Fight for the Future Education Fund v. Vladimir Zyryanov
Claim Number: FA1504001613786
Complainant is Fight for the Future Education Fund (“Complainant”), represented by Joseph C. Gratz of Durie Tangri LLP, California, USA. Respondent is Vladimir Zyryanov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americancensorship.org>, registered with Center of Ukrainian Internet Names (UKRNAMES).
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.
Mrs. Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2015; the Forum received payment on April 9, 2015. The Complaint was submitted in both Russian and English.
On June 9, 2015, Center of Ukrainian Internet Names (UKRNAMES) confirmed by e-mail to the Forum that the <americancensorship.org> domain name is registered with Center of Ukrainian Internet Names (UKRNAMES) and that Respondent is the current registrant of the name. Center of Ukrainian Internet Names (UKRNAMES) has verified that Respondent is bound by the Center of Ukrainian Internet Names (UKRNAMES) 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 June 11, 2015, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of July 1, 2015 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@americancensorship.org. Also on June 11, 2015, the Russian language 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 June 30, 2015.
On July 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the AMERICAN CENSORSHIP mark in connection with its online advocacy campaign to organize citizens to oppose two proposed U.S. laws which has been held in 2011. Complainant contends that it has established its common law rights in the AMERICAN CENSORSHIP mark through its use of the mark in commerce such that it has garnered a secondary meaning. Respondent’s disputed domain name is identical to the mark as it incorporates it fully and merely eliminates spacing between words and adds the “.org” generic top-level domain (“gTLD”).
Respondent has no rights and legitimate interests in respect of the <americancensorship.org> domain name. Respondent is not commonly known by the disputed domain name. Complainant has given no express authorization to Respondent to use the AMERICAN CENSORSHIP mark in any domain name registrations. Further, as Complainant was a previous registrant of the <americancensorship.org> domain name, and Respondent became the owner due to a lapse in the registration, Respondent has used identical material created by Complainant in furtherance of its community organizing purposes. Respondent has added third-party advertisements with the intent to commercially gain, which evinces no bona fide offering of goods or services per Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent registered and used the <americancensorship.org> domain name in bad faith. The Domain Name was formerly owned and used by Complainant in connection with its “American Censorship” campaign. Complainant registered the Domain <americancensorship.org> on November 3, 2011. Due to an oversight by Complainant’s registrar, Complainant’s registration lapsed. Respondent has simply copied and pasted the content associated with the disputed domain name when Complainant was the owner and merely appended third-party hyperlinks in an attempt to profit from the confusion associated with the source, sponsorship, affiliation, or endorsement of Respondent’s website per Policy ¶ 4(b)(iv). Respondent has clearly registered and used the disputed domain name in an opportunistic manner, which evidences bad faith under a non-exclusivity analysis of Policy ¶ 4(a)(iii).
B. Respondent
Complainant has failed to demonstrate its rights in the AMERICAN CENSORSHIP mark under Policy ¶ 4(a)(i).
The <americancensorship.org> domain name is comprised of generic/common terms and as such no infringing activity has taken place.
Preliminary issue: Language of the Proceedings
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006‑0593).
The Panel is satisfied that Complainant has taken all reasonable steps to bring the present proceeding to the attention of Respondent. In particular, the Panel notes that Complainant has submitted the Complaint both in the English and Russian language to the National Arbitration Forum to initiate the present proceeding. Respondent has then been notified of Complaint and its contents in the Russian and English languages.
Thus, while the Registration Agreement is in Russian, the National Arbitration Forum communicated a number of accommodations to Respondent to allow it to respond in Russian, and the National Arbitration Forum appointed a Russian speaker to the Panel. The Panelist is fluent in Russian and in English. Thus, no translations are therefore needed in these proceedings.
The contents of the website to which the contested domain name is resolved are in English. The Response has been served in English as well.
In view of the above, it is not foreseeable that Respondent will be prejudiced, should English be adopted as the language of the proceedings.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceedings.
