WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Council of American Survey Research Organizations
v.
The Consumer Information Organization, LLC, aka Pinelands Web Services
Case No. D2002-0377
1. The Parties
Complainant is the Council of American Survey Research Organizations, a Delaware non-for-profit corporation located in Port Jefferson, New York, United States of America.
Respondent was initially known as The Consumer Information Organization, LLC, a Virginia limited liability company located in Mt. Laurel, New Jersey, United States of America. It appears that Respondent is now known as Pinelands Web Services, located in Haddonfield, New Jersey, United States of America. These entities appear to be operated by Russ Smith, an individual, located in Mays Landing, New Jersey, United States of America.
2. The Domain Name and Registrar
The domain name at issue is (the Domain Name).
The registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, Canada.
3. Procedural History
This administrative proceeding was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy"), and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was received on April 22, 2002.
The Response was received on May 16, 2002.
Tom Arnold, David E. Sorkin, and Mark V. B. Partridge (presiding) were appointed Panelists on June 12, 2002.
4. Factual Background
Complainant is a member-supported trade association of commercial survey research organizations. It has offered services and products related to market and survey research under the CASRO mark since 1975. Complainant owns a federal registration of the CASRO mark for its various goods and services, registered September 26, 2000.
Respondent registered the Domain Name on December 23, 1998. Respondent claims it registered the domain name to exercise its First Amendment right to protest the market research practices of Complainant and its members.
Respondent uses the Domain Name in connection with a web site that criticizes Complainant and the telemarketing industry. The web site is headed STOP TELEMARKETERS with a disclaimer stating:
"Welcome to C
Note: This is not the web site of the Council of the American Survey Research Organizations. They are found at ."
The web site continues with a discussion of the policies and practices of Complainant. The web site also includes the following product offer:
"For products such as the 'Don't Annoy Me Kit', 'Easy Hang-up', and 'Call Audit Software' see AmeriS."
The reference provides a link to an Internet shopping site operated by Respondent where Internet users may purchase an unusual variety of products, including devices to protect privacy, PEZ candy dispensers and metal flags.
Complainant objected to Respondent's registration and use of the Domain Name on January 14, 1999, prior to the adoption of the current UDRP Policy. Respondent replied on January 19, 1999, rejecting Complainant's objection, in part on the grounds that its registration of the Domain Name was not a violation of the domain name dispute policy then in effect (namely, the policy of Network Solutions, Inc., in effect prior to the current UDRP Policy). Respondent also claimed that its use of the Domain Name was protected by the First Amendment. Finally, Respondent refused to turn over the Domain Name and filed a complaint with the Washington DC Bar Association against the counsel writing on behalf of Complainant (not current counsel). The Bar Association concluded in July, 1999, that Respondent's complaint against counsel did not warrant a formal investigation.
There is no indication of further communication between the parties until the filing of this Complaint in 2002.
5. Parties� Contentions
A. Complainant
Complainant contends that the Domain Name is identical to Complainant's mark; that the Respondent has no rights or legitimate interests in the Domain Name; and that the Domain Name was registered and used in bad faith. Although, the Domain Name leads to a web site used for criticism, Complainant contends the site has a commercial purpose in leading Internet users to a site where Respondent sells products.
B. Respondent
Respondent claims it is making legitimate fair use of the Domain Name to criticize Complainant. Respondent also contends that it registered the Domain Name in good faith and is not now using the Domain Name in bad faith. According to Respondent, the commercial link on its web site is inconsequential.
6. Discussion and Findings
Our substantive inquiry focuses on three issues: (1) is the Domain Name confusingly similar or virtually identical to a trademark in which the Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Name; and (3) has the Domain Name been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
The Domain Name is identical to a mark which is the subject of federal registration owned by Complainant, has been used by Complainant for more than 20 years, and was adopted by Respondent as a deliberate reference to Complainant.
The key dispute here is whether the Domain Name was registered and used in bad faith. The Policy lists circumstances that may be considered in determining bad faith. (Policy 4(b)) This list is non-exclusive and other circumstances may be and have been considered in determining bad faith registration and use.
