competitor. The at-issue domain name does not provide information on immigration law or policy, only information about organizations where people might find more information on the topic itself.
Not only is Respondent’s website not competing with the complainant's website, it doesn’t display links to any competitors.
There's absolutely no possible way that it can be said that the disputed domain name manages to displace visitors for commercial gain. The opposite is true because Respondent pays for the domain out of his own pocket, and points and encourages visitors to give money to Complainant. Respondent never used this site to sell memberships and there are no fees involved. There has never been any exchange of money or any attempt to divert donations from Complainant.
Respondent is not out to harm Complainant in any way. It is in Respondent's original best interests not to do this.
Respondent’s registration of the disputed domain name predating Complainant’s registration of the IMIGRATION EQUALITY mark indicates a lack of bad faith on Respondent’s behalf. Numerous cases find that if a respondent has rights or legitimate interests in the disputed domain then respondent’s registration and use of the domain name are not in bad faith. These cases find such a result EVEN where the respondent is using the domain name in connection with a fair business interest or otherwise offering goods or services on their website.
Respondent has never been in the business of acquiring domain names for the purpose of selling, renting or transferring it to anyone for any reason.
Respondent did not register the domain name in order to prevent the owner of the service mark from reflecting the mark in a corresponding domain name.
Complainant claims that Respondent is "directly competing with their services." From the beginning, Complainant was fully aware that this was not the case.
Respondent’s disclaimer indicates a lack of bad faith as it shows Respondent does not intend to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant indicates that they have always been fully aware of this disclaimer.
Since Complainant’s cease and desist letter, the disclaimer appears at the very top of Respondent’s homepage and goes even further to explain the differences between Immigration Equality, INC. (the company) and immigration equality (the subject or issue).
At the time Respondent registered the at-issue domain name, Complainant had colorable common law trademark rights in the mark IMMIGRATION EQUALITY.
Respondent’s registration of the domain name predated Complainant's federal registration by one and a half years.
The term IMMIGRATION EQUALITY is not generic and is capable of trademark protection.
Complainant did not authorize Respondent to use its trademark.
Respondent chose IMMIGRATION EQUALITY for its domain names because Complainant had used the very same name to describe the source of Complainant’s services.
Respondent’s disclaimer is ineffective. However by placing a disclaimer on his website Respondent admits that he recognizes that his site maybe confused with, related to or sponsored by, Complainant.
Respondent has never been in the business of acquiring domain names for the purpose of selling, renting or transferring it to anyone for any reason.
Respondent did not register the domain name in order to prevent the owner of the service mark from reflecting the mark in a corresponding domain name.
The amount of time that has passed since between Complainant’s first awareness of Respondent’s registration and its filing of the instant Complaint does not bar the instant action.
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 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
As a preliminary matter, Respondent alludes that the instant
proceedings may be time barred, ostensibly because Complainant waited too long
between first becoming aware of Respondent’s activities and filing its
Complaint. The Panel disagrees. The
doctrine of laches, presumably the basis for any “time bar” defense, does not
apply in this case. Laches "requires
proof of (1) lack of diligence by the party against whom the defense is
asserted, and (2) prejudice to the party asserting the defense." See
Nat'l R.R. Passenger Corp. v. Morgan, 536
Identical and/or Confusingly Similar
By virtue of its Federal trademark registration, Complainant shows that it currently has colorable trademark rights in IMIGRATION EQUALITY, however Respondent registered the at-issue domain before Complainant received its registration. Nevertheless, it is not necessary for Complainant to have registered its mark with a governmental authority in order to establish that it has protectable rights in its mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000).
Indeed, Complainant asserts common law rights in the IMMIGRATION EQUALITY mark that predate Respondent’s registration of <immigrationequality.us>. Complainant adopted the trademark (service mark) IMMIGRATION EQUALITY in 1994. Complainant has since continuously and extensively used such mark in connection with promoting public awareness of immigration policies, political issues and providing association services, attorney referrals, and related legal services. The mark has been featured in various printed publications, information packets, advertisements websites, press releases and a variety of additional promotional materials. In late 2003 Complainant amended its articles of incorporation to change its corporate name to “Immigration Equality.”
The IMMIGRATION EQUALITY mark has been used to identify Complainant in legal briefs submitted to courts, administrative agencies, witness statements, and other advocacy materials submitted to the United States Congress and other legislative bodies. Moreover, various news stories and publications refer to and cite Complainant through use of its IMMIGRATION EQUALITY mark. As mentioned above, Complainant has also registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,173,798 issued Nov. 21, 2006, filed on December 12, 2005).
Furthermore, Complainant has continuously maintained a website referenced by the <immigrationequality.org> domain name since 2003. From these facts and other facts offered by Complainant, the Panel determines that Complainant has established common law rights in the IMMIGRATION EQUALITY mark pursuant to Policy ¶ 4(a)(i). 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 Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Complainant’s mark is identical to Respondent’s domain name. The domain name <immigrationequality.us> domain name’s 2nd level, literally matches Complainant’s IMMIGRATION EQUALITY mark. The domain name contains Complainant’s mark in its entirety, omitting the space between “IMMIGRATION” and “EQUALITY” and including the country-code top-level domain (“ccTLD”) “.us.” It is well established that the omission of a space and the inclusion of a ccTLD do not differentiate a disputed domain name. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that the at-issue domain name is identical to Complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Respondent claims that Complainant could not have been known by, or have had exclusive rights in, the IMMIGRATION EQUALITY mark before 2004, since none of Complainant’s publications referred to themselves as such or used the IMMIGRATION EQUALITY mark to differentiate it from general issues regarding immigration rights. This argument is irrelevant since Respondent concedes Complainant was known as IMMIGRATION EQUALITY in 2004, which predates Respondent’s July 9, 2005 registration of the disputed domain name.
