WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ahmanson Land Company v. Vince Curtis
Case No. D2000-0859
1. The Parties
Complainant is Ahmanson Land Company, a corporation organized under the laws of the State of California, U.S.A. ("Complainant"). Respondent is Vince Curtis, an individual residing in Oak Park, California, U.S.A.
2. The Domain Name and Registrar
The domain names which are the subject of this proceeding are and owned by Vince Curtis. The domain names are registered with Network Solutions, Inc., Herndon, Virginia, USA and T, Inc., Toronto, Canada, respectively.
3. Procedural History
3.1 Complaint was submitted by e-mail on July 25, 2000; one original and four hard copies with Annexes were received on July 27, 2000.
3.2 E-mail acknowledging receipt of Complaint from Center to Complainant was sent on August 1, 2000.
3.3 Center�s Request for Registrar (Network Solutions, Inc.) (T, Inc.) Verification/Registrar Verification (NSI) (Tucows) were submitted August 1, 3 and 9, 2000.
3.4 Center�s Formal Requirements Compliance Checklist was completed on August 10, 2000.
3.5 Notification of Complaint and Commencement of Administrative Proceeding was issued on August 11, 2000.
3.6 E-mail from Respondent requesting extension of time; Center�s e-mails to Complainant�s attorney; e-mail response from Complainant�s attorney; Center�s e-mail reply to Respondent granting extension until September 13, 2000; Respondent�s e-mail reply to Center; Respondent�s reply were exchanged from August 11-17, 2000.
3.7 Response received by e-mail (September 18, 2000); one original and four hard copies (September 14, 2000).
3.8 Acknowledgment of Receipt of Response was sent on September 18, 2000.
3.9 Notifications of Panelist Appointment and Presiding Panelist Selection List were sent on October 13, 2000.
3.10 Notification of Appointment of Administrative Panel and projected decision date was sent on November 13, 2000.
4. Factual Background
4.1 The Complainant alleges trademark rights in the term AHMANSON RANCH through use of AHMANSON RANCH in connection with its business activities.
4.2 The Respondent registered the domain names on February 3, 1998 and March 7, 2000 respectively, and denies that Complainant owns such trademark rights. Respondent further asserts fair use and noncommercial use of the term AHMANSON RANCH for his websites, which are critical of the Complainant�s development plans for the Ahmanson Ranch. Respondent further denies any bad faith.
5. Parties� Contentions
A. Complainant
5.1. Summary of Complainant�s Marks
Complainant Ahmanson is a member of the Ahmanson family of companies, and is authorized to use the Ahmanson trade name in commerce. The Ahmanson name is protectible and famous under United States trademark laws. The Ahmanson name is famous as a result of decades of continuous use.
Ahmanson is also the owner of the Ahmanson Ranch common law mark. Ahmanson presently uses the mark in commerce in connection with its real estate development services. The Ahmanson Ranch mark has become famous in Southern California.
As the Ahmanson Ranch project development proceeds, Ahmanson or its assignees will also use the Ahmanson and Ahmanson Ranch marks in connection with residential, commercial and industrial real state development, management, sales and leasing, operation of various recreational facilities and golf courses, hotel and resort services, educational services, telecommunications and cable services, and retail services, among others.
5.2. History and Development of Complainant�s Ahmanson Trade Name
In 1927, Howard F. Ahmanson formed H.F. Ahmanson & Company, which for the next twenty years dealt primarily in insurance and real estate foreclosures. Then, in 1947, H.F. Ahmanson & Company purchased Home Savings of America ("Home Savings"), a modest savings and loan. In the years that followed, H.F. Ahmanson & Company and Home Savings experienced rapid growth, and in 1961 became the first savings and loan to hold over $1 billion in assets.
As H.F. Ahmanson & Company and Home Savings grew, they created numerous affiliated companies which used the Ahmanson trade name, including Ahmanson Developments, Inc., Ahmanson Residential Development, Ahmanson Commercial Development Company, Ahmanson Insurance, Inc., Ahmanson Marketing, Inc., Ahmanson Obligation Company, Ahmanson Ranch, Inc., and Ahmanson Residential 2 (collectively referred to as the "Ahmanson Companies"). Since at least the mid-1960's, these companies have provided financial products and services, and real estate development and management services, nationwide.
Over the seventy-three years since H.F. Ahmanson & Company opened its doors, the Ahmanson Companies have continuously used the Ahmanson trade name in commerce in Southern California and throughout much of the United States. As a result, millions of Americans have come to associate the Ahmanson trade name with the Ahmanson family of companies. In fact, although Mr. Ahmanson died in 1968, the Los Angeles Times recently named him one of the fifty most influential business leaders of the 20th Century because of the business empire he created -- the Ahmanson Companies.
5.3 The Ahmanson Ranch Project
In 1963, H. F. Ahmanson & Company purchased a roughly 6,200 acre property in southeastern Ventura County known as "Crummer Ranch." and attempted to construct a residential project (dubbed the "Ahmanson Ranch™" project) on a portion of the site in the mid-1960's.
In the mid-1980's, H.F. Ahmanson & Company and Home Savings created a new development project for the site. When completed, this new Ahmanson Ranch project will be a master-planned community including 3,050 homes, commercial and retail uses, public facilities, two golf courses, and 900 acres of dedicated open space. Complainant Ahmanson Land Company was formed in 1989 to develop the Ahmanson Ranch project.
