Complainant is Victor Bekhet, United States of America (“United States”), appearing pro se.
Respondent is Kirk Uhler, United States / Brian Jagger, United States, also appearing pro se. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 15, 2021. The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. Respondent Uhler sent an email to the Center on February 3, 2021, that contained substantive arguments; the Center has treated that email as Respondent’s Response. Although that email stated that it included “some important facts for you to know,” Respondent did not include in his submission a certification of the accuracy of those facts as required by paragraph 5(c)(viii) of the Rules (“Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”). The Center appointed David H. Bernstein as the sole panelist in this matter on February 12, 2021. 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 February 17, 2021, the Panel issued Procedural Order No. 1, which stated, in relevant part: Complainant, a politician, asserts that the domain name was “used to impersonate me, deceiving voters into visiting the malicious website from flyers that purported to be circulated by me.” Complainant also asserts that the website to which the domain name resolves “continues to damage my business reputation and career aspirations through the hatred and prejudice targeted against me and my family,” contains libelous and defamatory material, and “tarnish[ed] my unique name and reputation […] causing me to lose economic opportunities.” Complainant has not, however, attached any printouts of the flyers or website that allegedly impersonated him, damaged and tarnished his business reputation, and caused him to lose economic opportunities, nor has Complainant described with particularity the exact contents of the flyers or website at issue. Respondent, Complainant’s political rival, asserts that he “used the domain [name] […] to publish a website informing voters of my district about Mr. Bekhet’s positions on the issues that voters in my district cared about.” Respondent further stated: “Since Mr. Bekhet decided to publically put his name on the attack ads against me (please see attached screenshot of one of his paid ads against me), I found it necessary to once again remind the voters of my district about Mr. Bekhet’s positions and public statements by using the domain name I had purchased years earlier.” Respondent also has not attached any printouts of the website on which he published such information, nor has he attached the paid ads mentioned in the Response, nor has Respondent described with particularity the exact contents of the website or paid ad. Each party is hereby directed to submit to the Center, by Thursday, February 25, 2021, the following information: 1. Complete and accurate printouts of every iteration of the website at issue, with an indication of the approximate dates on which each such printout was available. 2. Complete and accurate printouts of every flyer published by Respondent about Complainant. 3. Complete and accurate printouts of the advertisements allegedly paid for by Complainant about Respondent. 4. A declaration explaining how, if at all, the information published on the flyers, websites and ads was accurate or not and, to the extent the party alleges it was not accurate, the impact such inaccurate information has had on the party (e.g., how it has caused tarnishment, damage, or lost economic opportunities). Neither party filed a response to the Order by the February 25, 2021 deadline. However, more than a week later, on March 5, 2021, Complainant provided a supplemental submission that purported to respond to the Panel’s Order. 4. Factual Background Complainant is a Roseville, California resident with a history of involvement in local politics, including running for the Placer County Board of Supervisors against Respondent in 2016. Complainant registered his name, VICTOR BEKHET, with the United States Patent and Trademark Office (“USPTO”) for “Providing political information about elections; Providing political information, news, and commentary in the field of election campaigns; Providing a website featuring information about political issues; Providing an on-line searchable database featuring political information on election campaigns; Providing information regarding political issues, knowing how to vote and knowing how to register to vote; Providing information, news, and commentary in the field of politics.” Complainant filed his trademark application on July 24, 2016, claiming first use in commerce as of January 1, 2016; the USPTO registered the mark on October 20, 2020. Respondent is also a local political figure who served as a Supervisor on the Placer County Board of Supervisors until January 4, 2021. Respondent registered the domain name Given the parties’ failure to submit actual printouts of the website at issue (and given that the website content is not available through the Internet Archive), the Panel is unable to independently verify the contents of the website in the past. Nevertheless, the news report (“www.kcra.com/article/website-seemingly-attacks-placer-county-supervisor-candidate/6428098#”) and correspondence submitted by Complainant tends to corroborate these allegations, as does Respondent’s failure to contest the accuracy of Complainant’s assertions. The Panel thus accepts these allegations as true for purposes of this proceeding. That news report also includes a copy of a flyer that was distributed in the parties’ community. This flyer features a photograph of Complainant along with the text: “I WANT YOUR VOTE! Learn more about me at: www.victorbekhet.com.” In light of its content, the flyer purports to be from Complainant, and purports that the website to which the domain name resolved was Complainant’s website. 