WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Friends of Kathleen Kennedy Townsend v. B. G. Birt
Case No. D2002-0451
1. The Parties
Complainant is Friends of Kathleen Kennedy Townsend, a political committee organized under the law of the State of Maryland, United States of America (Friends).
Respondent is an individual with an address Baltimore, Maryland, United States of America (Birt).
2. Domain Names and Registrars
The domain names in issue are:
,
,
,
, and
.
The registrar for and is Network Solutions, Herndon, Virginia, United States of America, (NSI).
The registrar for , , and is Melbourne IT, LTD, Melbourne, Australia (Melbourne).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaint in this proceeding on May 8, 2002, together with the required fee.
On May 14, 2002, Melbourne transmitted via email to the Center Melbourne�s confirmation that (1) Birt is the current registrant of the domain names , , and , (2) the UDRP applies to these domain names, and (3) the current status of the domain names is "active".
On May 16, 2002, NSI transmitted via email to the Center NSI�s confirmation that (1) Birt is the current registrant of the domain names and , and (2) the domain name registrations are in "active" status.
The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
On May 17, 2002, the Center transmitted to the parties Notification of Complaint and Commencement of Administrative Proceeding, together with copy of complaint. The Center advised the parties that the formal date of the commencement of this administrative proceeding is May 21, 2002, and the last day for sending Birt�s response to Friends and to the Center is June 10, 2002.
On June 10, 2002, the Center received Birt�s response.
Friends elected to have this matter heard by a single panelist. Birt opted for three panelists. On July 4, 2002, the Center advised the parties that Messrs. R. W. Page and G. G. Davis III had been appointed as Panelists, and Mr. D. W. Plant had been appointed as Presiding Panelist. The Center advised that absent exceptional circumstances, the panel is required to forward its decision to the Center by July 18, 2002. On July 18, 2002, the Center advised the parties the decision due date had been extended to July 26, 2002.
4. Factual Background; Parties� Contentions
a. The Trademark
The complaint is based on an alleged common law trademark in Ms. Kathleen Kennedy Townsend�s name. Friends asserts, inter alia:
"Kathleen Kennedy Townsend has granted and licensed to Friends of Kathleen Kennedy Townsend the right to use the trademark in her name for political fundraising, political, promotional, commercial and similar purposes including Internet activity and domain name registration."
Friends assert also:
"It is well established in UDRP precedent that complainants who are celebrities have common law trademarks in their names."
Friends asserts Ms. Kennedy Townsend is well known in the United States as �
Lieutenant Governor of Maryland,
the leading candidate in 2002 for Governor of Maryland,
the eldest daughter of Robert F. Kennedy,
the niece of John F. Kennedy, and
the niece of Edward M. Kennedy.
Friends contends "Kathleen Kennedy Townsend has 92% name recognition among voters in Maryland."
In addition, Friends appends (Annex 8) articles about Ms. Kennedy Townsend from "major publications", and asserts a search of the world wide web for documents that refer to "Kathleen Kennedy Townsend" reveals 6,120 hits.
Friends contends the use of a trademark for political fundraising purposes satisfies the "commercial" requirement for trademark protection.
Friends asserts it, inter alia �
"will use the domain names", presumably the five domain names in dispute, for political fundraising purposes,
"will use the domain names for political fundraising, promotional, commercial, and similar purposes including Internet activity and domain name registration," and
"may offer for sale buttons, shirts, and other items bearing her name ... ."
b. Prior Proceedings
On January 15, 2002, Kathleen Kennedy Townsend submitted a complaint to the Center. The complaint was directed to the same five domain name registrations as the complaint in this proceeding. On March 19, 2002, Kathleen Kennedy Townsend submitted a reply to Birt�s supplemental submission regarding the so-called Marvin Lundy case. Kathleen Kennedy Townsend�s submissions in her prior proceeding against Birt are virtually the same as Friends�s submissions here against Birt, with the exception of two developments since the original filings (viz.: Friends�s reported results of its internet search, supra, and Birt�s obtaining two domain name registrations during the prior proceeding) and Friends�s discussion of the decision in the prior proceeding.
On April 11, 2002, the panel issued its decision in the prior proceeding. The panel recognized that political activities in the United States have enjoyed trademark status. The panel distinguished between individuals and political action organizations, and determined
"the legal fund-raising entity would have been the appropriate party to bring a complaint based upon service mark rights grounded upon political fund-raising activities."