The Ahmanson Ranch project has been in the public spotlight almost since its inception. In 1986, H.F. Ahmanson & Company and Home Savings initiated public proceedings to develop the Ahmanson Ranch project and requested a preliminary approval from Ventura County to process the development. The Ventura County Board of Supervisors held several public hearings on Ahmanson�s proposed development and gathered input from homeowners� associations, environmental organizations, several parkland agencies, numerous individuals and other local cities and agencies. In July 1988, Ahmanson�s request was approved.
From 1990 through 1992, Ventura County conducted numerous public hearings on the Ahmanson Ranch project. During this review period, Ventura County received extensive oral and written comments from federal, state and local agencies, homeowners� associations, business and community organizations, environmental groups, parkland agencies and interested individuals.
During this same period, entertainer Bob Hope and his wife Delores Hope proposed a residential and golf course project in on another site in Ventura County located one canyon over from the Ahmanson Ranch project site. Ultimately, Ahmanson Land agreed, as a condition of approving the Ahmanson Ranch project, to effect the transfer of nearly 10,000 acres of undeveloped property, including the Hopes� site, to a governmental parkland agency to be permanently preserved as public open space. Ventura County approved the Ahmanson Ranch project in December 1992. Since Ventura County�s approval of the Ahmanson Ranch project, Ahmanson has continued the development process. This process has included a multitude of well-attended public hearings.
The Ahmanson Ranch project has also received intense interest from the surrounding communities. The project garnered widespread support from community organizations such as the Ventura County Economic Development Association, the Valley Industry and Commerce Association, and the Central City Association. It has also been recognized for its superior design, winning the Building Industry Association of America�s Best New Town Award in 1993 and the California Chapter of the American Planning Association's Comprehensive Planning Award in 1995. The project has also encountered significant opposition. Some organizations have filed numerous lawsuits seeking to stop the Ahmanson Ranch project, staged demonstrations, coordinated letter-writing campaigns, and even run television and radio advertising spots opposing the Ahmanson Ranch project.
The very public permitting and approval process for, community recognition of, extensive litigation over, and intense public interest (both pro and con) in the Ahmanson Ranch project has generated extensive media coverage. Since 1986, the Los Angeles Times alone has run articles on the development of the Ahmanson Ranch project over 600 times in three different editions. The Ventura County Star has run approximately 150 articles on the Ahmanson Ranch project since July 1, 1997. The Daily News, the Conejo Valley Daily News, several smaller local newspapers, and local radio and television stations have also extensively covered the project. The story behind the approval of the Ahmanson Ranch project was even featured in a 1997 book "The Reluctant Metropolis: The Politics of Urban Growth in Los Angeles," written by William Fulton and published by Solano Press Books. As a result of this widespread public interest and extensive press coverage, the Ahmanson Ranch mark has become a household word in Ventura and Los Angeles Counties, and synonymous with the Ahmanson Ranch project.
5.4. Respondent�s Usurpation of the Ahmanson Trade Name and Ahmanson Ranch Mark
Even in advance of ground breaking, Ahmanson is developing a website to provide the public with up-to-date information on the progress of and plans for the project. In order to make that site readily accessible to Internet users, Ahmanson desires to host that website at the most logical addresses: domain names that comprise its trade name and mark. However, Ahmanson is blocked from doing so because Respondent, no doubt anticipating Ahmanson�s plans, has already reserved those domains. Respondent has confirmed his intent to host websites at the or domain names at which he will provide information on the opposition to the Ahmanson Ranch development project. Defendant�s usurpation of these unique domains prevents Ahmanson from capitalizing on the public recognition and goodwill associated with its Ahmanson trade name and Ahmanson Ranch mark, and uses such recognition and goodwill to harm Ahmanson.
5.5 Ahmanson Holds Protectible Rights in the Ahmanson Trade Name and Ahmanson Ranch Mark.
Ahmanson Trade Name
The Ahmanson trade name is protected under �43(a) of the Lanham Act, 15 U.S.C. � 1125(a). Trade names or marks that that have, through usage, become distinctive of the user�s goods or services in commerce are protectible under �43(a). Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-769, 112 S.Ct. 2753, 2757 (1992). This acquired distinctiveness is referred to as "secondary meaning." Id.
Personal names used as marks are treated as strong marks upon a showing of secondary meaning. Adray v. Adry-Mart, 76 F.3d 984, 990 (9th Cir. 1995), citing E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992). A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization. Cf. California Western School of Law v. California Western University, 125 Cal.App.3d 1002, 1009, 178 Cal.Rptr. 685, (1982) (applying California law). Put otherwise,
"Secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business."
2 McCarthy, McCarthy on Trademarks and Unfair Competition, �13:2, p. 13-5. In finding secondary meaning, courts consider factors such as the owner�s long, continued use of the mark and its widespread public recognition, the size of the company, the number of customers, advertising expenditures, and unsolicited media coverage of the services and the mark. See Jews for Jesus v. Brodsky, 993 F.Supp. 282, 298 (D.N.J. 1998) (partial list); Gallo at 1291. Evidence of deliberate copying is also relevant to a determination of secondary meaning and, in appropriate circumstances, may be sufficient in and of itself to support an inference of secondary meaning. Fuddruckers, Inc. v. Doc�s B.R. Others, Inc., 826 F.2d 837, 844 (9th Cir. 1987).
