The
Claim Number: FA0905001262209
PARTIES
Complainant is The Cedarville University (“Complainant”),
represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cedarvillealumni.com>,
<cedarvillealumni.biz>, <cedarvillealumni.info>, <cedarvillealumni.mobi>, <cedarvillealumni.net>, and <cedarvillealumni.org>,
registered with Godaddy.com, Inc.
(individually and collectively as required by the context, the “Disputed Domain Names”).
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelist in this proceeding.
James Bridgeman, Kendall C. Reed, and David
Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 11, 2009; the National Arbitration Forum received a hard
copy of the Complaint on May 13, 2009.
On May 12, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <cedarvillealumni.com>,
<cedarvillealumni.biz>, <cedarvillealumni.info>, <cedarvillealumni.mobi>, <cedarvillealumni.net>, and <cedarvillealumni.org> domain
names are registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the names.
Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com,
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 May 14, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 3, 2009 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 postmaster@cedarvillealumni.com,
postmaster@cedarvillealumni.biz, postmaster@cedarvillealumni.info,
postmaster@cedarvillealumni.mobi, postmaster@cedarvillealumni.net, and
postmaster@cedarvillealumni.org by e-mail.
A timely Response was received and determined to be complete on June 3,
2009.
The National Arbitration Forum received Complainant’s Additional
Submission on June 8, 2009 and determined that it was timely and complete
pursuant to the National Arbitration Forum’s Supplemental Rule 7.
The National Arbitration Forum received Respondent’s Additional
Submission on or about June 15, 2009 and determined that it was timely and
complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On June 12, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed James Bridgeman, Kendall C. Reed, and David
Sorkin as Panelists, Kendall C. Reed acting
as Chairman.
On June 18, 2009, the Panel issued an order
requesting the parties submit copies of all submissions in Word format and
extending deadline for issuing a decision until July 10, 2009.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Confusing Similarity
Complainant has common law rights
in the marks
Complainant
is an accredited, Christ-centered, Baptist university of arts, sciences,
professional, and graduate programs that is located in southwestern
Complainant has used its CEDARVILLE mark for over 120 years in conjunction with educational services. In addition and as stated in an affidavit by Complainant’s Vice President Vice President of Finance and Chief Financial Officer, Complainant uses its CEDARVILLE mark in conjunction with clothing, paper goods, radio broadcasting services, and other goods and services related to educational services.
Respondent is the registrant of record for each of the Disputed Domain Names.
Each of the
Disputed Domain Names is confusingly similar to Complainant’s CEDARVILLE mark
because each fully incorporates Complainant’s CEDARVILLE mark and merely adds
the element “alumni,” which is a common generic term in the higher education
industry referring collectively to all of the graduates of a particular
education institution.
Respondent simultaneously enhances and admits the confusion Respondent is causing in relationship to the use of the Disputed Domain Name <cedarvillealumni.com> in conjunction with the Website to which this Disputed Domain Name directs (“Respondent’s Website”). First, Respondent enhances the confusion by using Cedarville’s blue and gold color scheme. Then, he acknowledges the confusion Respondent is causing by placing a small disclaimer at the bottom of the page. If confusion of source and sponsorship was not inevitable, why would Respondent place the disclaimer on the page?
Rights
or Legitimate Interests
Respondent has never used any trademark or service mark similar to the
Disputed Domain Names by which Respondent may have come to be known, other than
the infringing use noted herein.
Complainant has not granted
Respondent any license, permission, or authorization by which Respondent could
own or use any domain name registrations which are confusingly similar to any
of Complainant’s mark.
Respondent has never operated any bona fide or legitimate business under the Disputed Domain Names
and is not making a protected non-commercial or fair use of the Disputed Domain Names. In fact, as set forth herein, Respondent’s
activities are commercial in nature and, at least in relationship to the <cedarvillealumni.com> domain
name, seem specifically designed to tarnish the CEDARVILLE mark. The balance of the Disputed
Domain Names are used to generate pay-per-click revenue by free riding
on the goodwill of the Complainant’s CEDARVILLE mark.
Respondent’s
use of the <cedarvillealumi.com>
Disputed Domain Name is being used for commercial purposes because they are
being used by Respondent in conjunction with his representation, as attorney of
record, for a plaintiff in a civil lawsuit against Complainant herein. Respondent is the attorney of record
for the Plaintiff in David M. Hoffeditz, Ph. D v. Cedarville University, et al.
Case No. 2008 CV 0790 (the “Hoffeditz
Lawsuit” or “Litigation”). The <cedarvillealumni.com>
Disputed Domain Name is used in conjunction with a website that (1) improperly
solicits contact with a number of individuals involved in the events described
in the Plaintiff’s Complaint in the Litigation who are represented by counsel,
namely “current Trustees” of Complainant; (2) improperly solicits contact with
parties who may or may not be named defendants in the Litigation but each of
whom may have interests which are adverse to Respondent’s client, namely
“current employees” of Complainant; (3) improperly seeks to gain an advantage
in the Litigation by advocating for the dismissal of one of the individual
defendants, the University’s current President, as well as the removal of
members of the Executive Committee of the Trustees, who are similarly involved
in the Litigation; (4) engages in pre-trial publicity involving the Litigation;
and (5) goes to great lengths to tarnish the Complainant, its employees, and
its Trustees. The content of the
Respondent’s Website, which has the stated aim of “the immediate resignation of
[certain members of Complainant’s management team],” is apparently designed to
embarrass and harass Cedarville into a settlement on terms favorable to Respondent’s
client.
Respondent uses the <cedarvillealumni.biz>, <cedarvillealumni.info>, <cedarvillealumni.net>, and <cedarvillealumni.org> Disputed Domain Names in conjunction with pay-per-click advertising pages promoting the education services of others. Respondent uses the Disputed Domain Name <cedarvillealumni.mobi> in conjunction with a web page advertising the goods and/or services of Respondent’s registrar, GoDaddy.
While it is true that
Respondent is an alumnus of Cedarville, the trademark case law does not support
the notion that an alumnus has a per se unlicensed right to register
confusingly similar domain names and use them in conjunction with pay-per-click
advertising pages and to engage in improper litigation tactics. Respondent’s status as an attorney admitted
to the Supreme Court of Ohio and governed by the Ohio Rules of Professional
Conduct and the rules of the local court in the pending Litigation must govern
the time his actions in this matter are considered by the Panel, not merely
whether or not he graduated from Cedarville.
As the facts
set forth above reveal, Respondent registered and is using the Disputed Domain
Names in bad faith.
At all relevant times, Respondent
had actual knowledge of the CEDARVILLE mark
Given the considerable use of the CEDARVILLE Marks, Internet users are
likely to be induced to believe that the Offending Domains connects to websites
associated with or sponsored by Complainant.
Using a confusingly similar domain name to convert traffic to commercial
websites is one of the four explicit examples of bad faith registration and use
found in Section 4.b.(iv) of the Policy: “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.”
Registering multiple domain names to prevent a Complainant
from reflecting its marks in those domain names is also one of the four
explicit examples of bad faith registration and use found in Section 4.b.(ii) of the Policy: “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.”
Respondent’s advertising offerings for competing higher education institutions directly compete with Complainant. While the Respondent’s advertising its registrar’s services and Respondent’s legal services do not compete directly with the Cedarville’s educational services, in a sense there is competition between the parties. First, Cedarville is competing with Respondent for the ad traffic which is currently being sent to GoDaddy through free riding on the goodwill of the CEDARVILLE mark.
