WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Al-Anon Family Group Headquarters, Inc. v. Al-Anon Fellowship
Case No. D2002-0208
1. The Parties
The Complainant in this administrative proceeding is Al-Anon Family Group Headquarters, Inc., a New York corporation, with its principal place of business at 1600 Corporate Landing Parkway, Virginia Beach, Virginia 23454, USA. Complainant is represented in this administrative proceeding by Ostrolenk, Faber, Gerb & Soffen, LLP, 1180 Avenue of the Americas, New York, New York 10036, USA.
Respondent is the Registrant Al-Anon Fellowship, which gives its address as Clinton Street, Brooklyn, New York 10001, New York, USA.
2. The Domain Names and Registrar
The Domain Names the subjects of this Complaint are and . The Registrar of the Domain Names is Melbourne IT, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
3.1.The Complaint in respect of the disputed Domain Names was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) electronically on March 1, 2002, and in hard copy on March 5, 2002. Incorporated was a sworn Declaration by Caryn Johnson, Director of Communications of Complainant. Complainant states that on March 1, 2002, a copy of the Complaint was sent or transmitted to the Respondent at the registered contact addresses (1) without exhibits by email, (2) with exhibits by mail and also (3) by FedEx to his believed street address. A copy of this Complaint has been sent or transmitted to the Registrar, Melbourne IT, by email without exhibits and by FedEx with exhibits.
3.2.On March 7, 2002, verification was received from the Registrar that the Domain Names and were registered in the name of Al-Anon Fellowship, Clinton Street, Brooklyn, New York 10001, USA. The Administrative Contact was the same as the Registrant. The Billing Contact was Technical Support, Easily Limited, 109-111 Farringdon Road, London, EC1R 3BW, GB. The Uniform Domain Name Dispute Resolution Policy (UDRP) applies.
3.3.On March 8, 2002, WIPO Center verified and the Administrative Panel subsequently accepted that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") as approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
3.4.On March 8, 2002, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center by post/courier to the Respondent and Technical and Billing Contacts. Email copies without enclosures were sent to Respondent, copied to Complainant, ICANN and the Registrar.
3.5.Respondent filed a Response with Exhibits electronically on March 25, 2002. On March 26, 2002, WIPO Center sent to Respondent a Notification of Response Deficiency (mainly asking for the Response to be put into the proper format and signed). Respondent returned the completed Response with annexes in the model format electronically on March 27, 2002, but did not sign it personally owing to the wish to preserve his anonymity.
3.6.On April 15, 2002, Dr. Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Case File was sent by email to the Administrative Panel on April 15, 2002, and the complete Case File was sent by courier.
3.7.By emails of March 5, 2002, and April 16, 2002, to WIPO Center, Respondent asked for his personal identity not to be revealed.
4. Factual Background
4.1.According to Complainant, Al-Anon Family Group Headquarters, Inc., (Al-Anon) is a well-known and prominent non-profit organization involved in helping families and friends of alcoholics to recover from the effects of living with the problem drinking of a relative or friend. Alateen, a part of Al-Anon, is designed for the younger relatives and friends of alcoholics. Complainant's website says its recovery program is adapted from Alcoholics Anonymous and also that Al-Anon or Alateen is not affiliated with any other organization or outside entity. Complainant has for many years held USA-registered marks AL-ANON and ALATEEN for services and publications related to its activities.
4.2.Respondent has been a member of and involved with Al-Anon and, as Al-Anon Fellowship, registered the disputed Domain Names and .
5. Parties� Contentions
A. Contentions of Complainant
5.1.The contentions of Complainant include (paragraphs 5.2-5.6 below) that:
5.2.The dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Names being the subject of this Complaint were registered, incorporates the Policy by reference.
5.3.The disputed Domain Names are confusingly similar to marks in which Complainant has rights.
5.4.Respondent has no rights or legitimate interests in the disputed Domain Names. He is disowned by Complainant organization and is not accepted as a member. The Domain Names have not been used in connection with a bona fide offering of goods or services. Respondent has never been commonly known by the Domains Names. Respondent is not making a legitimate noncommercial or fair use of the Domain Names.
5.5.Respondent has registered and used the disputed Domain Names in bad faith in the terms of the Policy. The Domain Names were registered with a false address in a country in which Respondent does not live. Respondent has engaged in a pattern of conduct of registering Domain Names in order to prevent Complainant from doing so and has threatened to register more such names in the future. He has registered the Domain Names primarily for the purpose of disrupting the business of Complainant and has used them for disparaging purposes.