5. Parties’ Contentions A. Complainant Complainant contends that Respondent’s registration and use of the Disputed Domain Name violates his federal trademark registration. Complainant also appears to argue that he has common law trademark rights in his name given his use of the name in his investment and property management business. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, as the Disputed Domain Name has no connection to any goods or services offered by Respondent, and is not similar to any of Respondent’s names or marks. Complainant also notes that he is not in competition with Respondent’s business interests. As a result, Complainant argues, the sole purpose of the website to which the domain name has resolved is to impersonate Complainant in order to tarnish his trademark, his name, and his reputation. Finally, with respect to bad faith, Complainant argues that Respondent registered and used the Disputed Domain Name to spread defamatory and racist content about Complainant. Complainant argues that Respondent’s website contains libel against Complainant personally and against his business, and that Respondent’s campaign manager has been implicated in previous attempts to impersonate other entities. B. Respondent Respondent Uhler contends that he has rights and a legitimate interest in the website as a criticism site of Complainant. Respondent argues that the website was for purely political purposes, and constituted a permissible form of political campaigning against a political opponent. Respondent Uhler also argues that he did not register or use the website in bad faith. Rather, Respondent asserts, he legally acquired the Disputed Domain Name, which Complainant had not himself acquired, and used it only for the noncommercial use of political comment and debate. 6. Procedural Rulings a. Complainant’s Supplemental Submission As noted above, on March 5, 2021, Complainant filed a supplemental submission, which purported to respond to the Panel’s Procedural Order of February 17, 2021. The vast majority of this supplemental submission contained material which was not responsive to the Panel’s Order. One piece of evidence that was responsive was a copy of a flyer which impersonated Complainant and directed traffic to Respondent’s website, but this exhibit was redundant as the flyer was also reproduced in the news report cited in the Complaint. Another piece of evidence that was responsive was an undated printout of the website to which the Disputed Domain Name resolved, which bears the headline “Who is Victor Bekhet?” All of the other exhibits, as well as virtually all of the arguments in the submission, were not responsive to the Order; rather, they were an effort to reargue the merits with arguments that could have been included in the Complaint. Given the lateness of the submission, combined with its general non-responsiveness, the Panel has decided to disregard Complainant’s supplemental submission.1 b. Identity of Respondent Complainant filed the Complaint against Respondent Kirk Uhler. The Registrar, in its verification, indicated that the registrant of the Disputed Domain Name was Brian Jagger, and that Mr. Jagger is associated with Rensa Group. Complainant thereafter amended the complaint to add Mr. Jagger as a Respondent, noting that Mr. Jagger is an employee of Rensa Group LLC, and that Mr. Uhler is the member of Rensa Group LLC. In response to the Complaint, Mr. Uhler filed a Response in which he acknowledged that he was responsible for the registration of the domain name and that he used the domain name to publish a website about Mr. Bekhet. The Panel therefore concludes that it is appropriate to treat both Messrs. Uhler and Jagger as the Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11.2 (consolidation appropriate against multiple respondents where the evidence shows that the domain name or website to which it resolves is under common control of the respondents and where consolidation would be fair and equitable to the parties; factors supporting consolidation include that the respondents’ contact information is the same and that the respondents are affiliated and have the ability to control the Disputed Domain Name). 7. Discussion and Findings Under paragraph 4(a) of the Policy, in order to prevail, Complainant is required to prove each of the following by a preponderance of the evidence: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used by Respondent in bad faith. For the reasons stated below, the Panel concludes that Complainant has satisfied its burden of proving all three factors. A. Identical or Confusingly Similar Complainant has submitted evidence of a federal trademark registration that corresponds to his name, “Victor Bekhet.” Such a registration is prima facie evidence of Complainant’s trademark rights. Respondent has not refuted the validity of Complainant’s registration. The Disputed Domain Name The Panel notes that Complainant applied to register this mark on July 24, 2016, about four months after Respondent’s registration