Consideration of these factors demonstrates the strong secondary meaning of the Ahmanson marks, and their indelible association with the Ahmanson Companies. Over the seven decades since H. F. Ahmanson & Company was founded, the Ahmanson trade name has been used by that company and a number of affiliated Ahmanson Companies, including Complainants. During this time the Ahmanson Companies have employed thousands, spent millions of dollars in advertising and public relations, and done business with tens of thousands of individuals and companies in over a dozen states. Through this long and extensive use, the word "Ahmanson" has acquired strong secondary meaning as a trade name and as an indication that the associated company, product, or service is part of or offered by the Ahmanson family of companies. This secondary meaning was recognized by the United States Patent and Trademark Office ("PTO") when it listed the Ahmanson Mortgage mark, Reg. No. 1,454,613, (owned by another of the Ahmanson Companies) on the Principal Register. It is further evidenced by Defendant�s intentional copying of the Ahmanson name. And, it is demonstrably apparent in the headlines of hundreds of news stories on the Ahmanson Ranch project, which repeatedly refer to Ahmanson as the entity developing the Ahmanson Ranch project.
The Ahmanson Ranch Mark
The Ahmanson Ranch mark is also clearly protectible. As detailed above, the Ahmanson Ranch mark has accumulated strong secondary meaning as a result of the prolonged and well-publicized public approval and permitting process for the project, Ahmanson�s extensive public relations efforts, intense public interest in the project and extensive unsolicited media coverage, such that the Ahmanson Ranch mark has become synonymous with the development project. This fact is evidenced (and reinforced) by numerous headlines of news articles that repeatedly refer to the project as "Ahmanson Ranch" (e.g. "Land Deal Clears Way For Ahmanson Ranch Homes" and "Judge rejects Challenge By Ahmanson Ranch Foes"). Under such circumstances, names of planned developments, like Ahmanson Ranch, have been held to be protectible marks. See e.g., In re Pebble Beach Co., 19 U.S.P.Q.2d (BNA) 1687 (T.T.A.B. 1991).
5.6. The Ahmanson and Ahmanson Ranch Marks are "Famous"
The Federal Trademark Dilution Act, 15 U.S.C. � 1125(c), provides a non-exclusive list of factors courts may consider in determining whether a mark is distinctive and famous. These factors include: the degree of secondary meaning of the mark; the duration and extent of the owner�s use of the mark; the duration and extent of advertising and publicity of the mark; the degree of recognition of the mark in the trading areas and channels of trade used by the mark�s owner and the person against whom the injunction is sought; whether the mark was registered; the nature and extent of use of the same or similar marks by third parties; and the geographical extent of the trading area in which the mark is used. Id.
As developed in detail above, the Ahmanson trade name and the Ahmanson Ranch mark carry a very high level of secondary meaning. The Ahmanson Companies have used the Ahmanson trade name for over seventy years, throughout California and nationwide, to provide an array of financial products and services and real estate development and management services to thousands of customers. Indeed, the operations of the Ahmanson Companies have been so extensive that in 1999, the Los Angeles Times named their founder, Howard F. Ahmanson, one of the fifty most influential business leaders of the 20th Century.
The distinctiveness and fame of the Ahmanson trade name and Ahmanson Ranch mark have also been strengthened through years of advertising. Several of the Ahmanson Companies have engaged in extensive advertising and public relations campaigns, including Ahmanson Land (over $1.5 million spent on public relations to promote goodwill associated with the Ahmanson Ranch project), Ahmanson Mortgage (over $2 million spent in advertising from 1983 through 1986 alone), Ahmanson Developments ($70,000 spent in March 2000 alone to promote residential housing developments in Sacramento, California) and Ahmanson Residential Development (advertising for residential developments).
Further, the Ahmanson name and the Ahmanson Ranch mark have been indelibly etched into the consciousness of the residents of Southern California. As detailed above, Ahmanson and the Ahmanson Ranch project have been through numerous public approval proceedings and lawsuits; have garnered tremendous public interest; have been the subject of hundreds of articles over the last fifteen years; and have been the targets of a very public campaign to stop the Ahmanson Ranch project. The "local" fame that has developed as a result is in itself enough to prove Ahmanson�s name and mark famous, for a mark that is locally well-known can be a "famous" mark protected by �1125(c) even though it is unknown in other parts of country. E.g., WAWA, Inc. v. Haaf, 1996 U.S.Dist. LEXIS 11494, 40 U.S.P.Q.2d (BNA) 1629 (E.D.Pa. 1996) ("Wawa" service mark used by regional convenience store chain found to be "famous" and protectible under FTDA).
5.7 The and Domain Names Are Identical or Confusingly Similar to Complainant�s Marks and Trade Name
The and domain names are, under standards applied by published WIPO decisions, identical (or at least confusingly similar) to Complainant�s Ahmanson Ranch mark. The only differences between the and domain names and the Ahmanson Ranch mark have been held to be meaningless by WIPO panels. E.g., Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300), p. 9 (addition of generic top-level domain name ("gTLD") to mark and/or elimination of spaces are "without legal significance" in determining identity or similarity). Accord J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 at p. 3 ( found identical to J.P. Morgan mark). The disputed domain names are also confusingly similar to Complainant�s Ahmanson trade name.
5.8. Respondent Has No Rights or Legitimate Interests In Respect of the or Domain Names
Paragraph 4(a)(ii) of the Policy provides that a Respondent may establish rights or a legitimate interest in a domain name if it can show that:
1. Before any notice of the dispute, Respondent used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; or,
2. Respondent has been commonly known by the domain name; or,
3. Respondent is 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 here can make no such claims.
Respondent�s name is Vince Curtis. He has never done business as, or been commonly known as, Ahmanson or Ahmanson Ranch. Nor could he.
