DECISION

 

Desert Community College District aka College of the Desert v. Christopher Parman

Claim Number: FA2210002015615

 

PARTIES

Complainant is Desert Community College District aka College of the Desert (ďComplainantĒ), represented by G. Henry Welles of Best Best & Krieger LLP, US.† Respondent is Christopher Parman (ďRespondentĒ), represented by Megan Beaman Jacinto of Beaman Jacinto Law P.C., US.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <collegeofthedesert.com>, registered with Google LLC (the ďDisputed Domain NameĒ).

 

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.

 

Kendall C. Reed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 11, 2022; Forum received payment on October 11, 2022.

 

On October 12, 2022, Google LLC confirmed by e-mail to Forum that the <collegeofthedesert.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name.† Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).

 

On October 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to postmaster@collegeofthedesert.com.† Also on October 13, 2022, 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 Respondentís registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on November 2, 2022.

 

On November 10, 2022,pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Kendall C. Reed as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant is one of 115 community colleges in the State of California community college system, and it is operated by the Desert Community College District.

 

Complainant, the Desert Community College District, was established in 1958 and opened its doors in 1962.†

 

Complainant offers a number of courses of study, including nursing and health sciences, digital design and production, turf grass management and ornamental horticulture, advanced transportation technologies, culinary arts, and a full range of administration of justice courses at its Public Safety training facility.

 

Complainant owns the domain name <collegeofthedester.edu>, which was registered on January 16, 2002. The website to which this domain name resolves has been operated continuously from the registration of this domain name to the present day (ďComplainantís WebsiteĒ).

 

Complainant has established common law trademark rights in the mark COLLEGE OF THE DESERT, which has acquired distinctiveness though continuous use in commerce since 1962.

 

Respondent recently acquired the Disputed Domain Name and on or about August 3, 2022, Respondent began using the Disputed Domain Name to direct to a website that mirrors the look and feel of Complainantís Website and on which Respondent makes public accusations against members of the Complainantís Board of Trustees that are unsubstantiated, false, and fraudulent. †

 

Respondentís use of the Disputed Domain Name is fraudulent and likely to cause impermissible consumer confusion.

 

Respondentís use of the Disputed Domain Name is not permitted under the Policy because: the Disputed Domain Name is identical or confusingly similar to Complainantís Mark; Respondent does not have rights or legitimate interests in the Disputed Domain Name; and Respondentís registration and use of the Disputed Domain Name was and is in bad faith.

 

B. Respondent

 

As an initial matter, Respondent objects to this proceeding because he has not been provided with a copy of the initial complaint, which is unfair, as he is unaware of its contents, and is in violation of UDRP Rule 2(a)(i).

 

Respondent is Christopher Parman, and he †lives within the jurisdictional territory of the Desert Community College District. He admits to owning the Disputed Domain Name, which he purchased on June 22, 2022, and admits to owning and operating the website to which the Disputed Domain Name directs (ďRespondentís WebsiteĒ).

 

Respondent has rights and legitimate interests with respect to the Disputed Domain Name. Respondent uses Respondentís Website to express his many complaints against the leadership and actions of the Complainantís Board of Trustees. His political speech is also expressed in the form of satire and parody of Complainantís Website, for example with respect to a logo a palm tree used by Complainant. Respondent copies this logo but changes it to a depiction of a dead palm tree.

 

As such, Respondentís use of the Disputed Domain Name is protected by the First Amendment to the Constitution because his message, expressed in words and images, is otherwise legally protected public criticism of a government entity, and Complainantís trademark rights cannot be used to interfere with his First Amendment rights.

 

Further, in order for Complainant to prevail in a trademark dispute with Respondent, Complainant would need to show a likelihood of confusion as to source, sponsorship, or approval of the offending product. Complainant cannot make such a showing because no reasonable person would confuse Respondentís Website with Complainantís Website. No one would confuse a design motif of a dead palm tree with that of a live palm tree, and no reasonable person would confuse Respondentís criticisms of Complainant as originating with Complainant.

