Ameridream, Incorporated v. Christopher
Russell
Claim Number: FA0604000677782
PARTIES
Complainant is Ameridream, Incorporated (“Complainant”), represented by Dennis B. Lisbon, of Ameridream, Incorporated, 200 Professional Drive, Suite 400, Gaithersburg, MD 20879. Respondent is Christopher Russell (“Respondent”), 18403 Woodfield Rd, Suite E, Gaithersburg, MD 20879.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ameridreamprogram.com>,
registered with Austrian.
PANEL
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.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 12, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 14, 2006.
On April 12, 2006, Austrian confirmed by e-mail to the National Arbitration
Forum that the <ameridreamprogram.com>
domain name is registered with Austrian and that the Respondent is the current
registrant of the name. Austrian has
verified that Respondent is bound by the Austrian 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 April 20, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 20, 2006 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@ameridreamprogram.com by e-mail.
A timely Response was received and determined to be complete on May 5,
2006.
An Additional Submission from the Complainant was received on May 9,
2006.
On May 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jacques A. Léger, Q.C. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
asserts that it promotes home ownership by providing and administering a
downpayment gift assistance program; it maintains a website at the domain name
<www.ameridream.org>, to provide buyers and lenders with information on
the program offered. Its mark AMERIDREAM is registered with the United States
Patent and Trademark Office (hereinafter the USPTO); Complainant alleges that
home purchasers and lenders rely on the AMERIDREAM mark and the above mentioned
website to obtain information on Complainant’ services.
Complainant further contends that Respondent registered the disputed
domain name on March 31, 2006, although the WHOIS refers to registration on
March 29, 2006, and that said domain name revolves to a website that contains
links to other downpayment assistance programs and resources.
Furthermore, Complainant alleges that the domain name in dispute is
legally equivalent and confusingly similar to its mark, if not nearly
identical. The dominant portion of said domain name is AMERIDREAM and the
suffix “program” added does not prevent the trademark from being nearly
identical, a common descriptive term being insufficient to avoid a likelihood
of confusion between the domain and the mark, nor does the addition of a top
level domain (.com) to the mark prevent the domain in dispute to be confusingly
similar to the Complainant’s mark.
Complainant further asserts that Respondent has no rights or legitimate
interests in the domain name in dispute, as it is not known by the name
AMERIDREAM, nor any current connection or affiliation with Complainant. Complainant further contends that it was
originally founded by Respondent Christopher Russell along with Ryan Hill, both
having signed Non-Competition Agreements that expired on March 30, 2006, thus
one day after the domain names (below mentioned) were registered; in
Complainant’s view, this is evidence that the Respondent intended to use the
disputed domain name to compete or disparage Complainant.
Finally, Complainant contends that Respondent was one of the founders
of the Complainant, and thus intimately familiar with Complainant’ services and
reputation, represented by the AMERIDREAM mark; the use of this mark in
connection with the disputed domain name is intended to harass Complainant, to
cause damage to its reputation and to create confusion, and indicates bad
faith.
Complainant also alleges that the use of its trademark in its entirety
with the addition of a descriptive word is an indication to trade on the
goodwill of Complainant, and is also an indication of bad faith.
B. Respondent
Respondent asserts that the addition of a distinctive word is
dissimilar enough for the USPTO to believe it does not cause confusion, as the
mark AMERIDREAM was filed on October 30, 2001, and the mark AMERIDREAM
ENTERPRISES was filed on January 20, 1999, and is still in use by another
party. Thus, by the addition of the distinctive word “program”, the domain name
in dispute is neither identical nor confusing with Complainant’s mark.
Respondent alleges that it has created a protest site by adding the
word “fuck”, in addition to other domains adding the word “program”, to
communicate Complainant’s mishandling of public benefit monies. According to
Respondent’s contentions, the use of a word loaded with criticism would make it
clear to visitors that they have not reached the official AMERIDREAM website,
and that not even an inexperienced Internet user would consider the disputed
domain name and the mark confusingly similar.
Respondent contends that ICANN Policy provides as a complete defense
for the Registrant’s continued use of the domain by stating “Respondent is
making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.” Respondent’s site was established on
April 29, 2006, and has been maintained as a legitimate protest site directed
towards the Complainant.