of the Disputed Domain Name. For the purposes of the first element of paragraph 4(a) of the Policy, it is not necessary for Complainant to prove that he applied to register his trademark prior to Respondent’s registration of the Disputed Domain Name. MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; Ice House America, LLC v. Ice Igloo, Inc.,WIPO Case No. D2005-0649. Rather, it is sufficient for Complainant to prove that the Disputed Domain Name is confusingly similar to trademark rights which he presently holds. In any event, Complainant’s trademark registration claims first use of his mark as of January 1, 2016 – a fact that Respondent did not refute – and therefore Complainant has established for purposes of this proceeding that he has trademark rights that predate the registration of the Disputed Domain Name. For the above reasons, the Panel finds that Complainant has met its burden and prevails on the first factor. B. Rights or Legitimate Interests UDRP panels long have recognized that an authentic criticism site may give rise to rights or legitimate interests under the Policy. Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647 (“[T]he [ The cybersquatting question generally focuses on the domain name itself. As the WIPO Overview 3.0 makes clear, in assessing whether a registrant has a right or legitimate interest in a domain name used for a criticism website, it is critical to assess whether the domain name communicates that the website at issue is a criticism site (as UDRP panels have largely held that [a domain name containing a complainant’s trademark] cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.[…]. Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., WIPO Overview 3.0 sections 2.5.1, 2.6.2 and 2.6.3. These principles are well illustrated by Joseph Dello Russo M.D. v. Michelle Guillaumi,WIPO Case No. D2006-1627. In that case involving criticism websites, the panel found that respondent had no legitimate interest in the domain name Similarly, in Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly,WIPO Case No. D2014-0780, the panel held: The Disputed Domain Names Here, there is no doubt that the Disputed Domain Name consists, in its entirety, of Complainant’s trademark, with no additional words added. As such, the Disputed Domain Name impersonates Complainant. That impersonation is exacerbated by the flyers that were distributed in the community that also impersonated Complainant and encouraged Internet visitors to visit Respondent’s website on the pretext that it was Complainant’s website. Although the record does not contain sufficient evidence from which the Panel can definitively determine whether Respondent was responsible for producing and distributing those flyers, given that Respondent did not refute any involvement with the flyers, it is a fair inference that Respondent was behind those flyers (which, after all, encouraged community members to visit the website that Respondent admits he created and posted). The remaining issue in this case is whether, under the free speech clause of the First Amendment to the United States Constitution (which, broadly-speaking, governs the parties’ conduct since they are both from the United States, see Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014), the political nature of Respondent’s website mitigates this impersonation. See WIPO Overview 3.0 section 2.6.2 (“In certain cases involving parties exclusively from the United States, some panels applying United States First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.”). Although it is a close question, the Panel concludes that the deceptive nature of Respondent’s domain name does not shield Respondent from liability under the UDRP. That is because United States courts have found deceptive domain names to constitute trademark infringement even when the speech was noncommercial and/or political. For example, in Planned Parenthood v. Bucci, a United States court held that a website whose domain name was identical to the trademark of plaintiff, and whose content impersonated plaintiff, violated trademark law, and was not protected under the First Amendment. 1997 WL 133313 at *11-*12 (S.D.N.Y. 1997). In rejecting defendant’s First Amendment defense, the court expressly held that free speech protection did not extend to a domain name that was designed to deceive visitors as to the origin or endorsement of the website. Nor is Respondent’s domain name protected because it was used in connection with a political website. Although political speech enjoys broad protection under United States law, that does not shield deceptive use of trademarks used in political campaigns from liability. For example, in Hershey Co. v. Friends of Steven Hershey, the court enjoined a political candidate from using campaign signage that was confusingly similar to the plaintiff’s trademark. 