Open Society Institute v. Gil Citro
Claim Number: FA1007001333304
Complainant is Open Society Institute (“Complainant”),
represented by Barry Werbin, of Herrick Feinstein LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <opensociety.org>, registered with Enom, Inc.
The undersigned certify 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.
Hon. Neil Brown, QC, David A. Einhorn, and Mark McCormick as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2010.
On July 2, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <opensociety.org> domain name is registered with Enom, Inc. and that the 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-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2010 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 firstname.lastname@example.org by e-mail. Also on July 7, 2010, 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 July 27, 2010.
Complainant filed an Additional Submission that was received on August 2, 2010.
Respondent filed an Additional Submission that was received on August 9, 2010.
Both Additional Submissions complied with Supplemental Rule 7.
On August 4, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Neil Brown, QC, David A. Einhorn, and Mark McCormick as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that its OPEN SOCIETY INSTITUTE mark with the United States Trademark and Patent Office (“USPTO”) is sufficient to establish its rights in the mark. It also contends that its consistent global usage of the mark has established common law secondary meaning. Complainant asserts that Respondent’s <opensociety.org> domain name is confusingly similar to Complainant’s mark. Complainant also asserts that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and used the domain name in bad faith.
Respondent contends that complainant’s
trademark registration does not establish rights in the OPEN SOCIETY term,
which Respondent contends is generic. He
contends that a survey he took at an outdoor plaza in
C. Additional Submissions
In its Additional Submission, Complainant contends that its USPTO and European trademark registrations eliminated any need to prove secondary meaning and refutes Respondent’s contention that the term OPEN SOCIETY is generic, particularly when considering its use relating to the specific goods and services offered by Complainant. Complainant contends laches is not a defense and that Respondent’s survey evidence is flawed. Complainant contends that Respondent’s bad faith registration and use has been shown because Respondent has authorized the registrar to make commercial use of the domain name, and the registrar has linked the name to sites that mislead Internet users into believing the links are affiliated with Complainant.
In his Additional Submission, Respondent reiterates his initial contention that the OPEN SOCIETY term is generic and states he was unaware of his registrar’s linking of the domain name to sites that Complainant alleges consumers might believe were affiliated with Complainant. He contends bad faith cannot be established through his innocent use of the registrar’s parking services or his willingness to consider a sale of the disputed domain name to Complainant when contacted by Complainant. He repeats his allegation of reverse domain name highjacking.
Complainant has established rights in its OPEN SOCIETY INSTITUTE mark through its trademark registrations. Respondent’s <opensociety.org> domain name is confusingly similar to Complainant’s mark. Respondent has not demonstrated rights or legitimate interests in the disputed domain name. Complainant has not proven that Respondent registered and used the domain name in bad faith. Respondent has not established that Complainant has engaged in reverse domain name highjacking.
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.
Complainant’s trademark registrations of its mark OPEN SOCIETY INSTITUTE are sufficient to establish its rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006). Moreover, removal of the spaces separating the terms of the mark and adding the top-level domain “.org” does not adequately distinguish Respondent’s disputed domain name <opensociety.org> from Complainant’s OPEN SOCIETY INSTITUTE mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (elimination of the space and addition of a gTLD do not avoid similarity). Moreover, removal of the word “Institute” from Complainant’s mark does not adequately distinguish the disputed domain name <opensociety.org> from Complainant’s mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001).
issue under Policy ¶ 4(a)(i) is solely whether
Complainant has rights in the OPEN SOCIETY INSTITUTE mark and whether the
disputed domain name is confusingly similar to the mark. See
David Hall Rare Coins v.
The panel concludes that Complainant’s trademark registration was sufficient to establish its rights in the mark and that Respondent’s disputed domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i).
The domain name registrant is Respondent Gil Citro. His name is not similar to the <opensociety.org> domain name. The record shows that Respondent is not commonly known by the disputed domain name, nor is he authorized by Complainant to use the OPEN SOCIETY INSTITUTE mark. Respondent thus bears the burden to establish his right or legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The record also shows that
Respondent’s <opensociety.org> domain name resolves to a parked website
containing a list of third-party hyperlinks.
The links lead to third-party websites unrelated to Complainant. Respondent alleges that he has not received
any click-through fees from the hyperlinks and that his registrar controls the
parked website. Respondent gave the
registrar permission to use the disputed domain name in order to avoid parking
fees. For purposes of ¶ 4(a)(ii),
Respondent nevertheless is responsible for how his domain name is used. See St. Farm
Mutual Auto. Insr.
main contention is that the terms of the <opensociety.org> domain name are common and generic and
therefore that Respondent has a right to use them in his domain name. Respondent asserts that the term OPEN SOCIETY
has a common dictionary meaning as “a society that allows its members
considerable freedom (as in a democracy).”
