Dr. James J. Spilker, Jr. v. Spilker, Mark
Claim Number: FA1403001548110
Complainant is Dr. James J. Spilker, Jr. (“Complainant”), represented by Eric Handler of Donahue Gallagher Woods LLP, California, USA. Respondent is Spilker, Mark (“Respondent”), represented by George W. Pfeiffer of Law Offices of George W. Pfeiffer, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jjspilker.com>, <professorjamesspilker.com>, and <professorjamesspilker.net>, registered with Network Solutions, LLC.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2014; the National Arbitration Forum received payment on March 11, 2014.
On March 13, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <jjspilker.com>, <professorjamesspilker.com>, and <professorjamesspilker.net> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 March 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2014 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 postmaster@jjspilker.com, postmaster@professorjamesspilker.com, and postmaster@professorjamesspilker.net. Also on March 14, 2014, 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 April 1, 2014.
Complainant submitted an Additional Submission which was received and determined to be complete on April 3, 2014.
On April 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi 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 names be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends the following:
The disputed domain names are identical or confusingly similar to marks in which Complainant has rights. Dr. Spilker owns registered and common law rights in applicable trademarks. He owns the Trademark Registrations covering the DR JAMES SPILKER, DR JAMES J SPILKER, and DR. JIM SPILKER trade/service marks, and thus the UDRP ¶ 4(a)(i) element is satisfied. Moreover, the UDRP does not require that a complainant's mark be registered with a government agency in order for the complainant to establish rights therein sufficient to satisfy the UDRP. Such rights can instead be proven by evidence of common law rights in the mark in question. On the record presented, Dr. Spilker has demonstrated his ownership of common law rights in not only the DR JAMES SPILKER, DR JAMES J SPILKER, and DR. JIM SPILKER trade/service marks, but also in the Marks dating back to at least 1958, i.e. half a century before Respondent registered the disputed domain names. Such rights accrued through widespread use by Dr. Spilker, and by third parties in referencing Dr. Spilker as the source of his services, of the at-issue variations of his name on his own books and articles, in his well-known consulting business, to further the commercial interests of organizations such as Stanford University, and in third-party publications. This was the exact conclusion of the Panel that decided Dr. James J. Spilker, Jr. v. Mark Spilker, FA 1513443 (Nat. Arb. Forum, Sept 23, 2013). On the same evidentiary record presented here, it found that Complainant had "established common law rights in [his] personal name, DR. JAMES J. SPILKER, under Policy ¶ 4(a)(i). The addition of a gTLD is irrelevant to a UDRP ¶ 4(a)(i) analysis of identicalness or confusing similarity. A domain name that removes the spaces from a complainant's name and adds a descriptive term such as "dr" or "professor" does not obviate the fact that the domain is identical or confusingly similar to the complainant's name. Under this framework, each of the disputed domain names is identical or confusingly similar to a trade/service mark in which Dr. Spilker owns rights. Similar to what the Panel in Spilker v. Spilker recognized in analyzing the disputed <drjimspilker.com> and <drjimspilker.net> domain names, the <jjspilker.com> disputed domain name merely appends to Dr. Spilker's last name the letters "jj," which is a common short hand way of referring to Dr.Spilker's first name and middle initial and is an abbreviation Complainant has regularly used in conducting business in connection with his personal name, Dr. James J. Spilker, Jr. As to the <professorjamesspilker.com> and <professorjamesspilker.net> disputed domain names, Respondent's addition to Dr. Spilker's name of the descriptive term "professor" – which exactly relates to a line of commercial work in which Dr. Spilker has engaged for many years – renders those domain names confusingly similar to Dr. Spilker's marks embodying his personal name. Dr. James J. Spilker, Jr.
Respondent has no rights or legitimate interests in the disputed domain names. Dr. Spilker has never authorized Respondent to use any of his trademarks in the disputed domain names. Dr. Spilker is the owner of all rights and interests in and to the trade/service marks that are the subject of the Trademark Registrations and the variations of his personal name in which he owns common law rights. Dr. Spilker has never granted Respondent any license, permission, or other authorization to incorporate any of those trade/service marks, or any confusingly similar mark, into any domain name. Respondent thus has no basis to argue he has any right or legitimate interest in any of the same.