In E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (5th Cir. 2002), the Court addressed a situation similar to that presented here. The defendant registered and used the domain name for a web site that discussed the risks associated with alcohol use, alleged misrepresentations by corporations and the lawsuit brought against it by Gallo. The first page of the web site contained a disclaimer stating "This Site Is Not Affiliated with Ernest & Julio Gallo Winery". All pages and links on the site provided noncommercial, nonprofit consumer information. In addition to running the web site, the defendant had registered other domain names for resale, but claimed it had no intent of selling the domain name at issue.
The Court concluded that the domain name had been registered and used in bad faith based on several factors provided under federal law. First, the defendant had no intellectual property rights in the domain name, and the domain name had no relationship to any name previously used by the defendant. Second, although the domain name was not used for a commercial web site, the Court found that it was not fair use, stating:
"at least two other courts have found that when a defendant registers a domain name that is identical to someone else's trademarked name and thereby impacts the trademark owner's business by preventing internet users from reaching the trademark owner's own web site, this is [sic] impacts the trademark owner's business and is a use 'in connection' with goods and services."
Additional evidence supporting the finding of bad faith was the fact that the defendant engaged in selling other domain names, although the domain name at issue was not offered for sale. Finally, the defendant's manner of use supported a finding of bad faith:
"[T]he fact that [defendant] hosted a web site using Gallo's trademarked name, at which it disparaged the instant litigation and alcohol, is evidence of intent to harm Gallo's goodwill and to tarnish its mark."
Similar conclusions were reached in People for the Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359, 369 (4th Cir. 2001) (affirming summary judgment against use of domain name for parody site); and Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997).
The PETA decision addressed an argument made here by Respondent as to its alleged right and legitimate interest in using the domain name for the purpose of comment. The domain name at issued failed to convey the message that it was used for the purpose of comment or criticism. Instead, the domain name merely conveyed the message that it was related to the plaintiff. Likewise, in Gallo the court contrasted the defendant's improper use of the plaintiff's mark as its domain name with other domain names that made clear the critical nature of the site. (286 F.3d at 280.) Compare Bally Total Fitness Corp. v. Faber, 29 F.Supp.2d 1161 (C.D.Cal. 1998). These cases demonstrate that a person's First Amendment right does not extend to the use of someone else's trademark as a domain name.
Applying these principles here, the following circumstances are relevant to the issue of bad faith registration and use:
1. Respondent had no intellectual property rights in the Domain Name and was not previously known by that name.
2. The Domain Name was deliberately registered and used for the purpose of disparaging Complainant's business, and therefore had a commercial impact upon Complainant's mark and on Complainant. As in the Gallo case, there "is evidence of intent to harm [Complainant's] goodwill and to tarnish its mark."
3. Although Respondent has not offered to sell the Domain Name at issue, it appears Respondent has registered numerous domain names. Complainant cites an email message from Respondent admitting that it owns over 1200 domain name registrations. Some of those include the domain names that correspond to well-known marks of others, for example, SMITHSONIAN, CRAYOLA and PEZ. Respondent indicates that these domain names are also used for criticism in a manner similar to that presented here.
4. Respondent used the Domain Name to link to Respondent's commercial site selling products to combat telemarketing as well as products unrelated to its criticism of Complainant. Although that link was merely an incidental aspect of Respondent's web site, it is a factor weighing against Respondent. Further, since Respondent operates a separate commercial site selling products to combat telemarketing, it may obtain a business advantage by publicizing criticism of the telemarketing industry regardless of any link between the sites.
5. Respondent used more of Complainant's mark than is necessary to convey its message. Although, Respondent may have a right to refer to the mark in critical content, the wholesale appropriation of Complainant's mark, without any distinguishing material, creates confusion with Complainant's business and is not fair use merely for the purpose of criticism. No criticism is apparent from the domain name itself. Although the criticism may be apparent from the content of the site, the cases cited above confirm that is not sufficient.
6. Similar conduct by Respondent has previously been found to be a violation of the Policy. See United States Postal Service v. Consumer Information Organization, FA0010000095757 (NAF 2000).
For these reasons, the majority of the Panel finds that Respondent lacks any right or legitimate interest in the Domain Name and that it registered and used the Domain Name in bad faith.