The fact that the term may have a generic meaning is not controlling. The words are not generic in the context of
the goods and services offered by Complainant.
This distinction is recognized in Visual
Systems, Inc. v. Development Services Telepathy, Inc., FA1318632 (Nat’l. Arb. Forum June 25, 2010).
When a respondent does not use an alleged generic word or phrase to
describe his own products or business but takes advantage of a complainant’s
trademark rights in a phrase, the respondent’s use is not legitimate.
Because Respondent has not shown that he has rights or legitimate interests in the disputed domain name, Complainant has established that Respondent lacks rights and legitimate interests in the domain name within the meaning of Policy ¶ 4(a)(ii).
Respondent contends that he was unaware of Complainant’s registration of its mark at the time he registered the disputed domain name. In addition, Respondent contends that he was unaware that the registrar had posted links on the website that might lead to confusion of Internet users regarding an affiliation of the links with Complainant.
When Respondent parked the domain name with his registrar, Enom, Inc., he signed an agreement which permitted him to park the domain name without charge in consideration of the registrar’s right to use the domain name for commercial purposes. The registrar has, in fact, used the domain name as a site through which Internet users are linked to commercial offerings for which the registrar receives click-through fees. The record shows that Internet users may be confused into believing that some of the links are affiliated with Complainant. The record does not show that Respondent knew that the registrar was going to use the domain name in that manner or that he intended such use would be made.
Respondent denies that he had actual knowledge of Complainant’s mark at the time he registered the disputed domain name. He alleges that he registered a number of domain names that he believed reflected openness and social progress and did not know of the Open Society Institute or its mark when he registered the <opensociety.org> name. He says he registered the name because he liked the OPEN SOCIETY term and hoped that he would later find a use for it. The record shows that Respondent separately used the word “open” in registering such domain names as <openeconomy.org> <openpolitics.org>, and <openpolicy.org>. This pattern leads credence to Respondent’s assertion that he was unaware of Complainant’s mark at the time of his registration of the <opensociety.org> name.
The record does not show that Respondent himself registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant. Nor does the record show that Respondent registered the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Furthermore, the record does not show that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business or that Respondent himself intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.
Complainant initiated contact with Respondent and inquired whether Respondent was willing to sell the <opensociety.org> domain name to Complainant. The parties’ negotiations ended when Respondent informed Complainant that it would take an amount in six figures to purchase the domain name from him. Because Complainant initiated the exchange regarding purchase of the domain name, the Panel believes that the negotiations are not themselves probative on the issue of whether Respondent registered and used the domain name in bad faith. See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000).
Considering all of the circumstances, the Panel determines that the evidence is insufficient to show that Respondent engaged in any conduct that would constitute bad faith registration and use. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001). The Panel finds that the Complainant has not established that Respondent registered and used the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). The Panel also finds that the record does not support Respondent’s allegation that the Complainant has engaged in reverse domain name highjacking.
Because Complainant failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David A. Einhorn and Mark McCormick,
Separate Decision by Panelist Hon. Neil Brown
Dated: August 24, 2010
SEPARATE DECISION BY THE HONOURABLE NEIL ANTHONY BROWN QC ON THE ISSUES OF IDENTICAL OR CONFUSINGLY SIMILAR AND RIGHT OR LEGITIMATE INTEREST
I agree with the majority that the Complaint fails because it has not been shown that the domain name was registered in bad faith.
However, I am also of the view that the domain name is not confusingly similar to either of the two trademarks relied on by the Complainant and that the Respondent has shown a right or legitimate interest in the domain name.
Accordingly, the Complaint should also fail on those additional two grounds.
Identical or confusingly similar
In its Complaint, the Complainant relied on only one trademark, a registered USPTO trademark for OPEN SOCIETY INSTITUTE. It stated that it also had three other trademarks, being a USPTO trademark for OPEN SOCIETY POLICY CENTER and two EU trademarks for OPEN SOCIETY INSTITUTE and OPEN SOCIETY FOUNDATION, although it did not rely on these three trademarks for the purposes of the first element to be established under the Policy. Nor did the Complainant argue at any time, at least expressly, that it had a common law trademark in OPEN SOCIETY.
Its argument was solely that the disputed domain name was confusingly similar to its first USPTO trademark, OPEN SOCIETY INSTITUTE.
The sole question, therefore, is whether the domain name <opensociety.org> is confusingly similar to the trademark OPEN SOCIETY INSTITUTE. The Complainant argues that it is, although it is difficult to see where in its submissions it explains why this is so or what test should be applied to answer the question.