Further, Respondent wishes to obtain Cedarville’s money
through a judgment or favorable settlement and Cedarville wishes to retain its
money in order to fund its mission to educate students and equip them for life
as mature Christians. Respondent, on
behalf of his client and for his own commercial benefit as well, is using the courts
to compete with Cedarville for these scarce resources. By registering multiple domain names, some of
which are used to promote the goods and services of others via pay-per-click
advertising and one of which is being used to coerce the University into
termination of its president and board members, solicit contact with
represented parties and employees of the university, conduct pre-trial publicity regarding the
Litigation, and otherwise harass and tarnish Cedarville, there can be no doubt
that one of the primary goals in Respondent’s activities is to disrupt
Cedarville’s business. Such activities
can also be found in one of the four explicit examples of bad faith
registration and use found in Section 4(b)(iii) of the
Policy: “you have registered the domain name primarily for the purpose of
disrupting the business of a competitor.”
Lastly, even though Respondent’s activities fit neatly
within three of the four enumerated, explicit examples of bad faith found in
the Policy, the Panel may also consider the totality of the circumstances when
conducting a Policy ¶ 4(a)(iii)
analysis, and such an analysis is not limited to the enumerated factors in
Policy. Respondent’s
apparent commercial goal is to use these domain names to enhance his chances to
obtain a favorable award or settlement.
Given the fact that Respondent is the Plaintiff’s attorney of record in
a pending civil matter against the Complainant, and given that the Respondent
has registered multiple confusingly similar domain names and has used them in
conjunction with pay-per-click ad pages and improper litigation tactics, the
Panel would be on firm ground to find that, under the totality of the
circumstances, Respondent has registered and used the Domain Names in bad
faith.
B. Respondent
Confusing Similarity
Complainant does not hold the CEDARVILLE
mark as a matter of common law or registered trademark. In addition, unlike
nearly all universities in the
The names “Cedarville” and “
Complainant’s claim to the
CEDARVILLE mark as a matter of common law must first be analyzed in light of
registered trademarks and how a common law trademark might exist in its
absence. Section 5(a) of the Complaint begins with various institutional
highlights by dedicating an entire paragraph to establishing the credibility of
Complainant’s short argument about
a common law trademark for “its CEDARVILLE mark” might create protection for
the unregistered phrase “
Complainant fails to establish rights to “its CEDARVILLE mark” because 1) the Complainant may not conveniently argue for this common law trademark when it has not yet officially protected its actual name; 2) Complainant’s every argument for a common law trademark for “Cedarville” only applies to the unregistered “Cedarville University” title; 3) the name “Cedarville” is in the public domain and was in common public use long before Complainant was founded; 4) anyone with any connection to the word “Cedarville” may use it for nearly any purpose; 5) after the improper interchange of “Cedarville” in Section 5(a) of the Complaint, all proceeding analysis by the Complainant improperly assumes rights to the CEDARVILLE mark exclusively yet without justification; 6) Complainant’s previous fair use of an abbreviated name shared in the public domain does not establish a common law trademark. Complainant’s basic failure to establish rights to the CEDARVILLE mark as a common law trademark fundamentally undermines the entire basis of the Complaint.
Complainant may not allege that the domains are confusingly similar to a mark in which they hold no rights. While the proceeding analysis is provided in response to other analysis in the Complaint, it has already been established that Complainant has absolutely failed to demonstrate how the CEDARVILLE mark is uniquely theirs and not already used in the public domain.
Complainant incorrectly claims that the <cedarvillealumni.com> color scheme may confuse the average viewer, only briefly mentioning the use of “blue and gold” colors on the website. However, since the launch of <cedarvillealumni.com> the actual primary color scheme consistent throughout every single page is light turquoise fonts on a dark turquoise background with gray shading. In addition, the header text and running title located at the top of each page is black and white and placed directly next to the unique logo of a pen whose very existence only furthers the highly obvious “open letter” purpose of this site. The only use of “blue and gold” can be found as tint for six tabs containing links with white text; therefore, overwhelming totality of the color scheme—including its clear headers—does not lead to any reasonable confusion. By omitting the presence of the primary color scheme of the website the Complainant again has only chosen to present evidence most beneficial to their claim instead of accurately presenting all relevant and pertinent facts in their totality.
Complainant’s reasoning always
allows <cedarvillealumni.com> to
be theirs—even if registered by the alumni of
Complainant incorrectly claims that
the mere presence of the disclaimer indicates forward knowledge of potential confusion.
While there are some instances in which a disclaimer—by itself and provided as
a sole defense—may establish this knowledge, not every disclaimer automatically
falls into this category. First, the author of the Complaint has inconsistently
argued that “the absence of a
disclaimer could confuse viewers" on an unrelated site containing content
adverse to the Complainant. This
deflates his credibility by further evidencing of a pattern of selective
reasoning, consistent with his bad faith motives explained in Section 3(e)
below. Second, consistent with the Complainant’s selective desire to take over
only this website, the disclaimer placed on <cedarvillealumni.com> indicates forward knowledge of
something else—anticipation of harassment based on the Complainant’s
established pattern of aggressively silencing commentary critical of their
current leadership, as detailed in Sections 3(d) and 3(e) below. Accordingly, <cedarvillealumni.com> gathers
signatures from alumni who may already be fearful of (or familiar with) the
Complainant’s past tactics. As a result, the disclaimer was provided in good
faith to assure potential letter signers that the site is not a sham operation
by the Complainant, fearing that it could be concocted to gather the names of
alumni to target or to add to a watch list for future adverse treatment. The
disclaimer makes certain that alumni will “not be confused” by these fears and
creates distance by stating that it “is not affiliated with
Respondent Has Rights and Legitimate Interests in the Domains.
Complainant incorrectly alleges
that the Respondent lacks rights or legitimate interest in the domains. In
fact, as previously established, the Respondent is merely an agent for alumni
of
Complainant fails to divulge the serious misconduct that taints their credibility, misconduct related to the legitimate interests motivating the alumni’s registration of the domains. Often by force, the Complainant has routinely silenced opposition to their leadership and criticism of poor governance; as the President once apparently summarized to faculty members, “If you're not on board, leave; if you don't, we'll get you to leave. If you believe in me and Cedarville, stay; if not, go.” Complainant only mentions Respondent’s representation of a Plaintiff alleging fraud and breach of contract against the Complainant, yet problems are far more ubiquitous. Students in large groups have been reprimanded, interrogated and threatened for politely voicing concerns in writing. The President has overruled faculty grievance panel findings and personally seized the confidential evidence record. Professional surveys reveal the employee’s low trust of administrators. Numerous faculty have been punished or left the school and a “group of current and retired Cedarville University faculty members, who have a combined total of approximately 500 years of service at the University” formed a signed letter along with <cedarvillecoalition.com> to express serious concerns about University governance. Most significantly, the American Association of University Professors (AAUP) launched an investigation last year and their published report is highly critical of the Complainant.