Complainant and other members of the Ahmanson Companies have filed articles of incorporation under Section 200 of the California Corporations Code containing their respective corporate and trade names (listed above). Pursuant to California Business and Professions Code Section 14415, those companies have a presumptively exclusive right to use such trade names, as well as any confusingly similar names. Therefore Curtis simply could not operate under the Ahmanson or Ahmanson Ranch banner. Cf., Finter Bank Zurich (applying similar provision under Swiss law).
Nor can Respondent claim he is making a "fair use" of Complainant�s Ahmanson Ranch mark. To the contrary, he is using the Ahmanson Ranch mark to misleadingly identify the source of his website.
In the WIPO decision regarding the domain name -- a case on all fours with the instant matter -- the Respondent argued that its use of the domain name was a fair use because it operated a website at that domain name dedicated to the "dissemination of legitimate news-worthy information about the pre-existing controversy surrounding Monty Roberts and his horse training techniques from various sources." Monty Roberts, supra at p. 10. The Panel in that case noted "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." Id. Finding that "Respondent is using Complainant�s famous mark to attract Internet users to its own website," the Panel concluded Respondent�s use of Complainant�s mark was neither legitimate noncommercial nor fair use of the mark, and ordered the domain name transferred to Complainant.
Similarly, in DFO v. Christian Williams, WIPO Case No. D2000-0181, the respondent claimed he was making "fair use" of the name and mark of the Denny�s restaurant chain because he had registered in order to run a "chat group" of Denny�s restaurant habitu�s. The Panel found that respondent had not chosen a domain name that made fair use of the Denny�s name to identify his website for what it was, noting that "[a]ny number of ways of styling such a fair use domain name come readily to mind." Accord, Compagnie de Saint Gobain v. Com-Union Corp., WIPO Administrative Panel Decision, Case No. D2000-0020 (respondent�s registration and use of for the purpose of discussing matters relevant to shareholders of Compagnie de Saint Gobain was not "fair use"; respondent could easily have chosen domain name that more adequately reflected the nature of its site).
Several federal courts have, under similar circumstances, also found that use of a mark as a domain name serves as a source identifier, not communicative speech, and rejected registrants� "fair use" arguments. E.g., Planned Parenthood v. Bucci, 1997 U.S.Dist. LEXIS 3338, *34-35, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997) (Annex 29); OBH, Inc. v. Spotlight Magazine, 86 F.Supp.2d 176, 185 (W.D.N.Y. 2000); Cf., Cardservice International, Inc. v. McGee, 950 F.Supp. 737, 741 (E.D.Va. 1997) aff�d, 129 F.3d 1258 (4th Cir. 1997) ("[A] domain name is much more than a mere Internet address. It also identifies the Internet site to those who reach it, much like . . . a company�s name identifies a specific company."); Virtual Works, Inc. v. Network Solutions, Inc., 2000 U.S.Dist. LEXIS 2670, *5, 54 U.S.P.Q.2d (BNA) 1126 (E.D.Va. 2000).
The same circumstances that drove the Monty Roberts, DFO and Compagnie de Saint Gobain decisions (and corresponding federal court decisions) are evident here. First, Respondent�s intended use of the and domain names to host a website improperly uses Complainant�s Ahmanson Ranch mark as an identifier of source or sponsorship, not a criticism of Ahmanson or the Ahmanson Ranch project. As in the Monty Roberts, DFO and Compagnie de Saint Gobain cases, there is nothing in these domain names to indicate Respondent�s intended site is devoted to criticism of Ahmanson, or of the Ahmanson Ranch project. The fact that such criticism will likely be apparent once an Internet user reaches Respondent�s site does not change the fact that Respondent will have used the Ahmanson name and Ahmanson Ranch mark to divert Internet traffic to his site. See Monty Roberts at p. 10; DFO at p. 4.
It should be noted that Complainant is in no way seeking to constrain Respondent�s criticism of Ahmanson, its parent company Washington Mutual, or the Ahmanson Ranch project. Respondent is free to express his views using a domain name that does not infringe on Complainant�s trademark rights, such as his prior address. Rather, Complainants seek only to protect their valuable trade name and marks, and to ensure Respondent does not use the fame and recognition of the Ahmanson name and marks to divert Internet users to his own websites or to tarnish the goodwill associated with such name and marks.
5.9. Respondent Has Registered and Used the and Domain Names In Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that constitute evidence of bad faith registration and use of a domain name, every one of which are present here. In particular, it is abundantly clear that Respondent registered the and domain names in order to (1) prevent Ahmanson from reflecting its trade name and mark in a corresponding domain name, (2) disrupt Ahmanson Land�s development of the Ahmanson Ranch project, and (3) misdirect Internet users to his web site for financial gain and to further his anti-Ahmanson purpose. There is also evidence Respondent�s intent in registering these domain names was to rent them to Ahmanson.
As a long-time opponent of the Ahmanson Ranch project, Respondent has been well aware of Complainant�s Ahmanson trade name and Ahmanson Ranch mark for years. Yet, he registered the Ahmanson Ranch mark as his domain names anyway, even though by his own admission he already operated a website at which contained the same information as he intends to post at the domain names at issue. Respondent�s purposes in doing so are clear: to prevent Ahmanson from using its mark as a domain name, and to lure Internet users seeking information on the Ahmanson Ranch project onto his anti-Ahmanson Ranch project website instead. Such circumstances are expressly identified as evidence of bad faith in Paragraph 4.b(ii) through (iv) of the Policy.
