WIPO Domain Name Decision D2000-0299 for montyroberts.net

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Monty and Pat Roberts, Inc. v. Bill Keith

Case No. D2000-0299

 

1. The Parties

The Complainant is Monty and Pat Roberts, Inc., a corporation organized in the State of California, United States of America (USA), with place of business in Buellton, California, USA.

The Respondent is Bill Keith, with address in Canoga and Porter Ranch, California, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "".

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on

April 15, 2000, and by courier mail received by WIPO on April 18, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On April 20, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On May 5, 2000, WIPO completed its formal filing compliance requirements checklist.

b. On May 5, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. WIPO�s attempted telefax transmission of the notification was unsuccessful.

c. On May 23, 2000, Respondent transmitted its Response to WIPO. Respondent transmitted copies of the Response to Complainant.

d. On May 25, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On May 25, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO. On May 25, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by June 7, 2000. On May 25, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant is a California corporation in the business of selling and training horses, and related services and goods. One of the principals of Complainant is Monty Roberts, an individual. Services and goods of Complainant are sold under the name "Monty Roberts". Complainant claims a common law trademark in the name "Monty Roberts" in the State of California.

Complainant submitted a trademark and service mark registration application for "Monty Roberts" on the Principal Register of the U.S. Patent and Trademark Office (PTO) covering, inter alia, clothing and leather goods, as well as training services (Complaint, para. 13 and Exhibit C). This application (serial number 75/620210), filed January 13, 1999, was subsequently deemed abandoned by the PTO, due to Complainant�s failure to file a timely response to a question raised by the PTO (Id., footnote 1). According to Complainant, this failure was the result of a misdelivered PTO Office Action document, and Complainant asserts it is in the process of curing the determination of abandonment (id). For purposes of this proceeding, Complainant has no trademark registration application pending at the U.S. PTO.

Monty Roberts is very well-known in the United States and other countries as trainer of horses. He has won a number of equestrian championships. He has authored an autobiography, "The Man Who Listens to Horses", which has been on the New York Times bestseller list for at least 58 weeks, and that has appeared on 10 international best seller lists. He has written a second successful book, "Shy Boy: The Horse Who Came in from the Wild". He has provided and demonstrated his horse training services in the United States and abroad, including a command performance for the Queen of England. He has been the subject of a number of national and international television reports and documentaries, including a BBC documentary regarding his training practices, and he has been the subject of news reports in major magazines such as Time and Horse and Rider. (Complaint, para. 14, and Response, Exhibit F).

Complainant has registered and uses the domain name "" in connection with the offering and sale of its services and goods (Complaint, para. 14 and Exhibit L). A Network Solutions� WHOIS database search undertaken by the Panel on June 7, 2000 indicates that this domain name was registered on April 2, 1997, that the record was last updated on May 26, 2000, and that Complainant is the registrant.

Respondent registered and uses the disputed domain name "". A Network Solutions� WHOIS database query response (Complaint, Annex A) indicates that Bill Keith, with Administrative Contact at "Keith, Bill", is the registrant of the domain name "MONTYROBERTS.NET". The record of this registration was created on November 22, 1998, and was last updated on November 22, 1998.

Respondent has used the disputed domain name for a number of purposes. These include: (1) to provide information concerning Monty Roberts that is predominantly of a negative character (Response, Exhibit F); (2) to display on its website and direct Internet users to a website ("") via hyperlink that offers for sale clothing products, coffee mugs and other "Anti-Monty Roberts Memorabilia" (stating in connection with its display "No products are sold via the website itself because its sole purpose is to disseminate information about the horse trainer due to the massive controversy about him and his books"); to direct Internet users (at its "Tour" page) via hyperlink to other websites that (a) advertise and offer for sale a book critical of Monty Roberts ("Horse Whispers and Lies") (at "), and (b) advertise the services of other horse trainers (for example, "John Lyons � America�s Most Trusted Horseman", "Buck Brannaman � a Real Horseman", "Pat Parelli Natural Horsemanship") (Complaint, Exhibit H).

