The Complainant is The Evergreen Review, Inc., United States of America (the “United States”), internally represented.
The Respondent is Charles Mingus III, 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 September 3, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 4, 2020, the Registrar transmitted by email to the Center its verification response 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 September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. The Response was filed with the Center on October 1, 2020. On October 4, 2020, the Complainant submitted a “letter” to the Center replying to the Response, and on October 6, 2020 the Respondent replied by email. This prompted further emails from the Complainant and the Respondent dated October 6, 2020. The Center informed the Parties that these messages would be treated as supplemental filings and forwarded to the Panel when appointed. The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 14, 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 The Complainant is a New York not-for-profit corporation established in 1997 expressly to “revive and publish” the Evergreen Review, “America’s premier avant-garde magazine, originally published from 1957-1972”. The literary magazine was relaunched by the Complainant as an online review in 1998. The magazine is currently published on the Complainant’s website at “www.evergreenreview.com”, presenting “an international array of authors and visual work”. The “About” page of the Complainant’s website says that the magazine was “re-launched on-line in 1998, and then again in 2017.” This is explained further in an article attached to the Complaint and in the Wikipedia article on “Evergreen Review”. It appears that the magazine ceased publication in 2013 and was revived under a new publisher and editorial board in March 2017. The online magazine is distributed for free, and the Complainant’s website also distributes free podcasts. However, the website solicits donations and includes a “Shop” page that sells print collections and T-shirts. Neither the Complaint nor the website indicate the number of supporters or monthly site visitors. The Complainant does not hold registered trademarks but offers evidence of an “unregistered (common law) mark”, evidently referring to EVERGREEN REVIEW as the mark claimed. The evidence proffered is the “About” page of the Complainant’s website, with a brief history of the review, links to historical screenshots of the Complainant’s website from the Internet Archive’s Wayback Machine, and an article from March 2017, when the online review was most recently relaunched, that was published online in Daily Beast, under the title, “Can the once avant garde and erotic Evergreen magazine still excite modern readers?” The Complainant states that it also formerly owned the Domain Name when the online magazine was launched in 1998 but lost control of it “due to an internal oversight”. In pre-filing correspondence with the Center (which is not attached to the signed Complaint), the Complainant’s representative offered to furnish testimony to the effect that “a disgruntled former board member contacted the current domain owner, Mr. Charles Mingus III, and suggested he buy the [Domain Name]. Mr. Mingus admitted to doing so, at the request of this former board member, in a telephone conversation with me in October 2019.” The Registrar reports that the Domain Name was created on January 21, 2019 and is registered to the Respondent Mr. Mingus of New York, New York, United States, listing no organization. The Domain Name resolves to landing page headed with the Registrar’s name and logo, the Domain Name, and the message that the Domain Name is “parked free, courtesy of GoDaddy”. The page includes a link to “Get This Domain” and several pay-per-click (“PPC”) advertising links to unrelated third parties. In their supplemental filings, the Complainant and the Respondent discuss a Ms. Myers Rosset, the person mentioned in the Complainant’s pre-filing correspondence with the Center. She is identified by both Parties as the widow of the founder and first publisher of Evergreen Review and a former publisher of the review herself, who has served on the board of directors of the Evergreen Review. 5. Parties’ Contentions A. Complainant The Complainant suggests that the unregistered mark EVERGREEN REVIEW has a long history: “Since The Evergreen Review’s establishment sixty-three years ago, the nonprofit literary magazine has been known both for its commitment to free expression as well as its devotion to an international array of authors and visual work.” The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name and no association with the Complainant and has only acquired and used the Domain Name in bad faith, in an effort to create confusion and mislead Internet users. The Complainant argues in the supplemental filings that the Respondent has “no background or training whatsoever” in evergreen technologies but had prior knowledge of the Complainant. The Complainant asserts that former publisher Ms. Myers Rossett urged the Respondent to acquire the Domain Name “to interfere with the operations” of the Evergreen Review but subsequently agreed at a meeting of the board in November 2019 to request that the Respondent transfer the Domain Name to the Complainant. B. Respondent The Respondent disputes that the Complainant holds any relevant trademark rights: The Complainant has no trademark registrations, and the Domain Name is comprised of two English dictionary words in common use that are not exclusively associated with the Complainant. The Respondent claims a legitimate interest in using them for relevant purposes: “Respondent intends noncommercial use of the disputed domain to share information about evergreen technologies that stand to benefit humanity in this time of great need.” The Respondent amplifies his interest in the Domain Name and denies bad faith as follows: “Respondent … intends to use the domain as a venue for the exchange of ideas in the context of reviewing evergreen technologies, such as solar energy and rechargeable, pathogen killing face masks. These and other technologies support autonomous living for humanity at large and are essential to humanity’s survival. As an inventor and artist, I have prepared a decade of research into development and application these kinds of technologies. I registered the domain last October and conducted several design meetings with a technology person to put up the site. Since the pandemic shut down New York City in March this year, through no fault of my own, I have been unable to resume the planning and design on the site. This is further exacerbated because, being age 76 with respiratory and related health conditions, I have been forced to live in near isolation since then not to risk succumbing to the virus. Respondent is planning legitimate noncommercial use of the disputed domain, without intent for commercial gain or to misleading and divert consumers from Complainant, or to tarnish Complainant’s publishing business. For over a decade, Respondent has compiled information on evergreen technologies, such as transparent, flexible photocells, hydrogen fuel cells, and floating cities. Respondent is an artist and inventor and intends to share his inventions and the synthesis of ideas related to others’ inventions to benefit all of humanity. Notably, the Covid.SARS.2 virus substantially slowed progress on publishing these works …” The Respondent denies prior knowledge of