The Complainant is Citizens For A Better Kenner, Inc., United States of America (“United States”), represented by Norton IP Law Firm, LLC, United States.
The Respondent is Scott Sigur, United States, represented by Law Office of Keith R. Credo, APLC, United States. 2. The Domain Names and Registrars
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2020. On June 8, 2020, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On June 9, 2020 and on June 10, 2020, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. On June 30, 2020, the Respondent submitted a request via email for an unspecified amount of additional time to file the Response. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules, with the new due date set as July 10, 2020. In its email on June 30, the Respondent also inquired about suspension of these proceedings in light of an ongoing lawsuit brought by the Complainant against the Respondent in the United States. The Respondent was informed that the Center can only suspend the proceeding for settlement discussions upon the Parties’ request. Further, the Center informed the Respondent that the Panel has the discretion to suspend or terminate the proceeding under paragraph 18 of the Rules. A timely Response was filed with the Center and determined to be complete on July 10, 2020. The Center appointed David H. Bernstein as the sole panelist in this matter on July 20, 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. On August 3, 2020, the Panel extended the projected date for decision to August 7, 2020. 4. Factual Background The Complainant, Citizens For A Better Kenner, Inc., was incorporated in Louisiana, United States in 2011. The Complainant has no registered trademark for Citizens For a Better Kenner. The Complainant was the previous registrant of the disputed domain name The Respondent, Scott Sigur, is a resident of Kenner, Louisiana, United States. The Respondent was a candidate in a local election scheduled for July 11, 2020; in addition, the Respondent’s father is a Kenner City Councilman. The Respondent registered the disputed domain name Upon learning that it had lost control of the disputed domain name On December 3, 2019, the Respondent registered the two other disputed domain names: The Litigation appears to have been actively pursued. Among other things, the Respondent filed an answer on March 6, 2020, the Court held a scheduling conference on April 15, 2020, the Respondent filed a motion to compel discovery on May 2, 2020 (because the Complainant had not provided its corporate disclosure statement and had not responded to the Respondent’s propounded discovery requests), the Court granted the motion to compel on June 2, 2020, and a trio of third party witnesses filed a motion to quash subpoenas (presumably issued by the Complainant) on July 6, 2020, which motion was granted by the Court on July 22, 2020. It thus appears that, since the Respondent filed his answer, there has been at least monthly activity in the Litigation. The Court has scheduled the case for trial on February 8, 2021.1 The Complainant initiated this proceeding on June 6, 2020. 5. Parties’ Contentions A. Respondent’s Request for Termination The Respondent requests that the Panel terminate the proceeding pursuant to paragraph 18(a) of the Rules. The Respondent notes that the Complainant filed this proceeding nearly eight months after filing the Litigation, and just days after the Court granted the Respondent’s motion to compel discovery in the Litigation, which seeks exactly the same relief against exactly the same party. The Respondent argues that the Litigation is likely to resolve the issue of the ownership of the disputed domain names in a reasonable period of time because, under the schedule set by the Court, the case is set to be tried in February 2021. Although the Complainant disclosed the existence of the Litigation in its Complaint, it did not offer any explanation as to why it filed the Complaint during the pendency of its earlier-filed litigation addressing the exact same issue, and why the Panel should consider the Complaint notwithstanding the Litigation. B. Complainant’s Substantive Contentions Identical or Confusingly Similar The Complainant characterizes itself as a “non-profit, good government group” and a “grassroots organization of private individuals committed to improving the lives of every citizen in the city of Kenner, Louisiana.” The Complainant claims that its members regularly attend Kenner City Council meetings and meet with local legislators to advocate for improvements in the Kenner community, all under the CITIZENS FOR A BETTER KENNER trademark. Though the mark is unregistered, the Complainant claims that its use of the mark in connection with its grassroots organization services for more than eight years is sufficient to establish common law trademark rights. In support of that assertion, the Complainant submitted evidence showing that the local media has reported on the activities of the Complainant during the period from August 2011 to May 2020, all of which refer to the Complainant and the services