Complainant incorrectly alleges that the Respondent’s “registration of <cedarvillealumni.biz> is a clear admission . . . that his activities are commercial in nature ” and that the Respondent “uses the Disputed Domain Names <cedarvillealumni.biz>, <cedarvillealumni.info>, <cedarvillealumni.net>, and <cedarvillealumni.org> in conjunction with pay-per-click advertising pages” and the Disputed Domain Name <cedarvillealumni.mobi> in conjunction with a web page advertising the goods and/or services of his registrar, GoDaddy.” All of these allegations are untrue. While the serious concerns motivating the registration of multiple domains are discussed separately in Section 3(d) below, the clear lack of any commercial activity on behalf of the Respondent must be demonstrated. Accordingly, for its own economic benefit, GoDaddy routinely places its own “pay-per-click advertising” as a placeholder on the home page of newly registered domains until hosting is established or proper site redirection is configured. Respondent does not and has not derived any economic benefit from this activity by GoDaddy. Separately, while it is true that .BIZ domains require certification that the “registered domain name is reasonably related to the registrant's business," the domain was reasonably believed to be non-commercial business conducted by serious alumni of Cedarville University who only want to protect the integrity of their degrees by posting a serious open letter to the Cedarville University Board of Trustees demanding the resignation of the university President and an inter-Board committee for legitimate reasons later described in this response. Furthermore, as the default service offered to all of its customers, GoDaddy routinely and repeatedly advertises, recommends and provides multiple domain registrations in a single transaction. At the time of registration, the Disputed Domain Name <cedarvillealumni.biz> was registered along with the non-.BIZ domains without any extra emphasis placed on the unique status of a .BIZ domain.
Complainant utterly fails to demonstrate the Respondent’s commercial actions when the Complainant briefly fashions a one-sentence argument that is actually beneficial to the Respondent. Emphasizing this single sentence, the Complainant states that “is further evidenced by the existence of Google pay-per-click ads” that “redirect Internet users” to Disputed Domain Name <cedarvillealumni.com>. With all of the Complainant’s prior arguments suggesting that the Respondent has or will benefit from alleged “commercial actions,” the Complainant accidentally refers to a Google product that can only be of cost to the Respondent! Surely this brief argument only reaffirms the basic reality that the Respondent has not—and is not—engaged in commercial actions or profiting from the domains.
Respondent Registered and is Using the Domains in Good Faith.
Complainant fails to demonstrate how the Respondent registered or uses the Disputed Domain Names in bad faith. Complaint’s argument on this point is barren because the Complainant does not hold “its CEDARVILLE mark.” Accordingly, 1) it is irrelevant whether or not the Respondent had actual knowledge of a word available in the public domain; 2) Internet users cannot be confused over a word that has already experienced broad fair use by numerous unique entities in the public domain; 3) per Section 4.b.(iv) of the ICANN Policy, no “likelihood of confusion” can occur when the domains are already not “confusingly similar” as established in Section 3(c) above; 4) the Respondent registered multiple domains upon recommendation by GoDaddy and to prevent reasonably foreseeable typosquatting based on the Complainant’s past practices described below, and 5) the “Respondent’s advertising offerings” are in fact not the Respondent’s nor to his benefit, as already explained in Section 3(b) above. As a result, no evidence exists that the domain was registered or is being used in bad faith.
Complainant has acted in bad faith
to retaliate against the content posted on the Disputed Domain Name <cedarvillealumni.com> in an
apparent attempt at reverse domain hijacking. By asserting a trademark right
when none exists, this bad faith retaliation is also demonstrated by the
Complainant’s failure to file similar Complaints against many other domains
containing the word “Cedarville” including <cedarvilleuniversity.com>,
<cedarvilleuniversity.net>, and <cedarvilleuniversity.org>, all
which contain advertising and two specifically list a sale price as
ransom! Complainant has also not pursued
action against the 33 known top-level domains containing the word “Cedarville,”
all known to be registered before the domains sought in the Complaint. Equally
outrageous is the fact that <cedarvilleout.org> is designed for alumni
from
Complainant also fails to admit a
more recent pattern of unprofessional conduct. In an obvious incident of
typosquatting, the Complainant’s attorneys registered
306 domain names that were misspellings of <cedarvillesituation.com>, a
separate site also targeted (not surprisingly) by the Complainant for
expressing many concerns about the administration at
Complainant has clearly demonstrated bad faith retaliation against the Respondent by 1) failing to pursue other domains that use a generic word after the “Cedarville” word; 2) failing to pursue other domains related to Cedarville University that use a generic word after the “Cedarville” word; 3) failing to pursue other domains containing the “Cedarville” word that simultaneously attract alumni from Cedarville University and only use the Complainant’s “blue and gold” colors; 4) seize the Disputed Domain Name <cedarvillealumni.com> to reduce the power of its gathering alumni; 5) engaging in questionable domain registrations in the past; 6) only pursuing action against these domains to avoid the appearance of personal inconsistency as they were the only domains registered after the trademark statements were reported; and 7) by failing to first pursue other domains that contain the full “Cedarville University” title while displaying “pay-per-click advertising” and a ransom price for the domain. These actions demonstrate one of the clearest examples of a Complainant acting in bad faith—especially with an existing history of broad misconduct toward unfavorable viewpoints.
C.
Complainant’s Additional Submission
The Domain Name is Confusingly Similar to a Trademark and Service mark in
which the Complainant has Rights.
Respondent’s first defense appears to be a claim, without reference to
law, that the common law rights set forth by Cedarville to its CEDARVILLE mark
are an insufficient basis to bring a UDRP complaint. This argument is easily refuted. Past decisions have consistently held that a
complaint can be based on common law rights.
Respondent next points out that “Cedarville” is a geographic term and
then argues, without reference to law, that it is impossible for a party to
obtain trademark rights in such a circumstance sufficient to bring a UDRP
complaint. Past panelists have
identified no such bar to common law marks which are also geographic
indicators. The evidence of common law
rights set forth in the Complaint adequately makes such a showing.
Respondent then argues that there may be other municipalities or high
school districts within the
Respondent does not differentiate
itself from Complainant in any way within the disputed domain names, for
example using the pejorative term “sucks” or the like. Complainant, like most universities, has an
Alumni Relations department and an Alumni Director (see http://www.cedarville.edu/alumni/). It would be reasonable for an Internet user
to at least initially believe, based upon the domain name, that the source of
the content is Cedarville’s own Alumni relations department. The content of Respondent’s Website is
critical of Complainant, while the other Disputed Domain Names direct to
landing pages that include pay-per-click advertisements for Cedarville’s
competitors. As such, Respondent is
tricking Internet users into being exposed to Respondent’s negative messages
about Cedarville and positive commercial messages about Cedarville’s
competitors, and Respondent is forcing Cedarville to suffer the use of its
trademark to further Respondent’s purpose of spreading its negative messages
about Cedarville and promoting Cedarville’s competitors.
Respondent has no Rights or Legitimate Interests in the Domain Names.
Respondent does not contest that he is the appropriate Respondent in this
case. Given the stark reality of the
WHOIS records, such an argument would be difficult to sustain. Even so, Respondent, having been caught
red-handed registering and using domain names consisting of Complainant’s marks
to publish pre-trial statements related to the Hoffeditz litigation, to solicit
contact with current Trustees and employees of Complainant who are represented
by counsel, and to cooperate with GoDaddy in publishing pay-per-click
advertisements for competing educational services, now wishes to foist off
these acts of bad faith by claiming that the website content is generated by
third parties.
However, this Panel has consistently held that the registrant of the
domain name is responsible for that content and must accept the consequences
and any and all inferences to be drawn from such content
If the Panel accepts the “someone else did it” defense, it will open a
gap in the Policy which will allow squatters of all varieties to cooperate with
those who produce content, and then avoid application of the Policy because the
registrant claims he was not the source of the content.