The domain name "", according to a Network Solutions� WHOIS database query of March 13, 2000, was registered to J Bartell, with administrative contact at Bartell, J (Complaint, Exhibit D). J Bartell is Respondent�s authorized representative in this administrative proceeding, and has furnished an executed and notarized Network Solutions� Registrant Name Change Agreement, dated April 19, 2000, intended to transfer the disputed domain name from Respondent to J Bartell (Response, Exhibit A). As a consequence of the commencement of this administrative proceeding, such transfer is on hold (Policy, para. 8).

The domain name "", according to a Network Solutions� WHOIS database query of June 7, 2000, is registered to J Bartell, with administrative contact at Bartell, J (Panel�s WHOIS query). This registration record was created on February 22, 1999, and was last updated on April 20, 2000.

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Parties� Contentions

A. Complainant

Complainant states that it has common law trademark rights in California in the name "Monty Roberts" which it uses "in conjunction with horse training, and related goods and services". It further states in connection with its common law claim that "The MONTY ROBERTS mark has gained distinctive value in the horse training community and beyond, and has been associated with high quality horse training" (Complaint, para. 12).

Complainant notes that it applied for trademark and service mark registration for "Monty Roberts" on the Principal Register at the PTO, but that such application was not pending at the time of the initiation of this proceeding (id., para. 13) (see Factual Background supra).

Complainant indicates that the Monty Roberts name and mark are famous within the meaning of U.S. antidilution law, stating:

"14. The MONTY ROBERTS mark is a famous mark within the meaning of Title 14, section 1125 of the United States Code (Section 43 of the Lanham Act). Monty Roberts won his first equestrian trophy championship in 1939 and his first national in 1950. Since then, he has been a prominent member of the horse industry throughout the world. The MONTY ROBERTS mark is used in conjunction with the trademarked JOIN-UP technique of training horses, which has received worldwide acclaim for its non-violence and effectiveness. MONTY ROBERTS has been advertised extensively in horse training publications. Monty Roberts has been providing his distinctive services all over the world, including a command performance before the Queen of England. Monty Roberts� autobiography �The Man Who Listens To Horses (Random House, 1997) has spent more than 58 weeks on The New York Times best-seller list, along with 10 international best-seller lists. Monty Roberts also co-authored the successful book �Shy Boy: The Horse Who Came in from the Wild� (Hapercollins [sic], 1999). He is the subject of a videotape entitled �Monty Roberts: A Real Horse Whisperer� (Twentieth Century Fox, 1997). In addition, Monty Roberts has appeared on Dateline, a news-magazine television program, and has been covered in magazines such as Time and Horse & Rider. Monty & Pat Roberts, Inc. maintains a web site located at ." (Id., para. 14)

Complainant indicates that the domain name "" is identical to the mark "MONTY ROBERTS", stating that addition of the generic top-level domain name ".net" is "an irrelevant distinction which does not change the likelihood for confusion" (Id., para. 15).

Complainant states:

"16. Bill Keith has no rights or legitimate interests in respect to the name or trademark MONTY ROBERTS, or in . His use of the trademark as the domain name is not a "fair use" of the mark, since it is a commercial use (as explained below) and creates a likelihood of initial interest confusion for Internet users for are searching for Monty Roberts. By using �� to divert people looking for Monty Roberts to Bill Keith�s Web site, Bill Keith improperly benefits from the goodwill that Complainant has developed in his mark. See Brookfield Comm. Inc. v. West Coast Entertainment Group, 174 F. 3d 1036 (9th Cir. 1999) (finding initial interest confusion in use of trademarks in meta-tags). This is not to say that Bill Keith cannot express his opinion about Monty Roberts � rather, he cannot use the domain to confuse Internet users about the sponsorship of the Web site or to attract people to his cause through confusion. �The mere fact that defendant seeks to criticize plaintiff cannot automatically immunize a use that is otherwise prohibited by the Lanham Act.� Planned Parenthood Federation of America v. Bucci, 97 Civ. 0629, 1997 U.S. Dist. LEXIS 3338, (S.D.N.Y. 1997), aff�d mem. 152 F.3d 920 (2d Cir.), cert. denied, 119 S.Ct. 90 (1998) (finding no First Amendment protection, since �by using the mark as a domain name and home page address and by welcoming Internet users to the home page with the message �Welcome to the Planned Parenthood Home Page!� defendant identifies the web site and home page as being the product, or forum, of plaintiff.)" (Id., para. 16)

