Organizing for Action v. Michael Deutsch
Claim Number: FA1302001483257
PARTIES
Complainant is Organizing for Action (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is Michael Deutsch (“Respondent”), represented by Brian A. Hall of Traverse Legal, PLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <organizingforaction.com> and <organizingforaction.org>, registered with GoDaddy.com, LLC.
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.
Terry F. Peppard, G Gervaise Davis III and Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2013; the National Arbitration Forum received payment on February 1, 2013.
On February 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <organizingforaction.com> and <organizingforaction.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2013 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@organizingforaction.com, postmaster@organizingforaction.org. Also on February 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 25, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on March 4, 2013.
A timely Additional Submission was received from Respondent and determined to be complete on March 8, 2013.
On March 18, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Terry F. Peppard, G Gervaise Davis III and Debrett G. Lyons (chair) as panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in the expression, ORGANIZING FOR ACTION, and alleges that the disputed domain names are identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent broadly denies those allegations and, in particular, alleges that Complainant has no trademark rights and that, based on Respondent’s earlier conduct and within the “fair use” principle, it has a legitimate interest in the domain names and did not register them in bad faith.
C. Additional Submissions
Both parties made additional submissions which have been taken into account by the Panel in reaching its decision and which are referred to as required in the discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a District of Columbia non-profit organization formed January 18, 2013 with the object of advocating for certain public and political policy issues.
2. Complainant has undertaken that advocacy by reference to the expression ORGANIZING FOR ACTION to which it makes a common law trademark claim by reason of use since January 2013.
3. The disputed domain names were registered on January 18, 2013.
4. The domain names are parked.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires both that a complainant has rights in a relevant trademark and that the disputed domain name is identical or confusingly similar to that trademark.
Panel is satisfied that the disputed domain names are confusingly similar, if not legally identical, to Complainant’s alleged trademark. The disputed domain names take the trademark and merely add a non-distinctive gTLD, “.com” or “.org,” neither integer being added matter which distinguishes that domain name from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Proof of rights in the alleged trademark is a threshold requirement. In this case Panel observes that so little time has passed since adoption of the trademark by Complainant that it is not possible at this point to draw meaningful findings about whether or not Complainant can be said to have trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of that right (see, e.g., Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003)). Complainant has no such registration. Through its own enquiries Panel notes that an application for registration was filed with the United States Patent and Trademark Office (“USPTO”) soon after filing of the Complaint. That application is pending and, it is generally agreed, cannot form the basis of trademark rights. Paragraph 4(a)(i) of the Policy does not, however, distinguish between registered and unregistered trademark rights and a trademark registration is not necessary if Complainant can establish common law rights in the trademark (see McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy)). The Policy is consistently read in this way (see, e.g., SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)).
In that regard Panel observes that although Complainant chose to file the Complaint with the National Arbitration Forum, the Complaint references decisions under the Policy made by panelists of the other major forum, the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO also publishes a so-called “Overview of WIPO Panel Views on Selected UDRP Questions,” the Second Edition[1] of which asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of former UDRP panelists is that:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted. (emphasis added)
Whether or not the expression ORGANIZING FOR ACTION is characterized as descriptive of activities in the nature of social and political advocacy, or as somehow generic in light of its frequent use by third parties before this dispute (a matter debated in submissions) need not be decided since in either case it is clear that, by reason of the character of the trademark, Complainant bears a higher onus of proof that the trademark has acquired secondary meaning and indicates Complainant to the exclusion of others.
Complainant asserts that it has used the expression ORGANIZING FOR ACTION as a common law trademark since either January 17 or January 18, 2013. The Complaint is not clear on that matter but nothing turns on the actual date for the purposes of this aspect of the Policy. As noted above, the Complaint was filed with the Forum on February 1, 2013 and so the claim to reputation is premised on use for little more than a fortnight.
It would require extraordinary evidence in order to prove common law trademark rights in such a very short time and in this case the evidence consists of a copy of a broadcast email announcing the launch of the initiative under the ORGANIZING FOR ACTION name (said to have been sent to over one million recipients), together with some limited newspaper space given to the program on the launch day. Otherwise, the use has been on YouTube.
The inherently non-distinctive nature of the expression, the very short period since adoption of the trademark, and the unsurprisingly limited evidence of use prevent Panel from making a meaningful assessment of common law trademark entitlement at this time and so Panel cannot credit Complainant with trademark rights.
Without prejudice to Complainant’s ability to lay claim to trademark rights at a future time, Panel finds that for the purposes of these administrative proceedings, Complainant has failed to fully satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <organizingforaction.com> and <organizingforaction.org> domain names REMAIN WITH Respondent.
Debrett G. Lyons
Terry F. Peppard
G Gervaise Davis III
Panelists
Dated: April 14, 2013
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