DeAnn Pladson v. Jon Tollefson
Claim Number: FA1105001388762
Complainant is DeAnn Pladson (“Complainant”), represented by Keith L. Miller of Miller Norman & Associates, Ltd., Minnesota, USA. Respondent is Jon Tollefson (“Respondent”), North Dakota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deannpladson.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2011; the National Arbitration Forum received payment on May 13, 2011.
On May 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <deannpladson.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 May 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@deannpladson.com. Also on May 19, 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 June 2, 2011.
On June 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
On June 8, 2011 an Additional Submission by the Complainant and on June 9, 2011 an Additional Submission from the Respondent were received. The submissions were received after the deadline for submission and the size of the Exhibits file exceeds the Forum’s file size restrictions. The Panel does not consider this submission to be in compliance with Supplemental Rule 7 and Annex A to the Supplemental Rules.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
DeAnn Pladson has a common law trademark right to her name, DeAnn Pladson. DeAnn Pladson is an attorney in Fargo, North Dakota, practicing family law for approximately 19 years. The use of <deannpladson.com> is an infringement upon her trademark and upon her common law trademark to her name. DeAnn Pladson represented the ex-wife of Jon Tollefson in a divorce dispute in 2008. The divorce dispute was mediated by Attorney Maureen Holman. On February 13, 2009 Tollefson informed Pladson and her law partners that he purchased the domain name of <deannpladson.com>. On May 26, 2009 Tollefson sent an email to a few local attorneys, again repeatedly referring them to <deannpladson.com>. On June 25, 2010 Tollefson communicated with DeAnn’s law firm stating, “Contact me when your firms value peace over war. A two hour meeting would resolve all matters once and for all.” This Google Profile leads the reader back to <deannpladson.com> with an active link. It is also believed that he set up a fake Facebook Profile referring people back to <deannpladson.com>. Complainant’s DeAnn Pladson mark, the elimination of the space in the mark and the addition of the “.com” are both inconsequential for purposes of Policy ¶4(a)(i). Additionally, DeAnn Pladson has a trade name, DeAnn Pladson, Family Law Advisor. Respondent should have no interest in the name because it is the name of someone else and includes the name of DeAnn Pladson’s business. Tollefson has accused Pladson of crimes constituting criminal defamation, for which there is continuing criminal investigation. On the website he instructs individuals how to “conflict out” Pladson therefore, instructing people how to interfere with Pladson’s business.
B. Respondent
Complainant, DeAnn Pladson, no different than any person, does not have a common law trademark right to a name. There exists no inherent or common law trademark upon ones birth. The Complainant has not proven that a trademark is created upon a birth and has not proven that Complainant in specific has a special right to a trademark for <deannpladson.com>. The name DeAnn Pladson has not acquired a secondary meaning. Similarly for example, Bill Clinton failed in a dispute for <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> ,Complainant does NOT have a Trademark for DeAnn Pladson. Respondent have always made a legitimate, non-commercial, or fair use of the <deannpladson.com> domain name. Respondent have always used the domain as an informational and blog page no different than any other of the millions of information and blog pages in existence on the Internet.
Respondent have NOT registered or acquired for the purpose of selling or transferring the domain name to the Complainant. Respondent have NOT registered or acquired the domain for the purpose of preventing any mark holder from registering a domain. Respondent have NOT registered or acquired for the purpose the domain to disrupted a competitor’s business or attract Internet users by confusing them. Respondent assert the registration and use of <deannpladson.com> domain constitutes fair use and should be considered constitutionally protected speech under the First Amendment the United States Constitution
UDRP Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), and Policy ¶ 4(a)(iii) have been violated by the Respondent.
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 rights in the DEANN PLADSON mark. While Complainant does not provide evidence of a trademark registration for the mark, the Panel may find that registration of a mark with a federal trademark authority is not necessary for establishing rights in the mark under Policy ¶ 4(a)(i), so long as Complainant can establish common law rights. 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); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant contends that it has common law rights in the DEANN PLADSON mark. Complainant states that it uses the mark to offer legal services to clients in the practice of law. Complainant contends that it has used the name in the legal field since 1992. The Panel finds that Complainant has established rights in the DEANN PLADSON mark dating back to 1992, thus satisfying the requirements set forth in Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant alleges that the <deannpladson.com> domain name is identical to the DEANN PLADSON mark. Complainant asserts that in creating the disputed domain name, Respondent merely removes the space between the terms of Complainant’s mark. Furthermore, Complainant avers that Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant's mark. The Panel finds that these actions have not resulted in a unique domain name and finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information lists the registrant of the disputed domain name as “Jon Tollefson” which Complainant contends is not similar to the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent uses the disputed domain name to resolve Internet users to a webpage that displays defaming content about Complainant. Complainant further alleges that Internet users looking for information about Complainant will likely type in the disputed domain name and be directed to a site that Complainant contends includes false and misleading information about Complainant. The Panel finds that this illegal use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name).
Complainant alleges that Respondent’s use of the disputed domain name disrupts Complainant’s business. Complainant states that Internet users looking for Complainant’s legal services are likely to be redirected to Respondent’s defamatory website via the disputed domain name. The Panel finds that Respondent’s actions in this case is a competitor of Complainant. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). If so, the Panel also finds that Respondent’s disruptive behavior is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant alleges that Respondent uses the disputed domain name to resolve Internet users to a website containing defamatory information about Complainant. The Panel finds such use to be evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deannpladson.com> domain name be TRANSFERRED from Respondent to Complainant
Hon. Nelson A. Diaz (ret.), Panelist
Dated: June 13, 2011
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