Equally important, Respondent is the attorney of record in the Hoffeditz litigation as well as the registrant of the domain names, and the website to which the domain names resolve contains statements designed to promote Respondent’s client’s position in the litigation and advocate for the termination of the employment of certain of the defendants in the Hoffeditz litigation. Therefore, Respondent cannot escape the reality that the domain names have been registered and are being used in bad faith to enhance his chances for success in the Hoffeditz litigation and, in doing so, Respondent is promoting his private law practice.
This Panel has found that such activities are commercial in nature, and
convey no rights or legitimate interests
Realizing that the weight of past Panel decisions and the clear language
of the Policy are both against him, Respondent claims that he is “merely an
agent of alumni who knew of his past representation of [sic] and sought him for
both legal advice and protection against expected retaliation and
harassment.” Yet, Respondent fails to
identify who such alumni might be, and in fact has gone to great lengths to
hide the identity of the mysterious alumni, first by registering the domain
names in his own name and then by contracting with Domains by Proxy for their
WHOIS masking service and finally by failing to identify them in his Response.
Although Respondent makes reference to an affidavit of Daniel Ice
[attached as an exhibit to the Response], neither the Respondent’s arguments
nor the Ice Affidavit identify these unnamed alumni. Mr. Ice is not a party who is disinterested
in the Hoffeditz Litigation. In fact,
upon information and belief, Mr. Ice has engaged in (a) spam email campaigns
related to the Hoffeditz Litigation and targeting students, faculty, staff, and
alumni of the University; (b) unauthorized access of University databases
containing sensitive personal information of graduates; and (c) the posting of
an illicitly obtained, private, recorded conversation between a University
official and a student related to the Hoffeditz litigation. These actions have resulted in Mr. Ice
receiving a cease & desist letter from
Cedarville. The fact that Respondent
represents Dr. Hoffeditz, and implies that he might represent Mr. Ice,
indicates that he believes their two interests in the Hoffeditz Litigation are
aligned. As such, the Ice Affidavit only
reinforces the fact that the Disputed Domain Names have been registered and
used in a manner that is designed to advance Respondent’s
client’s position in litigation.
The Ice Affidavit provides no clarity regarding the identity of the
alleged alumni that purportedly instructed Respondent in these matters. The Ice Affidavit merely states that Mr. Ice
is “a party involved with” the websites which resolve to the disputed domain
names. GoDaddy is also “a party involved
with” the websites, but that does not make GoDaddy a client of Respondent nor,
as further discussed below, would it convey any rights sufficient for GoDaddy -
or Daniel Ice - to engage in these activities using a domain name that is
confusingly similar to Complainant’s mark.
Further, the Ice Affidavit makes
reference to a “moderator”, but does not identify who that moderator may be or
what her role is in this matter. Also,
the Ice Affidavit makes statements which are inconsistent with Mr. Miller’s own
Response. For example, the Ice Affidavit
states that “The limit of his [Respondent’s] involvement in this matter is to
the registration of the domain names.”
This statement is demonstrably false as Mr. Miller admits to contracting
with Domains by Proxy’s WHOIS masking service, and also apparently contracted
for hosting and contracted for email service.
Mr. Miller also admits that he
also contracted with Google to pay for advertisements directing traffic away
from Cedarville’s website and to Respondent’s Website.
What is clear from the Ice Affidavit it is that it provides no helpful
information to the Panel and provides no means for the Respondent, caught
red-handed, to exculpate himself from the situation he has caused.
Even if Mr. Ice self identified as a “second client” (which neither the
Ice Affidavit nor the Response do) and stated clearly that he has hired
Respondent for the purposes described in the Response, under the applicable
ethical rules, Respondent would be precluded from taking on such a
representation. It is clear that he cannot engage in activities which result in
pre-trial statements and solicitation of represented parties even if doing so
on behalf of another client. The fact
that Respondent attempts to “cover” himself by hinting at the existence of
other unnamed alumni and introducing the Ice Affidavit to imply an
attorney-client relationship unrelated to the Hoffeditz Litigation, does
nothing to relieve Respondent of his ethical obligations.
Even if Mr. Ice were a disinterested third party alumni,
uninvolved in the Hoffeditz Litigation, or even if Respondent were able to name
such a group of alumni, which he has not, the Panel’s inquiry would not stop
there. It is well settled that those
wishing to publish criticism websites may not use a domain name which is
confusingly similar to a mark to do so.
The Domain Names have been used in bad faith.
The Response sets forth no good faith purpose for registration or use of
these domain names. As described in
detail in the Complaint, Respondent, whose commercial interests are adverse to
those of Complainant, is now a competitor of Complainant. Such competition is even more obvious given
the fact that Respondent has taken the matter outside of the court and has
registered these domain names, some of which are being used in conjunction with
websites that promote Complainant’s competitors which could have an adverse
impact on enrollment, and one of which is being used in conjunction with a
website that makes inappropriate pre-trial statements, solicits contact with
represented parties, and calls for the termination of employment of certain of
the defendants in the Hoffeditz Litigation.
This Panel has considered similar facts in the past and found that a
respondent’s registration and use of confusingly similar domain names for such
purposes constituted bad faith.
Removing all doubt that his motives are commercial, Respondent admits in the Response that it was he who purchased the Google ads directing traffic to the website associated with the Disputed Domain Name <cedarvillealumni.com>. Unhappy with the clear admission of commercial intent set forth in the <.biz> agreement, Respondent attempts to dodge the plain language of the contract he executed for registration of the Disputed Domain Name <cedarvillealumni.biz>, and the concomitant admission that his activities are commercial in nature, by requesting that the Panel recognize a new misnomer form of activity he describes as a “non-commercial business.”
Even if Mr. Ice were a
disinterested party in the Hoffeditz Litigation or even if Respondent could identify the alleged graduates of
Complainant who purportedly instructed him to register this domain name, the
Panel should still find that the Disputed Domain Names have been registered and
used in bad faith.
Such graduates, if they had been identified, would not have the right to
register domain names which are confusingly similar to Complainant’s mark and
are used to publish competing advertisements.
Such graduates, if they had been identified, would have a right to
express their views in any forum of their choice, subject of course to libel
and similar causes of action, but they would not have the right to use a
confusingly similar domain name in association with that forum. Importantly, there is nothing in the Disputed
Domain Name <cedarvillealumni.com> to indicate that the site to
which it resolves is devoted to criticism.
This is especially true since Respondent’s Website makes it clear that
the target audience is not just alumni, but all constituencies of Cedarville,
including (a) those who attended but did not graduate; (b) current or former
employees; (c) current or former trustees; and (d) those who were or are the
parents of students or graduates.
Targeting these groups using a confusingly similar domain name is
clearly an attempt to disrupt Cedarville’s business.
D. Respondent’s Additional Submission
Confusing Similarity
Complainant incorrectly alleges that Respondent's first defense
"…appears to be a claim...that the common law rights set forth by
Cedarville to its CEDARVILLE mark are an insufficient basis to bring a UDRP
complaint." This is an incorrect
restatement of Respondent's argument, likely stated to distract the Panel. By its own language, Complainant admits it
will only respond to what "appears to be" instead of what actually
was stated. Respondent recognizes that
marks can be established by common law usage.