Complainant distinguishes Bally Total Fitness v. Faber, 29 F.Supp. 2d 1161 (C.D. Cal. 1998) from the instant case on grounds that in Bally "the page clearly stated that it was not affiliated with Bally Total Fitness and the word �sucks� was prominently displayed over the trademark. However, the Court noted that the page, located at , did not use the trademark in the domain name" (Id., para. 16).

Complainant states that Respondent has registered and is using the disputed domain name in bad faith, contending:

"(1) By registering and using the domain, Bill Keith is intentionally using the mark to promote the sale of commercial goods. One of the sections of Bill Keith�s Web site is entitled �Montyroberts.Net Products,� on which Bill Keith advertises t-shirts, riding shirts, mouse pads, coffee mugs and hats. A true and correct copy of this page is attached hereto as Exhibit D. The material is sold through , a domain registered to Bill Keith�s alias and/or cohort, J Bartell. �"

�

"While Bill Keith indicates that all profits will be donated to charity, this does not make the use non-commercial." �

"(2) By using the domain, Bill Keith is intentionally attempting to attract, for financial gain, Internet users to the Web site for the book �Horse Whispers & Lies.� Bill Keith�s alias and/or cohort, J Bartell, has registered the domain name , on which J Bartell advertises a book entitled �Horse Whispers and Lies� (Western International, 1999) for sale. Monty Roberts is the subject of the book. Bill Keith�s Web site promotes the sale of that book, and links to the domain. In addition, the Web page to which Bill Keith sends Internet users promotes this book. By using the Monty Roberts mark to encourage people to buy �Horse Whispers and Lies,� Bill Keith is engaged in commercial use of the mark."

"(3) By using the domain, Bill Keith is intentionally attempting to attract, for financial gain, Internet users to a Web site registered to Bill Keith or his affiliates. In essence, Bill Keith seeks to use the domain name to drive Internet traffic to , a domain that he controls." �

"(4) Bill Keith�s Web page imitates the look and feel of the Web page, and calls itself �The Official Site.� In addition, the main graphic imitates the logo used by Monty Roberts for the Monty Roberts International Learning Center, and "Monty Roberts" is the only "keyword" in the meta-tag. � Even if the Internet users eventually figure out that it is not an official site, Bill Keith�s use of the domain name has created initial interest confusion. See Interstellar Starship Services, Ltd. v. Epix, Inc. 184 F.3d 1107 (9th Cir. 1999)�.

"(5) The domain name , is used to disparage the famous and distinctive MONTY ROBERTS mark, and causes blurring and tarnishment of the mark. Specifically, the Web page located at makes disparaging comments, referring to Monty Roberts as a liar, purporting to link Monty Roberts with a fraudulent insurance company, accusing Monty Roberts of criminal acts, and disparaging his skill with horses. � Furthermore, Bill Keith�s page directs Internet users to other pages critical of Monty Roberts, further blurring and tarnishing the mark. See Jews for Jesus v. Brodsky, 993 F. Supp. at 307 �"

"(6) Bill Keith�s use of the domain name causes dilution of the distinctive quality of the famous mark. First, Bill Keith�s registration of the domain name lessens the capacity of Monty & Pat Roberts, Inc. to identify and distinguish its goods and services by means of the Internet. Monty & Pat Roberts, Inc. is not currently free to use its mark as its domain name in the .net generic top-level domain�."