The panel found
"protection of an individual politician�s name, no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation as set out in the Second WIPO Report."1
Accordingly, the panel decided that "Kathleen Kennedy Townsend does not have rights in a mark that is protectable under the Policy."
c. Friends�s Contentions Re "Res Judicata"
Friends contends that this proceeding is not barred by "res judicata" because this complaint is initiated by a different party from the party in the prior proceeding. Friends cites WIPO Case D2000-0907 to support this assertion and for the proposition that it would be unfair to preclude Friends from proceeding with its claim here. Accordingly, Friends asserts that the complaint here is a new complaint.
Going beyond this position, Friends mounts substantial criticism against the prior panel�s view as to whether or not personal names can constitute trademarks, and whether it is the individual or an organization that can enjoy such rights.
d. The Complaint Re Respondent�s Activities
Friends contends that Birt�s activities satisfy all three elements of Paragraph 4(a) of the Policy .2
We have already set out Friends�s factual contentions concerning its alleged trademark rights in Section 4.a., supra. In addition, Friends repeats the contentions in the prior proceeding regarding alleged Birt�s activities, adding that during the prior proceeding Birt registered two more registrations in addition to the 11 Birt had registered before that proceeding. Five of the 11 registrations were the subject of the prior proceeding. The same five are the subject of this proceeding.
Friends quotes three of the four illustrative circumstances evidencing bad faith (Policy, Paragraph 4.b.), plus the three illustrative circumstances evidencing rights and legitimate interests (Policy, Paragraph 4.a.) Friends contends that Birt fails all six criteria. In attempting to demonstrate that this is so, Friends repeats verbatim the arguments set forth in the prior complaint, with the exception of noting that Birt had registered two additional domain names based on Ms. Townsend�s name during the prior proceeding.
e. The Response
In essence, Birt contends that Friends should not be permitted to obtain relief which Ms. Townsend has already been denied.
Birt questions the bona fides of Friends�s contention that Ms. Townsend has licensed Friends, noting "no one seems to remember when it came to be or where the agreement is, thus, we are not allowed to see it."
Birt contends Friends has no rights to the "mark at issue" because the sole basis for Friends�s claim is Ms. Townsend�s mark, "not their own." Friends has only what Ms. Townsend "gave by assignment." Birt argues that Ms. Townsend having no rights under the policy, Friends can have no rights.
Birt asserts that Friends�s failure to produce the "license" is "deliberate foresight." In short �
"This claim is based upon an agreement. The agreement is not produced. Therefore, the claim fails."
Birt argues that no matter when the license was granted, Friends�s claim must fail. If the license was granted before the first proceeding, then Ms. Townsend must live with her pleading choice. If the license was granted after the first proceeding, "the allegation here is in bad faith because Townsend I had ruled she had no rights to assign." Birt ascribes "the taint of fraud to the alleged license." Birt suggests that Friends "fabricated the license agreement after the first ruling."
Birt contends the complaint must fail for lack of supporting evidence, viz. no "formation documents" of Friends and no "signed statements from anyone."
Birt urges the complaint is barred by "res judicata". Birt contends this claim is "derivative in nature." Birt argues (1) Friends makes no claim for a mark in its own name, (2) the facts and the arguments are the same, (3) Friends claims no trademark "other than through the missing license, which cannot transfer what Townsend does not possess," (4) this complaint is a "verbatim, cut-and-paste, recitation of the first complaint," and (5) this case cannot be decided "without determining the validity of Townsend�s personal mark."
Birt argues that here there is no mark, whether "brought by" Ms. Townsend or Friends.
Birt assert Ms. Townsend is not a "commercial" celebrity and contends Friends�s evidence is insufficient to show Ms. Townsend is "famous".
Birt contends that U.S. trademark registrations such as Dole for President and George W. Bush for President show the marks are not the personal names of candidates but the names of the political committees.
Birt gives short shrift to Friends�s contentions as to his alleged bad faith and lack of legitimate interests.
Birt notes that the prior panel found that Ms. Townsend "possesses multiple domain names bearing her personal name." (The prior panel referred to 19 such domain names.)
Birt contends that Friends is guilty of reverse domain name hijacking, arguing (1) the complaint has been filed in bad faith, (2) the "agreement" has not been produced, (3) this is "quintessential harassment," and (4) the five domain names in issue "lay unclaimed for five years, through two elections, for anyone to use, and ... Townsend agents ... disclaimed any desire to use them."