On this issue, the Response was clear in stating how
Following Complainant's reasoning would ignore any significance of a
registered trademark for every situation. The Response clearly establishes how
the absence of a registered trademark only hinders Complainant from suddenly
asserting rights to a word it does not hold, even though every other
institution like it has done so. This is why Complainant’s newest case
citations involve common law trademark for words unlike “Cedarville’” where
many other companies, cities, schools, parties and groups commonly use the word
“Cedarville” – including those companies in the Cedarville, Ohio vicinity.
Also, this is why there is no response to the facts and cases cited in the
Response, particularly those involving institutions of higher learning similar
to Complainant in both mission and purpose.
Complainant misstates Respondent's language because there ARE – as
opposed to "may be" – "other municipalities or high school
districts" named "Cedarville." The Response does not allege that
Cedarville University "claims common law rights to government services or
the services rendered by a high school district," but instead of this
broad use denies Complainant's ability to simultaneously claim that its fair
use of a word in the public domain is totally exclusive.
Complainant only provides silence toward the detailed list of legitimate
arguments provided in the Response. Among these, Complainant is unable to
respond to "confusingly similar" argument or defense of the
disclaimer, especially in light of the inconsistent statements made by the
Complaint's author.
Respondent has Legitimate Rights and
Interests in the Disputed Domain Names
Complainant’s argument completely ignores the logical reasoning already
provided in the Response. Complainant
also ignores the fact it has not pursued many other domains of greater
importance (e.g. <cedarvilleuniversity.com>, etc.) containing commercial
advertisements that benefit the registrar – wholly unlike Respondent and the
domains in contention.
In Section 2(a) of their Additional Submissions, Complainant wrongly
suggests that Respondent “cooperat[ed] with GoDaddy in publishing pay-per-click
advertisements for competing educational services.” Apparently, Complainant believes that GoDaddy
is part of the conspiracy against
Complainant tries to misdirect the Panel in its emphasis on the
“Hoffeditz Litigation.” First, while the
domain is registered to an attorney, it is not the attorney that is making the
statements. He is acting as an agent of
others at their request in registering the Disputed Domain Names due to their
fear of retaliation by Complainant as discussed in the initial response and
elsewhere herein. Second, it is clear
that Respondent / website is not making pretrial
statements regarding the “Hoffeditz litigation.
Any information regarding the issues in that case was taken from public
record documents. Complainant states in
Section 2d that “Respondent attempts to ‘cover’ himself by hinting at the
existence of other unnamed alumni…”
There is no hinting about it.
Hoffeditz is one client and the alumni group is another client among
many (Respondent has represented several other faculty members against
Moreover, it seems that Complainant tries to paint Respondent as part of
a conspiracy and raises issues of “mysterious alumni.” As discussed in the
Response, many parties are concerned about retaliation by
Complainant only references one
case demonstrating an attorney's improper conduct, a case containing completely
inapplicable facts that are wholly incongruent to the realities of this case as
discussed below. Clearly the
Complainant's simple desire is to "shift the focus" off of its own
misconduct by wildly alleging misconduct where none exists. Notwithstanding
this baseless attempt by the Complainant, in the only applicable case on record
a past panel found it perfectly acceptable when an attorney "registered
the name on behalf of one of his clients," even when confirmed "in an
unsworn Declaration" describing how it was the client "who has made
use of the name" at issue in the domain name.
Complainant tries to further confuse the issues by alleging that
Respondent’s website is commercial in nature in that Respondent is promoting
his private law practice. The domain in
no way promotes Mark Miller or his law practice. In another
attempt to “refocus the attention of the Panel.”
The Disputed Domain Names Have Not Been Used in Bad Faith.
As discussed thoroughly in the Response, Respondent has acted in good
faith and is not a competitor of Complainant.
Complainant merely rehashes the arguments that it has previously made in
the Complaint and its Additional Submissions.
Complainant demonstrates its own bad faith by failing to address the
following issues raised in the response:
·
No
response to other domains containing "CEDARVILLE"
·
No
response to <cedarvilleout.org> - alumni using the “Cedarville” name
·
No
response to <cedarvilleuniversity.com>, clearly being used for
cybersquatting
·
No
response to AAUP report
·
No
response to their own typosquatting
In its attempt to “refocus the issue,” Complainant advances as many
"Even if" hypotheticals as it can in a desperate attempt to connect
Mr. Dan Ice to separate litigation.
Again, these tactics are merely an attempt to confuse and distract the
Panelists away from one of the key concerns sworn by Mr. Dan Ice in his
Affidavit, also documented throughout the entirety of the Response and
separately verified by highly credible, unbiased third parties: the Complainant
has a clearly established pattern of harassing those who hold opinions that are
critical of the Complainant's behavior.
Respondents are legitimately using a website to express their concerns
and views about an institution that they hold dear.
FINDINGS
The name of Complaint is
Complainant has rights for purpose of the
Policy in two common law trademarks,
The Respondent registered and is holding the Disputed Domain Names,
namely: <cedarvillealumni.com>,
<cedarvillealumni.biz>,
<cedarvillealumni.info>,
<cedarvillealumni.mobi>,
<cedarvillealumni.net>, and
<cedarvillealumni.org>
One of the Disputed Domain Names, <cedarvillealumni.com>, directs
to Respondent’s Website. The remaining
Disputed Domain Names direct to a parking page on which are located
advertisements for other institutions of higher education.
Respondent’s Website contains:
1) information critical of Complainant,
certain individuals who are in positions of authority and leadership within
Compliant, and certain policies being followed by those leaders;
2) an open letter to
the leaders of Complainant asking that certain changes be made in Complainant’s
management and policies;
3)
an opportunity for alumni of Complainant to join in
the open letter; and
4) information about
the Hoffediz litigation, including a description that this lawsuit is by a
former employee of Complainant and a description of the claims of this lawsuit;
5) information about
a survey of Complainant by The Best Christian Institute;
6) a report
concerning Complainant issued by The American Association of University
Professors;
7) links to websites
on which can be found further information about these subjects;
8) the following disclaimer: “DISCLAIMER:
This website is not affiliated with Cedarville University or Alumni Services at
Cedarville University and should not be confused with the website or either
entity”; and
9) the following
statement appears on the first page of Respondent’s Website:
“We are the alumni of
Respondent is an alumni
of Complainant.
Respondent is the attorney of record for the
plaintiff in the Hoffediz Litigation.
The Disputed Domain Names are confusingly
similar to Complainant’s Trademark.
Respondent does not have rights or legitimate
interests with respect to the Disputed Domain Names.
The Disputed Domain Names were registered and
are being used in bad faith.
DISCUSSION
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.
Pursuant to Policy ¶ 4(a)(i),
a complainant must have rights in a trademark, and the Disputed Domain Names
must be either identical or confusingly similar thereto.
The trademark rights in which a complainant
has rights need not arise from registration in a national trademark office,
although such registration is strong evidence of the existence of the necessary
rights. See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007)(“as the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy 4(a)(i).”).
Trademark rights can arise from usage in the
marketplace in the absence of a trademark registration, commonly called a
“common law trademark.” See 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”); see also Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb.
Forum May 18, 2001) (“The Policy does not require that a trademark be
registered by a governmental authority for such rights to exist.”).
In determining whether a disputed domain name
is identical or similar to a complainant’s trademark, trivial distinctions are
ignored, such as a single letter, a space, a hyphen, and the like, and in all
cases top-level domain identifiers, gTLDs, such as “.com,” “.biz,” etc. See Jerry Damson, Inc. v.