"(7) On information and belief, Bill Keith is an alias for J Bartell or J Bartell and Bill Keith are in close collusion in the violation of Monty & Pat Robert, Inc.�s trademark rights. J Bartell�s domain was registered less than two weeks after , has the same domain name server, and its IP number is one number away from (209.239.55.226 and 209.239.55.227 respectively). It contains a Web page identical in all respects to the one on (except the name is ). Many sites registered to J Bartell are advertised on Bill Keith�s "Citizens For Justice" Web site, and J Bartell�s domain sells the merchandise advertised on ." (Id., para. 17)

Complainant requests that the Panel ask the Registrar to transfer the domain name "" from Respondent to it. (Id., para. 18)

B. Respondent

Respondent indicates that it has free speech rights in connection with use of the "Monty Roberts" name, stating:

"In light of the pre-existing controversy surrounding Mr. Roberts, Respondent believes he has a genuine right to free speech with regard to the re-publication of such reports and public information documents to make the public aware of the supreme harm that Monty Roberts is perpetrating on an unsuspecting public through his fraud and dubious training techniques. �

�

"Respondent believes that the Complainant is trying to shut down this website for the sole purpose of striking down the right to FREE SPEECH." (Response, para. 7)

Respondent indicates that it has a legitimate interest in the disputed domain name, stating: "The website is engaged solely in the dissemination of legitimate news-worthy information about Monty Roberts and his horse training techniques from various sources, including the press and people who know him personally or have come to know his techniques and dispute their validity." (Id., para. 8(a)).

Respondent indicates that Monty Roberts� reputation as a horse trainer is disputed, and that a number of news stories written about him have been negative (id., para. 8(d)).

Respondent contends that "Public and political figures have always been open to fair criticism in a free society." It refers to websites critical of current presidential candidates that use domain names incorporating the names of the candidates, and indicates that U.S. Federal Election Commission dropped a complaint brought by candidate George W. Bush against the owner of one such site (id., para. 9).

"a. Complainant (or his personnel) trademarked his name in 1999 as the complaint states � long after the informational website was established in 1998. �

b. Monty Roberts claims to have TRIED to trademark his name in the year of his BIRTH � 1935 � a most ludicrous statement�

c. Monty Roberts does not have a famous mark. The name Monty Roberts is known only to a small segment of the public � that of horse-riders or horse trainers and then, only to a small population within that segment. Certainly, many people have not heard of him at all. The trademark was only established a year ago. There is no �powerful consumer association� with his name. To meet the �famousness� element of protection under the dilution statutes, "a mark must be truly prominent and renowned." (I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 46 (1st Cir.1998).

d. The Federal Trademark Dilution Act lists 8 considerations for the determination of �famousness�. Monty Roberts� mark fails to meet the criteria. 1. Monty Roberts has not established fame beyond distinction. 2. The names Monty and Roberts are used both on and off the Internet by other trademarked companies/individuals, and if doing a search in Yahoo! for one or the other, the full name of Monty Roberts does not even come up; 3. Bill Keith is not in overlapping or competing channels of trade; 4. Duration and extent of the use of the trademark has not been sufficiently extensive in scope or time to award it any special protections.

e. Furthermore, there can be no possible tarnishment of his trademark since he has managed to do that himself with respect to the lawsuits filed against him and the numerous legitimate negative news stories and articles that have been and continue to be written about him." (id., para. 10)

Respondent cites Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954, in support of its position on famousness (id., para. 11).

