ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Tiffany Chhuom, PLLC d/b/a Ethtech, Tiffany Chhuom, Peter Chhuom v. J S Case No. D2023-2930 1. The Parties Complainant is Tiffany Chhuom, PLLC d/b/a Ethtech, Tiffany Chhuom, Peter Chhuom, United States of America ("United States"), represented by Karr Tuttle Campbell, United States. Respondent is J S, United States, self represented.1 2. The Domain Names and Registrar The disputed domain names
, , , are registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2023. On July 10, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on July 18, 2023 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 July 21, 2023. 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 July 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2023. The Response was filed with the Center on August 10, 2023. 1 While the registrar's disclosure revealed the Respondent as simply J S, the Respondent appeared in this matter and clarified his identity as Joseph Say. page 2 The Center appointed Georges Nahitchevansky as the sole panelist in this matter on September 1, 2023. 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 There are three Complainants in this matter. The lead complainant is a professional limited liability company in the State of Washington, United States using the name Tiffany Chhuom, PLLC and the assumed business name Ethtech. The owner of Ethtech is Tiffany Chhuom, who is likewise a listed Complainant. And the last Complainant is Peter Chhuom, the husband of Complainant Tiffany Chhuom. Complainant Tiffany Chhuom, PLLC owns a registration in the United States for the mark ETHTECH (Registration No. 6114456) that issued to registration on July 28, 2020 with a claimed first use date of January 1, 2019. Complainants claim to own the domain name , but that domain name is not currently in use. Respondent who has appeared in this proceeding and is based in the State of Texas, is an individual by the name of Joseph Say using the initials J S. Respondent registered the four disputed domain names between July 5, 2022 and February 14, 2023 as follows: (July 5, 2022), (July 9, 2022), (September 16, 2022) and (February 14, 2023). Respondent posted a website at the disputed domain name that displayed the title and header tab "Unethical Ethtech USA". The website largely concerned Complainant Tiffany Chhuom and alleged actions by Complainants. The three other disputed domain names all redirected to Respondent's website at the disputed domain name. Currently, all of the disputed domain names redirect to a website at which now features the title "UnEthtech -- Highlighting the unethical use of technology". That website continues to concern Complainants and their activities. The website also has a page offering some merchandise that features a logo used by Respondent on its website that consists of a cartoonish cat rendition surrounded by a forbidden sign and the words "Me, a Therapist". Complainant Tiffany Chhuom has also initiated a court action against Respondent in Thurston County, Washington in a case entitled Tiffany Chhuom v. Joseph Say, Case No. 23-2-01371-34. That case is currently pending. 5. Parties' Contentions A. Complainant Complainants contend that they have rights in the name and mark ETHTECH by virtue of their United States trademark registration and through the use of the mark since 2019 in the field of ethical use of technology training. Complainants claims common law trademark rights in the name Tiffany Chhuom on the basis that Complainant Tiffany Chhuom is a renowned social worker known for her work regarding ethical use of technology. Complainants also claim common law rights in the name Peter Chuuom on the grounds that Peter Chhuom is an entrepreneur and business owner who is well known in competitive racing and longrange shooting circles. Complainant asserts that the disputed domains names are identical or confusingly similar to their claimed trademarks. In that regard, Complainants maintain that the disputed domain names are identical to their claimed TIFFANY CHHUOM and PETER CHHUOM marks as they fully consist of those marks. As to the and domain names, page 3 Complainants argue that such are confusingly similar to their ETHTECH mark because they consist of a minor addition of a word or prefix to the ETHTECH mark. Complainants argue that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) registered and used the disputed domain names well after Complainants had established rights in their claimed trademarks, (ii) has not been authorized or licensed by Complainants to register and use the disputed domain names based on Complainants' trademarks, (iii) is not commonly known by the disputed domain names, (iv) has no rights in the UNETHTECH name and mark, and (v) has not made any bona fide use or legitimate fair use of the disputed domain names. In that regard, Complainants maintain that Respondent has simply used the disputed domain names to "mislead consumers into clicking its website" at in order to tarnish the reputation of Complainants. Complainants also note that Respondent has offered merchandise for sale through its website at the disputed domain name at various times. Lastly, Complainants argue that Respondent has registered and used the disputed domain names in bad faith in order to tarnish and harm