The panelists here of course are informed of differing views expressed in other domain name decisions than those we cite, some of which consider it fair and appropriate to use a trademark proprietor's mark as the vehicle for collecting and distributing critical comments about the mark or its proprietor or his business practices, regardless of the inherent tarnishment of the mark that results.
Indeed here, where the commercial aspects of Respondent's activities can so easily be seen as de minimis, we need not base any conclusion on the evidentiary value of Respondent's modest commercial activities on the web site.
However, the majority of this Panel respectfully differ from the contrary decisions of other Panels in their view of the fairness of the tarnishment necessarily occurring when, as here, Respondent uses precisely a trademark belonging to another to disparage that mark, the mark's product, the mark owner, or his business practice. We feel that the authorities we have referred to support--and indeed mandate--our conclusion that such use is not "legitimate" or "fair" within the terms of the Policy.
The right to criticize is fully enjoyed when expressed on the author's own web site under a domain name unique to the author. Our decision of course does not denigrate that constitutional right. But the right to criticize does not carry with it the right to tarnish another's mark, as we find Respondent is here doing, by the use of that mark as the domain name for a web site to criticize and disparage the mark and its proprietor.
7. Decision
For the reasons stated above, Complainant's request for transfer of the Domain Name is granted.
Mark V.B. Partridge
Presiding Panelist
Tom Arnold
Panelist
Dated : July 19, 2002
Dissenting Opinion
I respectfully dissent from the decision of the majority, though I do agree with much of the analysis contained therein.
The evidence before this Panel, in my view, does not support a finding that Respondent registered the disputed Domain Name in bad faith. None of the examples of bad faith set forth in paragraph 4(b) of the Policy are present here: It does not appear that Respondent intended to sell or transfer the Domain Name for an amount in excess of its costs; nor that Respondent intended to prevent Complainant from reflecting its mark in a corresponding domain name; nor that Respondent was a competitor of Complainant attempting to disrupt its business. And even if Respondent�s subsequent commercial use of the Domain Name was more than de minimis, there is no indication that Respondent contemplated such use at the time of registration�to the contrary, it appears that Respondent�s motivation for registering the Domain Name was to engage in criticism of Complainant and its industry.
It is true that the exemplary circumstances set forth in paragraph 4(b) are non-exhaustive. But the facts of this case are sufficiently different from classic cybersquatting that I see no compelling reason to stretch the definition of bad faith far beyond those examples. It may well be that U.S. trademark law would provide Complainant with a remedy, but the Policy is and was intended to be narrower in scope than trademark law, and certainly was not intended for cases like this, in which the parties have a legitimate and complex dispute over the extent to which Respondent may use Complainant�s mark to refer to Complainant in the context of noncommercial criticism. (The dispute policy for the ".biz" top-level domain, it is worth noting, specifically excludes noncommercial criticism as a bona fide use. See Restrictions Dispute Resolution Policy (RDRP), . No such limitation appears in the policies applicable to ".com" domain names.)
Although I would resolve this case on the ground that Complainant has failed to prove that the disputed Domain Name was registered in bad faith, I have concerns regarding other elements of the Policy as well.
The question of use in bad faith depends upon whether the commercial aspects of Respondent�s use of the Domain Name are deemed de minimis; I would find that Complainant has failed to meet its burden of proof on this issue as well. Respondent�s web site located at the disputed Domain Name contains a single text link to a commercial site, buried at the bottom of the relevant page, and Respondent�s principal is well known as a critic of Complainant and its industry. These facts belie any inference that Respondent�s noncommercial activities are merely pretextual.
Finally, the question of whether Respondent has rights or legitimate interests in respect of the disputed Domain Name turns on whether Respondent�s activities qualify as "legitimate noncommercial or fair use of the domain name," under paragraph 4(c)(iii) of the Policy. In my view this presents a much closer question. The substantive activity engaged in by Respondent is legitimate, but Respondent is conducting that activity under Complainant�s mark. If that conduct in fact constitutes actionable infringement, then it would not give Respondent rights or legitimate interests under paragraph 4(c)(iii). But I do not consider the record before this Panel sufficient to support a conclusion as to this complex issue, particularly in a summary proceeding of this nature. I would find for Respondent on this issue as well.
David E. Sorkin
Panelist (Dissenting)
Dated: July 19, 2002
Full & Egal Universal Law Academy