Regarding the issue of commercial use of the disputed domain name, Respondent asserts:

"a. There is absolutely nothing being sold on the website and there are no advertising banners.

b. Respondent has no ownership or other connection with . However, he believes that there is nothing being sold via the website that was also cited in the complaint. He believes the site is a parody site and it is not the subject of this complaint.

c. All artwork is commentary and is equally protected as Free Speech.

d. The website that is cited in the complaint is not owned by Bill Keith � it is a website that sells a book about Monty Roberts and Bill Keith does not receive any profits from the sale of that book.

e. There are no commercial banners on the website which was cited in the complaint (also not the subject of this complaint). Additionally that website is not owned by Bill Keith. There are also no products being sold on that information-only website.

f. Bill Keith is a long-retired gentleman and is not engaged in any similar channel of trade to what Complainant is doing." (Id., para. 12)

Regarding website confusion, Respondent states: "From the home page of any viewer can easily SEE and READ that it is geared toward offering important information about Mr. Roberts that the public needs to know before it continues to be defrauded by Mr. Roberts." (Id., para. 13(a)). Respondent cites Bally Total Fitness, supra, in support.

Regarding the issue of bad faith, Respondent states:

"a. At no time before, during or after the registration and usage of the domain name in question did Bill Keith ever contact the Complainant requesting payment to sell, rent or transfer domain name to Complainant. The site is used solely for informational purposes.

b. Complainant already owned his own website address at and domain name ownership by Respondent in no way hampered Complainant�s activity on his own website or in subsequently trademarking his name.

c. Complainant and Respondent are not competitors in trade and the registration/usage of the domain name in question was not made to disrupt Complainant�s business.

d. There is no commercial use of the domain name in question, thus there can be no possible confusion with Complainant�s own website which sells a variety of goods.

e. Respondent is making a legitimate non-commercial, fair use of the domain name." (Id., para. 15.)

Respondent indicates that it has recently acquired the "" website (id., para. 17(a)).

Respondent indicates that it is not the owner of the "" website (id. para. 17(b)).

Respondent indicates that Complainant�s contentions regarding hyperlinked websites are an attempt at censorship (id., para. 18).

Respondent requests the Panel to make a finding of reverse domain name hijacking against Complainant (id., para. 19).

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this proceeding, Respondent has furnished a detailed Response to the Complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.

The first issue to decide is whether the Complainant has rights in a trademark or service mark.

Complainant does not have a federally registered trademark 2, and the Monty Roberts mark does not enjoy a presumption of secondary meaning under federal law 3. Complainant does not have an extant trademark application 4. Even if it did, this would not create a presumption of secondary meaning in its favor 5. Claims for trademark infringement that are not based on federal registration may be brought on the basis of state common law rights 6.

Complainant alleges that it owns common law trademark rights under California law 7. With respect to its state common law claim, the burden is on Complainant to demonstrate distinctiveness in California 8.

Claims based on marks or names may also be brought as unfair competition and antidilution claims under the Lanham Act. U.S cyberpiracy prevention legislation is part of the unfair competition and antidilution section of the Lanham Act 9, and cyberpiracy prevention does not require that a mark be registered to enjoy protection 10. A claim based on an unregistered mark, including a personal name, requires that the claimant establish the distinctive character of the mark or name on which the claim is based 11.

Complainant�s principal argument to sustain its rights in a protectable mark relate to the alleged fame of one of its principals, Monty Roberts. If Complainant can establish that "Monty Roberts" is a famous mark, then it may be able to protect that mark against dilution 12, even if an infringer is not involved in the same or competing channel of trade 13. A mark need not be registered to be famous, but there are stringent tests applied to meet the criteria of a famous mark 14. Among these are that the mark has achieved a high degree of "recognition in the trading areas and channels of trade used by the mark�s owner and the person against whom an injunction is sought." 15

The facts alleged to prove the famous character of Complainant�s name are:

1. References to two major equestrian championships won in 1939 and 1950;

2. Use of the mark in connection with "the trademarked JOIN-UP technique of training horses, which has received worldwide acclaim for its non-violence and effectiveness;

3. Reference to extensive advertising in horse training publications;

4. Providing services worldwide, including a command performance before the Queen of England;

5. Authorship of an autobiography that has spent more the 58 weeks on the New York Times best-seller list;

6. Authorship of a second successful book regarding horse training;

7. Being the subject of a video-tape produced by a major studio;

8. Appearing as the subject of a national news magazine show, and as the subject of coverage in major magazines, such as Time Magazine.