the reputation of Complainants. In addition, Complainants maintain that Respondent was well aware of Complainants and that "Respondent knowingly registered the domain names containing nearly identical reproductions of the well-known ETHTECH mark and to capitalize on consumer recognition of the Mark". Complainants also note that Respondent has attempted to sell the disputed domain names to Complainant for an excessive price with the following posting on Respondent's website: "This Website is for sale. Please email tiffanychhuomdoxxes@gmail.com for details unless you are Tiffany Chhuom, Peter Chhuom, or any agent or associate of Peter and Tiffany trying to purchase this domain for them. Your cost is $5,000,000 or the removal of all of your social media accounts and a signed and legally binding contract that promises you will never get on social media again, else you will pay the $5,000,000 cost to a charity of my choice. Webhost isn't free please visit the Merch shop to help us recuperate the costs of this website, and to help us start a legal aid fund to support others suffering from cyber harassment". Finally, Complainant contends that Respondent has acted in bad faith by using "the nonsensical contact name 'J S' rather than a legal name, impeding Complainants' efforts to determine accurate ownership" of the disputed domain names. B. Respondent Respondent rejects Complainant's contentions. Respondent admits that all of the disputed domain names resolve to Respondent's website at , but contends such has been done "to highlight the endless harassment and doxxing of others by the complainant". Respondent argues that "spoofing and satire are allowed under the conditions of the uniform domain policy", and that the website has never pretended to be related to any therapy related business. Respondent also claims that he has created a nonprofit organization registered in Texas by the name of "StopUnEthtech" whose purpose is "to stop online bullying and doxing". With regard to the commentary posted on Respondent's website offering the disputed domain names for sale, Respondent maintains that such is satire and that the commentary "would not be regarded as serious by any reasonable persons and is part of the satire nature of the home page, with the details of harassment in following pages". Lastly, Respondent refers to the pending court action between Complainant Tiffany Chhuom and Respondent in Thurston County, Washington and asks that this proceeding be suspended until that matter is resolved. page 4 6. Preliminary Issues A. Respondent's Request to Suspend the Proceeding Respondent has requested that this proceeding be suspended on account of the pending court action between Complainant Tiffany Chhuom and Respondent in Thurston County, Washington. Paragraph 18(a) of the Rules gives the Panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is also the subject of a concurrent court proceeding. In general, appointed panels have been reluctant to suspend or terminate proceedings, except where exceptional circumstances have warranted such. See section 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The reluctance to grant a suspension is grounded in the potential that a suspension could result in a matter languishing for an indeterminate amount of time without there ever being a resolution. Here, neither Party has provided any details regarding the pending Washington state court action, what claims have been asserted in that proceeding, or if the disputed domain names are even at issue in that proceeding. But apart from the lack of information regarding the pending court action, Complainant has not joined in a request to suspend the pending proceeding. In the Panel's view, suspending the proceeding under these circumstances does not further the underlying benefit of the UDRP in providing an expeditious resolution of the domain name dispute. Based on the foregoing, the Panel denies Respondent's request to suspend the proceeding - particularly where, as here, Complainant has not sought or consented to a suspension of the proceeding. B. Consolidation of Complainants In this proceeding there are three Complainants, thus as a preliminary matter the Panel must determine whether consolidation of the Complainants into this proceeding is appropriate. In determining whether a single consolidated complaint can be brought by multiple complainants against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. See WIPO Overview 3.0 at section 4.11.1. Based on the evidence submitted, which is not contested by Respondent, the Panel accepts that the three Complainants are related parties and have a common grievance against Respondent. Under the circumstances, the Panel finds that consolidation would be fair and equitable to all parties. (Complainants in this proceeding will hereinafter be referred to collectively as "Complainant" in the singular form, unless specifically referred to individually.) 7. