Christopher Marc Nemelka v. SecureWhois, Inc.
Claim Number: FA1101001370044
Complainant is Christopher Marc Nemelka (“Complainant”), represented by Rodney J. Vessels, Minnesota, USA. Respondent is SecureWhois, Inc. As explained infra, the Response in this proceeding was filed by an unidentified entity represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chrisnemelka.com>, registered with GoDaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco, P-E H Petter Rindforth, and David Sorkin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2011; the National Arbitration Forum received payment on January 30, 2011.
On February 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chrisnemelka.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chrisnemelka.com. Also on February 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 1, 2011. The Response was submitted by an unidentified entity referring to itself as “LEGION,” which apparently is the beneficial registrant of the disputed domain name, the nominal registrant being a privacy registration service. The Panel accepts the Response notwithstanding this irregularity, and henceforth uses the term “Respondent” to refer to either the nominal registrant, the beneficial registrant, or both as appropriate.
Complainant submitted an Additional Submission that was received and determined to be timely on March 2, 2011.
Respondent submitted an Additional Submission that was received and determined to be timely on March 4, 2011.
On March 7, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, P-E H Petter Rindforth, and David Sorkin (presiding) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an individual known to the public by the name Chris Nemelka. Complainant asserts trademark rights in CHRISNEMELKA and CHRIS NEMELKA marks used in connection with the sale and distribution of various books. Complainant uses these marks in an email address and the name of a YouTube channel, both of which are used to communicate with the public regarding these goods.
Complainant claims that the disputed domain name <chrisnemelka.com> is identical or confusingly similar to Complainant’s marks; that Respondent is not and never has been commonly known as “Chris Nemelka”; and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant states that he is a controversial public figure and acknowledges that Respondent generally has a legal right to publish non-defamatory material concerning Complainant. He asserts, however, that no rights or legitimate interests arise from the use of the disputed domain name to publish derogatory material that tarnishes Complainant, particularly when such use includes a request that the public “donate” to Respondent’s cause.
Complainant further asserts that the disputed domain name was registered and is being used in bad faith, on the grounds that it is being used to divert Internet users searching for Complainant to a website devoted to derogatory statements about Complainant. Complainant contends that this attempt to disrupt Complainant’s business is indicative of bad faith under paragraph 4(b)(iii) of the Policy.
B. Respondent
Respondent contends that the Complaint is baseless, and was brought for the purpose of obtaining Respondent’s identity.
Respondent disputes Complainant’s claim of trademark rights, arguing that merely having a famous personal name is insufficient under the Policy. Respondent contends that Complainant has failed to substantiate his claim with evidence that his name has acquired secondary meaning as an identifier of the source of goods or services, rather than merely as a means of referring to Complainant himself.
Respondent further claims that it has rights or legitimate interests in the domain name arising from its use of the name to provide a platform for noncommercial criticism and commentary about Complainant. Respondent contends that the applicable law governing both parties is that of the United States, and at least under U.S. law, such use is protected speech.
Finally, Respondent denies that it registered or is using the disputed domain name in bad faith. Respondent states that it is not engaged in any sort of competitive activity, and that the use of a domain name for legitimate criticism and commentary does not constitute bad faith.
C. Additional Submissions
The Parties’ Additional Submissions largely reiterate the allegations made in their initial submissions. There do not appear to be any exceptional circumstances present that would necessitate consideration of Additional Submissions, nor do they shed any additional light upon the relevant issues before the Panel. The Panel, therefore, declines to exercise its discretion to consider the Parties’ Additional Submissions. See, e.g., Slickdeals, Inc. v. Wright, FA 1289878 (Nat. Arb. Forum Jan. 29, 2010).
The Panel finds that Complainant has failed to prove any of the elements set forth in paragraph 4(a) of the Policy.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant asserts that he has trademark and service mark rights in various marks, but does not state whether these claimed rights arise from registration or at common law, and offers insufficient evidence to support a claim of common law rights. The Panel therefore finds that Complainant has not met his burden of proving that he has rights in a relevant mark.
Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use his name. Complainant thus has made a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name, shifting to Respondent the burden of production to come forward with evidence of its rights or legitimate interests. See, e.g., Google Inc. v. Texas Intl. Property Assocs., FA 1212995 (Nat. Arb. Forum Aug. 25, 2008). In the Panel’s view, Respondent has met this burden.
Respondent is using the disputed domain name for a website devoted to criticism and commentary regarding Complainant, a public figure. Such use clearly qualifies as a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. Cf. Lamparello v. Falwell, 420 F.3d 309, 320 (4th Cir. 2005) (holding that use of a domain name corresponding to the name of a controversial public figure for purposes of criticism and commentary regarding that person, even where done for profit, qualifies as a “bona fide noncommercial or fair use” under federal trademark law). The Panel concludes that Complainant has failed to prove that Respondent lacks rights or legitimate interests in the disputed domain name.
For the same reasons as set forth in the preceding paragraph, the Panel finds that Complainant has failed to prove that Respondent registered and is using the disputed domain name in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <chrisnemelka.com> domain name shall REMAIN WITH Respondent.
David E. Sorkin, Presiding Panelist
Paul M. DeCicco, Panelist,
P-E H Petter Rindforth, Panelist
Dated: March 21, 2011
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