Tea Party Patriots, Inc. v. J Lyle c/o N/A
Claim Number: FA1001001302969
PARTIES
Complainant is Tea Party Patriots, Inc. (“Complainant”), represented by Kevin W. Grierson, of FSB Legal Counsel,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <teapartypatriotspac.org>,
<teapartypatriotspac.com>, <teapartypatriotaction.com>, <teapartypatriotaction.org>, <teapartypatriotsaction.com>, and
<teapartypatriotsaction.org>,
registered with Directi Internet
Solutions Pvt. Ltd. D/B/A
Publicdomainregistry.com.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
David A. Einhorn (Chair), Hon. Carolyn Marks
Johnson and Hon. Ralph Yachnin, appointed as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 14, 2010. With
its Complaint, Complainant also chose to proceed entirely electronically under
the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and
the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the
Forum’s website.
On January 15, 2010, Directi Internet Solutions Pvt. Ltd. D/B/A
Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum
that the <teapartypatriotspac.org>,
<teapartypatriotspac.com>, <teapartypatriotaction.com>, <teapartypatriotaction.org>, <teapartypatriotsaction.com>, and
<teapartypatriotsaction.org>
domain names are registered with Directi Internet Solutions Pvt. Ltd. D/B/A
Publicdomainregistry.com and that the Respondent is the current registrant of
the name. Directi Internet Solutions
Pvt. Ltd. D/B/A Publicdomainregistry.com has verified that Respondent is bound
by the Directi Internet Solutions Pvt. Ltd. D/B/A Publicdomainregistry.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On January 19, 2010, a Written Notice of the Complaint, setting a
deadline of February 8, 2010 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@teapartypatriotspac.org,
postmaster@teapartypatriotspac.com, postmaster@teapartypatriotaction.com,
postmaster@teapartypatriotaction.org, postmaster@teapartypatriotsaction.com,
and postmaster@teapartypatriotsaction.org by e-mail.
A timely Response was received and determined to be complete on
February 5, 2010. Respondent chose to
opt-in to the electronic process with its submission and submitted its Response
in electronic copy only.
On February 18, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David A. Einhorn (Chair), Hon. Carolyn Marks
Johnson and Hon. Ralph Yachnin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Contentions
(1) Respondent’s domain names are identical or confusingly similar to Complainant’s TEA PARTY PATRIOTS common law mark. Complainant alleges that its Tea Party Patriots web sites and discussion forums draw thousands of visitors and that it has over 118,000 members for its web sites. In support of its allegations, Complainant attaches contents of its Tea Party Patriots web pages as exhibits to its complaint.
(2) Respondent does not have any rights or legitimate interests in this domain name.
(3) The domain name was registered and is being used in bad faith. Respondent knew of Complainant’s rights when it registered the domain name and is using the domain name in connection with a pay-per-click web site.
B. Respondent’s Contentions
(1)
Respondent alleges that on October 28, 2009, Tea Party
Patriots, Inc. sued a Ms. Amy Kramer in Georgia Supreme Court. Respondent says that the
(2) Respondent argues that Complainant does not have trademark rights because it fails to exercise quality control over use of the mark. Respondent supports that conclusion by citing to a CNN interview with a Mark Meckler who states that this tea party movement is lead from the bottom up.
(3) Respondent argues that TEA PARTY PATRIOTS does not function as a mark since many others use the “tea party” term.
(4) Respondent argues that Complainant has no rights in the TEA PARTY PATRIOTS mark because, during prosecution before the Patent & Trademark Office, Complainant disclaimed rights to the “tea party” term apart from the mark as a whole.
(5) Respondent argues that he has legitimate rights and interests because he was involved with the Tea Party Patriots organization. He also argues that he has legitimate rights and interests because Amy Kramer has been a long time tea party activist.