In comparing a complainant’s trademark and a
disputed domain name, a panel must take and decide each case on its own
facts. For example where word(s),
letter(s), number(s), or punctuation mark(s) are added to a trademark to create
a disputed domain name, the issue as to whether such additions create a
meaningful distinction for purposes of the Policy depends on the nature of such
additions. If the additional content
tends to conceptually lead back to a complainant and its trademark, then a
panel may well decide that the additional content does not sufficiently
distinguish the disputed domain name from the complainant’s trademark. See Enter.
Rent-a-Car Co. v. Richard Lanoszka a/k/a Silent Register, FA 1242244 (Nat. Arb. Forum Feb.
25, 2009)(In the view of this Panel, the difference between these two groups of
administrative actions lies in whether the addition of a word and its
associated concept strongly leads an average Internet user back to a
complainant the complaint’s trademark…”).
For purposes of Policy ¶4(a)(i), it is not
relevant that others besides a complainant may have rights in a trademark that
is the same or similar to a complainant’s trademark What is necessary and sufficient is that the
complainant have such rights. See UEFA v. Fuzi Furniture, D2000-0710
(WIPO Oct. 25, 2000)(complainant need not establish exclusive rights across all
territorial boundaries, only a bona fide
basis for making the complaint.).
In the present action, the majority Panelists
are in agreement in finding that Complainant has common law rights in the mark
Given that no evidence was presented that the
mark
The majority Panelists are in agreement in
finding that the Disputed Domain Names are not identical to Complainant’s
Trademark. Complainant’s Trademark is
The majority Panelists are also in agreement
in finding that the Disputed Domain Names are confusingly similar to
Complainant’s Trademark for purpose of the Policy. As noted, Complainant’s Trademark is
The Disputed Domain Names contain this
dominant feature, the word “cedarville,” and adds the additional non-trivial
content, the word “alumni.” As a matter
of denotation and connotation, the word “alumni” is closely associated with the
concept of education and thereby to educational services. As such, the addition of this word tends to
strongly lead back to Complainant and Complainant’s Trademark within the arena
in which Complainant’s Trademark is strongest, and as such, the additional word
“alumni” does not sufficiently distinguish the Disputed Domain Names from
Complainant’s Trademark.
Respondent argues that Complainant has no
rights to the word “cedarville” separate and apart from the name “
Respondent argues that “Cedarville” is a
generic geographic place name and available for public use. Whereas the majority panelists agree that
“Cedarville” is the name of the town in which the Complainant is located, along
with several other geographic places within the United States, and the majority
Panelists agree that secondary meaning can be difficult to establish with
respect to a geographic place name, nevertheless Respondent’s use of the word
“alumni” conceptually leads back to Complainant, as noted above does not
distinguish. The matter might be
different if some other additional word(s) were used, such as “auto parts” or
“flowers” in connection with an auto parts store or flower shop located within
the town of
Respondent argues that to find confusingly
similarity between the Disputed Domain Name and Complainant’s Trademark would
unfairly expand Complainant’s scope of protection under the Policy in the
Internet environment. Respondent cites
the example of Cedarville high school in
As such, for two of the Panelists the
Complainant has established the first element of the Policy.
Under Policy ¶ 4(a)(ii), a complainant must prove that a respondent has no rights to or legitimate interests in a disputed domain name. Guidance is provided by Policy ¶ 4(c) as to what circumstances could demonstrate that a respondent does have rights to or legitimate interests in a disputed domain name. These circumstances are:
“(i) before any notice to you [a respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name correspond to the domain name in connection with a bona fide offering of goods or services; or
(ii) You (as an individual, business, or other organization) have been commonly know by the domain name, even if you have a acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These circumstances are expressly without limitation to other circumstances that a panel might find demonstrate rights to or legitimate interests in a domain name.
The burden is initially on a
claimant to make at least a prima facie
showing that a respondent does have rights to or legitimate interests in a
disputed domain name, which burden is light, and then the burden shifts to a
respondent to demonstrate that it does have rights to or legitimate interests
in a disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”); see
also Royal Bank of Scotland Group plc, Nat’l Westminster Bank plc A/K/A NatWest
Bank v. Personal & Pedro Lopez, WIPO D2003-0166 (May 9,
2003)(“According to the Policy, the burned rests upon the Complainants to
demonstrate that Respondent has no rights or legitimate interest, but once some
evidence has been adduced…, the onus is transferred to the Respondent to show
otherwise.”).
The majority panelists are in agreement in finding that Respondent is not offering goods or services on Respondent’s Website, and as such Policy ¶ 4(c)(i) does not apply. This finding is based upon a review of the screen shots of Respondent’s Website provided by both parties. Respondent’s Website includes the following statement on the first page:
“We
are the alumni of
Respondent’s Website additional includes: 1) criticism of the management of Complainant and those responsible for management decisions within Complainant; 2) allegations about the facts of the situation as seen by the author of Respondent’s Website, including a paragraph devoted to a description of the Hoffeditz Lawsuit and links to other websites where additional information about the lawsuit can be obtained; 3) an open letter to Complainant making certain requests that changes be made by Complainant in its management and managerial personnel; 4) an opportunity for alumni of Complainant to join in the open letter; 5) a disclaimer at the bottom of each page of Respondent’s Website that reads: “DISCLAIMER: This website is not affiliated with Cedarville University or Alumni Services at Cedarville University and should not be confused with the website or either entity.”
The majority Panelists are in agreement in finding that based on the fact that Respondent’s name is Mark S. Miller, Respondent is not commonly known by the Disputed Domain Names, and as such, Policy ¶ 4(c)(ii) does not apply.
As such, the majority Panelists find that Complainant has demonstrated that Respondent is not commonly know by the Disputed Domain Names, that Respondent is not using the Disputed domain Names in connection with a bona fide offering of goods and service, and further that Respondent has not be authorized by Complainant to use Complainant’s Trademark in any way.
As such, Complainant has established its burden, and the burden shifts to Respondent to show that it does have rights to or legitimate interests in the Disputed Domain Names.
The gravamen of Respondent’s Response is that Respondent is exercising his right to free speech. This position invokes Policy ¶ 4(c)(iii) with respect to legitimate noncommercial and fair use. On this issue, the Panelists are of differing opinions. Two of the Panel members, Bridgeman and Reed, find that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, but for different reasons. Panelist Sorkin dissents for reasons noted in his dissenting opinion, below.
Panelist Bridgeman is persuaded that
Respondent’s purpose is to gain an advantage in the Hoffeditz Lawsuit, and as
such Respondent’s motivation is not to exercise his free speech rights. Bridgeman bases this finding on the
following: 1) the existence of the
Hoffeditz Lawsuit; 2) Respondent is the attorney of record for the plaintiff in
the Hoffeditz Lawsuit (against Complainant); 3) the allegations of the
Hoffeditz Lawsuit are very similar to the critical comments of Complainant on
Respondent’s website, Respondent has
registered not just one domain name, but six, one each in the “.com,” “.net,”
“.org,” “.biz,” “.info,” and “.mobi” top level domains, which is far in excess
of what Respondent would need in order to air his grievances in a fair use
manner, meaning that these registrations are also intended to harass
Complainant; 4) the use by Respondent of the Disputed Domain Name causes
initial interest confusion; and 5) Respondent is allowing GoDaddy to use the
Disputed Domain Names other than <cedarvillealumin.com>
to contain advertising for Complainant’s competitors, again resulting in
harassment and irritation to Complainant.
