Jenny Solursh v. American
European Marketing
Claim Number: FA0612000864749
PARTIES
Complainant is Jenny Solursh (“Complainant”). Respondent is American European Marketing (“Respondent”), represented by Anthony
J. DeGidio, of Fraser, Martin & Miller
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jennysolursh.com> and <jennysolurshsucks.com>,
registered with Domainbank.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Steven L. Schwartz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 12, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 12, 2006.
On December 12, 2006, Domainbank confirmed by e-mail to the National
Arbitration Forum that the <jennysolursh.com> and <jennysolurshsucks.com>
domain names are registered with Domainbank
and that the Respondent is the current registrant of the name. Domainbank
has verified that Respondent is bound by the Domainbank
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 December 19, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 8, 2007 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@jennysolursh.com and
postmaster@jennysolurshsucks.com> by e-mail.
A timely Response was received and determined to be complete on December 21, 2006.
On December 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Steven L. Schwartz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that the disputed domain names <jennysolurshsucks.com> and <jennysolursh.com> contain her personal name and that she would
like to have her domain name so she can have her own website. Complainant states that the disputed domains
are too confusing for people that are looking up her name in Google. She also states that the only information
posted at the disputed domain sites are negative, offensive and incorrect comments
about her and her business activities.
B. Respondent
Respondent answers the Complaint stating that the disputed domain
names are directed to web sites where Respondent criticizes Complainant’s
business practices, and which allege those practices are
dishonest and criminal. Respondent contends
that this use constitutes legitimate noncommercial use and fair use, free
speech and comment.
Respondent is in the business of operating publishing and marketing
sites and its associated companies' online casinos. Complainant is the founder of Cryptologic,
Inc. (“Cryptologic”), a company that provides software and services for the
online gaming industry. In early 1999,
Respondent paid Cryptologic US $100,000.00 to license Cryptologic’s casino
software, e-cash processing, and customer support services. Respondent
continues that the software does not work and that defects have cost it
substantial sums of money. Respondent alleges that described
on its web sites are Complainant’s part in a criminal enterprise that
misrepresented the quality of its services and conspired to steal its
customers, causing millions of dollars in lost profits and damages. Respondent previously brought a lawsuit
against Complainant’s organization in Canadian courts associated with Complainant’s
alleged misdeeds. Respondent has alleged
that Complainant’s connection to criminal activities is widely reported in the
press, and parties other than Respondent have brought legal action against
Complainant.
It is also contended that Complainant fails to
allege trademark rights to any of the terms incorporated in the disputed
domains, nor does she allege that any of the terms are trademarks. The only allegation is that the domains
contain the Complainant’s personal name.
According to Respondent, the Complaint is also flawed because
Complainant fails to properly allege and prove that Respondent lacks a
legitimate interest in the disputed domains, merely alleging the sites have
offensive content but are the kind of comments that would be found at a protest
site.
Complainant states Mrs. Solursh is not being deprived of any opportunity
to use her name or to have her own website as there are numerous variations of
her name that are free to register especially under the .ca TLD. Mrs. Solursh also has registered her domain
name <jennysolursh.net>.
FINDINGS
The panel finds that Complainant has not
offered evidence to establish either a trademark registration or common law
trademark rights to her name. It is
further found that Respondent has legitimate interests in the domain name and
is using the disputed domain in noncommercial and fair use in the exercise of
free speech and comment. The Panel finds
that the domain has not been registered 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 alleges that Complainant has failed to establish common law rights in the JENNY SOLURSH mark, because Complainant has provided no evidence of having common law rights in the mark. Respondent claims that Complainant already owns the <jennysolursh.net> domain name registration and is free to register any domain name under the “.ca” country-code top-level domain name registry. The Panel concludes that no evidence has been offered to support a claim that Complainant’s JENNY SOLURSH mark has acquired secondary meaning sufficient for Complainant to establish common law rights in the mark in accordance with Policy ¶ 4(a)(i). See Brinks Servs. v. Holt, FA 324699 (Nat. Arb. Forum Nov. 4, 2004) (finding that the complainant did not have standing to bring a complaint under the Policy because the complainant did not provide any evidence that it had valid trademark registrations for the mark or common law rights in the mark, and the complainant did not even suggest how long it had used the mark or identified what services were connected with the mark); see also Retail Indus. Leaders Assoc., Inc. v. R.I.L.A., FA 347841 (Nat. Arb. Forum Dec. 20, 2004) (“Complainant neither asserted common law rights in the RILA service mark nor supplied evidence that it has acquired common law rights in the mark. Therefore, the Panel finds that Complainant failed to establish common law rights in the RILA mark; therefore, Complainant lacks standing under the Policy.”); see also Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services”); see also Turner v. Fahmi, D2002-0251 (WIPO Jul. 4, 2002) (“None of these facts amounts to evidence that the name ‘Ted Turner’ is a trademark or service mark, so that Mr. Turner has not satisfied Paragraph 4(a)(i) of the Policy.”).