9. Maintaining a website at "".

Although Respondent nominally disputes the famousness of Complainant�s mark, the gist of Respondent�s complaint is that Respondent considers itself to be performing an important service by correcting the impression made on a wide public audience as to the quality and character of Complainant and its services delivered under its mark. The text at Respondent�s website begins as follows:

"Monty Roberts is a well known horse trainer � a self-proclaimed real life �Horse Whisperer�. Monty Roberts has gained some measure of fame through training demonstrations, a BBC documentary, and his book �The Man Who Listens to Horses�. He even dazzled the Queen of England with his demonstrations." (Response, Exhibit F)

Respondent�s website publication efforts appear to be directed at Complainant because of Respondent�s belief that Complainant�s fame is not justified.

In Avery Dennison, the Court of Appeals for the Ninth Circuit denied protection under the federal antidilution statute for alleged famous surnames when used in a domain name 16. A principal element in the court�s determination in that case was that the defendant used the disputed names in a channel of trade different than the plaintiff�s 17. In the instant case, by way of contrast, the use by Respondent of the "Monty Roberts" name is directed precisely at the market for Complainant�s services � consumers of horse training and related services.

In Avery Dennison, there were other users of the disputed names. In the instant case, the Respondent does not allege that there are competing users of the Monty Roberts name 18.

The Panel is persuaded that Complainant Monty Roberts holds a famous mark in connection with the service of horse training. The name appears to be very well known among service providers and consumers in this sector 19. As such, the Panel determines that Complainant is the holder of rights in a service mark within the meaning of paragraph 4(a)(1) of the Policy.

Respondent has registered the domain name "". This name is identical to Complainant�s service mark "Monty Roberts", except that (1) the domain name eliminates the space between the two words constituting the mark, (2) the domain name adds the generic top-level domain name ".net", and (3) the domain name employs lower case letters, while the mark is generally used with an initial capital letters.

In so far as domain names are not case sensitive, and the elimination of the spacing between words in domain names is dictated by technological factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "", and elimination of the space between the words "Monty" and "Roberts" to form that name, are differences without legal significance from the standpoint of comparing "" to "Monty Roberts" 20. Similarly, the addition of the generic top-level domain (gTLD) name ".net" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".net" is one of only several such gTLDs, and ".net" does not serve to identify a specific service provider as a source of goods or services 21.

For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent�s domain name is "identical" to Complainant�s service mark, since Respondent�s domain name "" is without doubt confusingly similar to Complainant�s service mark "Monty Roberts".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Respondent has disclaimed that its use of the disputed mark has been undertaken in connection with a bona fide offer of goods or services before notice of the dispute. (Response, para. 12). Respondent has not suggested that it is commonly known by the disputed domain name. To establish its rights or legitimate interests in the domain name, Respondent has relied on its alleged use of the name for legitimate non-commercial or fair use purposes. It states, for example:

"The website is engaged solely in the dissemination of legitimate news-worthy information about Monty Roberts and his horse training techniques from various sources, including the press and people who know him personally or have come to know his techniques and dispute their validity." (Response, para. 8(a)) [emphasis added]

"The fact that Complainant and his lawyers are trying to sway the proceedings with information about Monty Roberts� wealth and presumed stature by stating that he has won horse related championships 50 and 60 years ago and is an author of a book is entirely superfluous to the legitimate use of the website to disseminate information about his perpetrating a fraud on the public." (Id., para. 8(b)). [emphasis added]

Respondent�s claim to use of Complainant�s mark for legitimate news dissemination purposes is a serious one, since the Panel is greatly concerned to assure that rights of the public to freely communicate their views on the Internet are protected and preserved. However, in balancing the rights of Complainant in its mark, and the rights of Respondent to freely express its views about Complainant�s services, the Panel concludes that Respondent has impermissibly taken advantage of Complainant�s commercial interests in the mark.

