Mothers Against Drunk Driving v. Tom Alciere
Claim Number: FA1107001398821
Complainant is Mothers Against Drunk Driving (“Complainant”), represented by Justin S. Cohen of Thompson & Knight LLP, Texas, USA. Respondent is Tom Alciere (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <madd-california.org>, <madd-florida.org>, <maddflorida.com>, <madd-nebraska.org>, <madd-newyork.org>, <madd-pennsylvania.org>, <maddpa.com>, <maddnh.org>, and <maddva.com>, registered with Misk.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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 18, 2011, Misk.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <madd-california.org>, <madd-florida.org>, <maddflorida.com>, <madd-nebraska.org>, <madd-newyork.org>, <madd-pennsylvania.org>, <maddpa.com>, <maddnh.org>, and <maddva.com> domain names are registered with Misk.Com, Inc. and that Respondent is the current registrant of the names. Misk.Com, Inc. has verified that Respondent is bound by the Misk.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 July 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@madd-california.org, postmaster@madd-florida.org, postmaster@maddflorida.com, postmaster@madd-nebraska.org, postmaster@madd-newyork.org, postmaster@madd-pennsylvania.org, postmaster@maddpa.com, postmaster@maddnh.org, and postmaster@maddva.com. Also on July 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 August 4, 2011.
On August 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Mothers Against Drunk Driving or MADD, the Complainant in this matter, is a non-profit organization devoted to stopping drunk driving. Founded in 1980, Complainant has over 600 chapters and two million members in the United States. Complainant holds a registered trademark for its MADD mark with the United States Patent and Trademark Office which it registered in September 1983.
Complainant states that the disputed domain names are confusingly similar to its MADD trademark because the domain names incorporate fully the mark, adding only geographic identifiers such as “VA,” “PA,” and “NH,” and the full name of the states “Florida,” “Nebraska,” “New York,” and “Pennsylvania,” some separated from the MADD acronym by a hyphen and some not.
Complainant states that Respondent does not have rights or legitimate interests in the domain names because the Respondent, Tom Alciere, is not commonly known by the domain names. Furthermore, Complainant states that it has never given Respondent authority to use its mark. Complainant also contends that the resolving websites which criticize Complainant and its activities are not legitimate noncommercial or fair uses of its mark.
Finally, Complainant contends that Respondent, by incorporating Complainant’s mark in the domain names in order to criticize and disrupt Complainant’s activities, is evidence of bad faith registration and use.
B. Respondent
Respondent contends that his domain names can easily be distinguished from the Complainant’s mark, having hyphens or different gTLDs, and that the sites contain disclaimers advising visitors that the sites are not affiliated with Complainant.
Respondent states he did not register the domain names to disrupt Complainant’s activities nor is a competitor of Complainant. Respondent argues that since the Complainant is a political action group, “the public must be even more free to criticize the Complainant by name than if the Complainant were merely a commercial enterprise.”
Complainant holds a registered trademark for the MADD mark which it registered in September 1983, and Respondent registered the domain names in dispute long afterwards and with knowledge of Complainant’s mark.
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 contends that it has established its rights in the MADD mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,250, 706 registered September 6, 1983). Complainant has submitted the trademark certificate as evidence that the mark is duly registered with the USPTO. Previous panels have determined that registering a mark with the USPTO establishes a complainant’s rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore, the Panel finds that Complainant has established its rights in the MADD mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO.
Complainant also contends that Respondent’s disputed domain names are confusingly similar to its MADD mark. All of the disputed domain names appear to include the entire mark and add one of the following geographic identifiers, “california,” “nebraska,” “pennsylvania,” “florida,” “newyork,” “pa,” “nh,” and “va.” A hyphen is also ostensibly included in five of the domain names along with a generic top-level domain (“gTLD”), separately including either “.com” or “.org.” The Panel finds that the disputed domain names are confusingly similar to Complainant’s MADD mark under Policy ¶ 4(a)(i). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
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. Entertainment 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). The Panel finds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “Tom Alciere.” Respondent does not claim to be commonly known by the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names. According to Complainant, the disputed domain names resolve to a website which directly criticizes and offers complaints directed at Complainant.