Respondent asserts that he is one of the founders and former CEO of
Complainant, and is dedicated to providing information to the public with the
hope that it will be able to provide public pressure to better regulate rogue
exempt organizations. Respondent
maintains several domains: <fuckameridream.com>,
<fuckameridream.net>, <fuckameridream.org>,
<ameridreamprogram.net> and <ameridreamprogram.org>, in addition to
the one disputed in this case. All of these sites are directed to the protest
site “Fuck Ameridream.”
Respondent also argues that it operates the <ameridreamprogram.com>
domain name with a legitimate First Amendment purpose of expressing its views
about Complainant. It further notes that the domain is an information site and
that Respondent does not gain any commercial advantage from its use, nor does
it operate the site with the purpose of competing or disparaging Complainant’s
service mark.
Furthermore, Respondent argues that the Complaint was filed just ten
days after the disputed domain name was acquired, and thus that it did not have
adequate time to develop and execute a protest site that was the intended use.
Respondent states that within thirty days of acquiring the disputed domain
name, it has made legitimate use of it, dozens of members of the public having
visited the site and several participated in the discussions.
Finally, Respondent asserts that Complainant must show both bad faith
in registration and use of the domain name in dispute, and that it has not met
its burden. Registration was done in good faith on March 31, 2006, with the
intention of launching a protest site, to convince AmeriDream to adopt fiscally
responsible policies in the use of public benefit funds. The protest site is
damaging to AmeriDream as it informs the public of the gross mismanagement and
squandering of public monies; Respondent has never wished to compete or
economically harm AmeriDream, and Complainant’s only evidence of bad faith is
the fact that the Respondent was formerly employed by Complainant.
C. Additional Submissions
Complainant submits that subsequent to initiating this proceeding,
Respondent changed the content of its website in order to feature a discussion
on said proceeding; however, Respondent’s communications to Complainant don’t
reflect the intent to maintain a protest site but rather the intent to maintain
the ownership of the domain name in dispute.
Complainant also asserts that Respondent is trying to demonstrate that
because there is a third-party trademark registration also including the word
AMERIDREAM, it must follow that the combination with any other name is
sufficient to avoid the likelihood of confusion. Complainant argues that the services offered by the third-party
company are unrelated to its services, while Respondent is offering a
competitive program and disrupting Complainant’s business; furthermore, the
presence of other potential infringers does not vitiate the confusion caused by
Respondent’s use of the disputed domain name.
The addition of the generic term “program” does not create a new mark,
according to Complainant, nor does adding “suck,” or as in this particular case
“fuck,” to a mark prevent the domain name from being confusingly similar.
Complainant alleges that prior to the proceedings, Respondent
demonstrated the intention to compete with or to disrupt Complainant’s
business; Respondent’s direct communications with Complainant demonstrate the
launching of a downpayment assistance program from Respondent at the domain
name in dispute, and thus the offering of a competing program.
Furthermore, another email subsequent to the proceedings was sent to
Tom Carmody, the former Chairman of the Complainant’s Board, in which
Respondent indicated that it was willing to sell the domain names, and
suggested to Complainant to “cut the losses now”. Complainant asserts that
Respondent’s attempt to profit from the sale of the disputed domain name, in
excess of its value, is indicative of bad faith.
In response to Respondent’s statements to the effect that bad faith in
both registration and use of the domain name in dispute, Complainant asserts
that Respondent sent the information that it had the intent to offer a
competing downpayment assistance program, and further sought payment in
exchange for the transfer of the domain name. Respondent’s admonition to “cut
the losses” is, according to Complainant, a threat to continue to harass
Complainant.
Finally, Respondent alleged that it had insufficient time to prepare a
protest site; in Response to that statement, Complainant contends that
Respondent was able to change promptly the content of the website following the
initiation of the proceeding.
FINDINGS
Complainant is the owner of
registered trademark Number 2,578,724,
issued June 11, 2002 (AMERIDREAM), and the domain name in dispute, <ameridreamprogram.com>, registered on March 29, 2006, is confusingly similar with said trademark.
