Dr. A. Scott Connelly v. AnonymousSpeech AnonymousSpeech
Claim Number: FA1109001406376
Complainant is Dr. A. Scott Connelly (“Complainant”), represented by Bennet G. Kelley of Internet Law Center, California, USA. Respondent is AnonymousSpeech AnonymousSpeech (“Respondent”), represented by Steven L. Krongold, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ascottconnelly.com>, registered with Enom, 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.
Michael Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2011; the National Arbitration Forum received payment on September 8, 2011.
On September 7, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ascottconnelly.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 27, 2011, Enom, Inc. sent correspondence to the Forum indicating that the domain name was inadvertently allowed to be unlocked and transferred to a new registrar, but that it was working diligently to get the domain name returned to it. On October 7, 2011, Enom, Inc. again contacted the Forum and re-verified that the domain name in question was again registered with Enom, Inc. and locked pending the outcome of this UDRP matter.
On September 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@ascottconnelly.com. Also on September 13, 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 October 3, 2011.
An Additional Submission from the Complainant was received after the deadline for such submissions, in violation of Supplemental Rule #7(a). Because the Complainant offered no excuse or justification for the Additional Submission’s untimeliness, it need not be considered. Nevertheless, in its discretion, the Panel has considered Complainant’s Additional Submission.
On October 11, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Dr. A. Scott Connelly alleges that, by virtue of his “long-standing use of the DR. SCOTT CONNELLY mark and legendary status in the fields of nutrition and fitness,” he possesses a common law trademark in the DR. SCOTT CONNELLY mark.
Complainant asserts that he is globally known as a leading expert in the field of human nutrition and metabolism; that he is the founder of the A. Scott Connelly Laboratory of Clinical Nutrition at the University of California, Los Angeles (“UCLA”); that he is a visiting professor at UCLA in the area of physiology of nutrition and muscle metabolism; that he created Metamyosyn, which is the key ingredient in MET-Rx, a high-protein low-fat vitamin and mineral-enriched drink mix he went on to invent and market; that he is the author of “Body Rx: Dr. Scott Connelly’s 6-pack Prescription”; and that he is the host of the BodyRx Radio Show and publisher of the Connelly Report, which provides in-depth coverage of nutritional issues.
Complainant alleges that the Respondent has no legitimate rights or interest in the Domain Name.
Complainant avers that Respondent has registered the Domain Name in bad faith and in an effort to coerce a settlement in ongoing litigation in which Dr. Connelly and Respondent are adverse parties. Complainant further avers that Respondent uses the Domain Name for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. According to Complainant, Respondent uses the Domain Name to defame Complainant and assert that Complainant’s business is a scam.
B. Respondent
Respondent contends that Complainant has not established common law or unregistered trademark rights in his name because Complainant has shown insufficient evidence of use of his personal name in trade or commerce. Respondent insists that “self-serving” statements about one’s popularity are inadequate.
Respondent alleges that he is making a legitimate, noncommercial use of the Domain Name—namely, exposing the unlawful business practices of Complainant and publicizing Complainant’s ongoing legal disputes in an effort to protect the public.
Respondent denies that he acted in bad faith. Respondent asserts that in criticizing Complainant on the Domain Name website, Respondent is merely exercising his constitutional right of free speech and statutory right of fair use.
The Panel finds that:
- Complainant has established common law trademark rights in the DR. SCOTT CONNELLY mark;
- the Domain Name <ascottconnelly.com> is confusingly similar to Complainant’s DR. SCOTT CONNELLY mark;
- Respondent has a legitimate right or interest in the Domain Name; and
- Having found that Respondent has a legitimate right or interest in the Domain Name; the Panel need not determine whether Respondent registered and used the Domain Name in bad faith.
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.
The Panel must first determine whether the Complainant has common law trademark rights in the DR. SCOTT CONNELLY mark. The Panel may then determine whether the Domain Name is identical or confusingly similar to that mark.