Various WIPO panels have faced this same set of circumstances, each time ordering the disputed domain name(s) transferred to the mark owner. For example, in the Saint Gobain case, the respondent argued that his registration of the domain name was a protected "fair use" of complainant�s "Saint Gobain" trademark because respondent intended to operate a site at that domain dedicated to discussion and criticism of the company. The Panel rejected this argument, holding that "by knowingly choosing a domain name which solely consists of Complainant�s trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties." Id. at p. 4. See also DFO, supra (holding respondent�s registration of with full knowledge the name belonged to Complainant and subsequent use of name as "chat group" of Denny�s restaurant patrons was strong evidence of bad faith; and rejecting respondent�s argument that his use of a prominent disclaimer on his website eliminated any likelihood of confusion among Internet users as to the source or sponsorship of the website); Monty and Pat Roberts, at 11. Cf. The Chicago Tribune Company v. Jose P. Varkey, WIPO Case No. D2000-0133 (respondent�s use of domain name identical to complainant�s mark to attract Internet users to his site for the purpose of soliciting them to "join LOVE-OF-GOD-JESUS" fell within "commercial gain" element of paragraph 4(b)(iv) of the Policy and demonstrated bad faith registration and use).
Further, in an interview for an article run in The Daily News (Conejo Valley Edition) on June 24, 2000 Curtis responded to Ahmanson�s letter demanding that he transfer the names by stating "I was thinking I would rent it to them and if they wanted to use it (they could) pay me for the rental use." Registration of another�s mark as a domain name with the intent to rent the domain name to the mark holder is expressly recognized as demonstrating bad faith in Paragraph 4(b)(i) of the Policy.
It should also be noted here that Curtis has previously demonstrated his willingness to infringe on Ahmanson�s trademark rights and engage in fraudulent conduct to advance his anti-Ahmanson crusade. In 1996, he initiated a deceptive propaganda campaign against the Ahmanson Ranch project using the United States mail. [Declaration of Nicki Carlsen ("Carlsen Decl."). He (and others under his direction) mailed anti-Ahmanson packages and postcards to executives of Ahmanson and Home Savings (then Ahmanson�s parent company) at their homes. Id. Curtis used the service marks, logos and addresses of H.F. Ahmanson & Company and Home Savings as return addresses, seeking to trick the recipients into believing the mail had come from those companies. Id. He stopped this deceptive and fraudulent campaign only after Ahmanson�s lawyer sent him a strongly-worded cease and desist letter.
These circumstances are prototypical examples of bad faith registration and use under Paragraph 4.b. of the Policy, and more than sufficient to justify transference of the and domain names to Ahmanson.
B. Respondent
5.10 Respondent registered the domain name, on February 3, 1998. He registered this name after research with attorneys in 1997 and 1998 showing that the Complainant did not have any form of trademark(s) on either �ahmanson ranch� or �ahmanson�. He later registered the domain name on or about March 7, 2000.
5.11 He opposes a proposed housing development project on land commonly referred to as �Ahmanson ranch� owned by the Complainant, Washington Mutual, and their company, Ahmanson Land Company. He has opposed this development as an individual, as an assistant director of a local community group, Save Open Space, and as the director of a self-created ad hoc group formed to oppose this proposed development, Friends of Ahmanson Ranch. He has opposed this development due to projected adverse effects of the proposed development on the area in which he and his family live. He has spent thousands of dollars of his own money, and hundreds of hours of his time opposing this project due to the extreme effects it will have on his community. In 1998, he spent thousands of dollars running (unsuccessfully) for political office (Ventura County Supervisor), a position of political authority over the proposed project. He has formally opposed this development since around 1993.
5.12 The name �Ahmanson ranch� is a commonly referred to phrase attributed to a specific 5,400-acre parcel of land, purchased by the H.F. Ahmanson Corporation, parent of Home Savings of America, in 1963. The previous commonly referred to name of this 5,400 acre parcel was �Crummer Ranch�, and before that �Albertson Ranch� (owned by a family named Albertson) and �Morrison Ranch� (owned by a family named Morrison), and before that was part of an old Spanish �rancho�. The term �ranch� and �rancho� were primarily used due to cattle ranching operations on this parcel of land prior to transfer to the H.F. Ahmanson company, parent company of Home Savings of America. Title transferred from the Crummer family/corporation to the H.F. Ahmanson company in 1963, and for common reference, many people, including the Complainant, dropped the family name of �Crummer� and substituted the new owner�s name of �Ahmanson�, hence the new commonly referred-to name, �Ahmanson ranch�. It remains to this day to be commonly referred to as �Ahmanson Ranch� by neighbors and residents near the property. There is also one, and only one entrance sign located at 25343 West Mureau Road, Calabasas, CA 91302, USA. And the proposed development on Ahmanson ranch is still just that, proposed. And since the development is proposed, it is in the planning process (trying to obtain necessary permits), and ground breaking, to date, has NOT begun. All necessary permits have NOT been received.
5.13 Identity or confusing similarity of domain name and trademark
Simply put, the Complainant does not have a trademark on either name, �ahmanson� or �ahmanson ranch�. The Complainant has recently filed an ITU (intention to use) trademark application on June 7, 2000 for the marks, �ahmanson� and �ahmanson ranch� in various uses. This application, signed by the Complainant, infers that the Complainant (Ahmanson Land Company) has had no prior or previous trademark in either �ahmanson� or �ahmanson ranch�. Hence and could not be �identical or confusing similar to a trademark or service mark in which the Complainant has rights�, since they do not currently have a formal (or otherwise) trademark on the names. Also, a search in the US Patent & Trademark Office showed the only �ahmanson� trademarks were �Ahmanson Mortgage�, �Ahmanson Mortgage Company�, and �Music Center Ahmanson Theatre�. �Ahmanson Mortgage� and �Ahmanson Mortgage Company� are apparently now abandoned trademark names once controlled by H.F. Ahmanson, parent of Home Savings and Loan. �Music Center Ahmanson Theatre� is not related to the H.F. Ahmanson Co., the Complainant, or the Washington Mutual Co.