it offers with specific reference to the Complainant’s name, CITIZENS FOR A BETTER KENNER. The Complainant also states that, as part of the grassroots services it provides under its mark, its representatives have regularly met with local politicians and with the Kenner City Council. The Complainant argues that the disputed domain names are identical to the Complainant’s trademark, with only the spaces removed. Rights or Legitimate Interests The Complainant asserts that the Respondent has never commonly been known as “Citizens For A Better Kenner.” To the contrary, that is the Complainant’s name. The Complainant also asserts that the Respondent has not made a bona fide offering of goods or services in relation to the disputed domain names or the corresponding mark. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names. Rather, the Respondent temporarily used one of the disputed domain names to impersonate the Complainant and to misleadingly suggest that the Complainant was the source of the endorsement posted on the website to which the Registered and Used in Bad Faith The Complainant argues that the Respondent, who is politically active in Kenner and whose father serves on the Kenner City Council, cannot credibly claim to have registered the disputed domain names without knowledge of the Complainant and its mark. The Complainant’s officers have for years attended Kenner City Council meetings, often speaking and identifying themselves as representatives of the group known as Citizens For A Better Kenner. The Complainant’s officers have seen the Respondent at these meetings on numerous occasions. Further, the Complainant’s officers have had numerous meetings with the Respondent’s father on behalf of Citizens For A Better Kenner. The Complainant argues that, in light of the Respondent’s knowledge of the Complainant and its name, the Respondent’s registration and use of the disputed domain names was in bad faith. The Respondent registered and used the disputed domain names to impersonate the Complainant and/or disrupt the Complainant’s business (namely, providing advice and advocacy about issues of local importance). The Respondent posted a deceptive political message on the website to which one of the disputed domain names resolved to deceive the public into believing that the message was issued by the Complainant. As for the other two disputed domain names, the Respondent is passively holding those domain names in bad faith, and preventing the Complainant from reflecting its mark in the “.com”, ”net” and “.org” generic Top-Level Domains (“gTLDs”). The Complainant further asserts that the Respondent’s use of a privacy shield to hide his identity when he registered the Identical or Confusingly Similar The Respondent asserts that the Complainant has no common law trademark rights. He asserts that the name “Citizens For A Better Kenner” is generic because it is comprised of common dictionary words; that it has not been used by the Complainant in commerce; that the Complainant has achieved no name recognition in the name; and that the Complainant has effectively abandoned rights in the disputed domain name Rights or Legitimate Interests The Respondent argues that he has a legitimate interest in the disputed domain names because he is a citizen of Kenner and wants to help achieve a better Kenner through his public service. Further, the Respondent argues, he is only using the disputed domain names for political purposes, which qualifies as a legitimate noncommercial or fair use, without any intent for commercial gain. The Respondent claims that he had no intent of misleading anyone when he registered the disputed domain names or posted his message on the website to which one of the disputed domain names resolved. Registered and Used in Bad Faith The Respondent asserts that he has not tried to sell the disputed domain names to the Complainant and does not seek any financial gain. He also is not seeking to disrupt the “business” of the Complainant because the Complainant has no “business”. Further, the Respondent asserts, he is not a “competitor” of the Complainant. The Respondent also claims that he did not use the disputed domain names in bad faith. He notes that he only used one of the disputed domain names to post a general statement of good wishes. The Respondent did not use the disputed domain names to disparage the Complainant, to support his own political campaign, or to support a position on controversial political issues. He also notes that he removed the message after receiving objections from the Complainant. 