Invention Technologies, Inc. v. Alliance for
American Innovation c/o Ron Riley
Claim Number: FA0607000758833
PARTIES
Complainant is Invention Technologies, Inc. (“Complainant”), represented by Gary W Pollack, One S.E. 3rd Street, Suite 1260, Miami, FL 33131. Respondent is Alliance for American Innovation c/o Ron Riley (“Respondent”), 1323 W. Cook Rd., Grand Blanc, MI 48439, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <inventtech.net> and <inventtech.info>, registered with Enom, Inc.
PANEL
The undersigned Daniel B. Banks, Jr., as panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 26, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 31, 2006.
On July 27, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <inventtech.net>
and <inventtech.info> domain names are registered with Enom, Inc.
and that the Respondent is the current registrant of the names. 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 August 4, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 24, 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@inventtech.net and
postmaster@inventtech.info by e-mail.
A timely Response was received and determined to be complete on September
5, 2006.
On September 12, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has used and continues to use the service mark
“Invent-Tech,” which is assigned Registration Number 2,911,254 by the United
States Patent and Trademark Office on December 14, 2004. Its first use in commerce was on January 1,
1997. Complainant is generally known
and advertises itself as Invent-Tech but is also known by the unhyphenated name
Invent Tech. Complainant also has
registered and active websites at <invent-tech.net>, <invent-tech.com>,
<invent-tech.org>, <invent-tech.biz>, <invent-tech.info>,
<invent-tech.us>, <invent-tech.cc>, <invent-tech.tv> and at
<inventtech.org>. For nearly ten
years, Complainant has advertised heavily on national television, radio, in
print, and on the Internet. It has
exhibited at dozens of major international trade show events, holds many
corporate memberships and references and has carefully cultivated the
Invent-Tech mark domestically and worldwide.
Respondent, through the domain names <inventtech.net> and
<inventtech.info> is using a mark which is identical or confusingly
similar to the Complainant’s registered service mark. The banner at the top of Respondent’s infringing web page clearly
states, “Special Page for Invent-Tech or Invent Tech.” Thus, Respondent concedes that Invent-Tech
is generally known as Invent Tech.
Respondent has no legitimate interests with respect to the disputed
domain names. It has no intellectual
property rights or trademark/service mark rights in the name. The disputed domain names do not convey that
they are in any way associated with Respondent, Alliance for American
Innovation. Respondent has never been
commonly known by the domain names and has not acquired any trademark or
service mark rights in the names. It
has never made a prior use of the domain names in connection with the bona fide
offering of any goods or services.
Respondent has not and is not making a legitimate noncommercial or fair
use of the domain names. Upon browsing
to either <inventtech.net> or <inventtech.info>, a user is
redirected to a web page that, under the guise of informing users of the
American Inventors Protection Act of 1999, contains a hyperlink to the website
of Washington, DC intellectual property law firm of Wenderoth, Lind &
Ponack, LLP (a for profit LLP). The
webpage also contains a link to another intellectual property law firm in
upstate New York under the guise of “another information source”: Brown &
Michaels, PC (a for profit professional corporation). Underneath a title in large font for Brown & Michaels, beside
a banner providing links for Brown & Michaels services, and printed above
all relevant information for Brown & Michaels, this website contains
information disparaging many companies including the Complainant. While cautioning the user against the
services of the Complainant, it also advertises the use of The Innovation
Institute, another company that competes with Complainant. Therefore, Respondent’s use cannot be
noncommercial due to its advertising for other for profit entities. By connecting its website to the commercial
operations of others, Respondent is using the infringing domain names in
connection with an offering of goods or services.
The disputed domain names have been registered and used in bad faith by
diverting customers to a website that could harm the goodwill of the marks and
through posting hyperlinks to competitors of Invent-Tech using the infringing
domain names. Originally, the domain
name <inventtech.net>was registered by the Washington, DC law firm
Greenberg & Lieberman, LLC. After
Complainant informed them of its infringing use, the law firm offered, in bad
faith, to sell this infringing domain name to Complainant for “a couple thousand
dollars.” After Complainant refused to
purchase, Greenberg & Lieberman “donated” the domain to the
Respondent. Respondent is currently
using this domain name to redirect users to its own web page devoted to
disparaging Complainant in an attempt to divert potential and current customers
from using the services of Complainant while at the same time advertising the
services of other competitors in the same field of business. Thus, the collusion of the Respondent and
Greenberg & Lieberman to extort the payment of “a couple thousand dollars”
from Complainant shows the bad faith of the Respondent to financially gain from
said domain name.
B. Respondent
Alliance for American Innovation was founded by Ronald J. Riley who is
a well known advocate representing the interests of individual and small business
inventors. InventorEd Inc. is a 501
(c)3 nonprofit whose mission is to turn aspiring inventors into
entrepreneurs. The Alliance for
American Innovation exists as a vehicle to educate policy makers. The Professional Inventors Alliance is a
trade association of commercially successful inventors. Collectively, our mission is to create jobs
and tax base via inventors and their inventions. None of the organizations sell any products or services. All are operated on business models similar
to Consumers Union and Public Citizen and are totally dependent on donations
for operating revenue. We select links
based solely by the merits of the material contained on the linked page. We have no paid advertising and routinely
turn down requests to host such material.
Invention promotional fraud is an annual four to five hundred million
dollar and growing industry which we fight via all three of the referenced
entities. At best, invention promotion
services such as those offered by Invent-Tech are useless and at worse they are
outright frauds. InventorEd takes the
lead in collecting information about companies who aggressively market
invention promotion services. We
publish compiled information on the web at www.InventorEd.org/caution via a
number of lists from the watch list to the extreme caution list.