5.14 Section 2(f) of the Lanham Act states that a mark may be enforceable through "distinctiveness achieved through continuous use and consumer recognition of the word, phrase, symbol, etc, acting as a trademark," and may apply for the word �ahmanson�, it could not apply for the phrase �ahmanson ranch� because the phrase �ahmanson ranch� has NOT been used continuously by the Complainant since purchase in 1963. In addition, the phrase �ahmanson ranch� does not have any consumer recognition as described below. And though the word �ahmanson� was previously used in the now-abandoned trademark of �Ahmanson Mortgage�, the phrase �ahmanson ranch� has never been used in any previous trademark.
5.15 The Complainant currently does not own the entire �Ahmanson ranch� as they state in 12.a. in their Complaint. As a condition of developing the 5,400-acre ranch, the Complainant transferred a major portion (2600+ acres of the 5400-acre parcel) to a public agency on September 23, 1998. The portion, which was transferred in September 1998 was referred to in the Complainant�s own Development Agreement as the �Ahmanson Ranch Public Open Space Dedication Area.� Currently this �Ahmanson Ranch Public Open Space� is in public hands and is freely accessible by the public for hiking and other recreational uses. In essence, nearly half of the �Ahmanson ranch� is not owned by the Complainant.
In addition, since the Complainant is still in the process of obtaining all of the necessary permits to begin construction, some additional acreage from the development area (the Ahmanson ranch Specific Plan area�) may be transferred from the Complainant to a public agency as a condition for ground breaking. The Complainant has noted (in their own environmental impact report) smaller housing alternatives that would bring the total public acreage of the �Ahmanson ranch� to over 75%.
5.16 In fact, since 1963, proposed development on Ahmanson Ranch varied from 34 homes to the now proposed 3,050 homes. Past Ahmanson Land Company president Don Brackenbush reported in a newspaper article in 1990 that a previous 3,000 home plan (in 1990) would dedicate 73 percent of the 5,400-acre ranch to public open space.
5.17 With respect to the Complainant�s claim that the name �ahmanson ranch� is �famous� or �distinctive,� that claim is extremely misleading to the reader. Simply put, very few people know where or what the �ahmanson ranch� is. And again, the Ahmanson Ranch has only one small sign at the entrance road at 25343 Mureau Road, Calabasas, CA, USA, telling of where the ranch property entrance is. There are no other �Ahmanson Ranch� signs in existence. And private property location has been off limits to the general public since 1963 when H.F. Ahmanson Co. purchased it. The $1.5 million spent on public relations to promote good will the Complainant speaks about in 12.c.3 in the Complaint has mostly been spent on attorneys and lawyers fighting opponents of the proposed project in various lawsuits over the past eight years. The �Ahmanson Ranch� project only exists on paper, with only one small ranch house located on the property.
5.18 One of the biggest problems for opponents of this housing development is and was informing the public about the potential negative effects of the �Ahmanson ranch� development. We continually find a lack of understanding from the public about this issue due to the fact no one knows where or what the �Ahmanson ranch� is. The vast majority of residents within a ten-mile radius of the ranch have no idea what it is or where the development is located. Most residents, within the Los Angeles, California area, when told of the name �Ahmanson�, think of the Ahmanson theatre, a major cultural theatre located in downtown Los Angeles, not related to any Washington Mutual company relationship. Residents have no idea that the once popular bank/savings and loan, Home Savings of America, was owned by the H.F. Ahmanson company. The vast majority of Internet sites related to the �ahmanson ranch� were created by opponents of the development. And there are no Internet sites run by the Complainant, Ahmanson Land Company regarding the Ahmanson Ranch. These names can hardly be considered �famous� or �distinctive�.
5.19 In addition, the phrase �ahmanson ranch� simply could not have �consumer recognition� (as talked about in Section 2(f) of the Lanham Act) because there is (currently) nothing for sale to the consumer. What development plan there is is only planned by the Complainant and may change at any given moment. In fact, as recently as September 9, 2000, in the LA Times report �Agency Proposes Habitat for Endangered Frogs�, the federal agency, the US Fish and Game is proposing designating acreage, which includes the Ahmanson Ranch, as a more highly protected area to stem the decline of the famed red-legged frog. The report states, �The activities that could be curbed include water transfers or diversions, construction projects, and recreational activities.� The article goes on to specifically point out that the Ahmanson Ranch could be severely impacted, and quotes from both the Complainant (representative Tim McGarry) and the Respondent regarding , Paul Nicholson, member of Save Open Space. This is another example why the Ahmanson Ranch may never be built at all.
5.20 Also, the proposed development on the Ahmanson ranch property has not exclusively been referred to by the Complainant as �Ahmanson Ranch�, but by the names of, but not limited to, �the ahmanson ranch�, �ahmanson city�, �ahmanson development�, �ahmanson resort�, �the ahmanson project�, �ahmanson village�, �ahmanson park�, �ahmanson residential development�, and other various names. In fact, the Complainant has recently acquired domain names (on or around May 2000) to reflect possible other future formal and informal names of the housing development by the Complainant, Ahmanson Land Company. These names include , , and others.
5.21 Only trademark uses of an allegedly infringing mark can dilute a trademark. The registration of a domain name, without anything more, does not constitute use of the name as a trademark and, therefore, could not constitute trademark infringement. See Lockheed Martin Corp.V. Network Solutions, Inc. 985 F. Supp 949, 44 U.S.P.Q. 2nd 1865 (C.D. Cal. 1997).