6. Discussion and Findings The conduct of the Parties reflects much of what is wrong with the American legal and political systems: in the case of the former, dishonest litigation tactics that serve only to increase the cost and complexity of dispute resolution and untenable litigation contentions; in the case of the latter, a breakdown in constructive dialogue and dishonest political advertising. As discussed further below the Respondent’s registration of these three disputed domain names and his deceptive use of the disputed domain names to impersonate the Complainant is paradigmatic bad faith, as are the demonstrably unsupportable substantive positions the Respondent has advanced in this proceeding. Equally worthy of scorn are the Complainant’s litigation gamesmanship tactics and its apparent failure to participate in discovery in good faith in the litigation that it initiated. As Mercutio declared when faced with the never-ending warring between the Capulets and Montagues: "A plague o' both your houses!" Alas, that plague is not enough to resolve this matter, and it is the Panel’s obligation to assess the merits of the case before it. In the sections below, the Panel explains: (1) why it will grant the Respondent’s procedural request that this proceeding be terminated, and (2) why the Respondent’s conduct is the kind of bad faith registration and use that would normally justify transfer under the Policy had the Panel reached the merits. Procedural Ruling Paragraph 18(a) of the Rules states that, “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. Section 4.14.3 of the WIPO Overview 3.0 indicates that “the panel may specifically terminate the UDRP proceeding without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of the court proceeding.” In most cases where a party has requested termination under paragraph 18(a) of the Rules, UDRP panels have denied the request. Some reasons for denial include that the parties are not identical (e.g., August Storck KG v. Origan Firmware,WIPO Case No. D2000-0576), the court lacks jurisdiction over the parties, (e.g., Rediff.com India Ltd. v. Contact Privacy Inc. Customer / zhijun shen,WIPO Case No. DCO2012-0016), the legal issues are not the same (e.g., Rejuve Clinics LLC v. Merlin Kauffman, Rejuve Inc.,WIPO Case No. D2019-2607), or there are no assurances that the court proceeding would expeditiously resolve the dispute (e.g., Associated Newspapers Limited v. Makhdoom Babar,WIPO Case No. D2020-0282). None of those reasons apply here. In this case, the exact Parties are before the Court, and the Court clearly has jurisdiction over them. Similarly, the exact disputed domain names are before the Court, the legal claim under the ACPA is analogous to the legal claim in this proceeding (with no other claims in the litigation, such as for trademark infringement or cancellation of a trademark registration), and the Court appears poised to decide the dispute in about six months (which, the Panel notes, is less time than the Complainant’s delay in filing this proceeding after first filing the Litigation). Those are elements that have supported termination in other cases. E.g., DNA (Housemarks) Limited v. Tucows.com,WIPO Case No. D2009-0367 (“The substance of Respondent's civil cause of action against Complainant is virtually identical to the determinations this Panel would, should he address the merits, consider under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. The Panel considers this fact to weigh in favor of termination, contrary to Complainant's argument. Respondent's requested relief is limited to its entitlement to the disputed domain name. There is no other apparent claim, much less another claim that might make entitlement of the disputed domain name pale in importance: no claim for trademark infringement, no dispute over prior transfers of the disputed domain name or related misconduct, no claim for damages at all. . . . The identity of issues means that the situation is very much the same as if the Panel had proceeded to a decision and the losing party (Complainant or Respondent) then elected to exercise its right under paragraph 4(k) of the Policy to contest the matter in an appropriate national court.”). Another factor that frequently impacts UDRP panel decisions on termination is whether the Respondent filed the lawsuit after the UDRP complaint was filed in order to try to prevent the panel from issuing a decision. E.g., Tiara Hotels & Resorts LLC v. John Pepin,WIPO Case No. D2009-0041; Associated Newspapers Limited v. Makhdoom Babar,WIPO Case No. D2020-0282. That obviously is not the case here. Rather, it is the Complainant who filed the lawsuit, and it did so about eight months before initiating this proceeding. The Complainant offers no explanation for why it is now pursuing the same relief before this Panel that it is pursuing in the Litigation. It is possible that the Complainant filed this proceeding because of the relative speed of the UDRP versus court litigation, but that does not explain why the Complainant only filed this UDRP complaint nearly eight months after it filed the Litigation, or why it pursued the Litigation in the first place. It also is notable that, in the Litigation that the Complainant itself initiated, the Complainant has not been diligent about meeting its discovery obligations. Further, the Respondent points out that the Complainant pursued this UDRP proceeding only after it suffered setbacks in two different discovery motions. Finally, it is notable that the Complainant has not elected to dismiss the Litigation in favor of this proceeding but instead is now