5.6.The remedy requested by Complainant is that the disputed Domain Names shall be transferred to Complainant.
B. Contentions of Respondent
5.7.The contentions of Respondent include (paragraphs 5.8-5.12 below) that:
5.8.Respondent has not done anything wrong and does not admit the Complaint.
5.9.The published literature and principles of Complainant make membership open to anyone with the appropriate interest in its activities and Respondent thereby avails himself of membership.
5.10.The published literature and principles of Complainant make it impossible for a member to be barred from membership, therefore Respondent retains membership.
5.11.As a member of Al-Anon, Respondent is entitled to use the designations Al-Anon Fellowship, Al-Anon Member and similar.
5.12.Respondent has the freedom of speech to make comments, good or bad, about Complainant.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1.Paragraph 4(a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i)your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii)you have no rights or legitimate interests in respect of the domain name; and
(iii)your domain name has been registered and is being used in bad faith."
6.2.Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy and the Administrative Panel has jurisdiction to decide the dispute.
Procedural
6.3.Under Rules Paragraph 1 (Definitions) a Respondent is defined as the holder of a Domain Name registration against which a complaint is initiated. The Complaint as originally received joined the name of an individual to the entity cited as Respondent. The Panel has amended the designation of the Respondent to be in accordance with the Rules.
6.4.The Panel is sure, having read all the papers in detail, that a single guiding mind is behind all Respondent submissions and associated communications, all correspondence bearing the same name or alias submitted in evidence, and the entity named as Registrant. Since Respondent terminates documents with the style "Al-Anon Member" and "A Member of the Al-Anon Fellowship" and uses a male name or alias, he will be referred to as though a male natural person. In the Response and in emails to WIPO Center dated March 5, 2002, and April 16, 2002, Respondent asked for his personal identity not to be revealed. In view of the culture of anonymity surrounding the possible past relationship between Complainant and Respondent, this is a reasonable request. Certain quotations from correspondence that were integral to the decision-making process will be recognized by the Parties but the anonymity of the addressees and signatories is preserved.
6.5.Respondent states that the Domain Name registration is currently in the possession of Complainant, which has provided its own website content, except that the Domain Name is frozen for this Proceeding. Respondent has expressed some doubt as to whether the transfer of registration was properly executed and it is assumed that Complainant is asking the Panel to decide whether or not the transfer should be completed.
6.6.It is abundantly plain from the voluminous correspondence provided in Complainant's Exhibit D, and Respondent's detailed and articulate Response and Exhibits, that this Domain Name dispute is but one small facet of an ongoing row that has been simmering for years. A distinction must be drawn between the three quite separate issues of which this Panel has been made aware. The first is Complainant's request that its marks be protected from perceived misuse in the form of abusive Domain Name registrations. The second is Respondent's disagreement with Complainant over matters of philosophy and treatment. The third is an argument between Respondent and Complainant over membership rights and the interpretation of the organization's stated principles, and arising out of this, a dispute over the right to use Complainant's marks. The present Proceeding focuses sharply on the first matter which is analysed in terms of the Registrant's contractual obligations to his Registrar and the procedures of the UDRP to which the Registrant has subscribed. The other matters are outside the terms of reference of the Panel and can only be pursued in another forum.
Whether the Domain Names are Identical or Confusingly Similar to a Trademark
6.7.The question is whether each of the Domain Names and is confusingly similar to a mark in which the Complainant has rights. Respondent has introduced a number of matters about Complainant's marks, including suggestions that Complainant has misdescribed itself as a non-profit service provider when it is a publishing company; that the protection of its marks should not extend to websites; that Al-Anon Fellowship is an entity distinct from Complainant and does not sell goods or services; and that many Internet sites use the name Al-Anon.
