WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anti-Defamation League v. Boris Pribich
Case No. D2006-1111
1. The Parties
The Complainant is Anti-Defamation League, of New York, New York state, United States of America, represented by Proskauer Rose, LLP United States of America.
The Respondent is Boris Pribich, of Simi Valley, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names
are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2006. On August 30, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 30, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2006. The Response was filed with the Center on October 18, 2006.
The Center appointed Mr. Mark V.B. Partridge as the Sole Panelist in this matter on November 1, 2006. 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.
Respondent made additional submissions on October 29, 2006, and November 3, 2006. The Panel has exercised its discretion to consider all of Respondent’s submissions. The Panel extended the date for issuing the decision to December 4, 2006.
4. Factual Background
This proceeding is part of a continuing dispute between Complainant and Respondent. For more background, see Anti-Defamation League v. Boris Pribich, WIPO Case No. D2005-0751 (September 22, 2005) (transferring <adlusa.com>).
Complainant is the ADL Anti-Defamation League, a non-profit organization founded in 1913. The terms “ADL” and “Anti-Defamation League” have been widely used and promoted to identify Complainant’s non-profit activities.
Complainant owns a federal trademark registration for a design mark featuring the words “ADL Anti-Defamation League,” Reg. No. 1,776,315, dated June 15, 1993.
Complainant operates a website for its activities at “www.adl.org”.
Respondent is a Serbian-American. In the early 90s, Respondent wrote members of Congress to express concern about the Yugoslav Civil Wars. Respondent published information about these letters at a site operated at “www.compuserb.com”.
By 2001, it appears that Respondent was operating a website under the name American Defense League at “www.americandefenseleague.com”, and was using the letters ADL in connection with that name. Respondent posts content that is critical of various organizations and activities, including the activities of Complainant.
On July 19, 2001, prior counsel for Complainant sent a demand letter to Respondent, stating, in part:
“it has come to our client’s attention that you are using our client’s ADL mark in connection with the name of your organization, as well as in connection with your website located at “www.americandefenseleague.com.”
It appears that Respondent later registered the disputed domain names as follows:
<adl.cc> August 5, 2005
<antidefamationleague.com> December 17, 2003
<antidefamationleague.org> March 24, 2006
<antidefamationleague.info> April 29, 2006
<adlusa.org> August 16, 2006.
5. Parties’ Contentions
Complainant contends that the disputed domain names are confusingly similar to marks in which Complainant has rights.
Complainant also contends that Respondent is not known by the names “adl” or “antidefamationleague” and has no legitimate right or interest in the disputed domain names.
Finally, Complainant contends that Respondent has registered and used the domain names in bad faith because (a) he adopted the domain names after receiving a demand letter from Complainant’s counsel; (b) he mimics Complainant’s use of its marks in a manner to mislead and confuse the public; (c) he uses the domain names to tarnish and dilute the ADL mark; and (d) he offers commercial services through his websites.
Respondent contends that Complainant’s mark “ADL Anti Defamation League” is not identical or confusingly similar to the domain names.
Respondent also contends that he has a legitimate interest in the domain names because he was known by those names prior to this dispute.
Finally, Respondent contends that he registered and used the domain names in good faith to protest and publicize information of Complainant’s activities.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant also owns a federal registration of a design mark containing the words “ADL Anti Defamation League.” The Panel also finds that Complainant has established common law rights in the marks ADL and “Anti Defamation League” based on long and extensive use for over 90 years. The Panel finds that the disputed domain names are identical or confusingly similar to those marks.
As explained in the prior proceeding between the parties with respect to the domain name <adlusa.com>:
“Under Paragraph 4(a)(i), the question of identity and confusing similarity is routinely evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Having determined that Complainant, for purposes of this proceeding, has enforceable rights in the ADL Mark, the Panel notes that the entirety of the ADL Mark is used in the Domain Name. The additional phrase “USA” is a geographic reference commonly understood to refer to the United States of America and is non-distinctive.”
Anti-Defamation League v. Boris Pribich, WIPO Case No. D2005-0751. The same principles apply here. Respondent’s argument that Complainant lacks rights in these marks and that the domain names are not similar to Complainant’s mark are unpersuasive. Therefore, the Panel finds that Complainant has satisfied the first element of its claim.
B. Rights or Legitimate Interests
Respondent argues that it has a legitimate interest in the domain names because it is commonly known as ADL and Anti Defamation League. In support of this claim, Respondent points to the fact that initially used the name American Defense League and the letters ADL prior to any objection from Complainant. The evidence of this includes letters and email addressed to Respondent as “ADL,” “ADL Intake,” “Anti-Defamation League” or “ADL Contact Information.” Complainant has also submitted evidence in the form of its 2001 demand letter indicating that Respondent was then operating a website at “www.americandefenseleague.com” and used ADL in connection with that name. The specimen submitted shows use by Respondent of the name “ADL American Defense League”.
The arguments presented here are similar to those addressed in the prior case between the parties, in which the panel stated:
“The Complainant alleges that Respondent is offering no legitimate goods or services on his website, is not commonly known by the Domain Name and that Respondent is making no legitimate noncommercial or fair use of the Domain Name. Complaint argues that any right to political commentary in the text of a website does not allow Respondent to tarnish the ADL Mark by its use in an unauthorized Domain Name. Respondent may be free to make political commentary, but must do so using a Domain Name which is not confusingly similar to the ADL Mark. The Panel finds that Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Name.