pursuing the same relief on parallel paths. In light of this history, the Panel infers that the Complainant filed the instant proceeding in order to engage in forum shopping. Such forum shopping has been recognized by other UDRP panels as the kind of abusive tactics by complainants that justifies termination. See, e.g., Visible Technologies, Inc. v. Visibli Inc., WIPO Case, No. D2012-0904 (“There is a pending lawsuit, which [the Complainant] started prior to this Complaint. The fact that the Complainant has also brought the Complaint appears to be an unnecessary waste of legal resources, designed to put unnecessary pressure on the Respondent. Accordingly, the Complainant’s conduct is deserving of public censure.”). The fact that the Complainant initiated litigation more than eight months ago, and only now has opted instead to invoke the UDRP (after the Complainant has suffered defeats in the Litigation discovery process), smacks of the kind of gamesmanship that should not be rewarded. For these reasons, the Panel has decided to terminate this proceeding, and to have this decision published in order to provide guidance to future panels facing Rule 18(a) termination requests. The Panel recognizes that suspension is also an option under the Rules, but the Panel agrees with the consensus view that termination is “far preferable to suspension”. DNA (Housemarks) Limited v. Tucows.com,WIPO Case No. D2009-0367 and Yellow Pages Group Co. / Groupe Pages Jaunes Cie. v. Thomas Moll / Yellow Page Marketing B.V.,WIPO Case No. D2011-1833; WIPO Overview 3.0, section 4.14.1. Substantive Commentary Although the Panel has decided that termination is appropriate in this case, it would not be appropriate for the Respondent’s misconduct to escape commentary. Indeed, had this proceeding been filed in lieu of the Litigation, and were the Panel to reach the merits, the Panel almost certainly would have ordered transfer of the disputed domain names. Because the Panel’s reactions to the merits may aid the Parties’ settlement discussions or may be informative to the Court, the Panel outlines below its reactions to the Parties’ substantive arguments. A. Identical or Confusingly Similar The Respondent’s attacks on the Complainant’s trademark rights are without merit. First, the Respondent’s argument that “Citizens For A Better Kenner” is a generic term reflects a fundamental misunderstanding of United States trademark law. That compound phrase is not the genus for any category of goods or services; rather, that phrase is suggestive of the kind of grassroots good government organization that the Complainant is. The Panel notes that the United States Patent and Trademark Office has registered a number of similar marks without requiring any disclaimer of generic terms or any showing of acquired distinctiveness under Section 2(f) of the Lanham Act, including CITIZENS FOR RESPONSIBLE TRAILS (Reg. No. 5,957,561), CITIZENS FOR RESPONSIBILITY AND ETHICS IN WASHINGTON (Reg. No. 4,334,443), and CITIZENS FOR A BETTER AMERICA (Reg. No. 2,500,525).2 Equally without merit are the Respondent’s suggestions that the Complainant has not used its mark in commerce, has not established any goodwill in its mark, is not known by its mark, or has abandoned its mark or domain name. The Complainant’s evidence of its use of the mark over the past nine years, including local media reports of the Complainant’s activities, conclusively establishes that the Complainant has regularly pursued its grassroots public interest services under the CITIZENS FOR A BETTTER KENNER mark, including through participation at city council meetings and meetings with local officials. The Panel therefore concludes that the Complainant has common law trademark rights at least in Kenner, Louisiana, for the mark CITIZENS FOR A BETTER KENNER. Because the disputed domain names incorporate that mark in its entirety, there is no doubt but that the disputed domain names are identical to a mark in which the Complainant has rights. B. Rights or Legitimate Interests Equally without merit is the Respondent’s suggestion that he was unfamiliar with the Complainant or its name, and that he registered the disputed domain names only because the Respondent is a citizen who longs for a better Kenner. The Respondent’s suggestion that it is a coincidence that he registered the disputed domain names is not credible, and such assertions undermine the Respondent’s credibility generally. If the Respondent had his own group of citizens who wanted to advocate for a better Kenner, and if the Respondent were legitimately using the disputed domain names in connection with such an effort, this case might have presented a closer question (though even there, if the Respondent’s group adopted the same “Citizens For A Better Kenner” name, that would likely raise significant trademark infringement issues). But those are not the facts of this case. The Respondent has not presented any evidence that there are other citizens who have joined with him in this effort. To the contrary, it seems clear to the Panel that the Respondent, acting on his own, took