Complainant and Respondent are not currently
affiliated in any way; Respondent registered various domain names, in addition
to the one in dispute, in order to protest against Complainant’s policies on
managing the public monies, and this is pointing away from legitimate rights or
interest in the domain name in dispute.
The use of the domain name by Respondent
leads, for reasons stated below, with respect to evidence adduced and all
surrounding circumstances, to an indication of bad faith.
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; and
(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 has argued that the disputed
domain name, <ameridreamprogram.com>, registered on March 30, 2006 in the name of Christopher Russell,
is confusingly similar to its mark AMERIDREAM, filed with the United States
Patent and Trademark Office (“USPTO”) on October 30, 2001 (Reg. No. 2,578,724
issued June 11, 2002).
As per this registration, Complainant has
established rights in the mark pursuant to Policy ¶4(a)(i). As the decisions Innomed Techs. Inc. v.
DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) and U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) have
recognized: “Once the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICANN panel is not empowered to nor should it disturb that determination”.
The Panel agrees with these decisions; the
issuance of a Registration certificate by the empowered US federal authority on
trademark matters is a scheme to regulate trade and commerce in relation to
trademarks, and unless registration is shown invalid, it gives its owner the
exclusive right to the use of said trademarks in respect of those wares or
services for which it is registered.
On that basis, Complainant has satisfied its
burden on the first element.
Complainant’s contentions are to the effect
that merely adding a commonly used term, as in the word “program” to the mark
AMERIDREAM, does not vitiate the possibility of confusion. The Panel finds that
the suffix added to the disputed domain name does not sufficiently distinguish
Complainant’s mark from the domain name in dispute, and neither does the addition
of the top level name “.com.” As in Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), the Panel
agrees that “neither the addition of an ordinary descriptive word… nor the
suffix “.com” detract from the overall impression of the dominant part of the
name.”
Consequently, the Panel finds in favor of
Complainant on the first element.
As to the second element, 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.
Complainant alleges that Respondent is not
known by the name AMERIDREAM, nor does it have any current connection or
affiliation with the Complainant, who was originally founded by Respondent
Christopher Russell, along with Ryan Hill. Apart from the WHOIS indicating
“Christopher Russell” as the registrant of the disputed domain name, there is
no other evidence that Respondent is commonly known by the <ameridreamprogram.com>
domain name.
Furthermore, Complainant contends that
Respondent is using the disputed domain name to operate a website featuring
other downpayment assistance programs links that compete with the Complainant’s
services. As set forth in Exhibit 6 submitted by Complainant, all the websites
registered by Respondent are linked to a webpage titled “Owners Alliance”, and
is defined as “The Association for Real Estate Owners”, providing negotiation
for rebates and discounts. The Panel finds this evidence as indicative of an
intent to compete with Complainant’s services.
Respondent also signed a Non-Competition Agreement which expired on March 30, 2006, and registered the domain name in dispute on March 29, 2006; the Complainant submits that this indicates the intent to disparage the Complainant. The Panel agrees with this view, and adds that the proximity between said registration and termination of the Non-Competition Agreement leads to the inference, at least in Complainant’s mind, that such registration could potentially be in competition with Complainant’s activities. According to ICANN Policy ¶ 4(c)(i), this does not constitute a bona fide offering of goods or services, and neither is a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The disputed domain
name, <ameridreamprogram.com>, now resolves, as evidenced by Respondent,
to a protest site named “Fuck AmeriDream”, protesting Complainant’s business
practices. The Panel finds that
maintaining this protest site containing criticism does not give Respondent
rights or legitimate interests in the disputed domain name, despite the
Respondent’s argument that the U.S. Constitution’s First Amendment provides the
liberty of expressing its views. As
decided in E. & J. Gallo Winery c. Hanna Law Firm, D2000-0615 (WIPO
Aug. 3, 2000), “establishing a legitimate free speech/complaint site does not
give rights to use a famous mark in its entirety”.
In conclusion, on balance, the Panel finds that Complainant has satisfactorily met its burden on the second element, and finds Respondent having no rights or legitimate interests in the domain name in dispute.