The Panel finds that
Respondent’s <jennysolurshsucks.com> domain name is not
confusingly similar to Complainant’s mark, because by adding the term “sucks,”
Respondent has sufficiently distinguished the disputed domain name from the
mark under Policy ¶ 4(a)(i). See Caixa d’Estalvis y Pensions de
Barcelona ("La Caixa") v. Namezero.com, D2001-0360 (WIPO May 3,
2001) (finding “[t]he general
principle taught by precedents seems to be that, when a –SUCKS domain name has
been registered for the main purpose of making money, it has been registered in
bad faith, while when the purpose was really to provide criticism, political or
otherwise, a finding of bad faith would not be appropriate”); see also
Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (finding
that common sense and a reading of the plain language of the Policy support the
view that a domain name combining a trademark with the word “sucks” or other
language clearly indicates that the domain name is not affiliated with the
trademark owner and therefore <lockheedmartinsucks.com> and
<lockheedsucks.com> cannot be considered confusingly similar to LOCKHEED
MARTIN).
The Panel decides that Complainant has failed to
establish a prima facie case in support of its allegations that
Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See The Workshop Way, Inc. v.
Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name); see also Digital Interactive
Systems Corp. v. W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding
that the complainant failed to establish a prima facie case against the
respondent because the respondent provided sufficient evidence to convince the
panel that it was using the disputed domain name for a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i)).
Respondent alleges that even if Complainant has
rights in the JENNY SOLURSH mark under Policy ¶ 4(a)(i),
Respondent has rights or legitimate interests in the disputed domain names
because it is using the domain names “for speech and commentary based upon
legitimate gripes he has with the organization Complainant is involved
with.” The Panel finds that Respondent’s
use of the disputed domain names to operate a complaint site is a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (“Respondent’s use of the Domain Name to
designate a website for criticism and commentary about the Complainants
constitutes legitimate noncommercial use and fair use within the meaning of the
Policy.”); see also Britannia Bldg. Soc'y v.
Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (finding
legitimate interests in the respondent's favor because "[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"); see also CryptoLogic, Inc. v.
Internet Billions Domains Inc., FA 318925 (Nat. Arb. Forum Nov. 5, 2004); see
also Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey,
D2000-1104 (WIPO Nov. 23, 2000).
The Panel holds that Respondent has
rights or legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(a)(ii), and that
Respondent did not register or use the disputed domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See
Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (holding
that it is not necessary for the panel to make a finding of bad faith under
Policy ¶ 4(a)(iii) where the respondent has sufficiently established its rights
or legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see
also Lockheed Martin Corp. v. The
Skunkworx Custom Cycle, D2004-0824
(WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use
was moot once the panel found the respondent had rights or legitimate interests
in the disputed domain name).
Respondent argues that it has not offered to sell the domain names, prevented Complainant from reflecting its name in the domain names, disrupted Complainant’s business, or deliberately attempted to divert Internet users for commercial gain.
Conversely, Respondent argues that it is using the disputed domain names to refer to Complainant’s business practices and that it has a right to free speech. Consequently, the Panel finds that Respondent has not registered or used the disputed domain names in bad faith under Policy ¶ 4(b). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith use, even though the respondent’s ownership and purported use of the domain name frustrated the complainant’s business efforts, because nothing indicated that the respondent intended to prevent the complainant from reflecting its mark in a corresponding domain name, to disrupt the complainant’s business, or to intentionally attract the complainant’s customers to the respondent’s site by creating a likelihood of confusion).
Moreover, Respondent alleges that it registered and is using the disputed domain names to provide criticism and commentary on Complainant’s business practices, and Respondent claims that such registration and use does not constitute bad faith. The Panel agrees with Respondent’s allegations, and finds that that Respondent’s use of domain names containing Complainant’s name to operate a website criticizing Complainant’s business practices does not constitute bad faith pursuant to Policy ¶ 4(a)(iii). See Elm Grove Dodge Chrysler Jeep, Inc. v. Schedule Star, FA 352423 (Nat. Arb. Forum Dec. 27, 2004) (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”); see also Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (“[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.”).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED and the Complaint be dismissed.
Steven L. Schwartz Panelist
Dated: January 15, 2007
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