33 F.Supp.3d 588, 593-595 (D. Md. 2014). In that case, the political candidate’s sign mimicked the font and color of plaintiff’s candy bars; the court found that the sign deceived voters into believing that the candidate (whose last name was Hershey) was endorsed by or related to The Hershey Co., makers of the famous HERSHEY’S chocolate bars. Because of the confusion and deception created by Respondent’s use of the Disputed Domain Name, the Panel finds that Respondent does not have rights or legitimate interests in the Disputed Domain Name. In so finding, the Panel does not intend to prevent Respondent from creating a criticism site concerning Complainant, including in the event of any future political campaigns between the parties. Rather, this decision is only intended to prevent a stratagem that uses deception to trick Internet users into believing that the criticism site is somehow affiliated with Complainant. Such confusion is precisely what the UDRP is designed to guard against. See Joseph Dello Russo M.D. v. Michelle Guillaumi, supra (“[T]his reasoning in no way abridges Respondent’s freedom to criticize Complainant. She is merely prevented from broadcasting her criticism from Complainant’s soapbox, taking advantage of Complainant’s mark to reach her intended audience.”); Justice for Children v. R neetso / Robert W. O’Steen,WIPO Case No. D2004-0175 (“My decision in this proceeding no way abridges or chills Respondent’s free speech rights. He may continue his social and political commentary and attack against Complainant’s activities, on the Internet if he wishes, at another website, so long as he does not appropriate the protected mark of another as his web address. Under the Policy the most revered and thoughtful critic or political speaker may not increase his audience by taking advantage of the renown or attraction that attaches to another’s protected mark. Respondent is not entitled to use a soapbox or broadcast frequency owned by Complainant to lure Complainant’s audience to his harangue.”) For the above reasons, the Panel finds that Complainant has met its burden and prevails on the second factor. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four non-exhaustive circumstances in which bad faith registration and use may be found. Those circumstances include: “(ii) you have 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 you have 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, 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 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.” Although the four circumstances listed in the Policy serve as a guide to the Panel’s analysis, they are not exclusive. Rather, panels are free to consider other conduct that reflects bad faith and that violates the overall objective of the Policy, which is to “curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another.” Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230; Michael Patrick Lynch v. Steve Nicol (Stephen Joel Nicol),WIPO Case No. D2015-0933. Respondent’s conduct in this case violates both the spirit and the letter of the Policy. It violates the spirit because Respondent has engaged in deceitful conduct in passing off his own website as Complainant’s. Respondent is free to engage in open and honest debate about the parties’ qualifications for political office, but Respondent should do so in a way that makes it clear that his domain name resolves to a website that is critical of Complainant rather than through a domain name that impersonates Complainant. The flyers Respondent appears to have distributed in the community exacerbated the confusion, and support the Panel’s view that Respondent registered and used the Disputed Domain Name in bad faith, to promote confusion as to the source of the website with Complainant. Respondent’s conduct also violates the letter of the Policy. First, Respondent essentially admits that he registered the Disputed Domain Name “to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.” In particular, Respondent stated in his Response: “Having learned that Mr. Bekhet was planning a run against me, I had researched the availability of domain names. . . . It never occurred to me that Mr. Bekhet would have been so foolish to file for public office without purchasing his own domain name, so you can imagine my surprise when my search revealed it was available. . . . I used the domain that I had legally acquired to publish a website informing voters of my district about Mr. Bekhet’s positions on the issues that voters in my district cared about.” This statement is a plain acknowledgment that Respondent deliberately selected this Disputed Domain Name to prevent Complainant from launching his own campaign website reflecting his name and trademark. Although the Policy normal requires a pattern of such conduct (because such a pattern would be circumstantial evidence of the Respondent’s bad faith), when the bad faith is essentially admitted, the Panel finds that even a single incident of registering a domain name “to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” can be sufficient to establish bad faith registration and use. In any event, there is some evidence that Respondent and his associates have engaged in a “pattern” here, as Respondent’s friend Aaron Park (who also worked on Respondent’s 2012 election campaign) was accused by the Placer County counsel of improperly registering the domain name Second, Respondent’s conduct also violates paragraph 4(b)(iii) of the Policy, which deems it bad faith if a respondent registers a “domain name primarily for the purpose of disrupting the business of a competitor.” Complainant’s business is not the sale of commercial goods; rather, Complainant’s business (as reflected in his trademark registration) is the offering of political information and commentary. This business is separate from Complainant’s activity as an electoral candidate (as well as Complainant’s business as a financial advisor.) The Panel therefore