 

Respondent is not acting in Bad Faith; he is acting in good faith. He is not attempting to capitalize commercially from his use of the Disputed Domain Name by diverting Internet users from the Complainant but is engaged solely in protected free speech. Further, Complainant present no evidence showing that Respondent is presenting false information on his website.†

 

FINDINGS

 

Complainant has common law trademark rights in Complainantís Mark, COLLEGE OF THE DESERT.

 

Respondent acquired the Disputed Domain Name, <collegeofthedesert.com>, on June 22, 2022.

 

Complainant Website went live sometime in 2002.

 

Respondentís Website went live August 3, 2022.

 

Respondentís Website contains content that is critical of Complainant and Complainantís Trustees and is not used to generate financial gain for Respondent.

 

The look and feel of Respondentís Website is indistinguishable from the look and feel of Complainantís Website.

 

DISCUSSION

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.

 

Preliminary Issue

 

Respondentís concern is that he has not been provided with a copy of the original, initial Complaint. This is not significant as the initial Complaint is not the operative document; rather, the operative document is the Amended Complaint. Respondent received this in accordance with Rule 2(a)(i), and Respondent has filed a response. It is irrelevant that the initial Complaint might contain material that is not within the Amended Complaint. Respondent is not called upon to respond to any such additional material, if it exists.

Identical and/or Confusingly Similar

 

Policy paragraph 4(a)(i) requires that Complainant make two showings: that Complainant has rights in a trademark; and that the Disputed Domain Name is identical or confusingly similar to that trademark.

 

For purposes of the Policy, rights in a trademark can be established by demonstrating sufficient use of the putative mark in commerce such that the mark ďÖhas become a distinctive identifier which consumers associate with the complainantís goods and/or services.Ē Section 1.3 of the WIPO Overview 3.0 (ďWIPO OverviewĒ). A trademark registration is not required.

 

In the present matter, Complaint has established common law trademark rights in the trademark COLLEGE OF THE DESERT (ďComplainantís MarkĒ). †Complainant is a campus within the community college system of the State of California. Complainant began offering classes and other campus activities in 1962, and based on the Panelís general knowledge of how colleges operate (having attended more than one institution of higher education), Complainant has used the expression ďCollege of the DesertĒ in, at least, its advertising, its class catalogs, its on-campus activities, its student service offerings, and its alumni activities, all over a period of some sixty years.

 

Complaint presented as an exhibit a screenshot of its website at its domain name <collegeofthedesert.edu>. This screenshot validates this Panelís experience with respect to how colleges and universities use their names in commerce, and all such uses are demonstrated.

 

The Disputed Domain Name is identical to Complainantís Mark. The Disputed Domain Name is <collegeofthedesert.com>. The Complainantís Mark is COLLEGE OF THE DESERT. For purposes of making the comparison between the two, the gTLD and the absence of spaces are not dispositive as they do not create a meaningful distinction.

 

As such, The Complainant has established the first element of the Policy.

 

Rights and Legitimate Interests

 

Under this second element of the Policy, Complainant is required to demonstrate a prima facia showing that Respondent does not have rights or legitimate interests, and, if Complainant is successful in this, then the burden shifts to the Respondent to rebut this prima facia showing.

 

Complainant has successfully carried its burden in this regard. Complainant demonstrates that it has not given its permission to Respondent to use Complainantís Mark. Complainant demonstrates that Respondent is not known by the Disputed Domain Name. And Complainant makes a prima facia showing that Respondentís actions do not fall within the scope of Policy Paragraph 4(c)(iii).

 

Respondent focuses his efforts on this latter point. He argues that he is using the Disputed Domain Name for the purpose of noncommercial or fair use, and more specifically that his actions constitute legitimate public criticism without a commercial intent.

 

This issue, being whether the Policy allows the use of a domain name that is identical or confusingly similar to Complainantís Mark as vehicle for publicly criticizing Complainant, has been the subject of considerable disagreement among panels since the inception of the Policy.