Respondent counters that, since the Complainant is a political action group, “the public must be even more free to criticize the Complainant by name than if the Complainant were merely a commercial enterprise,” and that the inclusion of a disclaimer bolsters its claim that it has rights or legitimate interests in the disputed domain names. However, the Panel finds that the disclaimer does not preclude a finding that Respondent lacks rights or legitimate interests in the mark under Policy ¶ 4(a)(ii) because, Internet users are still diverted to the site and are not subject to the disclaimer until arriving there. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
As for Respondent’s right to criticize the Complainant “by name,” while the Panel believes that there are instances in which a trademark may be used as part of a domain name which resolves to a criticism site, if the use is fair and non-commercial, on the facts of this case, the Panel concludes that such a parameter does not apply to the disputed domain names which all contain Complainant’s mark with only geographic identifiers and which, for all intents and purposes, appear to be domains for sites of local chapters of Complainant’s organization, but that direct Interest users to Respondent’s sites which contain highly critical comments regarding Complainant.
Although Respondent has the right to express his views, the Panel finds
that he does not have the right to use the good will and name identification
that Mothers Against Drunk Driving has established over the past 30 years to
advance his criticism of Complainant. Although the Panel
acknowledges there are contrary authorities, the Panel finds that the following
decisions, among others, support the Panel’s interpretation of Policy ¶
4(c)(iii).
The Panel finds that the operation of a complaint site does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding no rights or legitimate interests from the respondent's alleged "free speech" use of the domain name <vivendiuniversalsucks.com>, which fully incorporated the complainant's VIVENDI UNIVERSAL mark, because the domain name was passively held).
The Panel finds Respondent’s use of Complainant’s mark in an identical disputed domain name in order to display opinion and satire regarding Complainant’s cases is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”). The Office of the Kings County District Attorney v. Dom Altam, FA1313554 (April 30, 2010) (emphasis added).
While Respondent’s actual use may be protected by his First Amendment rights, previous panels have found that the use of a complainant’s protected mark is not authorized. The Panel determines that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Randall Terry v. Jeff White, FA1361707 (Jan. 7, 2011) (emphasis added).
Accordingly, the Panel finds that Respondent has not established that the domain names satisfy the requirements of Policy ¶ 4(c)(iii).
Under Policy ¶ 4(a)(iii), Complainant is required to prove that Respondent registered and used the disputed domain names in bad faith. The UDRP includes four ways in which Complainant may do so under Policy ¶ 4(b); however, the Panel finds that this list is not exclusive and is merely illustrative of ways in which Complainant can demonstrate bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Because of that fact, Complainant may prove bad faith under Policy ¶ 4(a)(iii) using the totality of the circumstances if it is able do so.
Complainant asserts that Respondent’s use of the disputed domain names to offer complaints about its business constitutes bad faith registration and use. Prior panels have found that using domain names to offer complaint sites and the like indicates bad faith registration and use on the part of the owner of those domains. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website); see also 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).”). Thus, the Panel may find that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Furthermore, as was the case for the Panel that decided the prior dispute between these parties, this Panel agrees with the reasoning of the decision in Council for Refractive Surgery Quality Assurance a nonprofit California corporation (USAEyes) v. Brent Hanson, FA1237910 (Nat. Arb. Forum Jan. 19, 2009). (The Panel also finds that Respondent’s use of the <usaeyes.us> domain name to display a website criticizing Complainant and its business activities indicates bad faith registration or use pursuant to 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 [UDRP] ¶ 4(a)(iii).”); see also Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.”).
Finally, Respondent’s argument that the disclaimer included on its website precludes a finding of bad faith is not necessarily accurate. In some cases, panels have determined that a disclaimer does not dispel a finding of bad faith against the respondent. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent’s inclusion of a disclaimer on its website does not inhibit it from finding bad faith registration and usage under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <madd-california.org>, <madd-florida.org>, <maddflorida.com>, <madd-nebraska.org>, <madd-newyork.org>, <madd-pennsylvania.org>, <maddpa.com>, <maddnh.org>, and <maddva.com> domain names be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: August 25, 2011
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