Respondent has the right to express its views concerning Complainant on the Internet (within the boundaries of laws relating to libel and similar causes of action). In the instant proceeding, the Panel makes no findings as to the truth or falsity of the allegations of Respondent in so far as they relate to the quality or characteristics of Complainant�s services.

However, the right to express one�s views is not the same as the right to use another�s name to identify one�s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one�s self as the New York Times or Time Magazine.

In the instant case, Respondent is using as its identifier the domain name "". When an Internet user searches for Complainant�s mark, it will find Respondent�s website address 22. There is nothing in the domain name to indicate that the site is devoted to criticism of Complainant, even though this criticism is apparent upon visiting Respondent�s site. By using Complainant�s mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users.

The fact that Respondent�s primary motive for establishing its site may be to criticize Complainant does not insulate Respondent from the fact that it is directly and indirectly offering products for sale on its website, or at websites hyperlinked to its site.

Several federal court decisions have held in similar circumstances that use of a registered trademark in a domain name to attract Internet users to sites with competing or critical views to those of the trademark holder are not protected by rights of fair use because the competing trademark user is impermissibly taking advantage of the right holder�s interest in its mark 23. In each case, the court makes clear that the competing user is free to express its views in a forum established without exploitation of the mark holder�s rights 24.

In Bally Total Fitness the court found that a mark holders right�s were not infringed by defendant�s use of its mark on its website in a derogatory manner 25. The court found that defendant�s rights to express its views concerning the mark holder�s services were not outweighed by the right holder�s interests in its mark. The critical distinction in Bally is that the defendant was not using the right holder�s mark as its domain name, and was therefore not attempting to attract Internet users directly through the use of the mark holder�s name.

In the instant case, the Panel does not dispute Respondent�s right to establish and maintain a website critical of Complainant (without prejudice to any claims Complainant may have regarding the truthfulness and intent of such criticism). However, the panel does not consider that this gives Respondent the right to identify itself as Complainant. Respondent is using Complainant�s famous mark to attract Internet users to its own website. Upon reaching Complainant�s audience, Respondent then directs users to a site where a book may be purchased, a site where t-shirts and other items may be purchased, and to sites of persons who compete in the same channels of trade as Complainant (that is, other noted horse trainers).

The Panel concludes that Respondent has not established a legitimate non-commercial or fair use of Complainant�s mark. Consequently, Complainant has established the second element necessary to succeed on a claim of abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). These include that a respondent has "by using the domain name, � intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

In the instant case, Respondent is using the domain name "" to attract Internet users to its website by creating a likelihood of confusion with Complainant�s mark. It is doing so for direct or indirect commercial gain. Whether or not such gains are ultimately used for charitable purposes does not alter this conclusion 26. Upon examination of Respondent�s "", Internet users would become aware that the website is not sponsored by Complainant. However, commercial benefit may well accrue to Respondent if the products it offers for sale (directly and indirectly) are purchased by those visiting its website, and commercial harm may well be suffered by Complainant if Internet users abandon their efforts to reach its website. Respondent will have achieved commercial gain by creating confusion regarding the website location of Complainant and its services � diverting Internet users to its own website as a source of products and services.

The Panel determines that Respondent acted in bad faith in registering and using the disputed domain name. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "" to the Complainant.

The Panel denies Respondent�s request for a finding of reverse domain name hijacking on the part of Complainant.

 

7. Decision

Based on its finding that the Respondent, Bill Keith, has engaged in abusive registration of the domain name "" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "" be transferred to the Complainant, Monty and Pat Roberts, Inc.

 

 

Frederick M. Abbott
Sole Panelist

Dated: June 9, 2000

 

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. Respondent mistakenly assumes that Complainant�s trademark is registered by virtue of its trademark application. The panel rejects this assumption.

3. Compare Planned Parenthood Fed'n of Am. v. Bucci, 1997 U.S. Dist. LEXIS 3338 (S.D.N.Y. 1997); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), and Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), each of which involved federally registered marks.