5.22 According to the treatise McCarthy on Trademarks, cases interpreting Section 43(a) of the Lanham Act uniformly include a requirement that the false representation be in a commercial advertising or promotion and the misrepresentation, if any, concern the nature of goods, services or commercial activities. Contrary to the Complainant�s references, I do not advertise anything. I own and , both registered to promote public awareness of the proposed Ahmanson Ranch project, which Respondent does not support. Fair use is a specific defense to any trademark infringement claim. The defense is available for activities relating to the conveying of news and other forms of socially useful information. Please see McCarthy on Trademarks, Section 97.3. This is Respondent�s sole intention, and has always been Respondent�s sole intention.
5.23 Respondent did not acquire the subject domain name(s) to resell them to the Complainant or anyone else. He acquired them for the purpose of creating web site(s) to convey socially useful information concerning the ill-conceived development of Ahmanson Ranch by the Complainant. The Complainant�s accusation that he is engaged in cyberpiracy is erroneous. Since purchasing the domain names, he has made himself familiar with Section 43(d) of the Lanham Act. Liability exits under that subsection of the Lanham Act only if a person registers a domain name that is confusingly similar to an enforceable (trade) mark and does so with the bad faith intention of profiting from the registration or use.
5.24 In all of the Complainant�s printed material, including the EIR (environmental impact report), Development agreement, Specific Plan, and all agreements, applications and other instances where the word �ahmanson� is used, or the phrase �ahmanson ranch� is used, the Complainant has never used the �TM� trademark symbol, exhibiting any type of enforceable �mark�.
5.25 If one considers the name �ahmanson� or the phrase �ahmanson ranch� a trade name or geographical indication, the Report of the WIPO Internet Domain Name Process of April 30, 1999, on which ICANN based the Uniform Policy, at paragraphs 165-168, states as follows (footnote citations deleted, emphasis added):
The preponderance of views, however, was in favor of restricting the scope of the procedure, at least initially, in order to deal first with the most offensive forms of predatory practices and to establish the procedure on a sound footing. Two limitations on the scope of the procedure were, as indicated above, favored by these commentators. The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations. The definition of such abusive registrations is discussed in the next section. The second limitation would define abusive registration by reference only to trademarks and service marks. Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favor of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications. We are persuaded by the wisdom of proceeding firmly but cautiously and of tackling, at the first stage, problems which all agree require a solution. � [W]e consider that it is premature to extend the notion of abusive registration beyond the violation of trademarks and service marks at this stage. After experience has been gained with the operation of the administrative procedure and time has allowed for an assessment of its efficacy and of the problems, if any, which remain outstanding, the question of extending the notion of abusive registration to other intellectual property rights can always be re-visited.
It is clear from this statement that trade names or geographical indications were not intended to be made subject to the proposed dispute resolution procedure. In adopting the procedure proposed in the WIPO Report, ICANN did not vary this limitation on its application. It must be concluded, therefore, that ICANN did not intend the procedure to apply to trade names or geographical indications.
5.26 No rights or legitimate interest in domain name
As stated in the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), there are circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name including: ... 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.
Policy, Paragraph 4(c)(iii).
Although free speech is not listed as one of the Policy�s examples of a right or legitimate interest in a domain name, the list is not exclusive, and in D2000-0190, Bridgestone Firestone et al vs. Jack Myers, the Panel concluded that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii). �The Internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law.�
5.27 Respondent and other opponents of the development on Ahmanson Ranch, do have a valid interest in any future development on Ahmanson Ranch, hence do have an interest in lawfully using the phrase �ahmanson ranch� in opposition material. This right or interest would also date back to whatever date any proposed development project was proposed on this site, and hence to any opponents at that time, from the date the H.F Ahmanson company purchased the land in around 1963. Respondent has never been involved with commercial use of the Complainant�s mark(s), and again has only criticized the non-trademarked proposed development of the land owned by Washington Mutual, commonly referred to as �Ahmanson ranch�.
5.28 At the time of registering in 1998, the Registrar, (a Network Solutions partner), told Respondent that, as an individual, he could not register a domain name with the extension because he was not doing business as an Internet �network� or internet service provider (ISP). He was also informed by the Registrar he could not legally use the extension because his informal organization �Friends of Ahmanson Ranch,� formed to oppose the proposed development, was not an official non-profit group or organization (with a 501-C-3 status). As such, he was told that as an individual, for his purposes of informing the public about the proposed development, the correct procedure would be to register a domain name with a extension (commonly used for commercial uses). He was told he had no other choices, and that many other �anti-this or that� sites simply used the extension. After checking on the Complainant�s trademark status of the words �ahmanson ranch� at the time, he went ahead and registered the domain name , using the extension.
5.29 The registering of the names of and has not prevented the Complainant from registering other names, including , , , and a recent (May 2000) and rich potpourri of �ahmanson� and �ahmansonranch� named sites. Hence, Respondent has not prevented the Complainant from making its commercial presence known on the Internet. In fact, it is common practice for housing developers in California and elsewhere to advertise their products (new housing developments) under their company�s name (ie, Ahmanson Land Company) like and , not under the project�s name.