6.8.None of these matters has any bearing on the factual decision required by the Policy, which is whether Respondent's Domain Names are confusingly similar to trademarks or service marks held by Complainant. The gTLD suffixes ".info" and ".org" or alternatives are an inevitable part of a Domain Name and are of no consequence in the determination of confusing similarity. The remaining elements of the Domain Names, "al-anon" and "al-anonalateen", are identical to one or both of Complainant's marks. Complainant has proven that it has been the registered holder of the mark AL-ANON for services since 1952, and for publications since 1965; and has been the registered holder of the mark ALATEEN for services since 1957 and for publications since 1960. Confusing similarity in the terms of Paragraph 4(a)(i) of the Policy is established.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Names
6.9.In accordance with Paragraph 4(a)(ii) of the Policy, Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed Domain Names. Complainant has provided evidence that it is the long-established proprietor of the marks AL-ANON and ALATEEN and states that Respondent has no authority to use them. Respondent is provided in Paragraph 4(c) of the Policy with illustrative grounds of rebuttal but is not limited to these.
6.10.Respondent claims "a right to be heard ... my right to choose to share my experience (both good and bad) ...". In a free society it is taken for granted that generally the benefits of free speech outweigh the disadvantages. The defense of freedom of speech has been invoked many times in Domain Name disputes. Almost invariably the decision has been the same, namely that a Party's undoubted right to freedom of speech does not carry with it the right to infringe the rights of the legitimate holder of a trademark or service mark. In an early WIPO case Geert Glas Panelist said: "The issue at hand is however not as Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression." (Compagnie de Saint Gobain v. Com-Union Corp; WIPO Case No. D2000-0020). Recently in Riyad Bank v. J. Boschert (WIPO Case No. D2001-1235) Philip N. Argy Panelist reiterated: "The cases are littered with examples of websites that exist for the purpose of genuine criticism and commentary, and demonstrate that, in the absence of unusual circumstances, it will be rare that a party that chooses for its domain name the exact trademark of the Complainant will succeed in retaining the name: see for example WIPO Case Nos. D2001-0212 (The Royal Bank of Scotland Group plc v and Umang Malhotra), D2001-0505 (Britannia Building Society v Britannia Fraud Prevention) and D2000-0020 (Compagnie de Saint Gobain v Com-Union Corp)."
6.11.Respondent cites Alcoholics Anonymous World Services, Inc. v. Friends of Bill W and Jimmy K, WIPO Case No. D2001-1124, in which a Respondent's Domain Name was not transferred to the relevant Complainant, which had long-standing rights to the mark ALCOHOLICS ANONYMOUS and operated the website . The present Panel is aware that ALCOHOLICS ANONYMOUS is a different entity from Al-Anon but notes that there are parallels to some degree in their decentralized structures. The present Respondent says that he is a member of Al-Anon, that the rules do not allow a member to be barred from membership, and that as a member he is authorized under the rules to use the mark.
6.12.Alcoholics Anonymous, WIPO Case No. D2001-1124 is a case distinguished on its facts. The Panel in that case cautioned: "However, this Panel�s decision should not be interpreted as a substantive decision on the merits of any trademark infringement claim that Complainant may ultimately choose to bring in court under applicable U.S. federal or state law. Under the complex, unique circumstances and history of this case, it has not been easy for this Panel to reach a decision and so this Panel would be reluctant to have this decision stand as precedent for others unless the unique circumstances were almost precisely duplicated."
6.13.In Alcoholics Anonymous, WIPO Case No. D2001-1124 the Panel was able to accept the relevant Respondent's "claim to be one of the local groups representing the Alcoholics Anonymous organization in its area", which, significantly, was not disputed by Alcoholics Anonymous although it had the opportunity to do so. Respondent in that case submitted published Alcoholics Anonymous literature that gave advice and encouragement on the establishment of a "local A.A. website".
6.14.The present case is different. Complainant no longer accepts Respondent as a member. Respondent counters by pointing to Al-Anon's promotional literature and to its informal membership structure and policy of autonomy. For example, the only requirement for membership is that there be a problem of alcoholism in a relative or friend (Tradition Three); the right to belong is never taken away (Concept Five); and no member can be expelled from the fellowship (Warranty Five). Nevertheless, there is no evidence that these principles are contractual and the fact of the matter is that membership has been withdrawn in this case. The most democratic of assemblies invariably provide for the suspension of members. There must be a limit beyond which a person and an institution have gone their separate ways, which demonstrably has happened here. Respondent has acknowledged as much. He wrote a cluster of letters to various personages, saying among other things: "I have made a decision to no longer attend Al-Anon" (March 5, 2001); "Frankly I have had enough of Al-Anon ... I have made a decision to no longer participate in their program" (March 8, 2001); and "I would like to advise you that I am withdrawing from participation in the Al-Anon program" (March 12, 2001). Neither Respondent nor the trademark or service mark holder recognizes Respondent's bona fide membership. Respondent's disclaimers confirm that the websites are not official. He has no unqualified right to call himself an Al-Anon Family Group or to use the marks.