needs to distinguish Respondent’s use of the website to campaign against Complainant as a political opponent from Respondent’s use of the website to disrupt Complainant’s political information and commentary business. Making this distinction is challenging given that Complainant’s business is so closely linked to his own political activity as an electoral candidate. Here, though, Respondent’s conduct has made that distinction easier. That is because Respondent continued to use the website to impersonate Complainant even after Complainant ceased to be his electoral opponent. Specifically, after the 2016 election, Respondent continued to update the website to which the Disputed Domain Name resolves in order to criticize Complainant and respond to Complainant’s political commentary. Respondent’s post-election conduct thus demonstrates that Respondent was acting as a “competitor” with respect to the political information and commentary services provided by Complainant, and was using the website to disrupt Complainant’s offering of the registered services. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505 (“a competitor for purposes of the Policy is a person or entity in competition with a complainant for the provision of goods or services”); Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772 (“a respondent can ‘disrupt[] the business of a competitor’ . . . if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.”) That post-election conduct also supports an inference that, when Respondent first registered the Disputed Domain Name, he did so primarily to disrupt Complainant’s political information and commentary business. Accordingly, the Panel finds the Respondent registered and used the Disputed Domain Name in bad faith primarily for the purpose of disrupting Complainant’s business of providing political information and commentary. Third, the Panel finds that Respondent registered and used the Disputed Domain Name intentionally to attract Internet users to his website by creating confusion with Complainant’s trademark. As noted above, the Disputed Domain Name exactly matches Complainant’s trademark, and contains no other descriptor identifying the website as a criticism site. In addition, as also noted above, Respondent appears to have distributed flyers that falsely suggested that the website was associated with Complainant’s campaign. The Panel acknowledges that there is no evidence that Respondent desired to divert Internet users to his site for commercial gain. Rather, it appears that the purpose of Respondent’s website was for political gain. Nevertheless, in light of the parties’ political competition and the fact that Complainant’s trademark is for political services, the Panel finds that Respondent’s conduct here is sufficient to establish a violation of the Policy. As noted above, the circumstances listed in paragraph (4)(b) are not meant to be exhaustive, but rather serve as a guide of what bad faith intent on the part of a respondent could look like. This Panel can, therefore, look beyond the enumerated circumstances of the Policy to find Respondent’s bad faith, where Respondent’s behavior violates the overarching objectives of the Policy. For the above reasons, the Panel finds that Respondent has both registered and used the Disputed Domain Name in bad faith. Therefore, Complainant prevails on the third factor. For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, David H. Bernstein 1 The Panel notes that, even if it had considered the information in the supplemental submission, the Panel would not have reached a different decision in this matter. 2 I dissented in part in Joseph Dello Russo, supra, because, at that time, I supported the alternative “View 2” advanced by some panelists that domain names for United States websites that are not used for commercial gain should not be subject to transfer under the UDRP. See WIPO Overview Second Edition (WIPO Overview 2.0”), section 2.4 (“www.wipo.int/amc/en/domains/search/overview2.0/#24”) (“View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.”). Although I continue to believe that “View 2” should be the approach used in the UDRP, I acknowledge that the consensus among UDRP panelists has rejected “View 2”; rather, as reflected in the updated WIPO Overview 3.0, a consensus has developed around the view that “a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark” because of the “impermissible risk of user confusion through impersonation.” WIPO Overview 3.0, section 2.6.2. As I explained in Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC,WIPO Case No. D2019-0633: Notwithstanding this Panel’s belief that the second view of WIPO Overview 2.0 is arguably the correct approach as a matter of law, policy, and fealty to the UDRP, this Panel strongly believes that it is equally important for the UDRP to articulate a consistent view rather than to allow the schism between these views to fester. A consistent approach provides a more reliable system of law where the parties can anticipate a result under the UDRP that will not depend on the panel assigned. For that reason, this Panel supports the position expressed in the WIPO Overview 3.0. For that reason, were I to consider the issues raised in Joseph Dello Russo, supra, today, I would not dissent and would instead join the majority opinion in its totality.
8. Decision
Sole Panelist
Date: March 22, 2021
Full & Egal Universal Law Academy