Complainant is Time’s Up Group, LLC, United States of America (“United States”), represented by Arnold & Porter LLP, United States.
Respondent is Domains by Proxy, LLC, United States / James Bowers, Berman and Company, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 14, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 19, 2020. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2020. The Response was filed with the Center on March 10, 2020. On March 10, 2020, the Center notified the Parties that it would proceed to panel appointment. The Center appointed Robert A. Badgley as the sole panelist in this matter on March 10, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant asserts that it was formed in late 2017 “in the wake of a U.S. scandal … when it was revealed that Hollywood film producer Harvey Weinstein had sexually harassed numerous actresses and other individuals in the entertainment industry.” According to Complainant: “In October 2017, individuals in the entertainment industry coined the mark TIME’S UP to dignify the services of combatting gender discrimination and sexual harassment and promoting gender equity in the workplace. They officially formed [Complainant] shortly thereafter, on December 11, 2017, to render these services.” Complainant registered, in various European jurisdictions, the mark TIME’S UP (in word form or stylized) on various dates in 2018, including a European Union word mark for TIME’S UP registered on July 29, 2018 (Reg. No. 017753047), and a Benelux registration for TIME’S UP (and design) registered on February 5, 2018 (Reg. No. 1027786). Complainant makes no allegation and offers no evidence that Complainant holds any trademark registrations in the United States, where Respondent is located. Respondent points out that Complainant attempted to register TIME’S UP with the United States Patent and Trademark Office (“USPTO”), but the USPTO rejected Complainant’s application to register it because the phrase “time’s up” is “an informational, social message that identifies a social movement” and does not function as a trademark. Respondent also notes that Complainant holds a USPTO registration for the design mark including the words “time’s up,” but that registration expressly disclaims the words “time’s up” apart from the stylized logo. That USPTO mark pertains to jewelry, tote bags, and tee-shirts. Complainant alleges further: “[T]he TIME’S UP brand, and TIME’S UP services have gained public recognition through use of the brand at a series of high profile events, including the Golden Globe awards, at forum’s conducted under the auspices of its ‘Time’s Up’ name and mark, and in several ‘open letters’ to government officials and others decrying sexual abuse committed by well-known men. [Complainant] also regularly circulates a newsletter under the TIME’S UP logo. Through such widespread, extensive efforts, the TIME’S UP trademarks have become distinctive and are uniquely associated with [Complainant’s] and its products and services throughout many jurisdictions worldwide.” There is nothing annexed to the Complaint to corroborate the assertions in the foregoing paragraph. Complainant owns the domain names The Domain Name was registered on July 17, 2019. The Domain Name resolves to a website which criticizes the allegedly improper conduct of the Service Employees International Union (“SEIU”), a major labor union in the United States. The website bears the banner “ME TOO SEIU”. (The “me too” movement in the United States, and perhaps elsewhere, is another social movement focused on alleged sexual harassment by prominent men. Its origins date from roughly the same time as the “time’s up” movement and, indeed, appear to have its origins in the public outcry surrounding the Harvey Weinstein scandal. Weinstein was convicted by a jury in the United States of criminal conduct, and in March 2020 was sentenced to a prison term of 23 years.) Respondent’s website states in the middle of the home page “TIMESUPSEIU.com”, and, at the bottom of the page states, “Paid for by the Center for Union Facts.” There is no evidence that Respondent’s website features Complainant’s stylized logo or sells any items similar to those sold at Complainant’s website. According to Respondent, his website is designed to voice concern about alleged harassment within the SEIU and the allegedly inadequate responses by SEIU management to such alleged harassment. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent disputes Complainant’s trademark rights, and asserts that Respondent is using the phrase “time’s up” as a social message and not in any effort to generate consumer confusion with Complainant’s alleged trademark. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Panel concludes that Complainant has rights in the mark TIME’S UP through registration in various European jurisdictions. The Panel also finds that the Domain Name is confusingly similar to that mark. The Domain Name fully incorporates the mark and adds the abbreviation “seiu”, which separately describes a famous labor union but does not negate the fact that Complainant’s mark is still recognizable within the Domain Name. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that on the evidence before it, Complainant has not shown that Respondent does not have a legitimate interest in respect of the Domain Name within the meaning of the above-quoted Policy paragraph 4(c)(iii). The Panel finds that Respondent is using the common phrase “time’s up” as a call to social action pursuant to his rights of free speech under the First Amendment to the United States Constitution. The Panel notes that the phrase “time’s up” has been used for decades (at least) to convey the concept that one’s ongoing conduct is about to cease. There is no evidence that Respondent sought to profit commercially by his use of the Domain Name and corresponding website, much less sought to do so by means of generating consumer confusion vis-à-vis Complainant’s purported trademark rights in the United States (which are unproven in this record). Respondent has not made any use of Complainant’s stylized logo. Rather, the record here reflects that Respondent is legitimately exercising free speech rights by employing in the Domain Name a well-known, if not well-worn, expression to advance his social message. Complainant has failed to establish Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel need not address this element, given its decision on the “legitimate interests” element above; the Panel would however note that there are no indicia in the present proceeding to indicate bad faith of Respondent towards Complainant. 7. Decision For the foregoing reasons, the Complaint is denied. Robert A. Badgley
(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. A. Identical or Confusingly Similar
Sole Panelist
Date: March 23, 2020
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