Annette A. Antoun d/b/a The Paxton Herald v. Truth Squad
Claim Number: FA0207000114766
Complainant is Annette A. Antoun d/b/a The Paxton Herald, Harrisburg, PA (“Complainant”). Respondent is Truth Squad, Harrisburg, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paxtonheraldonline.com>, registered with Domain Registration Services.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 3, 2002; the Forum received a hard copy of the Complaint on July 3, 2002.
On July 3, 2002, Domain Registration Services confirmed by e-mail to the Forum that the domain name <paxtonheraldonline.com> is registered with Domain Registration Services and that the Respondent is the current registrant of the name. Domain Registration Services has verified that Respondent is bound by the Domain Registration Services 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 July 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 29, 2002 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 29, 2002.
On August 8, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <paxtonheraldonline.com> domain name is confusingly similar to Complainant’s THE PAXTON HERALD trademark. Respondent has no rights or legitimate interests in the <paxtonheraldonline.com> domain name. Respondent registered and used the <paxtonheraldonline.com> domain name in bad faith.
Respondent concedes that <paxtonheraldonline.com>, while not identical to Complainant’s mark, is similar. Respondent contends that he is making a legitimate, fair, non-commercial use of the <paxtonheraldonline.com> domain name as a website criticizing The Paxton Herald newspaper under the First Amendment. Respondent contends that confusion cannot exist due to the graphical design of the site, content and numerous disclaimers.
Complainant owns U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,415,635 for the THE PAXTON HERALD mark as listed on the Principal Register of the USPTO on December 26, 2000. The USPTO registration lists Complainant’s first use of its mark in commerce on June 28, 1960, and designates the mark as a “newspaper for general circulation.” Complainant applied for the THE PAXTON HERALD mark on November 22, 1999. Complainant also registered the THE PAXTON HERALD mark with the Corporation Bureau of the Department of State, Commonwealth of Pennsylvania, on March 27, 2000.
Complainant asserts that it is the owner of a common law trademark arising out of its registration of the fictitious name “Paxton Herald, The” with the designated Pennsylvanian authorities. Complainant registered its “Paxton Herald, The” moniker with Pennsylvania on June 28, 1960. Complainant states that it has been regularly and continuously publishing its weekly newspaper, The Paxton Herald, during the forty-one years since the filing of the Fictitious Name registration.
Domain name registration records indicate that “Truth Squad” is the holder of the domain name <paxtonheraldonline.com> which was registered on November 19, 2000. Respondent’s site is devoted to criticism, commentary and satire of The Paxton Herald. From the disclaimers, graphics, and content of the web site, it is clear that the site is not affiliated with The Paxton Herald. However, none of this distinguishing information appears in the domain name.
Respondent is located in the same geographic area covered by Complainant’s newspaper.
Respondent registered <paxtonheraldonline.com> knowing that anyone utilizing the website would assume the domain was the weekly newspaper of The Paxton Herald’s online version.
Since the launch of <paxtonheraldonline.com>, the site has included the following statement on the opening screen:
“This site is not associated in any way with The Paxton HeraldTM, Annette Antoun, "publisher." Let’s be really clear on that. It is, however, about The Paxton HeraldTM but you can bet your bold face font it’s not sanctioned by The Paxton HeraldTM. We certainly wouldn't have it any other way.”
The logo of Respondent’s site, rendered in animated letters dripping green slime, gives an immediate visual cue to visitors that the content of the site is not complimentary to the Complainant or her publication. Further, there are two disclaimers and each page within the site features a static representation of the opening dripping slime logo along with a disclaimer at the top of page: “This website is in NO way sanctioned by or associated with The Paxton Herald™ or Annette Antoun,” and at the bottom: “Just in case you still haven't figured it out, this website is not in any way associated with or sanctioned by The Paxton Herald™ or its "publisher," Annette Antoun.”
In response to Complainant’s request to stop using her trade name and trademark, Respondent’s Administrative and Technical contact, Ted Hanson, registered the domain name <annetteantoun.com> (Complainant’s name) on March 20, 2002. Responding to Complainant’s attorney’s Cease & Desist letter Respondent noted “The day I received your cease and desist letter, I purchased another, non-trademarked domain name as a backup location for the contents of the site. For whatever time she has left on earth, she will live with the knowledge I am the owner of AnnetteAntoun.com.”
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 sufficiently established its rights in the THE PAXTON HERALD mark. The recent registration of Complainant’s mark with the USPTO only works to reinforce Complainant’s alleged rights in the mark. Although Respondent registered the domain name on November 19, 2000, Complainant had a pending federal trademark application and had continually used it’s THE PAXTON HERALD mark in conjunction with its Pennsylvania Fictitious Name registration since 1960. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also 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. Rights in the mark can be established by pending trademark applications); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH which it has used since 1982).