Respondent had notice of this dispute when he registered the disputed domain names. A respondent who "knew or should have known" of a complainant's trademark rights at the time of registration is precluded from demonstrating it put the mark to a legitimate (i.e., bona fide) use. Respondent, as Dr. Spilker's son, obviously knew of Dr. Spilker's trade/service mark rights when he registered the disputed domain names given they consist of Dr. Spilker's name and (for two of them) the word "professor." Moreover, Respondent registered two of the disputed domain names after Dr. Spilker initiated the complaint in Spilker v. Spilker. In addition, the only website usage Respondent has made of the disputed domain names other than for sponsored link farms has been to affiliate therewith a website through which he has retaliated against Dr. Spilker for not being gifted more of his father's life's savings and tried to tarnish his reputation. This nefarious use demonstrates Respondent's knowledge at all times of Dr. Spilker's rights in the at-issue trade/service marks. Respondent thus had notice of this dispute when he registered the disputed domain names and cannot rely on UDRP ¶ 4(c)(i) as a defense to the transfer remedy Dr. Spilker seeks via the Complaint.
Respondent has never been commonly known by any of the disputed domain names.
Respondent's use of two of the disputed domain names to criticize Dr.
Spilker is not a bona fide offering of goods or services under UDRP
¶ 4(c)(i) nor a legitimate noncommercial or fair use under UDRP
¶ 4(c)(iii). At best, Respondent's website is a "complaint website," the purpose of which is to tarnish Dr. Spilker and the goodwill inherent in his name as a source indicator of his services. There is no other plausible explanation given Respondent's "Child Abuse" allegations that permeate his website and the evidence of Respondent's retaliation against his father for not being given more of Dr. Spilker's life's savings. That disqualifies Respondent from being able to utilize UDRP ¶ 4(c)(iii) as a defense to the Complaint.
Assuming arguendo that Respondent's website raises even a single valid criticism of Dr. Spilker (which it does not), it plainly violates the UDRP for a respondent to use a domain consisting entirely of another's mark to criticize the mark owner since it misleads Internet users as to the source of the commentary. As explained in Petrovich v. Jazz Melody, FA 290894 (NAF, Sept. 10, 2004): If the website is a 'complaint website,' Respondent may have certain rights to use Complainants' mark to identify Complainants. However, this does not give Respondent the right to use an identical or confusingly similar domain name to connote the source of commentary or criticism as coming from the mark holder. See also Monty and Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO, June 9, 2000); Eastman Chem. Co. v. Patel, FA 524752 (NAF, Sept. 7, 2005). Here all Respondent has done by associating two of the disputed domain names with his "criticism website" is try to fool Internet users into visiting Respondent's website by misleading them into believing Dr. Spilker has endorsed or sponsored that website given the disputed domain names consist only of Dr. Spilker's name. This neither constitutes a bona fide offering of goods or services under UDRP ¶ 4(c)(i) nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii).
Respondent's affiliation of the <professorjamesspilker.net> domain name with a sponsored link farm does not give Respondent rights or legitimate interests in that domain name.
Respondent registered and is using the disputed domain names in bad faith. Respondent has engaged in a pattern of registering at least nine domain names in order to prevent Dr. Spilker from reflecting his trademarks in corresponding domain names. Under UDRP ¶ 4(b)(ii), bad faith registration and use of a domain is proven if the respondent has engaged in a pattern of registering domain names to prevent the owner of a trademark from reflecting its mark in a corresponding domain name.
Respondent's motive proves his bad faith registration and use. When it is proven that a respondent has been involved in a dispute with the complainant and thereafter (a) registers a domain name consisting of nothing but the complainant's mark and then (b) affiliates a website with the disputed domain name for the purpose of criticizing the complainant, such tactics constitute bad faith registration and use under the UDRP.
The same factors exist with Respondent's registration and use of the <jjspilker.com> and <professorjamesspilker.com> disputed domain names, which Respondent has affiliated with his "criticism website" he uses to make defamatory allegations against Dr. Spilker in a transparent attempt to retaliate for not being given more of his father's life's savings. Because Respondent's purpose in registering and using these domain names was and is to seek revenge against Dr. Spilker so as to further Respondent's vindictive motives, Respondent's bad faith registration and use thereof is proven.