The test to be applied has two parts. The first part is to ask if the domain name is similar to the trademark. In this case it is similar, for the domain name is made up of two of the three words of the trademark. The second part of the test is whether the similarity is confusingly so. This part of the test is satisfied by asking the further question if the Panel can conclude that an objective bystander, comparing the domain name and the trademark, would reasonably conclude that the “open society” of the domain name was referring to the OPEN SOCIETY INSTITUTE of the trademark and by that means giving rise to confusion between the two.
The real obstacle in the way of finding that an objective bystander would reach that conclusion is that the domain name is referring to a concept or a notion, whereas the trademark is referring to an entity or, more precisely, an institute and one institute in particular. An objective bystander is therefore unlikely to think that the domain name was referring to the Complainant’s institute or to any institute at all and unlikely to be confused into thinking that the one necessarily referred to the other.
Moreover, the concept or notion invoked by the domain name has a generally understood meaning, namely the idea of a society that is not closed or secretive, but open and committed to imparting information, in part by means of freedom of information legislation. The meaning of the domain name is therefore very clear and does not admit of any doubt. The objective bystander would conclude that the domain name was intended to deal with the whole of that broad subject and its theory and practice and not necessarily with the activities of the institute invoked by the trademark.
It should not therefore be surprising to find that panels have on occasions found that domain names invoking a general concept should not necessarily be taken to be referring to a specific entity invoked by a trademark. Thus, in the decision cited by the Respondent and used very effectively in his submission, SportSoft Golf, Inc. v. Sites to Behold Ltd., FA 94976, (Nat. Arb. Forum July 27, 2000) it was held that the domain name <golfsociety.com>, consisting as it did of two generic words, was not confusingly similar to a trademark that invoked the same two generic words and a geographic entity, GOLF SOCIETY OF THE US. The latter clearly referred to an entity or organisation, whereas the former clearly referred to the generic nature of a society interested in golf or the general body or community of golfers.
It should be said in fairness to the Complainant and its legal advisers that it mounted an argument to the effect that its trademark is incontestable. It should therefore be said that this argument is misconceived, as there is no challenge being made to the trademark at all. In UDRP proceedings the duty of the panel is to apply the Policy and the question always remains whether the domain name in issue, whether it is generic or not, is identical or confusingly similar to the trademark relied on. In that task, the Panel is obliged to take into account the true nature and meaning of the words used in the domain name and to do otherwise would be an abrogation of the whole history of applying the Policy as well as ignoring its plain words. For the reasons given above, the conclusion in the present case should be that the domain name is neither identical nor confusingly similar to the trademark relied on.
Right or legitimate interest
Under this element, the essential question is whether the domain name is a generic and/or descriptive expression and, if so, whether the Respondent can rely on that character of the domain name to show that he has a right or legitimate interest in it.
I had the opportunity to express my views on this subject in general in Vanguard Trademark Holdings USA LLC v. Nett Corp., FA 1262162 (Nat. Arb. Forum July 26, 2009) and it is convenient to state here what I said on that occasion.
My view is essentially that Respondent has a legitimate interest in the domain name as it consists entirely of descriptive words and there is no evidence to suggest that it was registered with Complainant’s trademark in mind or that since registration Complainant has been targeted. Indeed, the only evidence on this issue is the evidence of Roy Messer, the President of Respondent, who has declared that he did not register the disputed domain name with Respondent’s trademark in mind. That being so, on the balance of probabilities, the conclusion must be that Respondent has shown a legitimate interest in the domain name. At the very least, in the face of Mr. Messer’s declaration it would be unsafe to conclude that there was no right or legitimate interest in the domain name. These views are consistent with the decisions cited by Respondent, Canadadrugs.com et al. v. ASM Bioventure, FA 568743 (Nat. Ar[b]. Forum Nov. 29, 2005)(“disputed domain name is comprised of common terms and geographic identifiers, “Canada,” and “drug(s)” which are descriptive.”) and Baccus Gate Corp. et al v. CKV et al, D2008-0321 (WIPO May 20, 2008) (Legitimate interest established where domain is registered based on “generic value of the word.”) and the three person panel in the defended matter of Kaleidoscope Imaging, Inc. v. V Entertainment a/k/a Slavik Viner, FA 203207(Nat. Arb. Forum Jan 5, 2004) where the following statement on the relevant principles was made:
Based on the evidence before us, Complainant has failed to establish that Respondent does not have rights or legitimate interests in the Disputed Domain Name. The word KALEIDOSCOPE is a generic English language word with the meaning demonstrated by the dictionary definition cited by Respondent in its submissions. As such, the first to register the word in a domain name can assert rights to that domain. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating, "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”). See also with respect to the generic nature of the term: Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that Respondent did not have rights or legitimate interests in the <filmnet.com> domain name where the disputed domain name was wholly comprised of generic words, even though Complainant is the owner of the FILMNET mark); see also Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a generic domain name, <sweeps.com>, where Respondent used a legitimate locator service (goto.com) in connection with the domain name).