(6) Respondent argues that Complainant has not proven bad faith because it has not provided evidence of profits and revenue which Respondent has earned through the pay-per-click web site.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Respondent argues that this Complaint should be dismissed because there is an ongoing court proceeding between Complainant an a Ms. Amy Kramer who has “cohabited for over seven years” with Respondent. Respondent further argues that some of the issues involved in that case are similar to those at issue in these proceedings. As Ms. Amy Kramer is not a party to this UDRP proceeding, this Panel finds that proceeding to be in no way controlling with respect to the instant dispute, and declines to dismiss the Complaint on that basis.
Complainant alleges that it has established common law rights to the TEA PARTY PATRIOTS mark. The Panel is satisfied that Complainant has established common law rights through its allegations that the web sites and discussion forums draw thousands of visitors, and that Complainant has over 118,000 members for its web sites. Such rights were further evidenced by the contents of Complainant’s web pages attached as exhibits to its complaint. See, similarly, Artistic Pursuit, LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that complainant had established common law rights in a mark through its use of the mark in commerce before respondent registered the disputed domain name).
Respondent argues that Complainant has no rights to the mark due to its lack of exercise of quality control, lack of establishment of the mark as an indicator of single source, and through Complainant’s disclaimer before the U.S. Patent & Trademark Office (“USPTO”). This Panel disagrees with Respondent on each of these points for the following reasons:
Respondent’s quality control arguments are based upon an alleged admission, in an interview of a Mark Meckler by CNN, that control of the Tea Party movement is “bottom up”. First, Respondent has failed to show that Mr. Meckler was speaking on behalf of, or about, the Tea Party Patriots, Inc. organization. Further, the question by CNN to which he responded refers to the “Tea Party” political movement, but not to the Tea Party Patriots, Inc. organization.
It is also of significance that, per a recent Examiner’s Amendment with respect to Complainant’s application, the services under the TEA PARTY PATRIOTS mark are now described as “Association services, namely a grassroots organization …; providing information in the field of governmental affairs ….” The description to CNN regarding the “bottom up” nature of the movement is not inconsistent with the “grass roots” services description. In any event, the “bottom up” description is not applicable to the additional services provided under the mark of “providing information in the field of governmental affairs.”
Neither is the Panel convinced by Respondent’s “single source” argument. It is true that to prevail in a UDRP proceeding, Complainant must show that its mark had “become distinctive as an indication of a single source, and is not simply viewed by the public as a description applicable to the goods and services from various sources.” Board for Certification of Genealogists v. Ashantiplc Limited, FA 1296376 (Nat. Arb. Forum Jan. 21, 2010). However, in this case, the other “tea party” political groups are not using Complainant’s mark TEA PARTY PATRIOTS. Therefore, the single source principle expressed by the Board for Certification of Genealogists is not applicable here.
Respondent also argues that Complainant has no rights because, in the course of prosecution of its service mark application, Complainant disclaimed rights to the term “TEA PARTY” apart from the mark as a whole. However, as was also stated in the Board for Certification of Genealogists decision, a disclaimer of a term does not end the inquiry into whether Complainant has cognizable rights to the disclaimed term. In any event, the disclaimer is irrelevant since it applies to the term “TEA PARTY” and not to the entire mark “TEA PARTY PATRIOTS”.
Complainant has also satisfied the requirement of confusing similarity, since the six domain names registered by Respondent all contain the term TEA PARTY PATRIOTS, with or without an “s”, together with the generic terms “action” or “pac”. See e.g., Keystone Publ’g, Inc. v. Utahbrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding the <utahwedding.com> domain name confusingly similar to complainant’s UTAHWEDDINGS.COM mark even though the domain name lacked the letter “s”).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Neither has Respondent demonstrated rights or legitimate interests in the TEA PARTY PATRIOTS mark. The activities of Ms. Amy Kramer, who is not a party to this proceeding, cannot confer rights in this mark upon Respondent, regardless of whether she and Respondent have “cohabited for over seven years”. Further, Respondent’s mere allegation that he was once involved with the Tea Party Patriots organization does not confer upon him legitimate rights and interests in the mark.
Neither does Respondent’s usage of these domain names for pay-per-click web sites establish legitimate rights or interests in Respondent. See, Bank of American Fork v. Shen, FA 699645 (Nat. Arb. Forum July 11, 2006) (finding respondent’s use of a domain name to redirect internet users to web sites unrelated to complainant’s mark not to constitute a bona fide use under the Policy).