Just as he did with four of the domain names in Spilker v. Spilker , Respondent has set up the <professorjamesspilker.net> domain name to resolve to a pay-per-click website containing only sponsored links, from which Respondent presumably receives click-through revenues. This scheme is ample evidence of a respondent's bad faith registration and use of this disputed domain name.
B. Respondent
In its Response, Respondent contends as follows:
Assuming, arguendo, that Complainant has trademark or service mark rights in the disputed domain names, a point which Respondent does not concede, and which is clearly in question given Complainant's application for trademark registration with the USPTO of three variations of Complainant's name after the instant dispute arose, the idea that Respondent's use of the disputed domain names will mislead consumers of Complainant's services is simply preposterous. The Boeing Aircraft Company is highly unlikely to be confused by this website and be misled into seeking consulting services in the field of telecommunications from Respondent under the belief the service is being offered by Respondent. Neither is Respondent capitalizing on the goodwill Complainant has created in its (alleged) mark. Any harm to Complainant arises not from a competitor's sale of a similar product or service under Complainant's (alleged) mark, but from Respondent's criticism of Complainant. Complainant cannot use the legal process or a pseudo-legal process either as a shield from Respondent's criticism, or as a sword to shut Respondent up.
Unlike a traditional fair use scenario, Respondent is using the (allegedly) trademarked term to describe not its own product, but the Complainant's. This use is nonetheless permissible, based on its nominative nature, as each of the three requirements for nominative use are met. First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. The first element is clearly met as Complainant is claiming his name as a trademark, and a person, or by extension a person's products or services, are not readily identifiable without the use of such person's name. To argue that a person known well enough by the public to have any trademark rights in their name, as Complainant argues, can prohibit the use of their name to identify them is absurd. The second element is met on similar grounds. Complainant's alleged marks are limited to Complainant's name, and are being used solely to identify Complainant. The third element is met as articulated above; the Boeing Aircraft Company, or any other of Complainant’ s clients or prospective clients, are highly unlikely to be confused by this website and be misled into seeking consulting services in the field of telecommunications from Respondent under the belief the service is being offered by Respondent.
The disputed domain names should not be considered as having been registered and being used in bad faith. Respondent has not registered or acquired the disputed domain names for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain names, nor has Complainant alleged that Respondent has done so.
Complainant makes no allegations and offers no evidence that Respondent has registered the domain name to prevent Complainant from reflecting the Spilker mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.
Respondent is not a competitor of Complainant, and has not attempted to disrupt the business of Complainant, both facts which Complainant acknowledges in the Complaint. Indeed, the Complaint reiterates time and again the fame and success gained by Complainant through many sources other than the Internet and fails to state a single instance of any disruption of Complainant's business.
None of Complainant's clients or potential clients are even remotely likely to be confused by Respondent's website, and Respondent offers no products or services on Respondent's website. Given Complainant's services are such that the ultimate source of his income is largely the taxpayers of the United States, it is in the public interest that the public be aware of criticism of the Complainant and it is the long standing public policy, led by the First Amendment that in such matters, the Complainant cannot use the legal process either as a shield from Respondent's criticism, or as a sword to shut Respondent up. In addition, there is no evidence that Respondent has attracted or attempted to attract, for commercial gain, Internet users to Respondent's web site, nor has Complainant alleged any such evidence.
C. Additional Submissions
In its Additional Submission, Complainant mostly criticizes the Response, and does not submit any new arguments or evidence beyond those already submitted with the Complaint.
Complainant is an electrical engineer. In 1958 he received a doctorate from Stanford University.
Since 1958, Dr. Spilker has used variations of his personal name as a source indicator of the commercial engineering services he provides to the public in countries throughout the world. Since 1958 Dr. Spilker has achieved significant worldwide fame in connection with his use of his personal name and its variations as a source indicator of his commercial engineering services. Much of this fame is derived from the fact that Dr. Spilker was one of the primary designers of the Global Positioning System ("GPS").