Findings of fact
Complainant is a nonprofit corporation organized and existing under the laws of the State of Nevada and based in Massachusetts. Complainant was previously named “Center for Rights.” In 2014, Complainant changed its name to Fight for the Future Education Fund. Complainant is an advocacy group focusing on digital civil liberties. It uses the internet to educate citizens, organize debate around proposed legislation, and promote engagement by citizens with lawmakers over issues related to copyright law, online privacy, and free expression.
Complainant contends that he has common law rights in the “American censorship” name. However, the case records contain no substantial evidence in support of the allegation of common law rights in the subject trademark.
Respondent acquired the domain name by registration on December 11, 2013.
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.
Thus, in determining whether Complainant’s case can be sustained, the Panel must first decide whether Complainant can legitimately assert rights in either of those unregistered marks on another basis.
Here, Complainant asserts in 2011 and 2012, it collected and posted online expert analysis and media coverage of the “Stop Online Piracy Act” (“SOPA”) and “PROTECT IP Act” (“PIPA”). Further, Complainant contends that it created video and infographics illustrating the potential effects of the bills if enacted and that its use of the AMERICAN CENSORSHIP mark previously at the <americancensorship.org> domain name and elsewhere on the Internet served to designate Complainant as the source of educational and advocacy services in connection with the mark. Complainant also asserts that the video it created was viewed more than four million times and that its campaign received extensive media attention from various media outlets.
Generally speaking, common law trademark claims may form a sufficient basis for a Complaint under paragraph 4(a)(i) of the Policy. The Policy is thus broad in scope in that the reference to a trademark or service mark in which complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name complaint under the Policy; see also British Broad. Corp. v. Renteria, WIPO Case No. D2000-0050.
Where Complainant’s jurisdiction acknowledges common law trademark rights, Complainant can prevail under the Paragraph 4(a)(i) if it can show sufficient use of the mark in commerce to create such rights. Thus, trademark rights may arise under either the Lanham Act or under common law, but in either circumstance, the right is conditioned upon use in commerce.
Thus, absent federal registration, a party seeking to establish a common-law trademark or service mark protection bears the burden of proving that it is entitled to exclusive use of the mark. It must prove that “the primary significance of the term in the minds of the consuming public is not the product but the producer.”
Acquired distinctiveness is determined as a question of fact. The more descriptive the mark, the more evidence will be required to show that customers identify the mark with the source and not the product itself.
Descriptive marks are words or designs (e.g., depiction of a television for “television repair services”) that describe the goods and/or services. Such marks are generally considered “weaker” and therefore more difficult to protect than fanciful and arbitrary marks. If the USPTO determines that a mark is “merely descriptive,” then it is not registrable or protectable on the Principal Register unless it acquires distinctiveness-- generally through extensive use in commerce over a five-year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.
Given this, the Panel believes that if a Complainant puts forth an appropriate showing of prior continuous use in a given product and territorial market of an unregistered mark or a tradename over a sufficiently long period to evidence the acquisition of common law trademark rights, then those rights are susceptible of protection under paragraph 4(a) of the Policy to the same extent as are those emanating from registered marks.
However, in support of its allegations Complainant did not produce substantial evidences of the use of the mark in commerce (for the service mark to be legally used in commerce, it must be used in advertising or in the sale of the services and the services must be rendered) for substantial time in support of the common law rights in the subject trademark, predating the date on which the disputed domain name was registered.
Accordingly, the Panel finds that Complainant has failed to meet its burden under Paragraph 4(a)(i) of the Policy.
Based on the finding that Complainant failed to satisfy the requirements of Policy ¶ 4(a)(i), and taking into account the requirement of the Policy that Complainant must prove each of the three elements, the Panel has decided not to inquire into the Respondent’s rights and legitimate interests and the bad faith issue. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <americancensorship.org> domain name REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: August 3, 2015
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