5. Discussion and Findings
a. The Policy and the Rules
Paragraph 4.(a) of the Policy directs that complainant must prove, with respect to each domain name in issue, each of the following:
(1) The domain name is identical or confusingly similar to a mark in which complainant has rights, and
(2) Respondent has no rights or legitimate interests in respect of the domain name, and
(3) The domain name has been registered and is being used in bad faith.
b. Friends�s Standing In This Proceeding
Neither the Policy nor the Rules provide guidance as to the re-filing of cases. Under Paragraph 15(a) of the Policy, a Panel is required to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Two seminal cases within the UDRP (Grove Broadcasting, WIPO No. D2000-0703 and Creo Products, WIPO No. 2000-1490) have considered this issue, and both have come to essentially the same conclusion.
In Creo Products, the panel accepted a refiled complaint because it was based, in part, on acts occurring subsequent to the previous decision. That is not our case. Importantly, for our purposes, the Creo Products panelist observed:
" ... some general principles about the determination of this issue [entertaining a Refiled Complaint] can and should be stated ... . First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. ..."
As stated in Grove Broadcasting,
"Parties are expected to �get it right� the first time."
In this case, whether or not Friends has any rights under the alleged mark is open to serious doubt. The alleged license is not before the panel. Nothing about its terms and conditions, or when it was entered into, is known. Nothing is known about Friends �s actual use, if any, of the alleged mark. Nothing is known about any control the owner of the mark has, may have, or may have exercised, over any use or proposed use by Friends of the mark.
The panel in the prior proceeding did not adjudicate that Friends was in fact and in law a proper complainant with respect to the alleged mark. The prior panel simply stated a general proposition, viz.: it is the legal fundraising entity, not the individual political figure, who would be an appropriate complainant � assuming the fundraising entity did indeed have rights under a mark.
Here, Friends has not discharged its high burden of demonstrating its rights under the mark. Accordingly, Friends has no standing here.
c. The Alleged Mark
We turn to the alleged mark because our view on that score goes hand in hand with our finding above as to standing.
Friends relies on a common law mark. As we read the current complaint, Friends urges only that it will use the mark "Kathleen Kennedy Townsend". Those averments appeared in the January 15, 2002, complaint, as well as the May 8, 2002, complaint here. No contemporaneous document supporting such averments accompanies the complaint. No document showing actual use of the alleged mark is in the record � even in the intervening four months since the filing of the first complaint.
If Ms. Townsend had filed an intent-to-use application to register her name as a mark in the U. S. Patent and Trademark Office, she would have had to meet the requirements of 15 U.S.C. �1051(b). This record does not reflect the verified showing that she would have had to make under 15 U.S.C. Nor does the record reflect either factual support or legal authorization for a finding that Ms. Townsend has any common law trademark or service mark rights in her name based on her, or Friends�, alleged intent to use the mark.
Even if Ms. Townsend had properly granted to Friends rights under a common law mark, this record falls far short of establishing what that mark is, when those common law rights arose, or whether they remain extant. Accordingly, Friends has failed to satisfy its burden of proof with respect to Paragraph 4.a. of the Policy.
6. Decision
In light of the findings by the majority of the panel, the panel decides that Friends has not met its burden of proving Friends has any rights under the alleged common law mark "Kathleen Kennedy Townsend. Accordingly, the majority of the panel orders that the complaint be dismissed with prejudice.
The panel denies Birt�s request that the panel order that Friends is guilty of reverse domain name hijacking.
David W. Plant
Presiding Panelist
G. Gervaise Davis III
Panelist
Dated: July 31, 2002
DISSENT
In the prior ruling referred to as Townsend I, the panel noted that the fundraising entity, not the politician, has standing to assert rights under the Policy. Now that the fundraising entity has asserted a claim, the majority of the panelists rejects the claim as not being significantly different from the arguments previously made by the politician herself.
I would find that the Complainant has shown sufficient rights in the trademark. I would, thereafter, consider the claims of this Complainant and engage in the analyses of confusing similarity between the mark and the domain name, rights or legitimate interest of the Respondent and the existence or lack of good faith by Respondent in the registration and use of the domain name.
Richard Page
Dissenting Panelist
Dated: July 31, 2002
Full & Egal Universal Law Academy