the Complainant and attaches screenshots of websites formerly associated with the Domain Name in 2015 and 2017, operated respectively by a Japanese mobile telephone retailer and a German shoe store, to demonstrate that the Complainant has not exercised control of the Domain Name recently and is not associated exclusively with the name “Evergreen Review”. The Respondent’s supplemental filing observes that evergreen technologies are “not a new venture” for the Respondent, citing a United States patent awarded to the Respondent in 2016 for a nano-imaging device, as well as unpublished works. The Respondent denies that Ms. Myers Rosset or anyone else “urged” him to purchase the Domain Name so he could interfere with the Complainant’s business. The Respondent attaches an email dated October 4, 2020 from Ms. Myers Rosset that seems to say that the Domain Name was previously registered by her late husband, Mr, Rosset, rather than by the Complainant (as claimed in the Complaint), that it has never been used to publish content about the Review, and that she, as a board member, never intended to publish an archive on another domain in contravention of the Bylaws of the Evergreen Review. Ms. Myers Rosset says she responded to “pressure” by agreeing to “inquire of the owner” about transferring the Domain Name. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the 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. Under paragraph 15(a) of the Rules, “[a] Panel shall 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”. 6.1 Preliminary Matter: Supplemental Filings The Complainant and the Respondent each submitted supplemental filings, in the form of emails and a forwarded email. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview 3.0, section 4.6. The supplemental filings here concern the Respondent’s stated reason for acquiring the Domain Name (which prima facie could not be deduced before this proceeding, as the Respondent has merely parked the Domain Name since acquiring it) and the related question of the Respondent’s prior knowledge of the Complainant’s claimed trademark. The Panel must take into account the lack of supporting signed declarations or certifications of accuracy and completeness, particularly regarding a forwarded email from a third party, Ms. Myers Rosset, which uses abbreviations and is not entirely clear on several salient points. The supplemental filings are potentially relevant on the second and third elements of the Complaint, however, and the Parties happen not to be represented by counsel, so the Panel will accept them as part of the record in this proceeding. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Doman Name is confusingly similar to the claimed EVERGREEN REVIEW mark, lacking only the unpronounced space between words (which cannot be included in the Domain Name System for technical reasons), and the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2. However, the Complainant does not hold a registered EVERGREEN REVIEW trademark, and the Complaint does not adequately establish that the string is protected as an unregistered, common law mark. As summarized in WIPO Overview 3.0, section 1.3: “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” The reputation of the former Evergreen Review, published between 1957 and 1972, is not material, because that was a print magazine produced by a different publisher. No such magazine existed for the next 25 years, and the Complainant did not come into being until 1997. The Complainant’s online publication ceased in 2013, and there is no little or no evidence in the record concerning its circulation and the extent of its recognition in any relevant market. The Complainant then relaunched an online magazine under the same name in 2017, less than two years before the Respondent registered the Domain Name. The record includes no evidence concerning the subscriber base, advertising, or media recognition (apart from a single online article in 2017). In short, the record does not demonstrate long-term, continuous use of a mark associated with the Complainant’s goods or service, nor substantial advertising, distribution, or recognition demonstrating a distinctive identifier associated with the Complainant. The Panel finds that the Complainant has not established rights in a trademark or service mark as required to sustain a UDRP Complaint. For the benefit of the Parties, the Panel briefly discusses the arguments advanced under the other elements of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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 Respondent here asserts a legitimate interest in a dictionary sense of the Domain Name for a nonprofit website reviewing developments in “evergreen” or sustainable technologies. However, the Respondent has not yet made any such use of the website and has allowed the Domain Name to be used in the interim for unrelated commercial advertising. This would not constitute legitimate noncommercial or fair use. See WIPO Overview 3.0, sections 2.4, 2.5, 2.9, 2.10. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” This example could encompass PPC advertising using a domain name confusingly similar to a trademark. The examples given in paragraph 4(b) are not exclusive, and the Complainant suggests that the Respondent, in league with the “disgruntled” former publisher Ms. Myers Rosset, intended somehow to use the Domain Name to interfere with the operations and reputation of the Evergreen Review. The Respondent in this case denies prior knowledge of the Complainant, however, and this denial is plausible because the Complainant’s claimed mark is used for a literary magazine of unknown circulation, with little evidence of broader contemporary recognition. The Complainant suggested in unattested correspondence that the Respondent had actual knowledge of the Complainant, but this cannot be given weight without a witness declaration attached to the Complaint’s certification of accuracy and completeness, to which the Respondent is given an opportunity to reply. The Panel in that case would have to assess the relative probability of the facts as submitted by the parties and the persuasiveness of their arguments: The Complainant implies an unstated animus and a desire to mislead Internet users, and the Respondent offers instead an argument for a planned, relevant use of the Domain Name. Notably, the Complainant in this instance operates a nonprofit literary review, so the pecuniary advantages of imitation are not as evident as in the case of a commercially successful trademark, and it is not clear why this particular Respondent would be motivated to act against the Complainant. The supplemental filings are not dispositive. The Respondent, with an actual patent in his name, refutes the Complainant’s argument that the Respondent has no technology background or training. But the Respondent and Ms. Myers Rosset do not squarely put to rest any implication that they had communications before the Respondent acquired the Domain Name. It is still unclear why the Respondent would conspire with the former publisher and to precisely what end. As the Complainant bears the burden of proof, the Panel would likely find that the Respondent prevails on the third element of the Complaint, bad faith, even if the Complainant had sufficient evidence of common law trademark rights. 7. Decision For the foregoing reasons, the Complaint is denied. W. Scott Blackmer
Sole Panelist
Date: October 28, 2020
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