Jonah Hunt v. Robert Racansky
Claim Number: FA1211001471550
Complainant is Jonah Hunt (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Robert Racansky (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jonahhunt.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his hknowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2012; the National Arbitration Forum received payment on November 15, 2012.
On November 16, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jonahhunt.com> 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 November 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2012 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 email@example.com. Also on November 16, 2012, 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 December 6, 2012.
On December 20, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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.
Policy ¶ 4(a)(i):
Policy ¶ 4(a)(ii):
Policy ¶ 4(a)(iii):
1. Complainant previously filed a Complaint with the National Arbitration Forum with the case number 1470055. This case was dismissed.
i. Complainant has lied when it stated that there were no other legal proceedings that related to the disputed domain name.
ii. Further, there was a Boulder County Colorado District Court case, Hunt. v. Racansky, file number 2012 CV 110. In that case Complainant’s first claim for relief was “injunctive relief” that sought transfer of the disputed domain name.
2. Respondent has not attempted to hide its identity, contrary to Complainant’s assertions otherwise.
3. Respondent has never made any attempt to force Complainant into a “transfer-for-price negotiations” for the disputed domain name, or prevented Complainant from reflecting his name in a domain name, as evidenced by Complainant’s registration of several domain names bearing his name.
4. Although Complainant classifies Respondent’s claims on the resolving website as “false and misleading,” “misstatements of fact,” and “baseless and untrue,” Complainant cannot refute any of the statements on the resolving website because they are all true.
5. Complainant’s past libel claims have failed in court. The Boulder County District Court found “nothing libelous” about the contents of the disputed domain name and denied Complainant’s request to have the domain name transferred.
6. Since February 14, 2012, the website has served as a medium to make the records of the previous court case accessible to the public, including links to all of the public records documents. Publishing a record of the Hunt v. Racansky case is a legitimate use of the disputed domain name. Because there was no avenue in a civil suit for Respondent, the only justice he could get was to subject himself to a charge of criminal libel so he could expose Complainant, which was his purpose for registering the disputed domain name.
7. Respondent has had no bad faith intent to profit from its registration and use of the disputed domain name.
8. Everything Respondent has stated on its website is true, thus not in bad faith.
9. If the National Arbitration Forum ignores the finding of a public court of law and finds Respondent’s registration of the disputed domain name to be in bad faith, “the NAF will have confirmed that NAF corporate arbitrators are nothing more than pimps, willing to take money from one party to screw over another.”
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.
The Panel notes that Complainant does not own a trademark registration for its alleged JONAH HUNT mark but is attempting to establish its rights in the mark under the common law.
Prior UDRP panels have held that a complainant need not own a trademark registration under Policy ¶ 4(a)(i) if that complainant can establish that its mark has gained secondary meaning in the market. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant, Jonah Hunt, asserts that it is a prominent attorney in the state of Colorado, having received his juris doctorate from the University of Denver College of Law in 2002. Complainant states that its practice focuses on representing home owners associations and property management companies in the Denver metropolitan area. Further, Complainant asserts that it has also taught continuing legal education courses to other attorneys for five years and that Complainant has represented over 300 clients in over 1,000 litigation and transaction matters. Complainant also asserts that it has paid to advertise in printed media using the JONAH HUNT name and mark. See Complainant’s Exhibit L. Complainant also notes that its services are also advertised at his firm’s website located at <ochhoalaw.com>. See Complainant’s Annex N. As a consequence, Complainant argues that it has common law rights in the JONAH HUNT name and mark that he has used in his legal practice since 2002, and Complainant has established secondary meaning in his name through its use of the name in commerce.
The Panel determines that Complainant has established secondary meaning in his personal name. The Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the JONAH HUNT mark. See Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001) (surveying UDRP disputes concerning the use of personal names, the panel found that “where the complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services”); see also Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L Bayless and the RICK BAYLESS mark.”).