Complainant owns the following trademark registrations with the USPTO:
DR JAMES SPILKER, Reg. No. 4,447,224, Reg. Date December 10, 2013, filed on April 16, 2013, covering Technical consulting and research services in the field of aerospace engineering, in International Class 42. (First use/first use in commerce; February 1, 2000);
DR JAMES J SPILKER, Reg. No. 4,459,249, Reg. Date December 31, 2013, filed on June 21, 2013, covering technology consulting services and analyses for digital communications and Global Positioning System (GPS) navigation, in International Class 42. (First use June 2, 1982; first use in commerce February 3, 2000; and
DR. JIM SPILKER, Reg. No. 4,447,912, Reg. Date December 10, 2013, filed on May 20, 2013, covering Consulting services in the fields of advanced engineering for satellite navigation, Global Positioning System (GPS), and communications, in International Class 42. (First use August 2, 1958; first use in commerce February 2, 2001).
Respondent is one of Complainant's sons.
On January 5, 2013, Respondent registered the <jjspilker.com> disputed domain name. On August 10, 2013, Respondent registered the <professorjamesspilker.com> and <professorjamesspilker.net> disputed domain names.
The disputed domain names <jjspilker.com> and <professorjamesspilker.com> resolve to a website showing a main page entitled “True stories and opinions about my Dad, By Mark Spilker”. In this website Respondent complains about his father, the Complainant, and includes stories of abuse and beatings by Complainant.
The disputed domain name <professorjamesspilker.net> resolves to a “parking” website provided by the registrar and containing links to commercial websites.
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.
By referring to his trademark registrations with the USPTO – which the Panel has confirmed by searching on the TESS database - Complainant has shown that he owns trademark rights in the DR JAMES SPILKER, DR JAMES J SPILKER, and DR. JIM SPILKER service marks.
The Panel notes that the three disputed domain names contain Complainant`s family name “Spilker”. The disputed domain name <jjspilker com> contains the first and middle initials of Complainant, while the other two disputed domain names contain Complainant `s first name “James”, adding the common term “professor”.
It is well established that the addition of a common or generic term, or of a gTLD is inapt to distinguish a domain name from a mark.
The Panel concludes that the three disputed domain names are confusingly similar to the DR JAMES SPILKER and DR JAMES J SPILKER registered marks of Complainant.
Complainant contends that he has never authorized Respondent to use any of his trademarks in the disputed domain names, and that Respondent is not commonly known by the disputed domain names. Complaint argues that Respondent, as Dr. Spilker's son, obviously knew of Dr. Spilker's trade/service mark rights when he registered the disputed domain names given they consist of Dr. Spilker's name and (for two of them) the word "professor." Moreover, adds Complainant, Respondent registered two of the disputed domain names after Dr. Spilker initiated the UDRP dispute involving the <drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com>, and <drjimspilker.net> domain names. See Spilker v. Spilker, supra. Thus Respondent is precluded from demonstrating it put the mark to a legitimate (i.e., bona fide) use.
Complainant also contends that Respondent's use of the <jjspilker.com> and <professorjamesspilker.com> disputed domain names to criticize Dr. Spilker is not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii). At best, argues Complainant, Respondent's website is a "complaint website," the purpose of which is to tarnish Dr. Spilker and the goodwill inherent in his name as a source indicator of his services.
Respondent contends that it is making a nominative fair use of Complainant`s name, and that he is using Dr. Spilker`s name as it is strictly necessary to publish his critical views on his father, the Complainant, on the Internet.
As regards the disputed domain names <jjspilker.com> and <professorjamesspilker.com>, the Panel cannot agree with Respondent that his use of these domain names use is legitimate simply because he is exercising his right to free speech and to publish his critical views on the Internet. The Panel of course agrees that free speech is protected, but it is also in agreement with the Spilker v. Spilker Panel that the exercise of free speech “does not afford the Respondent rights or legitimate interests in the domain name itself when it is infringing on the trademark of another”, citing Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum, Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”); see also Paul Petrovich and Petrovich Dev. Co. v. Jazz Melody, FA 290894 (Nat. Arb. Forum Sept. 10, 2004) (finding legitimate or fair use impossible to establish when a domain name incorporates nothing more than another’s mark and a gTLD and is used to criticize the mark owner); see also Monty and Pat Roberts, Inc. v. Bill Keith, Case No. D2000-0299 (WIPO) (holding that one may truthfully criticize a mark owner but not via a domain name implying to Internet users who have not yet visited the website affiliated therewith that the affiliated website is somehow sponsored or endorsed by the mark owner – which us exactly what happens when the domain name consists of nothing but the mark owner’s mark plus a gTLD).”