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. page 5 A. Identical or Confusingly Similar In this proceeding Complainant relies on three claimed trademarks: (i) a registered trademark for ETHTECH in the United States, and (ii) common law trademark rights in the personal names Tiffany Chhuom and Peter Chuuom. For ease of discussion of the first element, the Panel addresses Complainant's claimed trademark rights and the associated disputed domain names separately. (i) Identical or Confusingly Similarity with regard to the and disputed domain names Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at paragraph 1.2.1. Complainant has provided evidence that it owns trademark registration for the ETHTECH, and that such issued to registration before Respondent registered the and disputed domain names. With Complainant's rights in the ETHTECH mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain ("gTLD") such as ".com") is identical or confusingly similar with Complainant's marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the and disputed domain names are confusingly similar to Complainant's ETHTECH mark as they each incorporate the ETHTECH mark in its entirety. The addition of the prefix "un" or the word "stop" does not alter this finding as ETHTECH is clearly visible in the and disputed domain names. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's ETHTECH and in showing that the and disputed domain names are identical or confusingly similar to that trademark. (ii) Identical or Confusingly Similarity with regard to the and disputed domain names It is evident that the and disputed domain names are identical to the personal names of Complainants Tiffany Chhuom and Peter Chuuom, as they consist solely of their names with the irrelevant ".com" gTLD extension. The sole issue is whether or not Complainant's personal names "Tiffany Chuuom" and "Peter Chuuom", which are not registered as trademarks, function as a common law or unregistered trademarks. While the Policy does not specifically protect personal names, in situations where a personal name that is not registered as a trademark is being used in commerce, a complainant may be able to establish common law or unregistered rights in such personal name. See WIPO Overview 3.0 at section 1.5.2. Proving such common law or unregistered rights requires a complainant to show that the personal name has become a distinctive identifier which consumers associate with the complainant's goods or services. WIPO Overview 3.0 at section 1.3. Merely having a famous or well-known name without showing that a personal name has been used in a sufficiently trademark source identifying way will not, in and of itself, establish such common law or unregistered rights. See, e.g., Philippe Pierre Dauman v. Diner Business, WIPO Case No. D2013-1255. The touchstone for a complainant to establish common law or unregistered rights in a personal name requires proof that the personal name has achieved "secondary meaning" (even if such only exists in a particular geographical area or market niche). Relevant evidence of such "secondary meaning" typically includes the duration and nature of the use of the personal name as a mark, the amount of sales under the personal name, the nature and extent of advertising using the personal name, consumer surveys, and the degree of actual consumer, industry and media recognition of the personal name. WIPO Overview 3.0 at sections 1.3 and 1.5.2. page 6 Here, Complainant maintains that Tiffany Chhuom is "a renowned social worker known for her work regarding ethical use of technology" and that as a result "[s]he has made her name commercially valuable in her field and is routinely invoked as a key figure therein". With regard to the personal name "Peter Chhuom", Complainant contends that "Peter Chhuom is an entrepreneur and business owner whose name and likeness are critical to his success" and that he "is also well known in competitive racing and long-range shooting circles". In support of these contentions, Complainant has only submitted a curriculum vitae for Tiffany Chuom and some printouts from a website at listing out long-range shooting matches Peter Chhuom participated in from 2019 through early 2023. At the outset, while Complainants' personal names do not appear to be common names, it is not objectively clear that Complainant's Tiffany Chhuom or Peter Chhuom names are well known, as might be the case for a popular actor, performer, writer, or public figure. Thus, the question turns on whether the evidence submitted by Complainants sufficiently establishes that Complainants have common law or unregistered rights in the Tiffany Chhuom and Peter Chhuom names. A review of the evidence submitted by Complainant, however, makes this questionable. The curriculum vitae for Tiffany Chuom details her claimed education, experience, presentations, and awards, none of which are substantiated with any other evidence. For example, Complainant Tiffany Chhuom claims to have conducted numerous podcasts and presentations. However, there is no evidence regarding any of these podcasts or presentations, such as promotions or programs for such, information on the number of viewers or spectators, reviews of such or the like. Indeed, from the curriculum vitae itself it appears that these were not podcasts or presentations created, directed, or principally conducted by Tiffany Chhuom, but podcasts or presentations where she either consulted, had a limited role in, or was invited to participate in a sub-section or portion of such. At best, the entries in the curriculum vitae simply show that Complainant claims that Tiffany Chhuom was a participant in some way, and even a speaker, for some podcasts