Claim Number: FA0705000985159
PARTIES
Complainant is Washington CeaseFire (“Complainant”), represented by Shannon
M. Jost of Stokes
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <washingtonceasefire.com>, registered
with Direct
Information Pvt Ltd d/b/a Publicdomainregistry.
PANEL
The undersigned certifies that she acted independently and impartially
and that to the best of her knowledge she has no known conflict in serving as
Panelist in this proceeding. Hon.
Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically May 14, 2007; the National
Arbitration Forum received a hard copy of the Complaint May 18, 2007.
On May 15, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry
confirmed by e-mail to the National Arbitration Forum that the <washingtonceasefire.com>
domain name is registered with Direct
Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is
the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry
verified that Respondent is bound by the Direct
Information Pvt Ltd d/b/a Publicdomainregistry registration agreement
and thereby has agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On May 22, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 11, 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@washingtonceasefire.com by e-mail.
A timely Response was received and determined to be complete June 11, 2007.
On June 14, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following allegations in this dispute:
1.
Respondent
registered a domain name that is identical to or confusingly similar to a mark
in which Complainant has exclusive rights.
2.
Respondent
has no rights to or legitimate interests in the mark and domain name.
3.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
makes the following points in Response:
1.
The
domain name is not identical to or confusingly similar to any mark in which
Complainant has rights.
2.
Complainant
has not established “Washington Ceasefire” as a service mark.
3.
Complainant
uses many names and filed its taxes under the name “Ceasefire Foundation of
Washington.”
4.
Complainant
operates under many names in order to encourage passage of laws that advance
bigotry and loss of civil rights.
5.
Complainant
abandoned the <washingtonceasefire.com>
domain name in 2002.
6.
Respondent
owns the <washingtonceasefire.com>
domain name, has rights in the domain name, and has used it for a
legitimate noncommercial or fair use.
7.
Respondent
denies any bad faith.
FINDINGS
Complainant and Respondent are activists in
the area of lobbying for and against restrictions on gun ownership and gun
control.
While Complainant does not have a legal
registration for the WASHINGTON CEASEFIRE mark, Complainant established common
law rights by showing that secondary meaning attaches to its mark.
Complainant came into existence earlier in
time and has been consistently active since the 1980s.
Respondent knowingly used Complainant’s mark
to register and use a domain name that Respondent describes as a site for free
speech on the issue in which both parties show an interest.
Respondent used false information in
identifying the registrant.
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 Complainant to 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;
(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.
Complainant
does not assert any rights in the WASHINGTON CEASEFIRE mark through ownership
of a trademark or service mark registration with any governmental
authority. However, the Panel finds that
such registration is unnecessary for the purposes of Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23,
2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Complainant
established common law rights in the WASHINGTON CEASEFIRE mark and the Panel
finds sufficient evidence that Complainant established secondary meaning with
the mark through continuous and extensive use of the mark. Complainant asserts that it has used the mark
since at least 1983 as a nonprofit corporation dedicated to “reducing gun
violence in
The Panel finds that the <washingtonceasefire.com>
domain name is identical to
Complainant’s WASHINGTON CEASEFIRE mark under Policy ¶ 4(a)(i) as the disputed
domain name contains Complainant’s mark in its entirety with the addition of
the generic top-level domain (“gTLD”) “.com.”
Addition of a gTLD is not relevant for the purposes of Policy ¶ 4(a)(i)
as a top-level domain is a required element of all domain names. See
W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005)
(finding <wuib.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name WUIB is part of the
Internet address and does not add source-identifying significance); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to the complainant's
registered trademark GAY GAMES).
Respondent asserts that Complainant did not demonstrate rights in the
WASHINGTON CEASEFIRE mark for the purposes of Policy ¶ 4(a)(i). To support its contention, Respondent presents documents, which it asserts show that Complainant
is actually known by several different names.
However, some of these documents show that Complainant does utilize the
WASHINGTON CEASEFIRE mark, and a number of Respondent’s exhibits are unreadable
due to the quality of copy presented.
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that the <washingtonceasefire.com>
domain name is not being used in
conjunction with 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). The
disputed domain name resolves to a website advertising views and opinions
against the work done by Complainant in its attempt to promote gun-ownership
restrictions in the State of
Under Policy ¶ 4(c)(ii),
Respondent must show it was commonly known by the <washingtonceasefire.com> domain name prior
to the filing of the instant Complaint in order to have rights or legitimate
interests under this portion of the Policy.