The Policy does not require that the Complainant have rights in a registered trademark or service mark. See Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000). It is sufficient that the Complainant satisfy the Panel that he has rights in common law trademark or sufficient rights to ground an action for passing off. Id. For the DR. SCOTT CONNELLY mark to have gained common law trademark rights, it must have acquired secondary meaning—the mark must be associated by consumers with goods and services of a known source and quality before Complainant may claim protection for the mark as a common law trademark. See Arthur Golden v. Galileo Asesores S.L., D2006-1215 (WIPO Dec. 15, 2006). Complainant’s submissions demonstrate that the DR. SCOTT CONNELLY mark has sufficient secondary association with Complainant’s nutrition and metabolism products such that common law trademark rights in the DR. SCOTT CONNELLY mark exist: Complainant is the inventor of Met-Rx, a globally used sports supplement; Complainant has been called “legendary for the products he has created”; Complainant is the author of a book titled Body Rx: Dr. Scott Connelly’s 6-pack Prescription; and Complainant is the founder of the A. Scott Connelly Nutritional Sciences Laboratory at UCLA.
On the second issue (identity or similarity), the facts clearly favor the Complainant. The Domain Name is confusingly similar to Complainant’s name. In the Domain Name, Respondent deleted the professional title “Dr.” and added the letter “a.” These alterations of Complainant’s mark do not differentiate the Domain Name from Complainant’s mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (deleting the term “outfitters” from the mark and replacing it with the term “stores” did not distinguish the disputed domain name); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (removing the terms “air” and “center” and adding the letter “s” to the complainant’s mark resulted in a confusingly similar disputed domain name); MasterCard Int’l Inc. v. John Henry Enters., D2001-0632 (WIPO June 28, 2001) (adding word “international” to the trademark “MasterCard” does not eliminate confusion”); AT&T Corp. v. Rice, D2000-1276 (WIPO Nov. 25, 2000) (adding word “global” to an AT&T trademark was insufficient to distinguish the domain name from the trademark). The Panel notes that Complainant’s full name and title is Dr. A. Scott Connelly, so the added letter is derived from Dr. Connelly’s actual name, rather than being an attempt to distinguish it. Finally, the added generic top-level domain name “.com” is necessary for a domain name to be operational and does not differentiate the Domain Name from the Complainant’s mark.
For these reasons, the Panel finds that the Domain Name registered by Respondent is confusingly similar to the DR. SCOTT CONNELLY mark.
Complainant alleges that Respondent has no right or legitimate interest in the Domain Name because Respondent uses the Domain Name website to defame Complainant and assert that Complainant’s business is a scam. Respondent insists that he is making a legitimate noncommercial use of the Domain Name by exposing Complainant’s unlawful business practices in an effort to protect the public. In other words, Respondent contends that he is operating a criticism site.
There is a well-known divergence of opinion among panelists regarding whether a respondent’s criticism site at a domain name that is identical or confusingly similar to a complainant’s trademark may qualify as a legitimate noncommercial or fair use.
The Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.4, provides an explanation of the two views on this issue. Panelists adhering to the first view (“View 1”) opine, “The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner.” Id. Panelists adhering to the other view (“View 2”) opine, “Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.” Id. The WIPO Overview notes that “[i]n cases involving only US parties or the selection of a US mutual jurisdiction, panelists tend to adopt the reasoning in View 2 (though not universally).” Id. Other panels have recognized that “[i]n cases involving United States parties and/or panelists, . . . a number of panels have ruled that the First Amendment does protect trademark.TLD domain names when they are used for legitimate criticism sites.” Howard Jarvis Taxpayers Assoc. v. McCauley, D2004-0014 (WIPO Apr. 22, 2004).
The Panel is cognizant of the view, espoused by View 1 panelists, that the divergence of views on this issue risks fragmenting the UDRP along geographical lines—potentially along a U.S.-non-U.S. line. See e.g., 1066 Housing Assocs. Ltd. v. Mr. D. Morgan, D2007-1461 (WIPO Jan. 18, 2008) (opining that adopting an approach wherein outcomes are determined by the geographical location of the parties and/or the panelists “risks the UDRP fragmenting into a series of different systems, where the outcome to each case would depend upon where exactly the parties happened to reside. That way chaos lies.”). The Panel also recognizes that Respondent could have used a domain name telegraphing precisely his intent to criticize Complainant, thereby obviating any risk of deception, and that other View 1 panelists have found that a “[r]espondent’s right to exercise freedom of speech does not extend to an entitlement to disseminate [his] view by deliberately and misleadingly cloaking [himself] in the name of the Complainant in order to maximi[z]e the number in [his] audience.” Anastasia Int’l Inc. v. Domains by proxy Inc./rumen kadiev, D2009-1416 (WIPO Jan. 18, 2010).