or presentations. What is missing in the record, apart from a lack of evidence substantiating any part or the claimed curriculum vitae, is any unsolicited third party public recognition of Complainant of Tiffany Chhuom, such as press articles or other materials demonstrating that she is "a renowned social worker known for her work regarding ethical use of technology", as is claimed by Complainant. In all, what has been provided by Complainant Tiffany Chhuom does not establish that her name is associated by consumers or the relevant trade with any particular literary works, podcasts, lecture series or as a source of any goods or services. Similarly, the fact that Peter Chhuuom has participated in thirty or so long range shooting matches in mostly Washington State over the course of 4 years does not in and of itself establish that his name functions as a common law or unregistered trademark. Again, what is missing is evidence showing the nature and extent of use of the name Peter Chhuom as a source identifier for goods or services, any unsolicited media coverage or industry recognition of Peter Chuuom or any third party recognition of Peter Chuuom as a source of goods or services. The mere participation in some isolated shooting events in Washington state does not in and of itself establish secondary meaning in a personal name, in a trademark sense, and, at best, could show that Peter Chhuom is perhaps known to a relatively small group of participants in shooting events in Washington State. In sum, there is insufficient evidence in the record that the personal names "Tiffany Chhuom" and "Peter Chhuom" have become distinctive identifiers of their claimed services. The evidence does not show use of the names "Tiffany Chhuom" or "Peter Chhuom" on a level that would establish trademark rights or show that these names enjoy widespread recognition even in their claimed fields. Under these circumstances, the Panel finds that Complainant has failed to prove that the and disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights. Accordingly, the Complaint is denied as to these two disputed domain names. Having found that Complainant has established the first element as to the and disputed domain names, the Panel shall now address the second and third elements as to those disputed domain names. page 7 B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production of evidence shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Here, Complainant maintains that Respondent has no rights in the ETHTECH mark and has used the and disputed domain names to attract web users to Respondent's website to tarnish the reputation of Complainant. Having reviewed Respondent's website, such appears to be one that is critical of Complainant. Thus, the issue before the Panel is whether Respondent is making a fair use of the and disputed domain names by using such in connection with a website that appears to be critical of Complainant and its activities. Under paragraph 4(c)(iii) of the Policy, the use of a domain name for a fair use such as noncommercial free speech, can in principle support a respondent's claim to a legitimate interest under the Policy. In assessing cases of claimed free expression, the Panel is of the view that such assessment must embrace a holistic approach and focus on the totality of factors that includes the important initial question of whether a disputed domain name is being used to impersonate the Complainant, or put another way, whether the public would perceive the disputed domain name as being affiliated with or authorized by a complainant. Such additional factors would include (i) the genuine, noncommercial nature of the criticism or commentary,2 (ii) the possible pretextual nature of the respondent's website, (iii) the commercial or noncommercial aspects of the respondent's website, (iv) the nature of the domain name itself potentially including any additional terms or plays on words, (v) the use of disclaimers, and (vi) other factors that could inform whether a respondent is using the disputed domain for bona fide noncommercial criticism concerning a complainant or to take advantage of a complainant's mark in a bad faith or abusive way for the benefit of a respondent. Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473. Looking at the and disputed domain names, the Panel first notes that these disputed domain names do not solely consist of the ETHTECH mark and do not use the ETHTECH mark with a term that tends to conjure up a likely association or affiliation with Complainant. Both domain names can be categorized as containing Complainant's ETHTECH mark with terms that could be seen, in the Panel's view, as suggesting some criticism or protest of Complaint. It is evident that neither of these disputed domain names are meant to impersonate Complainant per se, but instead are aimed at referring to Complainant negatively, a fact that Respondent does not deny. The disputed domain name, on its face, has a more communicative connotation with its use of the word "stop" to form the phrase "stop ethtech", which could be seen as form of protest against Complainant. As for the "unethtech.com" disputed domain name, it arguably has a communicative aspect as "un" is a prefix often used in a way to negate the base word it precedes. Here, it seems more like a play on the "eth" portion of Complainant's ETHTECH mark to perhaps stand as a short form for "unethical tech", but that is not necessarily how such could be seen. In all, these disputed domain names are unlikely to be viewed as official domain names of Complainant. 