Organizing for Action v. Derek Bovard
Claim Number: FA1302001483269
Complainant is Organizing for Action (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington D.C. Respondent is Derek Bovard (“Respondent”), represented by Aaron Strong, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <organizingforaction.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2013; the National Arbitration Forum received payment on February 4, 2013.
On February 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <organizingforaction.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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.net. Also on February 13, 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 March 4, 2013.
A timely additional submission from Complainant was received on March 11, 2013.
All Submissions were considered by the Panel.
On March 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
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 name be transferred from Respondent to Complainant.
1. Complainant is a non-profit corporation dealing with the policy issues surrounding immigration, tax reform, and gun control.
2. Complainant has established substantial goodwill and recognition for its ORGANIZING FOR ACTION mark.
3. Respondent registered the <organizingforaction.net> domain name on January 18, 2013.
4. Complainant has rights in the ORGANIZING FOR ACTION mark.
a. Complainant has established common law trademark rights through its mark which is a distinctive identifier associated with Complainant and its business.
b. Complainant claims that its media coverage starting on January 18, 2013 aids in establishing its rights in the mark.
5. Respondent’s <organizingforaction.net> domain name is confusingly similar to Complainant’s ORGANIZING FOR ACTION mark.
a. Respondent’s <organizingforaction.net> domain name adds the generic top-level domain “gTLD” “.net” to Complainant’s ORGANIZING FOR ACTION mark.
6. Respondent has no rights or legitimate interests in the <organizingforaction.net> domain name.
a. Respondent is not commonly known by the disputed domain name and Complainant has never authorized it to use its mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
c. Respondent’s website resolves to a competitor of complainant’s.
7. Respondent has registered the <organizingforaction.net> domain name in bad faith.
a. Respondent registered the disputed domain name on the same day as Complainant received publicity regarding its announcement of its new issue advocacy venture.
b. Respondent’s bad faith is indicated by its opportunistic registration of the <organizingforaction.net> domain name.
c. Respondent has offered to sell the disputed domain name for $10,000.
B. Respondent Alleges:
1. Complainant did not legally exist prior to Respondent’s registration of the <organizingforaction.net> domain name.
2. Respondent searched for the existence of any companies using the “Organizing for Action” slogan and found nothing.
3. Respondent registered the <organizingforaction.net> domain name on January 18, 2013 at 5:46 am.
4. Complainant’s ORGANIZING FOR ACTION mark is a generic phrase
5. Respondent had no intent of offering to sell the disputed domain name and is not profiting from the website from which the domain name resolves.
6. Respondent has never sold a domain name.
7. This proceeding involves political speech that is protected under the United States Constitution.
8. The website is going to be used to discuss Conservative political views and values.
9. There is no evidence of use by Complainant prior to Respondent’s registration.
10. Complainant’s advertising did not include the <organizingforaction.net> domain name.
11. All of complainant’s advertising was done after Respondent had already registered the domain name.
12. The website resolving from the <organizingforaction.net> domain name is another political group, not a competing business.
13. Respondent is not intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark.
14. Complainant has engaged in reverse domain-name hijacking.
C. Additional Submission in Reply to Respondent
1. Complainant’s principals were taking action by January 17, 2013.
2. The fact that Complainant had not started offering its services under the mark does not preclude Complainant from establishing valid trademark rights.
3. Complainant’s ORGANIZING FOR ACTION mark is not a generic term, but is a suggestive phrase relating to Complainant’s mission.
4. Respondent registered the <organizingforaction.net> domain name to prevent Complainant from obtaining and using it.
5. Respondent has not submitted evidence of offering any product or service under the mark and therefore has failed to show use.
6. Respondent’s attempt to negate the quotes regarding the sale of the domain name is unsupported.
7. It is questionable whether free speech is at issue because Respondent does not use the domain name or Complainant’s mark to make comments about Complainant.
8. Respondent has registered multiple forms of the <organizingforaction.net> domain name all using variations of Complainant’s ORGANIZING FOR ACTION mark.
For the reasons set forth below, the Panel finds Complainant is not entitled to the relief requested.
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.
There is no question but that the Domain Name (absent the generic suffix) is identical to ORGANIZING FOR ACTION, the name in respect of which the Complainant claims common law rights. The issue is whether the Complainant has demonstrated the existence of those rights. Complainant does not present any evidence that it owns trademark registrations with any national trademark agency for the ORGANIZE FOR ACTION mark. Complainant does claim it has established common law rights in the ORGANIZE FOR ACTION mark pursuant to Policy ¶ 4(a)(i). Complainant claims it has shown that the ORGANIZE FOR ACTION mark is a distinctive identifier associated with the Complainant and its goods and services. Complainant argues that the publicity it received from its January 18, 2013 business launch established common law trademark rights that were effective immediately. In Complainant’s Additional Submission, Complainant contends that its principals were taking action on behalf of the business on January 17, 2013, which is before the date in which Respondent registered the disputed domain name.
Respondent argues that Complainant was not in legal existence prior to Respondent registering the <organizingforaction.net> domain name. Respondent claims that it registered the domain name on January 18th at 5:46am and Complainant’s organization did not legally become a group until 2:25pm that same day. Respondent also claims that it checked the trademark electronic Search System to see if there were existing trademarks by that name, and found none.
A resource available on the WIPO Arbitration and Mediation Center’s website is the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. This document lists a number of questions, which commonly arise in these proceedings, and provides an overview of panelists’ approaches to those questions. Question 1.7 is: What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights? The answer provided reads in part as follows:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and 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 Panel finds that Complainant has not provided such relevant evidence to meet the standard and therefore has not established rights in the ORGANIZING FOR ACTION mark under Policy ¶ 4(a)(i).
Complainant has not proven this element.
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel makes no ruling on this issue. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the Complainant must prove all three elements under the Policy, the Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into two UDRP factors where the Complainant could not satisfy the requirements of [the third UDRP factor).
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel makes no ruling on this issue.
Reverse Domain Name Hijacking
The Panel finds Reverse Domain Name Hijacking has not been established.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <organizingforaction.net> domain name REMAIN WITH Respondent.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 4, 2013
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