advantage of the Complainant’s inadvertent failure to renew one of the disputed domain names to secretly register that name for himself and then post a deceptive message praising the current administration (which includes his father) in order to suggest that the Complainant’s Citizens For A Better Kenner group was supporting the administration. The Respondent’s impersonation of the Complainant cannot give rise to rights or legitimate interests under the Policy. See WIPO Overview 3.0, sections 2.5.1 (“UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. . . . Such [use] cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”) and 2.13.1 (“Panels have categorically held that the use of a domain name for . . . impersonation/passing off . . . can never confer rights or legitimate interests on a respondent.”); Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC,WIPO Case No. D2019-0633. Indeed, even if the Respondent were using the disputed domain names for “genuine noncommercial free speech, panels tend to find that [use of a domain name identical to the Complainant’s trademark] creates an impermissible risk of user confusion through impersonation”. WIPO Overview 3.0, section 2.6.2. The Panel is cognizant of the broad protections for free speech available in the United States, especially for political speech. But there is no evidence that the Respondent used the disputed domain names for legitimate political speech; to the contrary, he used them to deceive and impersonate. See, e.g., Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) (enjoining registration and use of the domain name As such, the Panel cannot accept the Respondent’s assertions that he has any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides the following examples of circumstances that, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that [the respondent has] registered . . . 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) [the 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 [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [his] web site. . . .” Any one of those showings would be sufficient to sustain a finding of bad faith registration and use. Here, three of the four examples all support a finding of bad faith by the Respondent. First, the Respondent’s nefarious intentions were laid bare by his registration of the two additional disputed domain names after he acquired the Second, although the Complainant is not a “business” that sells products or services, it does have a “business” of providing advice and guidance on issues of public policy. That kind of “business” is no less worthy of protection under the UDRP than commercial businesses. Similarly, although the Respondent may not be a competitive grassroots good government organization, it appears that the Parties have different views about what good government means in Kenner. As such, for purposes of the Policy, the Respondent is a competitor of the Complainant. The Panel thus has little trouble concluding that the Respondent’s conduct in registering the disputed domain names and posting a message supportive of the administration (which apparently did not reflect the views of the Complainant) is the type of disruptive conduct that constitutes bad faith under paragraph 4(b)(iii) of the Policy. Finally, the deceptive message that the Respondent posted on the website, and his registration of the disputed domain names that impersonate the Complainant, support a finding that the Respondent registered and used the disputed domain names to attract Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement. It may be that the Respondent’s deceptive conduct was for political rather than commercial gain, but the impersonation and deceptive posting nevertheless are the types of conduct that would support a finding of bad faith. 7. Decision The Panel hereby orders, pursuant to paragraph 18(a) of the Rules, that this proceeding be terminated. This termination shall be without prejudice to the Complainant's filing of a new complaint under the Policy at any time following termination of the pending Court action in the United States, but with prejudice if filed before the Litigation is terminated. David H. Bernstein 1 Most of these facts come from the Annexes submitted by the Respondent; others come from the docket sheet of the Litigation, which is publicly available through the United States Public Access to Court Electronic Records (“PACER”) service. It is well accepted that UDRP panels “may undertake limited factual research into matters of public record” as part of their assessment of the merits. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8. Given that PACER is a public record of the Litigation docket, the Panel finds it appropriate to rely on these records in connection with its assessment of the merits. 2 As with the information taken from PACER, it is well accepted that UDRP panels may also consult with “trademark registration databases” as part of their assessment of the merits. WIPO Overview 3.0, section 4.8.
Sole Panelist
Date: August 7, 2020
Full & Egal Universal Law Academy