Respondent’s <paxtonheraldonline.com> domain name is confusingly similar to its THE PAXTON HERALD mark. Complainant’s “Paxton Herald, The” trade name was registered with the Corporation Bureau of Pennsylvania on June 28, 1960. The Fictitious Name registration places the article “The” at the end of the name, evidencing common understanding that an article prior to a name is often added only for grammatical purposes, and may be superfluous to the name itself. Therefore, Complainant asserts that Respondent’s domain name is identical to its mark, with the exception of the added word “online.” Complainant argues that the addition of a generic word, which signifies an online or web presence, fails to create a separate or distinct mark; thus, rendering Respondent’s domain name confusingly similar to its mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).
Respondent concedes that its <paxtonheraldonline.com> domain name, while not identical to Complainant’s mark, is similar.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the THE PAXTON HERALD mark or the <paxtonheraldonline.com> domain name. Complainant argues that only Annette A. Antoun has ever had any legal right, title or interest in the THE PAXTON HERALD name since June 28, 1960. Complainant’s investigation shows that prior to the present dispute, Respondent did not use THE PAXTON HERALD in business, nor has Respondent ever operated any business, social charitable or other entity utilizing the name. Therefore, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Respondent is intentionally and misleadingly diverting customers to its website by using the goodwill and name recognition of Complainant’s mark. Respondent’s opportunistic registration and use of Complainant’s mark in order to divert Internet users searching for Complainant’s website does not demonstrate rights to or legitimate interests in the domain name. Respondent’s infringing use of its mark in the domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Respondent contends that the contested website is wholly noncommercial in nature and protected speech under the First Amendment. Respondent further contends that its use of Complainant’s mark in its domain name is fair in that the website is devoted to criticism, commentary and satire of The Paxton Herald. See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that the Respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where the Respondent linked the domain name to a “complaint” website about the Complainant’s products).
Respondent cites the precedent of Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108 (D. Minn. 2000). In that case, the court found that the insurance company would be unlikely to succeed on merits of its common law trademark infringement claim against insured absent a showing of likelihood of confusion. Insured used the insurance company's trademark name as part of domain name of insured's Internet web. The court found that no reasonable consumer would be likely to conclude that insured's web site was affiliated with, connected to, sponsored by, or otherwise came from insurer because it was immediately apparent that the site bore no relationship to insurer's business other than as source of consumer criticism of the business, and since the site offered no competitive products nor solicited any commercial activity, it was unlikely to harm insurer's business. The Panel finds Northland unpersuasive in view of the other persuasive authority cited herein. Furthermore, the registration of a domain name confusingly similar to someone else’s trademarked name impacts the trademark owner’s business and is a commercial use in connection with goods and services. E. & J. Gallo Winery v. Spider Webs Ltd., 286 F. 3d 270 (5th Cir. 2002).
Respondent contends it has legitimate interests because the name will be used for non-commercial reasons including the First Amendment right to criticize Complainant. “Domain names ... per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name." Name.Space Inc. v. Network Solutions, 202 F.3d 573, 585 (2d Cir. 2000). Although the content of Respondent’s site may be entitled to First Amendment protection, Respondent’s use of Complainant’s trademark in the domain name of its site is not so protected. Since Respondent’s domain name merely incorporates Complainant's trademark, it does not constitute a protectable, communicative message. See OBH, INC v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 197 (W.D.N.Y. 2000) ("Whether a particular domain name is entitled to protection under the First Amendment depends on the extent of its communicative message.").
Use of a Complainant’s mark to deceive Internet users into believing they are accessing Complainant’s web site is not protected by the First Amendment. Morrison & Foerster LLP v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000). "Use of another's trademark is entitled to First Amendment protection only when the use of that mark is part of a communicative message, not when it is used merely to identify the source of a product." OBH, 86 F.Supp.2d at 197-198 (citing Planned Parenthood Federation of Am., Inc. v. Bucci, 1997 WL 133313, 42 U.S.P.Q.2d 1430 (S.D.N.Y.1997)). Respondent’s use of Complainant's mark as the domain name for his web site is more analogous to source identification than to a communicative message. See OBH, 86 F.Supp.2d at 198. The domain name identifies the web site as being that of The Paxton Herald. Free speech rights do not extend to labeling or advertising products in a manner that conflicts with the trademark rights of others. See Yankee Pub. Inc. v. News Am. Pub. Inc., 809 F.Supp. 267, 275-276 (S.D.N.Y.1992).
Because Respondent’s use of Complainant’s mark in a domain name is not part of a communicative message, his use of Complainant’s mark is not protected by the First Amendment. See Gucci Am., Inc. v. Hall & Assocs., 135 F.Supp.2d 409, 60 U.S.P.Q.2d 1714 (S.D.N.Y. 2001). Respondent’s domain name does not involve the use of a trademarked term that has an additional expressive element or was part of a communicative message that goes beyond commercial identification of the source of a product.