6.15.Even if Respondent were an acknowledged member, he would not necessarily have any particular rights to use the marks. Tradition Three ("The relatives of alcoholics, when gathered together for mutual aid, may call themselves an Al-Anon Family Group ...") means no more than is says and is qualified by the proviso "... provided that, as a group, they have no other affiliation." Tradition Four takes away group autonomy in "matters affecting ... Al-Anon ... as a whole", and Tradition Ten says that "The Al-Anon Family Groups have no opinion on outside issues; hence our name ought never be drawn into public controversy." The fact that Complainant may have condoned certain websites using its marks would not grant rights to others.
6.16.In addressing specifically the defenses provided for under Paragraph 4(c) of the Policy, the Panel finds that Respondent has not used the disputed Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy. The Panel has considered whether there is evidence that Respondent as an individual, business, or other organization has been commonly known by the Domain Names, and finds that within the terms of Paragraph 4(c)(ii) of the Policy he has not. The Panel finds Respondent has not made a legitimate noncommercial or fair use of the Domain Names in terms of Paragraph 4(c)(iii) of the Policy. The Panel has not found any other grounds on which Respondent can establish rights or legitimate interests in the disputed Domain Names and finds for Complainant under Paragraph 4(a)(ii) of the Policy.
Whether Domain Names Have Been Registered and Are Being Used in Bad Faith
6.17. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that a Domain Name has been registered and is being used in bad faith. Paragraph 4(b)(iii) of the Policy provides for a finding of bad faith where the Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
6.18.Respondent contends that the Al-Anon Fellowship is not a business. Paragraph 4(b)(iii) is not restricted to the commercial sense of the word �business�. The lengthy definition of the word �business� in The Pocket Oxford Dictionary (fifth edition) commences: "what keeps one busy or concerns one, one's occupation or affairs, one's province or duty ...". This definition includes the activities of Complainant. Respondent and Complainant compete for the attention of persons interested in certain matters relating to alcoholism and are competitors in the ordinary meaning of the word ("competing person, any of one's rivals in a competition ...").
6.19.Respondent has made it abundantly plain that his purpose is to disrupt the business of Complainant and to "get even" (letter of August 11, 2000). His vigorous expressions of desires in a letter of December 3, 1999 need not be repeated here. Respondent in his own submission states: "A quite substantial number of further domain names containing the word "Al-Anon" will be purchased. These will all contain disclaimers that they are not official AFG Inc websites and the address of the official AFG Inc website will be given." The Policy is concerned with what a Respondent has done in the past rather than with the future but Respondent's statement above illustrates the purpose behind his Domain Name registrations as being a campaign against Complainant. Bad faith is entirely clear.
6.20.Complainant's claim under paragraph 4(b)(ii) of the Policy need not be proceeded with, although it might appear that Respondent's registrations were more for the purpose of disruptive use in bad faith than strictly "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name".
Summary
6.21.At the heart of this matter is a dispute between Complainant organization and Respondent over matters about which Respondent expresses long-standing, deep and evidently sincere feelings. He wishes to publicise his opinions and engage in dialogue. That is his right (subject to the legal consequences) but he cannot adopt Complainant's marks in order to do so. The UDRP is confined to the rectification of abusive Domain Name registrations according to a Policy and Rules formulated for the purpose of that limited objective. The Panel is in no doubt that Respondent registered the disputed Domain Names to be as nearly as possible identical to Complainant's marks (6.8. above), that he had no right to do so (6.16. above), and that the registrations were in bad faith (6.19. above). The Panel gives its decision for Complainant and against Respondent.
7. Decision
The Decision of the Administrative Panel is that the disputed Domain Names and are confusingly similar to the trademarks AL-ANON and ALATEEN in which Complainant has rights; Respondent has no rights or legitimate interests in the disputed Domain Names; and Respondent has registered and is using the disputed Domain Names in bad faith. The Domain Names and shall be transferred to the Complainant.
Dr. Clive N. A. Trotman
Sole Panelist
Dated: April 29, 2002
Full & Egal Universal Law Academy