Respondent’s WHOIS information lists Respondent’s information as
“Private Registration” and the Panel finds that there is no other evidence in
the record to suggest that Respondent has ever been commonly known by the
disputed domain name. Additionally,
Complainant has asserted that Respondent is not associated with Complainant,
and that Respondent is not authorized to use Complainant’s mark in any
way. The record does not contain
sufficient evidence to suggest that Respondent is commonly known by the
disputed domain name. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail"); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark).
The Panel finds that Complainant alleged facts sufficient to create a prima facie case for lack of rights or legitimate interests by Respondent pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The
Panel finds that Respondent’s use of the <washingtonceasefire.com> domain name to host a complaint website against Complainant does not in this case
qualify as a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). Respondent asserts it has a
free speech right to speak out against the policies and beliefs of
Complainant’s organization while promoting its own viewpoints. Respondent contends that it is a resident of
the State of
The
Panel finds that Complainant
satisfied ICANN Policy ¶ 4(a)(ii).
Complainant
asserts that Respondent acted in bad faith in registering and using a domain
name that contains Complainant’s mark in its entirety. Further Respondent admits actual knowledge of
Complainant’s mark under Policy ¶ 4(a)(iii). Although Respondent argues that Complainant
does not have a trademark registration for the WASHINGTON CEASEFIRE mark,
Respondent also acknowledges Complainant’s organization and work. Indeed, Respondent’s website at the <washingtonceasefire.com>
domain name specifically addresses
the issues and platforms of Complainant’s organization. Accordingly, the Panel finds that
Respondent’s actual knowledge of Complainant’s mark when registering the
disputed domain name supports findings that Respondent acted in bad faith in
registering and using a domain name containing in its entirety Complainant’s
protected mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse.").
Complainant
contends that Respondent registered and is using the <washingtonceasefire.com>
domain name in bad faith under Policy
¶ 4(a)(iii) as the disputed domain name is a complaint website, which attracts
Internet users due to the similarity between the domain names of Respondent and
Complainant, as well as addressing similar issues, even with different
viewpoints on the issues. The Panel
finds that although Respondent has a right to operate a legitimate complaint
website, it may not do so by using Complainant’s mark in its entirety. See 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” in holding that the disputed domain
name was registered in bad faith); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000)
(finding that the respondent registered the domain names
<kwasizabantu.com>, <kwasizabantu.org>, and
<kwasizabantu.net> in bad faith where the respondent published negative
comments regarding the complainant’s organization on the confusingly similar
website).
The
Panel also finds that the <washingtonceasefire.com> domain name was registered with the intent to disrupt
Internet users attempting to locate Complainant’s website through initial
interest confusion as to Complainant’s affiliation with the disputed domain
name and corresponding website. The
Panel finds this evidence to support findings of bad faith registration and use
under Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding
that the respondent’s expected use of the domain name <redbull.org> would
lead people to believe that the domain name was connected with the complainant,
and thus is the equivalent to bad faith use);
see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000)
(finding registration in bad faith based where there is no reasonable possibility,
and no evidence from which to infer that the domain name was selected at random
since it entirely incorporated the complainant’s name).
Additionally,
Complainant asserts that Respondent has provided misleading WHOIS
information. Complainant contends that
the address listed is false, and Respondent confirms this contention in its
Response. Previous panels have held, and
this Panel finds, that purposefully entering misleading WHOIS information
qualifies as bad faith registration and use under Policy ¶ 4(a)(iii). See Home Dir., Inc. v. HomeDirector,
D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading
information in connection with the registration of the domain name is evidence
of bad faith); see also Video Direct
Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding
that the respondent acted in bad faith by providing incorrect information to
the registrar regarding the owner of the registered name).
Respondent asserts that it registered and is using the <washingtonceasefire.com> domain name in good faith, as it is “educating the public” about the conduct of Complainant, as well as promoting its own opposite views on gun control issues. The Panel is not persuaded; the disputed domain name and website is created by the use of Complainant’s mark in the disputed domain name and corresponding website. Use of the disputed domain name to host Respondent’s complaint website does not qualify as registration and use in good faith under Policy ¶ 4(a)(iii).
Further, Respondent acknowledges that its listed WHOIS address is false, but maintains that the address and name it uses is a pseudonym is not relevant as Respondent was able to be contacted at the e-mail address provided. The Panel disagrees; Respondent registered and used the disputed domain name in bad faith.
Complainant satisfied ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <washingtonceasefire.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson,
Panelist
Dated: June 27, 2007.
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