Annette A. Antoun d/b/a The Paxton Herald v. Stephen Millard
Claim Number: FA0207000114770
Complainant is Annette A. Antoun d/b/a The Paxton Herald, Harrisburg, PA (“Complainant”). Respondent is Stephen Millard, Harrisburg, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paxtonherald.com>, registered with DomainDiscover.
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, DomainDiscover confirmed by e-mail to the Forum that the domain name <paxtonherald.com> is registered with DomainDiscover and that the Respondent is the current registrant of the name. DomainDiscover has verified that Respondent is bound by the DomainDiscover 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 5, 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 <paxtonherald.com> domain name is confusingly similar to Complainant’s THE PAXTON HERALD trademark. Respondent has no rights or legitimate interests in the <paxtonherald.com> domain name. Respondent registered and used the <paxtonherald.com> domain name in bad faith.
Respondent argues that Complainant’s trade name uses the introductory word “The”, thereby making it distinct and different from Respondent’s domain name. Respondent also claims that the space between the words comprising Complainant’s THE PAXTON HERALD mark distinguishes the mark from the disputed domain name.
Respondent contends that he is making a legitimate, fair, non-commercial use of the <paxtonherald.com> domain name as a website criticizing The Paxton Herald newspaper under the First Amendment. Respondent contends that in order for him “to effectively continue my mission in stopping the Paxton Herald from controlling our township, I need a domain with Paxton Herald in it, . . .”
Respondent contends that he has no interest in financial gain either by reselling the domain name to The Paxton Herald or by redirecting through his <paxtonherald.com> web site the sale of any goods or advertisements that are normally sold by The Paxton Herald.
Complainant owns U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,415,635 for the THE PAXTON HERALD mark, applied for on November 22, 1999 and registered on December 26, 2000. Complainant’s USPTO registration lists the date of first use as being June 28, 1960. Complainant also registered the THE PAXTON HERALD mark in the State of Pennsylvania on March 27, 2000.
Complainant also asserts common law rights in the THE PAXTON HERALD mark, arising out of its registration of the fanciful name with the Corporation Bureau of the Department of State, Commonwealth of Pennsylvania. Complainant registered THE PAXTON HERALD as a Fictitious Name with the Pennsylvania authority on June 28, 1960, and has used the mark as a moniker for a weekly newspaper published continuously thereafter. Since then, the owner of the name THE PAXTON HERALD and The Paxton Herald newspaper has spent over a million dollars building, promoting, marketing, and positioning the name PAXON HERALD.
Respondent lives in the West Hanover Township, Pennsylvania about 12 miles from the state capital, Harrisburg. Complainant’s newspaper, The Paxton Herald, has its offices in a neighboring township, whose distribution covers the greater Harrisburg area.
Respondent registered the disputed domain name as a criticism website. Respondent says “The Paxton Herald is not known for objective reporting. . .but only reports the view they support, and that view usually is tied to an underlying, emotionally driven agenda that is only known to the principal editors of the newspaper.” Respondent explains that Complainant’s reporting is manipulative and controlling, and the inclusion of Complainant’s mark is essential to the criticism website in denoting its content.
Respondent asserts that it has no financial interest in the disputed domain name, “except to perhaps save some delivery costs for [his] newsletters.” Respondent contends that the cost of production of its publication, The West Hanover Monitor, is borne completely by Respondent, and is either mailed or distributed through the township door to door. Respondent maintains that there is no advertising in the newsletters.
In 1999 Respondent was elected township supervisor on a platform to rid the township of The Paxton Herald control.
Respondent has a disclaimer on his website directing persons getting there accidentally to the Complainant’s website.
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 demonstrated sufficient rights in the THE PAXTON HERALD mark to warrant protection of Complainant’s tradename as a common law trademark. Although Respondent registered the disputed domain name on August 18, 1999, Complainant demonstrated common law rights in the THE PAXTON HERALD mark prior to Respondent’s registration; the subsequent USTPO and Pennsylvania registrations only reinforce Complainant’s claim of having rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Respondent’s <paxtonherald.com> domain name is identical to Complainant’s THE PAXTON HERALD mark. Complainant’s Fictitious Name registration places the article “The” in the title of the newspaper at the end of the name, illustrating the common understanding that an article prior to a name is often added only for grammatical reasons, and may be unnecessary to the name itself; thus, Respondent’s domain name is identical to Complainant’s mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent argues that his use of THE PAXTON HERALD mark as the domain name for his web site is protected by the First Amendment. The Panel finds this argument unpersuasive.
Respondent contends he 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, his use of Complainant’s trademark in the domain name of his 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, LLC, 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 his use of the <paxtonherald.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 <paxtonherald.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.
Nor is Respondent is known by The Paxton Herald newspaper’s trade name or the <paxtonherald.com> 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
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.
When Respondent registered the domain name, he was familiar with the popularity and notoriety of Complainant’s The Paxton Herald weekly newspaper and THE PAXTON HERALD mark. Respondent’s registration of the domain name, despite knowledge of Complainant’s rights in the mark, represents 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 Mar. 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).
Respondent adopted the domain name <paxtonherald.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.com> 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <paxtonherald.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: August 21, 2002
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