 

According to Levine[i], and as a historical matter, two different approaches quickly developed, as acknowledged in section 2.4 of the original edition of the WIPO Overview of 2005.

 

One approach (called View 1) is that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the ownerís registered trademark or conveys an association with the mark. The right to a given domain name is very different from the right to express criticism, and it is not an infringement on the right to criticize to require that it be done by way of a domain name that is not identical to the trademark belonging to the subject of the criticism. This is not an issue of free speech, but of domain address. It is easy, after all, to select a domain name that separates the two and allows the criticism while avoiding the implication of affiliation. This is accomplished by way of the †<trademark+sucks> type of domain name (or the addition of some other word that accomplishes the same end).

The focus of the View 1 approach is on the Disputed Domain Name itself.

 

The other approach (View 2) is that the right to engage in public criticism is an overriding consideration and, provided that the use of the Disputed Domain Name is not a smoke screen to hide commercial activity, and is not unnecessarily malicious, and is not deliberately misleading, the use must be allowed.

 

The focus of the View 2 approach is on the content of the website to which the Disputed Domain Name directs.

 

The current version of the WIPO Overview dispenses with these two different approaches in favor of a unified approach, while still maintaining vestiges of the original tensions. This new unified approach is expressed in section 2.6. thereof, which reads in its entirety:

 

2.6 Does a criticism site support respondent rights or legitimate interests?

 

As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondentís claim to a legitimate interest under the Policy.

 

2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondentís criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.

 

2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.

 

2.6.3 Where the domain name is not identical to the complainantís trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as ďfundraisingĒ to offset registration or hosting costs associated with the domain name and website).

 

In the present matter, the Panel has already examined the Disputed Domain Name in relation to the Complaintís Mark. The Disputed Domain Name is identical to the Complainantís Mark.

 

With respect to Respondentís Website, the Panel has examined it to the extent possible given the evidence provided; Complainant attaches an exhibit to the Amended Complaint a screenshot of the homepage of Respondentís Website. Based on this examination, this Panel is convinced that Respondent is using his website, and therefore the Disputed Domain Name, for the purpose of making public criticism and without intending to benefit financially.

 

A description of Respondentís Website is useful at this point. A logo appears at the top and right of center of the homepage. This logo is of a of a palm tree, which Respondent describes as being an image of a dead palm tree. This image is intended to be an artistic comment about Complainantís current condition. Immediately adjacent to this logo is the heading ďCollege of the Desert Trustees.Ē Immediately below this heading is presented a line of text consisting of the words ďDeceit† Delays† Disinformation.Ē Immediately below this line of text are presented several menu buttons consisting of ďHomeĒ, ďDeceitĒ, DelaysĒ, and ďDisinformationĒ. It is not apparent from this exhibit whether these menu buttons resolve to any material or content. Below these menu buttons appears a video clip entitled ďTrustee Ruben Perez Accused of Double-Dipping Taxpayers.Ē This video clip appears to be a download of a television newscast segment. Immediately below this video clip is a second video clip entitled ďTrustee Aurora Wilson Not Prepared for Board Meetings.Ē†

 

This homepage does not include an offer for goods or services. It does not include click-through opportunities. It does not include content that might be interpreted as encouraging current students or prospective students to leave the Complaint or attend another educational institution.

Complainant does not provide evidence concerning other parts of Respondentís Website. If there are other parts and these other parts suggest a commercial intent, no evidence has been provided, and otherwise Complainant has not provided evidence demonstrating that Respondentís motivations are commercial.