5.30 It should be noted the Complainant themselves have recently registered various domain names that would most commonly be registered by opponents of the development on Ahmanson Ranch, including , , and others, including the three available domain name extensions (.com, .net and .org). They have also registered the same names with hyphens (i.e., ). The Complainant appears to have monopolized �anti-Ahmanson ranch related names� containing the words �ahmanson� and �ahmanson ranch�. Respondent doubts if anyone believes the Complainant intends on creating their own anti-Ahmanson ranch Internet site at , or , two names they have registered. They have simply acquired these names to stifle public discourse, free speech and basic First Amendment rights, exhibiting their own form of bad-faith.
5.31 The Complainant has also registered , with all of its available extensions, to inhibit Respondent from creating an anti-Ahmanson Ranch Internet site at this address. This action, and the previous actions just mentioned, were so blatantly done in bad faith that the LA Times ran an article about this issue on August 23, 2000, editorialized about this issue on August 27, 2000, as well as an article on August 24, 2000 by CNET. A portion of the LA Times� own editorial reads as follows- �"But in the court of public opinion, Southern Californians don�t look kindly on this Seattle-based company laying sole claim to the name of the entrepreneur and philanthropist whose moniker can be found on dozens of local buildings, foundations, grants and awards."
5.32 Bad faith registration and use of the domain name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith:"
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.
The Complainant has claimed that Respondent was trying to sell, rent, or otherwise transfer the domain names and/or to someone for personal gain. Respondent and many others including the community group, Save Open Space, have for many years been fighting this proposed development. Opponents have spent hundreds of thousands of donated dollars in fighting this development, as well as volunteering thousands of hours in fighting the Complainant. When talking with the reporter Cecilia Chan about his ownership of these domain names for over 25 minutes, Respondent voiced (at length) his overall frustration with the Complainant, his legal team and the proposed development in general. The printed comment �I was thinking I would rent it to them and if they wanted to use it (they could) pay me for the rental use� was taken out of context of a statement to the reporter of what he wished he could do with the domain name(s) simply out of spite to the Complainant, NOT what he was intending to do. That one statement, out of everything he told to the reporter was printed, apparently, for its dramatic value. Respondent has never posted the domain name(s) for sale on his site or any other site. He has never contacted the Complainant or his representatives (or anyone else) about selling, renting, or transferring either domain name to them, nor will he, as he has stated before. In fact, he has never offered for sale or rent any domain name he has registered. His off-handed, out-of-context statement does not show bad faith, only years of frustration fighting a David vs. Goliath fight against the largest savings and loan (Washington Mutual) in America and their legal team.
5.33 Also, Respondent has never mailed any material to anyone related to the H.F. Ahmanson Company (as the Complainant states in 12.f in the Complaint) with any disguise that it came from anyone else except himself.
5.34 Comment on
Considering that the domain names in dispute will most likely find their way to state or federal courtrooms, and possibly the Supreme Court, Respondent urges the Administrative Panel to review the upcoming Administrative Panel Decision for Case No D2000-0858 (RE: ) before rendering their decision on this Complaint especially if there is any question as to any trademark status of the word �ahmanson�. Attorneys for the Respondent for D2000-0858 have also been quoted as saying they will also take their case to the Supreme Court, if necessary, on free speech grounds.
5.35 Final comments
Respondent�s sole purpose in acquiring these domain names was to assist the public in finding information on the Internet concerning critical concerns regarding the development of Ahmanson Ranch, as he did with his previous Internet site located at /index.html">/~stopahmanson/index.html. He feels he owns the domain name(s) lawfully. He intends to use them for the non-trademark purpose of keeping the public informed regarding the negative impacts of the proposed development of Ahmanson Ranch on all of the adjacent communities and neighborhoods.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof. The Panelists have reviewed the various factual and legal arguments proffered by the parties, but have focused their consideration and based this decision on a determination of whether the evidence is sufficient to support the elements of a claim or defense under the ICANN Policy and Rules.
6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the term AHMANSON RANCH. The Panel need not make a determination regarding this evidence in view of its findings in Paragraphs 6.3 and 6.4 below.
6.3 The record does show legitimate non-commercial use or fair use by Respondent since the purpose of Respondent�s websites are to serve as non-commercial platforms to criticize the development activities of Complainant. Determinations regarding legitimate non-commercial and fair use under the Policy require a balancing of trademark holder and other public interests. Respondent, Save Open Space, solicits contributions to a cause as a non-profit organization. This distinguishes its activities from those of the respondent in Monty and Pat Roberts, Inc .v. J. Bartell, Case No. D2000-0300, decided by Panelist Abbott on June 13, 2000. The respondent in Monty and Pat Roberts was engaged in direct and indirect profit-making activities. The activities of the Respondent in this case are closer to those of the cybergriper in Bridgestone/Firestone, Inc. v. Jack Myers, WIPO Case No. D2000-0190 (July 9, 2000), wherein the respondent was determined to be protected under Paragraph (4)(c)(iii) of the Policy. The Panel hereby finds that Respondent has shown legitimate noncommercial and fair use in the domain names in that Respondent is using AHMANSON RANCH for protest against development of the Ahmanson Ranch site.
6.4 Finally, the Panel has examined the issue of bad faith. The record has no evidence of Respondent�s bad faith under Policy 4(b)(i) through (iv). Accordingly, the Panel finds that Complainant has not met its burden of proof as to Policy 4(a)(iii).
7. Decision
7.1 The Panel decides that Respondent has shown noncommercial and fair use of the terms in the domain names in issue and that the domain names in issue have not been registered and are not being used in bad faith.
7.2 The Panel hereby denies the Complaint.
Clark W. Lackert
Presiding Panelist
Frederick M. Abbott
Panelist
Dana Haviland
Panelist
Dated: December 4, 2000
Full & Egal Universal Law Academy