Respondent also contends that the <immigrationequality.us> domain name is comprised of common, descriptive or generic terms and as such cannot be identical to Complainant’s mark. However, such a determination is not necessary under Policy ¶ 4(a)(i). This portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”). Nevertheless and notwithstanding the foregoing the Panel more particularly discusses the merits of Respondent’s assertions as it pertains to Rights or Legitimate Interests, below.
For the above stated reasons the Panel finds that the at-issue domain name is identical to Complainant’s protectable trademark.
Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must then demonstrate that Respondent nevertheless has rights or legitimate interests in an at-issue domain name.
Complainant contends that it did not authorize Respondent to use the at-issue domain name and further that Respondent is neither affiliated with, nor commonly known as, IMMIGRATION EQUALITY. There is nothing in the record to the contrary. Therefore, Complainant has met its low burden.
Respondent fails to show that he has established any rights in the at-issue domain name either through use or registration. Respondent is not the beneficiary of any mark that is identical to the Complainant’s trademark. See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent admits that he intended to register the domain name and constructed a website to replace Complainant as the provider of Complainant’s services. Respondent even appears to have attempted to coerce Complainant into changing its practices in exchange for Respondent’s cancelling the at-issue domain name. This kind of game playing by Respondent does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003).
Respondent’s argument that he is making a fair use of the domain name also fails. The at-issue domain name resolves to a website that provides information and services that compete with similar services offered at Complainant’s <immigrationequality.org> website. That the benefits Respondent derives from his website may be non-pecuniary or are of a personal nature rather than classic commercial benefits is a distinction without a difference for the purpose of this analysis.
Respondent argues that he is using his <immigrationequality.us> website in a non-commercial way and is providing provide information and criticism directed at Complainant. However, there is no inherent right to use another’s mark to criticize the mark holder. And where, as here, there are alternative domain names that Respondent might use to communicate his position, there is no attenuation of Respondent’s free speech whatsoever. See Meijer, Inc. v. Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum July 6, 2001) (finding that in the interest of the complainant's trademark rights and the respondent's First Amendment rights, “the proper approach is to scrutinize the facts of each dispute to assess whether reasonable alternatives exist to [the] use of a contested domain name that will still provide an effective avenue for a Respondent's critical comment”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the 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 identical to Complainant’s mark]”).
Finally, Respondent’s challenge to Complainant’s mark, claiming that it is generic, fails.
A court must evaluate the genericness of composite terms by looking at the articulated phrase comprised of the terms as a whole and for the meaning derived from the combination of the terms.
Inc. v. Hemisphere Travel, Inc., 2004
Thus, as a matter of law the Panel must consider the mark IMMIGRATION EQUALITY as a whole. "Whether a term is generic or can be trademarked is a question of fact." Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 300 (7th Cir. 1998). Based on the submissions of the parties, the Panel, as the finder of fact in this proceeding, finds that IMMIGRATION EQUALITY is not generic and is worthy of trademark protection.
Given the foregoing the Panel holds that Respondent has no legitimate rights or interests in the at-issue domain name.
Registration and Use in Bad Faith
Complainant contends that Respondent registered and is using the at-issue domain name in bad faith because at the time of registration Respondent knew of and had used Complainant’s services; Respondent knew Complainant’s legal and trade name was “Immigration Equality;” and Respondent knew that Complainant used the <immigrationequality.org> domain name. The Panel agrees.
It is apparent from the record that Respondent registered the at-issue domain name because of Complainant’s use of the IMMIGRATION EQUALITY mark rather than in spite of it. That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Complainant further contends that Respondent demonstrated intent to dispose of the <immigrationequality.us> domain name for profit. Respondent offered to give up the disputed domain name if Complainant would alter its business practices to suit Respondent’s interest. Such a request for non-monetary concessions is sufficient to establish bad faith registration and use. Therefore, Complainant shows that Respondent registered or is using the disputed domain in bad faith pursuant to Policy ¶ 4(b)(i). see Gutterbolt, Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that the consideration demanded in exchange for a domain name registration does not have to be monetary in nature to run afoul of UDRP ¶ 4(b)(i), but can be anything of value that exceeds the amount spent in registering and maintaining the domain name).
Additionally, Respondent’s purpose in setting up its website was, at least in part, to disrupt Complainant’s business. The at-issue domain name, through its referenced website, concerns the same kinds of information and services as those associated with Complainant’s mark. The record shows that Respondent was adverse to the way Complainant conducted its business and an inference may be drawn that it was this consternation on the part of Respondent that caused him to register and used the provocative at-issue domain name rather than some other equally appropriate, but dissimilar, name. Therefore, it seems more likely than not that Respondent intended to disrupt Complainant’s business and to do so by registering and using the disputed domain name in bad faith in violation of Policy ¶ 4(b)(iii). At a minimum Respondent should have known that some degree of disruption would result to Complainant’s business as the foreseeable consequence of registering a domain name that was identical to Complainant’s mark and using it in the manner that he did. See 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 EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also EBAY, Inc. v. MEO designs, 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 argues that because he has included a disclaimer on his website, it mitigates any presumptions of bad faith. However, the Panel finds that the disclaimer is insufficient to mitigate bad faith and eliminate any initial interest confusion between Respondent’s domain name and 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 NY Times Co. v. NY Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) (“Disclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.”).
Therefore, the Panel holds that Respondent registered and is using the domain name in bad-faith.
Having established all three elements required under the usDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <immigrationequality.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 11, 2008
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