Accordingly, the Panel finds that Respondent does not have legitimate rights or interests in the <jjspilker.com> and <professorjamesspilker.com> disputed domain names pursuant to Policy ¶ 4(a)(i).
As regards the disputed domain name <professorjamessilker.net>, which resolves to a parking website showing advertisings and links to commercial websites presumably generating income for Respondent via a pay-per-click scheme, the Panel also agrees with the Spilker v. Spilker Panel that using a confusingly similar domain name to host third-party links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, citing Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
For the above reasons, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain names.
Complainant has shown that along his career up to the present he has publicly and profusely been using his personal name and numerous variations thereof, adding and suppressing academic titles such as “professor” and “dr”, the middle initial “J”, so that this name became an identifier and source indicator of his professional services as engineer rendered commercially in relation to telecommunications and other technical fields.
The Panel notes that Respondent, Complainant`s son, does not deny such public professional use of his father`s name for many years. The Panel is satisfied that the public use of Complainant`s name for many years to present covering such professional services supports a finding that Complainant had common law rights in the mark constituted by his personal name much before 2013, when he filed applications for federal registration of the marks Reg. No. 4,459,249, Reg. No. 4,447,224, and Reg. No. 4,447,912. See “Findings” above.
Therefore, the Panel agrees with Complainant that Respondent “knew or must have known”, and had Complainant`s mark in mind, when he registered the confusingly similar disputed domain names.
Complainant contends that Respondent has engaged in a pattern of registering at least nine domain names in order to prevent Complainant from reflecting his trademarks in corresponding domain names. Surprisingly, Respondent in his Response contends that Complainant makes no allegations and offers no evidence that Respondent has registered the domain name to prevent Complainant from reflecting the Spilker mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct. The Panel notes that contrary to Respondent`s contention, Complainant does make such allegation and does offer such evidence to the satisfaction of the Panel. Complainant has shown, first, that (as found by the Spilker v. Spilker Panel) Respondent had previously registered six domain names corresponding to Complainant`s personal name and common law mark (<drjamesjspilker.com>, <drjamesjspilker.net>, <drjamesspilker.com>, <drjamesspilker.net>, <drjimspilker.com> and <drjimspilker.net>), and, second, that Respondent registered the three domain names disputed in the instant case, which also correspond to Complainant’s common law and registered marks.
In the opinion of the Panel, the registration of these nine domain names reflecting the same mark in its common variations used by Complainant in his trade shows that Respondent attempted to block Complainant from registering his mark in a domain name, and that Respondent has engaged in a “pattern of such conduct” pursuant to Policy ¶ 4(b)(ii) (“you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct”), which is a circumstance of bad faith registration.
As to the <professorjamesspilker.com> and <jjspilker.com> disputed domain names, the Panel, like the Spilker v. Spilker Panel, believes that the fact that Respondent registered the domain names for the purpose of criticizing Complainant by making defamatory allegations against Complainant constitutes bad faith under Policy ¶ 4(a)(iii) (“you have registered the domain name primarily for the purpose of disrupting the business of a competitor”). See Spilker v. Spilker, citing Diners Club Int’l, Ltd. v. Infotechnics Ltd. FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”), and 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).”
As to the <professorjamesspilker.net> disputed domain name, the Panel believes that the fact that it resolves to a parking website showing commercial links and advertisings presumably generating income for Respondent, shows that Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location, pursuant to Policy ¶4(b)(iv), which is a circumstance of bad faith registration and use. In this regard, the Panel also coincides with the Spilker v. Spilker Panel that “such conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iv),” (citing Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum, June 11, 2006)) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
For these reasons, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jjspilker.com>, <professorjamesspilker.com>, and <professorjamesspilker.net> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: April 22, 2014
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