2 The Panel wants to make clear that this factor does not require a panelist to assess the merits of the criticism or whether it is unfounded or defamatory. Rather the touchstone is for the panel to assess as best as it can on the record before it whether the alleged criticism is not merely a pretext for cybersquatting or meant to essentially further a commercial purpose or interest for the benefit of the respondent. By way of example, a website with alleged criticism or commentary with links to other websites or that solicits personal identifying information and email addresses might put into question the genuineness of such criticism and its noncommercial nature. page 8 With regard to the website to which the disputed domain names have redirected to, a review of Respondent's website, and a prior iteration provided by Complainant, shows it to be largely noncommercial in nature and consisting of commentary and posts that are critical of Complainant and its activities. Complainant, however, contends that Respondent is using the disputed domain names for a commercial purpose, particularly as Respondent has offered the disputed domain names for sale. Respondent maintains that the offer for sale is nothing more than "satire", and "would not be regarded as serious by any reasonable person". A review of the text of that offer, as set forth above in Section 5.A., shows that while there is an unspecified offer to sell the "Website", at least as to third parties, it is not an offer to sell the disputed domain names in the traditional sense when the offer is considered in the context of the text that makes it clear that Respondent will not sell the disputed domain names to Complainant unless Complainant agrees to a set of excessive demands. While the content of the purported demands appears a bit outlandish and perhaps not serious, the takeaway of the entire text is that this may be less of an attempt to sell, than an effort to either antagonize Complainant or to further hammer home Respondent's distaste for the alleged actions of Complainant on social media. Complainant also notes, with limited details, that Respondent has offered merchandise through its website at various times. As already noted, that merchandise features a logo used by Respondent on its website concerning Complainant that consists of a cartoonish cat rendition surrounded by a forbidden sign and the words "Me, a Therapist". Respondent's website also includes a request that visitors who come to the website assist in the hosting of the website and that they do so by visiting the "merch" page. In all, however, the website at the disputed domain names does not appear to be a primarily commercial website or a pretextual endeavor for some hidden benefit for Respondent. Respondent's request for funds to assist in the hosting of the site, by selling merchandise that reinforces the criticism of Complainant, by featuring Respondent's website logo, does not in and of itself transform the website into a commercial endeavor or other scheme for the profit of Respondent. Certainly, Complainant has not shown otherwise and, in any event, such incidental and limited requests for fundraising or hosting has at times been found to be permissible particularly when the website in question appears to be a genuine criticism website and not a pretextual subterfuge for the benefit of a respondent. WIPO Overview 3.0 at section 2.6.3. Complainant also attacks the legitimacy of Respondent's actions by maintaining that Respondent's website and the commentary therein is meant to tarnish the reputation of Complainant. However, as already noted, it is not within the Panel's ability within the confines of a narrow record of a UDRP to assess whether Respondent's commentary is unfounded or libelous. To be sure, if Respondent's assertions are untrue, defamatory, or expressed in a malicious way to harm Complainant's reputation, these are matters the Complainant has to seek remedies for elsewhere. The UDRP is a limited proceeding and such claims are outside of a panel's purview. Taking all of the above noted factors into account the Panel concludes that the Respondent has a legitimate interest in using the and disputed domain names which are used to link to a website that is of a noncommercial nature to express the Respondent's genuinely held views about Complainant. As such, Complainant's Complaint fails on the second element. In reaching this conclusion, the Panel wants to make clear that it expresses no view at all as to whether Respondent's views as set out on Respondent's website are correct or unfounded. C. Registered and Used in Bad Faith In the light of the Panel's finding as to legitimate interest in relation to the and domain names, the Panel does not need to address the third element of registration and use in bad faith in respect of these disputed domain names. page 9 7. Decision For the foregoing reasons, the Complaint is denied. /Georges Nahitchevansky/ Georges Nahitchevansky Sole Panelist Date: September 15, 2023
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