4. The Court of Appeals for the Federal Circuit enforces procedural rules strictly. See Georgetown Steel Corporation v. U.S., 801 F.2d 1308 (CAFC 1986).

5. An application creates a presumption of use contingent on subsequent registration. 15 USCS � 1057(c).

6. See 15 USCS �1104 regarding registration condition for infringement action. See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9th Cir. 1988), and Films of Distinction v. Allegro Film, 12 F. Supp. 2d 1068C.D. Cal 1998), regarding state common law trademark claims.

7. Complainant does not hold a California trademark registration, despite the fact that it has been doing business in California.

8. Century 21 Real Estate and Films of Distinction, supra note 6.

9. 15 USCS � 1125.

10. 15 USCS � 1125(d).

11. U.S. cyberpiracy prevention legislation protects distinctive and famous marks. In order to be famous, a mark must be distinctive. 15 USCS � 1125(c).

12. Two recent WIPO administrative panels have found unregistered marks to be famous and therefore to qualify for protection under paragraph 4(a) of the Policy. See Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235 (May 22, 2000) and Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (May 29, 2000).

13. The Lanham Act antidilution provision states regarding the determination as to whether a mark is famous:

"(c) Remedies for dilution of famous marks.(1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to--

(A) the degree of inherent or acquired distinctiveness of the mark;

(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

(C) the duration and extent of advertising and publicity of the mark;

(D) the geographical extent of the trading area in which the mark is used;

(E) the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;

(G) the nature and extent of use of the same or similar marks by third parties; and

(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register." 15 USCS � 1125(c).

14. Avery Dennison v. Sumpton, (9th Cir. 1999), 189 F.3d 868. The Court of Appeals said:

"� the Federal Trademark Dilution Act and [California] Business and Professional Code � 14330 apply �only to those marks which are both truly distinctive and famous, and therefore most likely to be adversely affected by dilution.� �. The Trademark Review Commission stated that �a higher standard must be employed to gauge the fame of a trademark eligible for this extraordinary remedy.� 77 Trademark Rep. at 461. Thus, �to be capable of being diluted, a mark must have a degree of distinctiveness and "strength" beyond that needed to serve as a trademark.� 3 McCarthy, supra, � 24:109�"(189 F. 3d at 876)

15. 15 USCS � 1125(c)(1)(F).

16. Supra note 13.

17. In Avery Dennison, the Court of Appeals said:

"In the instant case, � Appellants' sought-after customer base is Internet users who desire vanity e-mail addresses, and Avery Dennison's customer base includes purchasers of office products and industrial fasteners. No evidence demonstrates that Avery Dennison possesses any degree of recognition among Internet users or that Appellants direct their e-mail services at Avery Dennison's customer base." (189 F.3d 878).

18. Id. at 878. Respondent has referred to other users of the names "Monty" and "Roberts" independent of each other, but not in combination. See Response, para. 10(d)).

19. In Avery Dennison, the Court said: "�fame in a localized trading area may meet the threshold element under the Act if plaintiff's trading area includes the trading area of the defendant. � The rule is likewise for specialized market segments: specialized fame can be adequate only if the �diluting uses are directed narrowly at the same market segment.�"� Id. at 877-78.

20. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).

21. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".net" may be capable of acquiring secondary meaning in another context.

22. The Panel appreciates that the mark holder is the registered holder of the domain name "." However, typical search engines will also locate ".net" and ".org" sites, and such sites are frequently visited.

23. See, e.g., Planned Parenthood and Jews for Jesus, supra note 3.

24. The principal distinction between those cases and the instant case is that in the referenced cases the mark at issue was federally registered, and enjoyed a strong presumption of secondary meaning. In the instant case, the Panel has decided that the Complainant has sufficiently established secondary meaning and famousness of its mark, and therefore meets the necessary criteria for protection of its mark.

25. 29 F. Supp. 2d 1161.

26. See Planned Parenthood and Jews for Jesus, supra note 3.

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