While the content of Respondent’s website may enjoy First Amendment and fair use protection, those protections do not equate to rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark. See Spence-Chapin Services to Families & Children v. Spence-Chapin, FA 105945 (Nat. Arb. Forum May 6, 2002) (Respondent is free to criticize, but the right to criticize does not extend to using the same or similar domain name, without any immediate element to distinguish Respondent, as an entity, from Complainant). Although, Respondent may have a right to refer to the mark in critical content, the wholesale appropriation of Complainant's mark in a domain name, without any distinguishing material, creates confusion with Complainant's business and is not fair use merely for the purpose of criticism. Council of Am. Survey Research Orgs. v. Consumer Info. Org., LLC, D2002-0377 (WIPO July 19, 2002). No criticism is apparent from the domain name itself; it is not sufficient that the criticism may be apparent from the content of the site. Id.
Respondent argues that its use of the <paxtonheraldonline.com> domain name cannot possibly confuse visitors of his web site, because the site contains disclaimers informing visitors that the site is not affiliated with or endorsed by The Paxton Herald. This argument ignores the initial confusion caused by Respondent’s' use of Complainant’s' mark. Internet users entering the <paxtonheraldonline.com> domain name are expecting to arrive at The Paxton Herald web site. When they arrive instead at Respondent’s web site, they cannot help being confused--even if only momentarily. See Planned Parenthood, 1997 WL 133313, at *12 (the appropriation of a mark as a domain name and home page address cannot adequately be remedied by a disclaimer).
The primary harm suffered by domain name trademark infringement is the loss caused by initial interest confusion; once the improper use of the mark has drawn individuals to Respondent’s site, Respondent’s goal of misdirection has been achieved. See Alta Vista 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 DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of Complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by Complainant).
“The unauthorized use of a trademark infringes the trademark holder’s rights if it is likely to confuse an “ordinary consumer’ as to the source or sponsorship of the goods.” See People for the Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001) (As to the right and legitimate interest in using the domain name for the purpose of comment, the domain name failed to convey the message that it was used for the purpose of comment or criticism). As Respondent is not making a legitimate noncommercial and fair use of the domain name, Respondent’s use of THE PAXTON HERALD trademark as the domain name for his web site is not protected by the First Amendment.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant maintains that its newspaper, The Paxton Herald, is geographically centered in Central Pennsylvania, and that over 50,000 people read the newspaper each week. Complainant argues that, similarly, Respondent is located in the same geographic area covered by Complainant’s newspaper. Complainant asserts that on and prior to the disputed domain name’s registration on November 19, 2000, Respondent was familiar with the popularity and notoriety of The Paxton Herald weekly newspaper. Respondent’s registration of the domain name with knowledge of Complainant’s preexisting rights in the THE PAXTON HERALD mark is bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); 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 Baker & Daniels v. Defaultdata.com, FA 104579 (Nat. Arb. Forum March 27, 2002) (Because Respondent’s domain name is identical to Complainant’s mark, a likelihood of confusion on the part of Internet users will occur as to the ownership and affiliation of the website suggesting opportunistic bad faith). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Respondent adopted the domain name <paxtonheraldonline.com> for his web site with full knowledge and intent that some Internet users seeking to find Respondent’s web site would instead be tricked into encountering his web site. Respondent’s use of the <paxtonherald.onlinecom> domain name causes a likelihood of confusion because it creates initial interest confusion. See Coors Brewing Co. v. Zike, FA 104202 (Nat. Arb. Forum Mar. 15, 2002)(“A domain name for the purpose of criticism or commentary must on its face indicate that any site to which it leads is not that of the trademark holder but is instead a site for the criticism of or commentary on the trademark holder. Otherwise, there is created impermissible initial interest confusion.”); see also Aon Reed Stenhouse, Inc. v. Beasse, FA 104576 (Nat. Arb. Forum Mar. 22, 2002) (Registration of domain name identical to Complainant’s mark is evidence of bad faith when the Internet user will likely believe that an affiliation exists between Respondent and Complainant when there is none); see also E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (5th Cir. 2002) (The defendant registered and used the domain name <earnestandjuliogallo.com> for a web site critical of Gallo. The Court found that use of a domain name identical to Gallo’s trademarked name was not fair use and the defendant's manner of use supported a finding of bad faith).
Respondent’s use of disclaimers on its website fails to resolve the underlying issue of initial interest confusion. Respondent registered the <paxtonheraldonline.com> domain name knowing that anyone utilizing the website would assume the domain name was affiliated with Complainant. Once the Internet user is unknowingly routed to Respondent’s unaffiliated website, Respondent’s objectives of misdirection and disrupting Complainant’s business are accomplished. See Alta Vista 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”).
Respondent has no intellectual property rights in the domain name and is not known by that name. The domain name was deliberately registered and used for the purpose of disparaging Complainant's business, and therefore has a commercial impact upon Complainant's mark and on Complainant. There is evidence of intent to harm Complainant's goodwill and to tarnish its mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <paxtonheraldonline.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: August 21, 2002
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