Complainant maintains that Respondent has registered and is using the <ameridreamprogram.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users seeking Complainant’s downpayment assistance program to a website providing links to other websites offering competing services; furthermore, it contains that the domain names were registered primarily in order to disrupt Complainant’s business.
It is most of the time quite
difficult, if not impossible, to actually show bad faith, at the time of
registration and use, with concrete evidence. While bad faith cannot be
presumed, once Complainant has presented some evidence pointing in that
direction, it is then incumbent upon Respondent to either respond or explain
why its conduct should not be assimilated to bad faith. The Panel’s understanding of the
Policy is that although the initial burden to prove Respondent’s bad faith in
the registration and the use of the disputed domain name relies squarely on the
shoulders of Complainant, such obligation is only to make out a prima facie
case, and once it has done so, it is then incumbent upon Respondent to either
justify or explain its business conduct (if not to demonstrate the
contrary). As stated in Old
Sturbridge Inc. v S.C.I. Management Inc., FA 96461 (Mar. 1, 2001), “The
burden of proof is shifted to a Respondent only when the complaint and
supporting evidence demonstrate to the Panel that Complainant is entitled to
relief.” Failure to do so will, in some
circumstances, enable the Panel to draw a negative inference.
In the present case, the registration by
Respondent of several websites containing a word loaded with criticism, such as
“fuck”, is, from Respondent’s own admission, intended to launch a protest
website, in order to inform the public of the “gross mismanagement and
squandering of public monies” by Complainant.
Respondent is the founder and former CEO of
Complainant; he has signed a Non-Competition Agreement, which terminated one
day after the registration of the domain names. The Response states that the “only” evidence of Complainant’s bad
faith is the “fact that Respondent was formerly employed by Complainant; the
Response also says that the protest site is “damaging to AmeriDream as it
informs the public of the gross mismanagement (…)”. The Panel infers from this admission that Respondent clearly
knows that the registration of a various domain names, including the disputed
one, adding the prefix “fuck” or the suffix “program”, and all leading to the
website “Fuck AmeriDream” is damaging to Complainant. Had there still been a doubt, the fact that Respondent waited
until the expiry of its Non-Competition Agreement clause is also an indication
that, at least from its perspective, there might be a doubt as to bad faith of
so doing.
Furthermore, evidence submitted by
Respondent, showing the homepage of their “Fuck AmeriDream” website, is an
indication of bad faith, in the Panel’s view, as the Respondent writes “Just
ten days after we bought the domains for this site, AmeriDream spent thousands
filing a complaint with the Internet gods, ICANN. We offered to let them save
their money and just buy the domains, for what we have in them”.
ICANN, at Policy ¶ 4(b)(i), considers that certain circumstances present are evidence of registration and use of a domain name in bad faith, of which:
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant (…)”
If this wasn’t enough, the Additional
Submission’s evidence submitted by the Complainant point out to the fact that
Respondent is trying to benefit from the sale of the disputed domain name in
excess of its value. The email dated April 10, 2006, from
ryanandchris@fuckameridream.org, and addressed to Tom Carmody, currently a
consultant with Complainant, reads:
“Tom,
You can do much better than this, I am truly
disappointed. You could have bought the names from us for the six fucking grand
you had to spend just filing your stupid complaint!”
(…)
As Ryan and I are reasonable people, we are now willing to sell the names for
$5000 each. Especially since you’ve already spent $20k plus on this, cut your
losses now.”
The Panel infers from this Exhibit that Respondent was, before the
initiation of the proceedings, trying to sell the domain names it registered to
Complainant, and also after the Complaint was filed, thus contravening ICANN
Policy ¶ 4(b)(i).
In light
of these conclusions, the Panel’s finds that, on balance, Complainant has met
its initial burden in regards to the third element, and that Respondent has
failed to adequately rebut it, as the nature of its usage points out to bad
faith use. The Panel finds that based on the totality of circumstances and
evidence submitted, Respondent’s registration and use of the disputed domain
name is indicative of bad faith under ICANN Policy ¶ 4(a)(iii).
DECISION
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 <ameridreamprogram.com>
domain name be TRANSFERRED from Respondent to Complainant.
Jacques A. Léger, Q.C.,
Panelist
Dated: May 24, 2006
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