Dr. Paul Offit v. JB Handley / GR
Claim Number: FA1308001517374
Complainant is Dr. Paul Offit (“Complainant”), represented by Robert J Kimmer of Rader, Fishman & Grauer, PLLC, Pennsylvania, USA. Respondent is JB Handley / GR (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drpauloffit.org>, registered with Register.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2013; the National Arbitration Forum received payment on August 30, 2013.
On September 9, 2013, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <drpauloffit.org> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 September 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@drpauloffit.org. Also on September 16, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Dr. Paul Offit, has made continuous and exclusive use of the DR. PAUL OFFIT mark for years in relation with the publication of books, papers, articles, speaking engagements, lectures, professorial services, and medical and medical research services. Complainant was a co-inventor of the Rotavirus vaccine, created under his personal name mark—DR. PAUL OFFIT.
Respondent’s <drpauloffit.org> domain name is identical to the personal name mark of Complainant.
Respondent, JB Handley / GR, registered the <drpauloffit.org> domain name on April 29, 2011. Respondent uses the <drpauloffit.org> domain name to divert Internet users to a website that contains commentary about Complainant. Respondent is a critic of Complainant who uses the domain name to criticize Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant does not have a registered trademark in the DR. PAUL OFFIT mark However, Complainant has common law rights in the mark. See, e.g., Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant states that it has made continuous and exclusive use of the DR. PAUL OFFIT mark for years in relation with the publication of books, papers, articles, speaking engagements, lectures, professorial services, and medical and medical research services. Complainant claims that he controls many domain names, such as <paul-offit.com>, <doctorpauloffit.com>, and over seventy-five (75) other combinations and variations of the DR. PAUL OFFIT mark with various generic and country-code top-level domains (“gTLDs” and “ccTLDs”). Complainant also notes that he was a co-inventor of the Rotavirus vaccine, created under his personal name mark—DR. PAUL OFFIT. Complainant’s extensive use of his personal name in connection with the promotion and sale of consumer goods and services is sufficient evidence of Policy ¶ 4(a)(i) rights in the DR. PAUL OFFIT mark. See Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001).
Complainant next contends that Respondent’s <drpauloffit.org> domain name is identical to the personal name mark of Complainant. Respondent removed the mark’s spacing and period, and added the gTLD “.org” to create this domain name. The panel in Dawson v. Doctor, FA 521036 (Nat. Arb. Forum Sept. 1, 2005), found a similar domain name—<drgem.com—to be identical to the DR. GEM mark as all of the differences between the mark and domain name would be irrelevant to Internet users searching for the complainant’s mark on the Internet. Likewise, the Panel finds that the <drpauloffit.org> domain name is identical to the DR. PAUL OFFIT mark under Policy ¶ 4(a)(i).
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).
Complainant claims that Respondent is known only as “JB Handley,” a name not similar to the DR. PAUL OFFIT name and mark. The WHOIS record lists as “JB Handley” of the organization known as “GR.” The WHOIS record is dispositive when there is no other evidence in the record to suggest that the respondent is known by any other name or alias. See, e.g., Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel finds that Respondent is not known by the <drpauloffit.org> domain name under Policy ¶ 4(c)(ii).
Complainant also claims that Respondent uses the <drpauloffit.org> domain name to divert and mislead Internet users to a website that contains false and derogatory commentary about Complainant. Complainant argues that Respondent is therefore tarnishing the DR. PAUL OFFIT mark in the eyes of consumers. Previous panels have approached “free speech” domain names by dividing the content of the domain name from the content of the websites that resolve from the domain name: while there may or may not be a right to the speech contained on a given website, the Policy does not allow the use of an identical or confusingly similar domain name to promote the content of such a website. See, e.g., Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). Regardless of whether the content on the domain name’s website is protected, the use of the identical <drpauloffit.org> domain name gives rise to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Paul Petrovich and Petrovich Dev. Co. v. Jazz Melody, FA 290894 (Nat. Arb. Forum Sept. 10, 2004) (finding legitimate or fair use impossible to establish when a domain name incorporates nothing more than another’s mark and a gTLD and is used to criticize the mark owner); see also Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13, 2000) (finding that use of the complainant’s name and adoption of it in a domain name is inherently likely to lead some people to believe that the complainant’s are connected with it).
While Complainant does not specifically plead allegations or claims as to bad faith under Policy ¶ 4(b), which is a non-exclusive restatement of common forms of bad faith, Complainant may still prevail so long as it illustrates evidence of bad faith use and registration of the <drpauloffit.org> domain name. 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).
Complainant claims that Respondent is a well-known critic of Complainant who only uses the <drpauloffit.org> domain name to criticize and tarnish Complainant. Complainant argues that Respondent’s right of freedom of speech does not extend to the use of a domain name that is identical to Complainant’s own mark. Previous panels have held that a domain name’s content is no excuse for the infringing nature of the domain name itself. See, e.g., Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (“Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site”). The Panel finds that Respondent’s use of the identical <drpauloffit.org> domain name to make derogatory commentary about Complainant is evidence of Policy ¶ 4(a)(iii) bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drpauloffit.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 21, 2013
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