The Panel is, nevertheless, inclined to align itself with View 2 and those panelists who see in a respondent’s registration of a domain name containing an identical or confusingly similar mark no bright line barrier to legitimate noncommercial or fair use. See, e.g., Howard Jarvis Taxpayers Assoc. v. McCauley, D2004-0014 (WIPO Apr. 22, 2004) (recognizing, in 2004, an emerging consensus “that trademark.TLD domain names, when used for U.S.-based criticism sites, can constitute a legitimate interest, especially if there are not other indicia of bad faith.”). The Panel finds persuasive the reasoning provided in Howard Jarvis Taxpayers Association:
The Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites. Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.
D2004-0014 (WIPO, Apr. 22, 2004).
The Panel’s analysis does not end with its decision to adhere to View 2. The Panel must address the considerations other panels have recognized as relevant in assessing whether, for UDRP purposes, a respondent with a criticism site has a right or legitimate interest in a domain name that is identical or confusingly similar to a complainant's mark. Midland Heart Ltd. v. Black, D2009-0076 (WIPO Mar. 30, 2009). These considerations include:
(a) Has the domain name been registered and is it being used genuinely for the purpose of criticising the owner of the mark?
(b) Does the registrant believe the criticism to be well-founded?
(c) Does the registrant have intent for commercial gain?
(d) Is it immediately apparent to Internet users visiting the website at the domain name that it is not a website of the owner of the mark?
(e) Has the respondent registered all or most of the obvious domain names suitable for the owner of the mark?
(f) Where the domain name is one of the obvious domain names suitable for the owner of the mark, is a prominent and appropriate link provided to the latter's website (if any)?
(g) Where there is a likelihood that email intended for the complainant will be sent using the domain name in issue, are senders immediately alerted in an appropriate way that their emails have been misaddressed?
Id.
(a) The Panel is satisfied that the Domain Name in the instant matter was registered and is being used for the purpose of criticizing Complaint. This consideration, therefore, favors Respondent.
(b) Complainant has not shown that Respondent does not in fact believe the criticisms lodged against Complainant on the Domain Name website. Moreover, “[u]nless it is clearly shown that the content is deliberately false and malicious, the principle of free speech must prevail.” Id. For these reasons, this consideration favors Respondent.
(c) There is no evidence that Respondent uses the Domain Name website for commercial use. Accordingly, this consideration strongly favors Respondent’s asserted legitimate noncommercial or fair use.
(d) Internet users might not immediately realize that the Domain Name website is not Complainant’s website. Most users will quite rapidly come to that realization, but the website presents no disclaimer or other language immediately telling users that it is not Complainant’s website. In these circumstances, this consideration weighs against Respondent.
(e) There is no evidence that Respondent has registered all or most of the obvious domain names suitable for Complainant. Thus, this consideration favors Respondent.
(f) The Domain Name website does not present a prominent and appropriate link to a website belonging to Complainant. This weighs against Respondent.
(g) The Domain Name website fails to indicate whether senders of emails intended for Complainant who mistakenly send such emails to the Domain Name website are immediately alerted in an appropriate way that their emails have been misaddressed. There is, however, no evidence indicating that emails intended for Complainant are ever sent to the Domain Name website. For these reasons, this consideration carries insignificant weight in the Panel’s analysis.
The Panel finds that, on balance, Respondent is making a legitimate noncommercial or fair use of the Domain Name website—Respondent has a right to free speech and a legitimate right to host a complaint site about the Complainant on the Internet.
Nothing in this decision, of course, should be construed as an endorsement of either Respondent’s statements or his tactics. Complainant argues that much of what is on Respondent’s site is false and defamatory and Respondent makes little if any effort to rebut that contention. Complainant may well have recourse in the legal system should he be able to prove that defamatory statements about him have been published without legal justification. But his recourse does not lie in the Policy, which is limited to resolving clear instances of cybersquatting.
Having found that Respondent is making a legitimate noncommercial or fair use of the Domain Name website, the Panel need not address whether Respondent registered and used the Domain Name website in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (“In light of the Panel’s finding that the Respondent has rights and legitimate interests in the disputed domain name, all issues of bad faith use and registration under paragraph 4(a)(iii) of the Policy are now moot.”); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). To obtain the transfer of a Domain Name, a Complainant must demonstrate that each of the three requisite transfer elements has been met.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Michael Albert, Panelist
Dated: October 26, 2011
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