The most egregious companies are given mini-sections within the caution
section. Complainant has long had a
mini-section devoted to the dissemination of information about their
activities. Complainant tries to
characterize the linked material on patent practitioner’s web sites as an
attempt to divert business to those web sites.
But the fact of the matter is that they also acknowledge that those
linked pages contained warnings to consumers about Invent-Tech by patent
practitioners who are by law credentialed experts on patent related matters
while Complainant clearly lacks the benefit of such expertise.
Invent Tech is a weak mark because it was in use as Inventech long
before they adopted the name. It is
also weak because it is descriptive.
Complainant claims that the domain names have been registered in bad
faith yet they fail to disclose our letter to them dated 6-5-06 which clearly
stated that the domains had been donated to us and our intent to use those
domains to criticize the Complainants business practices. Greenberg & Lieberman, the previous
domain holders, donated the referenced domains to us specifically so that those
domains could be used to link to our caution section. We do not see such donations as being in bad faith. We are a nonprofit who seeks to educate
inventors and help them avoid a multitude of pitfalls which cause many
inventors to fail. Complainant must
show both bad faith registration and use.
It has not offered any evidence to support either element. It is unknown why Greenberg & Lieberman
originally registered the domain names more than two years age however, since
they are a law firm which specializes in patent law, it is likely that they
were using the name for its common meaning of invention technology. InventorED accepted the gift of the domains
for the purpose of showing more people the truth about Complainant and their
acts. The domains all point to the
section of the website that is a protest against Complainant. The use of a domain name as a protest site
has long been accepted as a good faith use, especially where the site was
limited to the criticism of the complainant as in this case. It is impossible for anyone to be confused
by the domain as the webpage specifically identifies that it is an inventor
promoter caution list and that the page is specially designed to speak about
Complainant and their horrific acts of alleged fraud toward the public.
FINDINGS
1 – The disputed domain names are confusingly
similar to Complainant’s service mark.
2 – The Respondent has demonstrated rights or
legitimate interests in the disputed domain names.
3 – The disputed domain names were not
registered or used in 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;
(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 does not dispute that Complainant
holds a USPTO registration of the INVENT-TECH mark nor does Respondent dispute
that the disputed domain names are confusingly similar to Complainant’s mark
The
panel finds that Respondent has demonstrated rights or legitimate interests in
the disputed domain names. Respondent
is making a legitimate noncommercial or fair use of the disputed domain names
by using them in connection with a complaint website. Respondent refutes Complainant’s assertion that the links to law
firms are advertisements, stating that it has received no payment for posting
the links and that the links are part of Respondent’s mission to protect
inventors from scams and fraud.
Respondent concedes that it is not commonly known by the disputed domain
name, but asserts that the use of the disputed domain names is necessary in
connection with the content of its website, which includes a critique of
Complainant’s business practices. The
panel finds that the use of the disputed domain names to link to a complaint
website is a legitimate use pursuant to Policy ¶ 4(c)(iii). For example, in Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6,
2000), the panel found that the respondent had free speech rights and
legitimate First Amendment interests in the domain name
<bridgestone-firestone.net> where the respondent linked the domain name
to a “complaint” website about the complainant’s products. Similarly, in Legal & Gen. Group Plc
v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002), the panel held that, “[T]he
goals of the Policy are limited and do not extend to insulating trademark
holders from contrary and critical views when such views are legitimately
expressed without an intention for commercial gain.” Further, the panel in, N. Am. Wilderness Recovery, Inc. v.
Citizens With Common Sense, FA 97058 (Nat. Arb. Forum July 1, 2001), argued
that, complaint sites using a complainant’s mark may be fair use under certain
circumstances, for example, the use of a noncommercial suffix such as ‘.org’ or
‘.net’ may be sufficient to differentiate when criticizing a commercial
enterprise. The Panel finds that
Respondent is using the disputed domain names as contemplated by Policy ¶
4(c)(iii) in connection with a legitimate noncommercial or fair use by
operating a complaint website.
Respondent
reiterates that it is using the disputed domain names in connection with a
legitimate complaint website and thus, has not acted in bad faith. Respondent further asserts that it alerted
Complaint of its intention to use the disputed domain names in connection with
a website criticizing Complainant and that this domain name dispute was brought
only after that notification. The panel
finds that the use of the disputed domain names is in good faith and not in
violation of Policy ¶ 4(a)(iii).
Specifically, even if the disputed domain names are confusingly similar
to Complainant’s mark, the content of Respondent’s website is such that
Internet users should not be confused as to the source or affiliation of that
content, and that content has sufficient value that it should be allowed to
persist. The panel in Legal
& Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002), found
that initial interest confusion was displaced by the criticism content at the
respondent's website and that such a "low level of confusion is . . .
a price worth paying to preserve the free exchange of ideas via the
Internet." In Elm Grove Dodge
Chrysler Jeep, Inc. v. Schedule Star, FA 352423 (Nat. Arb. Forum Dec. 27,
2004), the panel came to a similar conclusion, finding no bad faith
registration or use where the respondent “only registered the disputed domain
names to voice concerns and complaints about Complainant” and “[n]o one reading
the web site would be confused as to sponsorship.” The Panel finds that Respondent is using the disputed domain
names in connection with a complaint website that is a legitimate exercise of
free speech, and is not evidence of bad faith registration or use pursuant to
Policy ¶¶ 4(b)(iii) or (iv).
DECISION
As Complainant has not established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Daniel B. Banks, Jr., Panelist
Dated: September 25, 2006
National
Arbitration Forum