 

In addition to the substantive content of Respondentís Website, as described, there is another consideration, and this is the graphic content of the website, or said another way, the look and feel of Respondentís Website. It is identical to the look and feel of Complainantís Website (the Complainant also attaching as an exhibit to the Amended Complaint a screenshot of the homepage of Complaintís Website). Respondentís Website uses bold and unique colors, consisting of a predominance of relatively large blocks of red bordered by yellow outlines; these are identical to the colors used on Complainantís Website. The graphic layout of Respondentís Website is a variation of that used by Complainant. The difference is not readily apparent without a careful comparison of the two. The text fonts used on Respondentís Website are the same as those used on Complainantís. The prominent palm tree logo is very similar on both websites, notwithstanding Respondentís description of the image as being of a dead palm tree as opposed to a live palm tree. The difference between the two images is, to this Panel, subtle and not likely to be perceived by a casual observer. The overall visual effect is that Respondentís Website is Complainantís Website.

 

Respondent argues that no reasonable person would confuse Respondentís Website with Complaintís Website, and the Panel agrees with this, to an extent. After an Internet user has taken the time and effort to read some of the substantive content on Respondentís Website, which would likely require only a moment or two, it would indeed be clear that the website is not Complainantís. However, in the process and once this is done, even if this is accomplished quickly, Respondent would have delivered his rhetorical message, and this would be accomplished with respect to Internet users who might not otherwise have been interested in receiving Respondentís message and would not likely have done so but for the confusion created by Respondent.

 

Respondent also argues that the similarities in the visual appearance of the two websites are intentional and are an integral part of Respondentís message. It is parody and satire. This argument is unpersuasive. This Panel finds nothing paradoxical or satirical about the visual content of Respondentís Website, either generally or in specific reference to the noted palm tree logo.

†††††††††††

Respondent further argues that his free speech rights are superior to Complainantís trademark rights, and as such Respondent should be able to use the Disputed Domain Name for his political speech even though the Disputed Domain Name is identical to Complainantís Mark. Some panels believe this is the correct approach, as noted in the lower portion of section 2.6.2 of the WIPO Overview and in the previous View 2. Without meaning any disrespect to Panels who hold this view, this Panel does not subscribe to this approach for the following two reasons. Firstly, this approach is not necessary to protect Respondentís free speech rights on the Internet. Respondent can use any available domain name that does not include Complainantís Mark or even that does include Complainantís Mark but in combination with an additional word or words creating a clear differentiation from Complainant, such the <trademark+sucks> format. And secondly, this Panel believes that the creation of a strictly national approach to this issue is inconsistent with the borderless nature of the dispute resolution system embodied in the Policy.

 

††††††††††† In sum, this Panel is persuaded that Respondent has intentionally chosen to use a domain name identical to Complainantís Mark in combination with a website that copies Complainantís Website, all for the purpose of impersonating Complainant and confusing Internet users in furtherance of his efforts to publicly criticize Complainant. Such conduct does not establish a legitimate interest.

 

As such, Complainant has established the second element of the Policy.

 

Bad Faith†††††

 

This Panel finds that Respondents registration and use of the Disputed Domain Name as described above constitutes bad faith under the Policy.

 

The essence of bad faith is an intentional abuse of Complainantís Mark by Respondent. Guidance about what circumstances constitute bad faith is provided in Policy paragraph 4(b)(i)-(iv), but these enumerations are not exhaustive or exclusive, and bad faith can be found ďÖeven where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenariosÖĒ Section 3.1 of the WIPO Overview.

 

Complainant demonstrates that Respondentís conduct satisfies almost all aspect of Policy paragraph 4(b)(iv), but because Respondent does not intend to profit financially, Complainant is not able to demonstrate the verbatim application of this paragraph. Nevertheless, Respondent targeted Complainantís Mark for Respondentís own purposes even though he has options easily available that still allow him to further his goals but without causing confusion as to source, sponsorship, or endorsement.

 

As such, Complainant has established the third element of the Policy.

 

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 <collegeofthedesert.com> domain be TRANSFERRED from Respondent to Complainant.

Kendall C. Reed, Panelist

Dated: November 21, 2022

 

 

 



[i] Levine, Gerald M., Domain Name Arbitration; Trademarks, Domain Names, and Cyber Squatting, 2nd ed, (New York: Legal Corner Press, 2019), 383-396.

 

 

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