Such conduct is inconsistent with bona
fides and good faith fair use.
Panelist Reed is persuaded that Respondent’s
motives are to exercise his right to free speech by making public critical
comments about Complainant and thereby creating pressure on Complainant to make
changes with respect to certain members of its management and certain of its
current institutional policies. Panelist
Reed is not persuaded that Respondent’s motives are to create pressure on
Complainant to settle the Hoffeditz Lawsuit, to harass Complainant, or to cause
irritation, other than that which is necessarily attendant to public
criticism. The Website does mention the
Hoffeditz Lawsuit, but only as an additional example of what is wrong, in
Respondent’s opinion, with the state of affairs within Complainant. Otherwise, the content of Respondent’s
Website is unrelated to the Hoffeditz Lawsuit.
However, it is not correct to conclude that
free speech rights trump all other rights in all circumstances. Complainant also has important rights in
Complainant’s Trademark, and Internet users have a strong interest, if not a
right, not to be tricked into landing on a Website that is devoted to
criticism. This is a challenging issue
under the Policy, and different panels have taken different reasonable
approaches.
Some panels have taken the approach that free
speech cannot be used as a defense against the use of a confusingly similar
mark as a domain name. See Eastman
Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum
Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although
the content of the website supported by this domain name is protected. Free speech cannot be used as a defense
against the use of a confusingly similar mark as a domain name.”); 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]”).
Some panels have taken something of the opposite view, that free speech is extremely important and for this reason the use of a trademark within a domain name for the purpose of making critical comments about the trademark owner is a minor imposition upon the trademark owner’s trademark rights and ought to be allowed, provided that the Website to which the involved disputed domain name directs does not continue the confusion and, better still, contains disclaimers that dispel any potential confusion. See, e.g., 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); see also Smith v. DNS Research, Inc., FA 220007 (Nat. Arb. Forum Feb. 21, 2004) (finding that the respondent had a right or legitimate interest in the <annanicolesmith.com> domain name “as a matter of First Amendment free speech rights and existing law” because it was used as a fan club website); see also Shell Int’l Petroleum Co. Ltd. v. Donovan, D2005-0538 (WIPO Aug. 8, 2005) (“The use of a domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to use his free speech rights and express his opinion in this way, subject to other laws of course (copyright, libel, etc.).”); see also Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002); see also Britannia Bldg. Soc'y v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001)(the use of a disclaimer and provision of a link to the complainant’s website was found to legitimize the free speech usage).
Some panels have taken the view that can
fairly be described as a synthesis of these noted other two approaches (being
thesis and antithesis) to the effect that the use of a trademark within a
domain name can be permissible if under the totality of the circumstances it is
reasonably clear to an Internet user that the domain name is not associated
with the trademark owner, or in the alternative, the respondent can show why no
reasonable alternative exists. See Trodos Bank NV V. Ashley Dobbs, D2003-0776
(WIPO Nov. 17, 2004) (“The Panel is conscious that among panelists there are
different lines of thought on this topic…In the view of the Panel there is a
world of difference between, on the one hand, a right to express (or a
legitimate interest in expressing) critical views and, on the other hand, a
right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Doman Name enables
the Respondent to transmit his view more effectively is neither here not
here. Depriving the Respondent of the
ability to deceive internet uses by his use of the Domain Name does not in any
away deprive him of his right to free speech.
He could readily use a Doman Name which telegraphs to visitors
precisely what his site contains an thereby obviate
any risk of deception.” (emphasis added); see also Howard Jarvis Taxpayers Ass’n .v McCauley, D2004-0014 (WIPO
Apr. 22, 2004)(“Where the degree of initial confusion is at the lower end of
the spectrum, because by way of example only, the modifier element imports a
negative connotation such that people would be much less likely to assume that
there is some connection between the Respondent’s domain name and the
Complainant’s trade mark then it would seem to be an unreasonable extension of
the trade mark owner’s rights under the Policy to automatically find that the
Respondent does not have legitimate rights in the domain name under paragraph
4(c)(iii). Where on the other Hand the modifier is purely neutral and subject
to the particular factual circumstance is likely to have no effect in reduction
the degree of initial confusion, then it would seem appropriate to find that
the Respondent hoes not have legitimate rights in the domain name for the
purpose of paragraph 4(c)(iii)”); see also Palm Wonderful LLC
v. Taa Redavid, FA 846577 (Nat. Arb. Forum Jan. 8, 2006)(“In
assessing legitimacy, the Panel believes that where a respondent alleges that
its domain name, which includes the mark or name of an entity, is being used to
support a complaint site the primary purpose of which is to serve as a vehicle
for critical comment about that entity, then it is eminently reasonable to
shift the burden of proof to that respondent to show why no reasonable
alternatives exist to use of the particular domain name. If, in any dispute, a sufficient factual
showing is made that no such alternatives exist, then under the unique facts of
that dispute, a panel may conclude that the use there is legitimate. Alternatively, if the respondent makes no
such showing, then a panel may find that its use lacks legitimacy, possibly
evincing bad faith.”).
Panelist Reed adopts the approach of this
last group of prior actions because, in his view, they seem to reconcile the
tensions between the other two groups of actions and thereby more appropriately
balance the involved rights and interests of Complainant, Respondent and
Internet users.
Turning to the present action, the Disputed
Domain Names are confusingly similar to Complainant’s Trademark, as discussed
above, and moreover, the Disputed Domain Names do not contain any additional
content that would lead an Internet user to understand that the Disputed Domain
Names do not refer and lead to Complainant.
Further, Respondent has not demonstrated why no reasonable alternative
exists to the Disputed Domain Names, and Panelist Reed believes there are a
number of alternatives that include the word “cedarville,” and thereby benefit
from the reference to Complainant, while still drawing a meaningful distinction
so as to significantly reduce the risk for initial interest confusion, such as,
for example “protestingcedarvillealumin,” “concernedcedarvillealumni,”
“cedarvillealumniuprising,” etc.
As such, and notwithstanding Respondent’s
important free speech rights, Respondent does not have rights to or legitimate
interests in the Disputed Domain Names.
As such, for two members of this Panel
Complainant has established the second element of the Policy.
Under Policy ¶ 4(a)(iii),
a complainant must prove that a respondent has registered and used a disputed
domain name in bad faith. Guidance is
provided in Policy ¶ 4(b) as to circumstances, without limitation, that shall
be evidence of registration and use of a domain name in bad faith, and these
listed circumstances are:
“(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
complaint who is the owner of the trademark or service mark or to a competitor
of that complaint, for valuable consideration in excess of your documents
out-of-pocket costs directly relate to the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark form 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 consultation
with the complaint’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.”
Panelist Bridgeman finds that Respondent has
acted in bad faith in registering and using the Disputed Domain Names. Respondent knew about Complainant and
Complainant’s trademark rights at the time Respondent registered the Disputed
Domain Names, and in registering the Disputed Domain Names Respondent’s motivation
was to attract Internet users to Respondent’s Website by creating a likelihood
of confusion with Complainants Trademark as to the source, sponsorship,
affiliation or endorsement of Respondent’s Website. At that time and at all subsequent times, Respondent’s
motivation was to pressure Complainant to the negotiation table in the
Hoffeditz Lawsuits in which Respondent represents the plaintiff against the
Complainant. This is a sufficient form
of commercial gain for purposes of the Policy.