Further, Complainant argues that Respondent’s <jonahhunt.com> domain name is identical to Complainant’s JONAH HUNT mark as the addition of the gTLD “.com” is not relevant to a Policy ¶ 4(a)(i) analysis. The Panel notes that the disputed domain name also removes the space from between the terms of the mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel finds that the <jonahhunt.com> domain name is identical to Complainant’s JONAH HUNT mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has not been commonly known by the name “Jonah Hunt” and Respondent has not acquired trademark or service mark rights in Complainant’s marks prior to notice of this dispute. Further, Complainant contends that it has not authorized or otherwise permitted Respondent to use the JONAH HUNT mark.
The Panel notes that the WHOIS information for the <jonahhunt.com> domain name identifies “Robert Racansky” as the registrant. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further argues that Respondent maintains what has come to be known under the UDRP as a “gripe site” or “criticism site.” See Complainant’s Annex P. Complainant contends that the majority view of UDRP panels is that a respondent is not making a legitimate use of a domain name when that respondent uses a complainant’s own trademark in the domain name to divert complainant’s customers to the gripe site. Complainant also contends that the minority view allows a finding that a criticism website is legitimate where the domain name comprises the trademark and a derogatory term such as “sucks,” “terrible,” or “ripoff.” Complainant contends that the Panel should consider the <jonahhunt.com> domain name under the majority view cited above and find that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden now shifts to Respondent to show it does have rights or legitimate interests.
Respondent contends that the content on its resolving website is all true and has been true since the beginning. Respondent argues that it has a legitimate interest in maintaining its website, which Respondent contends now only contains court records from a libel suit between it and Complainant with links to the actual court documents.
The Panel finds that while Respondent may have rights and legitimate interests in maintaining both a complaint website and a website containing court documents that are public record in relation to a lawsuit between Respondent and Complainant, Respondent is not making a legitimate use of a domain name when it uses Complainant’s own trademark in the domain name to divert complainant’s customers to the gripe site.
The Panel agrees with the majority position and finds accordingly. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Baker & Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because the respondent’s <bakeranddaniels.com> domain name merely incorporates the complainant’s trademark, without more, it is not protected by the First Amendment).
Registration and Use in Bad Faith
Complainant argues that panels have in the past found that a respondent’s use of a disputed domain name in a way that attracts visitors for the complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel notes that Complainant has not presented any other arguments or evidence indicating that Respondent is intentionally attempting to attract Internet users to the resolving website for commercial gain and does not explain what form that commercial gain may take.
However, the Panel notes and finds that it is not bound by the bad faith factors that are present in Policy ¶¶ 4(b)(i)–(iv) and may determine bad faith through a totality of the circumstances analysis of the situation at hand. 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).
The Panel notes that Complainant does maintain throughout its Complaint that Respondent is unfairly using the disputed domain name to present Internet users with a website that is critical of Complainant and its services.
The Panel finds that Respondent both registered and used the disputed domain name with the bad faith intent of using Complainant’s mark to present Internet users with a criticism website. Indeed, Respondent has admitted as much when it stated that, “Because there was no avenue in a civil suit for Respondent, the only justice he could get was to subject himself to a charge of criminal libel so he could expose Complainant, which was his purpose for registering the disputed domain name.”
Respondent argues that it did not register the disputed domain name, and has not used the disputed domain name, to commercially gain. On the contrary, Respondent argues that it registered the disputed domain name to post content regarding Complainant’s lack of integrity and outright lying during a court proceeding between Complainant and Respondent, and between Complainant (who was representing another party) and Respondent. Respondent argues that it has the right to post such content and that Complainant has not proven its claims. Respondent further maintains that a District Court judge has already found that the content on the resolving website was not libelous, and the same judge refused a request by Complainant to transfer the disputed domain name or shut down the website.
In assessing ‘bad faith’ for the purpose of the Policy, the motivation of the Respondent is all-important. In this case, the motivation is clear. As the Complainant claims in one part of the Complaint and as the Respondent expressly admits in the Response, the domain name was registered for the purpose of criticizing the Complainant, its business and activities. The Panel accepts that that was the Respondents intention. In short, what the Respondent has done is to select for the domain name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The domain name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website.
The Panel deems Respondent’s behaviour as being in bad faith under Policy ¶ 4(a)(iii). See 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) (stating that 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jonahhunt.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton as Panelist
Dated: December 31, 2012
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