“Respondent argues that he has used the Domain Name for three years without any objection from Complainant. Respondent further argues that his website is a primary source for information about treason against the United States of America and about the historical record of the expulsion of Jews from countries throughout written history. The Panel finds that this statement is not sufficient to rebut the prima facie showing of Complainant.
“The Panel finds that the Respondent has not met any of the criteria under paragraphs 4(c)(i)-(iii) of the Policy. Furthermore, Respondent’s arguments about having operated his website without objection for three years and about being a primary source of information regarding treason and the historical expulsion of Jews is not sufficient to establish rights or legitimate interests in the Domain Name pursuant to paragraph 4(c) of the Policy.
“The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c) or any other basis for rights of legitimate interest of the Respondent in the Domain Name. Therefore, the Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).”
Anti-Defamation League v. Boris Pribich, WIPO Case No. D2005-0751.
Similarly, in this proceeding Respondent has not shown that he or his organization were commonly known by the disputed domain names. At best, there is indication that Respondent used the phrase “ADL American Defense League” on a website, but that website is not located at one of the domain names at issue. Nor could the Panel find from the evidence provided by the Respondent that he was commonly known by the name “ADL.” The letters sent to Respondent addressed to the names “ADL” or “Anti-Defamation League” appear more likely than not to be instances of actual confusion between Respondent and Complainant. It appears that Respondent’s various ADL American Defense League sites were designed to create confusion with Complainant. Respondent could easily have designated his sites in a manner that distinguished them from Complainant, but failed to do so. Finally, it seems apparent that Respondent registered and used the domain names at issue for the purpose of creating further confusion with Complainant’s names and marks after receiving an objection.
For these reasons, the Panel concludes that Respondent lacks any right or legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith
Respondent asserts that he did not register the domain names in bad faith, but did so “in order to controvert Complainant’s lies about the Serbian people and to present a Dossier on the Complainant where Complainant’s meddling in all aspects of citizen’s lives is referenced.”
In the prior proceeding between the parties, the panel faced similar arguments and concluded that Respondent had registered and used the domain name at issue in bad faith, stating:
“Complainant argues that the Respondent registered the Domain Name after receiving a cease and desist letter from Complainant regarding the use of ‘ADL’ on a website operated by the Respondent. Thus, Respondent had actual knowledge of the existence of Complainant’s rights in the ADL Mark. Complainant alleges that Respondent is also operating the website for commercial gain by offering engineering services and products unrelated to any political commentary. Complaint contends that these circumstances are sufficient for the Panel to find bad faith under paragraph 4(b)(iv).
“Respondent denies that he registered or used the Domain Name in bad faith. Respondent contends that there is no evidence of bad faith based on Paragraph 4(b)(iv) because Respondent is making a fair, non-commercial use of the Domain Name motivated by patriotism as an American. Respondent asserts that the bad faith in this controversy is on the side of the Complainant who has identified him as anti-semitic, causing Respondent to receive insults and threats via email.
“The Panel finds that the evidence presented in this file is sufficient to support a finding under Paragraph 4(b)(iv) of bad faith.
“The Panel further finds that the elements of Paragraphs 4(b)(i)-(iv) are not exclusive. The Panel previously found that within the realm of political commentary Complainant has acquired secondary association in the phrase “ADL.” Given the content of Respondent’s website (as mentioned under the factual background above, the information is critical to a wide range of people and organizations throughout history) and the personal animosity betrayed by the parties in this proceeding, the Panel finds that Respondent had actual knowledge of the Complainant and of Complainant’s use of the ADL Mark. Furthermore there is no reasonable explanation in this record why Respondent would choose to use “ADL” as part of the Domain Name, except to attract Internet traffic relating to Complainant to the Respondent’s statements on a wide range of entities and issues.”
Anti-Defamation League v. Boris Pribich, WIPO Case No. D2005-0751. Similarly here, the Panel finds that the domain names were registered and used in bad faith. The Panel notes that Respondent’s websites linked to those operated under the disputed domain names include sites soliciting membership fees, sites soliciting donations, and sites promoting the commercial services of Respondent’s business. The Panel has already commented above that it appears likely that there has been actual confusion caused by Respondent’s conduct. It is likely that persons have mistakenly sent donations or membership fees intending them for Complainant, such is the confusing nature of the domain names and underlying websites.
The Panel accepts and respects Respondent’s sincere desire to express a message that is critical of Complainant’s activities, as well as the activities of others. The Panel concludes, however, that Respondent’s right to express its critical message does not extend to the use of domain names that deliberately confuse and deceive the public.
The principle involved here is similar to that addressed in Council of American Survey Research Organization v. The Consumer Information Organization, WIPO Case No. D2002-0377, where the majority stated:
“Respondent used more of Complainant’s mark than is necessary to convey its message. Although, Respondent may have a right to refer to the mark in critical content, the wholesale appropriation of Complainant’s mark, without any distinguishing material, creates confusion with Complainant’s business and is not fair use merely for the purpose of criticism. No criticism is apparent from the domain name itself. Although the criticism may be apparent from the content of the site, the cases cited above confirm that is not sufficient.”
The Majority concluded that “the right to criticize is fully enjoyed when expressed on the author’s own website under a domain name unique to the author.” The Panel’s decision here similarly allows Respondent to enjoy his right to criticize Complainant through the fair use of domain names that are unique to him, rather than using domain names that mislead and confuse Internet users.
Accordingly, the Panel concludes that Respondent both registered and uses in bad faith the domain names in suit.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <adl.cc>, <adlusa.org>, <antidefamationleague.com>, <antidefamationleague.org> and <antidefamationleague.info> be transferred to the Complainant.
Mark V.B. Partridge
Dated: December 4, 2006