Applying those principles to the present case, it is apparent that the words in the domain name here are both generic and that in combination they are a generic description of a well known concept described above.
The Respondent has made a detailed submission to explain his acquisition and use of the domain name in question and why he was attracted to the name, which was mainly that it reflected an intellectual interest and to rebut the adverse inference the Complainant drew from links that were attached to the parking site to which the domain name resolved. The Respondent advanced an argument based on the criteria set out in the recent decision in Pantaloon Retail India Limited v. RareNames, WIPO D2010-0587 and he argued as follows:
For example, in the recently decided Pantaloon Retail India Limited v. RareNames, WIPO D2010-0587, the panel found that “There is a substantial consensus among panelists that the acquisition and offering for sale of domain names and/or using them to provide links to other sites may well (provided it is not directed at trademark misuse in breach of the Policy) be a legitimate business, a business engaged in not only by Respondent but by other operators who acquire and “warehouse” domain names which they think others might consider valuable.” In this case the Respondent was a company which had registered over 80,000 domains for the specific purpose of selling them. The panel applied a five point test in concluding that the Respondent had a legitimate interest in the domain pantaloons.com. The points were: (i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) the domain name in question is a “dictionary word” or a generic or descriptive phrase; (iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and (v) there is no evidence that the respondent had actual knowledge of the complainant’s mark. The panel concluded that it was not necessary for the Respondent to satisfy all of these criteria to establish a legitimate interest. They specifically found that item (ii) had not been satisfied, given that the Respondent had been involved in numerous UDRP disputes and had been found to have acted in bad faith in some of them. Nonetheless, on the balance of the evidence, given the highly generic nature of the domain, the panel found that the Respondent had established a legitimate interest.
In this case, all the elements are satisfied except (i). I do not claim to be in the business of reselling domains or using them to display advertising. However, to the best of my knowledge (ii) I have not registered domains which are trademarks unless those trademarks are descriptive or generic, and I have never been involved in a UDRP dispute, despite having registered hundreds of domains over a period of 12 years, (iii) the domain name is a dictionary term, (iv) the domain is not identical or confusingly similar to any mark, as discussed in the preceding section, and (v) I had no knowledge whatsoever of the Complainant’s mark at the time I registered the domain nor did the Complainant ever disclose it to me at any time prior to filing his UDRP complaint. Clearly, if it is permissible for a large company to register tens of thousands of generic domain names for the purpose of selling them, even when found to have acted in bad faith at times, then it is equally permissible for an individual who registers a much smaller number of domains and who might from time to time sell one to do so with at least an equal claim of legitimate interest.
Elsewhere in his submission the Respondent states that he has registered other generic domain names to reflect his various intellectual interests and that they include, “… <socialenterprise.org>, <civilliberty.org>, <openeconomy.org>, <openpolitics.org>, and <openpolicy.org>, reflecting my interest in social progress and in particular openness in society Almost 10% of the domains I own begin with the word “open,” reflecting my strong interest in the term for its dictionary meaning. At the time I registered opensociety.org I was unaware of the Complainant or his mark…”
It is true that there were links on the website to which the domain name resolved that the Complainant has used to suggest that it was targeted by the Respondent. The Respondent has explained that this was the doing of his then registrar and that “I did, upon becoming aware of the Complainant’s objections to the content previously displayed, redirect the domain to a Google search on the term “open society,” which brings up the Complainant’s web site among others.”
Considering the totality and the substance of the evidence and submissions, I find that the Respondent’s version of events should be accepted, that it shows not only a plausible, but a logical and credible reason for registering the domain name, that he has shown a legitimate interest in the domain name because of the generic and descriptive nature of the expression used or that, at the very least, it would be unsafe to conclude that he has no right or legitimate interest in the domain name.
Finally it must be said that the Respondent’s legitimate interest in the domain name has been strengthened by several other issues that have arisen in the history of this matter. Those matters are: (a) the Complainant has waited 8 years from the registration of the domain name to bring the Complaint, an unsatisfactorily long time; (b) the Complainant offered to buy the domain name from the Respondent, implying that the Respondent had rights in the name he was being asked to sell; (c) it has allowed another domain name in the UK system,<open-society.co.uk>, to remain registered and unchallenged; and (d) it appears to have had limited interest in using an “open society” domain name, as its own domain name, <opensocietyinstitute.org> resolves to www.soros.com, after its distinguished founder.
For these reasons, I would find that the Respondent has a right or legitimate interest in the domain name.
The Hon. Neil Anthony Brown QC
August 24, 2010
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