Thus, this Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the domain names to maintain
pay-per-click web sites with links to content material unrelated to
Complainant. Such registration and use
by Respondent to profit from the goodwill associated with Complainant’s mark
constitutes bad faith pursuant to Policy ¶ 4(b)(iv). The Association of Junior Leagues International, Inc. v. This Domain My Be
For
Further, Respondent’s registration of six domain names, all confusingly similar to Complainant’s mark, supports the inference that the domains were registered in bad faith. Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 7, 2000).
Thus, this Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, for all of the foregoing
reasons, it is Ordered that the domain names <teapartypatriotspac.org>, <teapartypatriotspac.com>, <teapartypatriotaction.com>, <teapartypatriotaction.org>, <teapartypatriotsaction.com>, and
<teapartypatriotsaction.org>
be TRANSFERRED from the Respondent to the Complainant.
David A. Einhorn,
Presiding Panelist
Dated: March 12, 2010
DISSENT
Panelist Hon. Ralph Yachnin dissenting:
I most respectfully disagree with my colleagues as to the conclusion of this case. The Complainant has not met its burden of proving the three elements set forth in Paragraph 4(a) of the Policy with regard to any of the disputed domain names. I find no evidence that Complainant holds trademark rights in its alleged mark, or that Respondent utilized the disputed domain names in bad faith.
As to Complainant’s trademark rights in the alleged mark,
Complainant alleges that it has established common law rights in the mark. To establish this Complainant simply asserts
that it began using the TEA PARTY PATRIOTS mark in March of 2009, but does not
provide any verification or proof that it began using the mark during that
time. A mere assertion of usage of a mark is not enough to demonstrate rights
in the mark unless some further evidence of usage is proffered by a
complainant. See TotalFinaElf E&P USA, Inc. v.
Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002); see also Go Wireless Inc. v. Preferred
Capital Holdings LLC, FA 1284124 (Nat. Arb. Forum Oct. 21, 2009). No other evidence has been offered by
Complainant to support such common law rights in the mark. In order to demonstrate common law rights in
a mark, a complainant must establish continuous use and secondary meaning. See
Because I find that
Complainant has failed to establish the element of rights in the mark under ¶
4(a)(i) of the Policy, further inquiry into the
remaining elements would be unnecessary.
See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765
(Nat. Arb. Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha
v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006).
However, I find that Complainant also fails to meet its burden under Policy ¶ 4(a)(iii).
With regard to Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii), I find that Respondent has not attempted to sell the disputed domain names under Policy ¶ 4(b)(i) and that Respondent has not registered the disputed domain names as a competitor seeking to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii). Respondent registered the disputed domain names at the bequest of one of Complainant’s board members who was authorized to purchase domain names. Therefore, I find that Respondent did not register the disputed domain names as a part of a pattern of bad faith domain name registration under Policy ¶ 4(b)(ii), as Complainant alleges. Furthermore, the disputed domain names resolve to websites that relate to politics and tea parties. Complainant does not present evidence to support its assertion that Respondent profits from the hyperlinks contained on the resolving websites. I conclude that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). The mere assertion that a respondent registered and used a disputed domain name in bad faith is insufficient to establish bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005); see also Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007). Thus, I find that Complainant has also failed to satisfy the elements established by Policy ¶ 4(a)(iii).
I therefore conclude, based primarily upon Complainant’s own allegations and evidence, that Complainant has failed to demonstrate it owns common law rights for the TEA PARTY PATRIOTS mark and that Respondent has not registered or used the disputed domain names <teapartypatriotspac.org>, <teapartypatriotspac.com>, <teapartypatriotaction.com>, <teapartypatriotaction.org>, <teapartypatriotsaction.com>, and <teapartypatriotsaction.org> in bad faith.
It is my opinion
that the Respondent should prevail in this matter, and I would deny
relief for the reasons explained above.
Hon. Ralph Yachnin,
Panelist
Dated: March 12, 2010
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