As such, Respondent’s conduct falls within the scope of Policy ¶ 4(b)(iv).
Additionally, Panelist Bridgeman finds that Respondent permitted the potential diversion of Internet users away from Complainant to Complainant’s competitors by allowing several of the Disputed Domain Names to a parked website with links to competing educational institutions. That this might have been done by GoDaddy for several of the Disputed Domain Names without consulting with Respondent is not relevant. Respondent is responsible for the uses to which the Disputed Domain Names might be put by others. See XM Satellite Radio Inc. v. Kennedy, FA 796199 (Nat. Arb. Forum Nov. 7, 2006) (“While Respondent undoubtedly parked the domain names with GoDaddy, he is responsible for the content he allows GoDaddy to put on his domains. Respondent could have equally well set up his own ‘parked’ page without any inappropriate content.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The Respondent contends that the advertisements in this case were ‘generated by the parking company’. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the complainant’s name.”).
Panelist Reed agrees that the Respondent has
acted in bad faith, but for different reasons.
Respondent’s motivation in registering and
using the Disputed Domain Names was, at the time of registration and at all
subsequent times, to present criticism of Complaint, which is an important
exercise of free speech. However in
doing so, Respondent transgressed on Complainant’s trademark rights, as noted
above. Respondent also intentionally
created a situation wherein Internet users could easily be confused into
landing on Respondent’s Website when they intended to reach Complainant’s
alumni association, which is the definition of initial interest confusion. At the same time, Panelist Reed is not
persuaded that Respondent’s motivations are commercial in nature, and as such
Policy ¶ 4(b)(iv) does not strictly apply, but other
than that one element, all other aspects of Policy ¶ 4(b)(iv) are satisfied.
Further, Respondent registered more domain
names than necessary to serve his purpose of operating a Website is to present
criticism. Respondent argues that these
additional Disputed Domain Names were necessary to protect against Complainant
registering these Websites itself in an effort to interfere with Respondent’s
effort to convey his message. Panelist
Reed is not persuaded by this argument.
Whereas defensive “picket” patents can be useful in the intellectual
property arena, and in military parlance defensive “picket” ships are a common
concept, but in the Internet environment, the benefit of a series of defensive
“picket” domain names does not make sense, since one Website does not
functionally interfere with any other Website, and especially given that these
other Disputed Domain Names are merely parked.
This is to be distinguished from the problem of “typo-squatting,” where
someone registers multiple misspellings of a trademark so as to capture careless
Internet users. Respondent’s conduct in
this regard might not be an effort to prevent Complainant from representing
Complainant’s Trademark in a corresponding domain name pursuant to Policy ¶ 4(b)(ii)
for want of a pattern of such conduct, but it is does not appear to be good
faith conduct either.
Whereas Respondent’s conduct does not fall
squarely within any of the enumerated circumstances described in Policy ¶ 4(b),
these enumerated circumstances are not exclusive. Under the totality of the circumstances of
this action, Panelist Reed would nevertheless find bad faith because Respondent
did know about Complainant’s Trademark when Respondent registered the Disputed
Domain Names, Respondent is attempting to attract Internet users by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s Website, Respondent did have
reasonable alternatives for the Disputed Domain Names, and the registration by
Respondent of an excess of Disputed Domain Names was not done in good
faith.
Panelist Reed applies this reasoning to all
of the Disputed Domain Names, although only one is currently being used to
direct to Respondent’s Website. The
reason for this is that in any event the other Disputed Domain Names will be
subject to transfer in the future, and to hold action on them would be a waste
of the resources under the Policy. Either these other Disputed Domain Names
will be used to direct to Respondent’s Website, or they will be forever parked,
which is a separate basis for transfer.
As such, and for two the members of this
Panel, Complainant has established the third element of the policy.
REVERSE DOMAIN NAME HIJACKING
Respondent raises the claim of reverse domain
name hijacking. However, a respondent
cannot prevail in such a claim where, as here, a complaint prevails. See
World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306
(WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements
of the Policy, Respondent’s allegation of reverse domain name hijacking must
fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec.
2, 2003) (finding no reverse domain name hijacking where complainant prevailed
on the “identical/confusingly similar” prong of the Policy).
DISSENTING OPINION
I respectfully dissent. Although I am inclined to agree with much of the analysis set forth above by my colleagues, I do not believe that Complainant has met its burden of proving the three elements set forth in Paragraph 4(a) of the Policy with regard to any of the disputed domain names. I would decide the matter based upon the determinative issues, without reaching a conclusion as to other matters, such as whether Complainant possesses sufficient trademark rights to proceed under the Policy. In addition, I do not believe there to be any exceptional circumstances present that warrant consideration of additional submissions. See e.g. Sina.com Online v. CyberTavern, LLC, FA 1235499 (Nat. Arb. Forum Jan. 13, 2009) (Sorkin, dissenting), and prior panel decisions cited therein. I therefore would decide this case based solely upon the parties’ initial submission, disregarding all subsequent submissions (although I note—as in Sina.com—that consideration of the additional submissions would be unlikely to affect the outcome).
With regard to rights or legitimate interests, it is of course true that the disputed domain names incorporate the distinctive component of Complainant’s name. But Respondent registered at least the <cedarvillealumni.com> domain name as the address for a website maintained on behalf of Cedarville alumni. The website is critical of Complainant, overlapping to some extent with the subject matter of pending litigation brought against Complainant by a former employee, represented by Respondent. It does not appear that this litigation and the other disputes reported on Respondent’s website are mere pretexts calculated to conceal an improper attempt to exploit the trademark value of the disputed domain names. To the contrary, it appears (at least to this Panelist) that the grievances of Respondent and those on whose behalf he acts are sincere, and that the website and the domain name <cedarvillealumni.com> are merely instruments being used in support of those efforts.
It is far from clear, based upon the necessarily limited record before this Panel, that the litigation or other grievances expressed by Respondent are frivolous or otherwise improper, and even if that were so, Complainant would likely have other recourse available against Respondent. In any event, the Policy is intended solely for clear cases of cybersquatting, and certainly not for instances such as this.
[The Policy] calls for administrative resolution for only a small, special class of disputes. Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw. The policy relegates all “legitimate” disputes—such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name—to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.
Second Staff Report on Implementation Documents for the Uniform Domain Dispute Resolution Policy (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, at ¶ 4.1(c).
I therefore conclude, based primarily upon Complainant’s own allegations and evidence, that Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in respect of the disputed domain name <cedarvillealumni.com>.
Respondent does not appear to be making active use of the other five disputed domain names, each of which is comprised of the same second-level element in a different top-level domain. But it seems more likely that Respondent registered these five domain names for similar purposes (perhaps to reduce confusion among Internet users seeking Respondent’s website) than in an improper attempt to exploit the value of Complainant’s name or trademark. I therefore would find that Complainant has not met its burden of proving bad faith registration as to any of the disputed domain names.
I would deny relief for the reasons explained above.
David E. Sorkin
Panelist
DECISION
A majority of the Panel having found that Claimant has established all
three elements required under the ICANN Policy, this majority of the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cedarvillealumni.com>, <cedarvillealumni.biz>, <cedarvillealumni.info>, <cedarvillealumni.mobi>, <cedarvillealumni.net>, and <cedarvillealumni.org> domain
names be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Chair
James
Bridgeman and David Sorkin, Panelists
Dated: July 10, 2009
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