WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Operation Homefront v. Illinois Office of Lt. Governor
Case No. D2007-1037
1. The Parties
Complainant is Operation Homefront, Santa Ana, California, United States of America, represented internally.
The Respondent is Illinois Office of Lt. Governor, Chicago, Illinois, United States of America, represented internally.
2. The Domain Name and Registrar
The disputed domain name <operationhomefront.org> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007. On July 20, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 21, 2007, Go Daddy Software transmitted by email to the Center its verification response, indicating that the respondent initially named in the Complaint was not the listed registrant, and providing corrected details. Those corrected details confirm that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient in respect to naming the proper registrant, the concerned registrar and the mutual jurisdiction clause, Complainant filed an amendment to the Complaint on July 31, 2007. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2007. The Response was filed with the Center on August 28, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 12, 2007. 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.
By e-mail of September 27, 2007, the parties were notified that the due date for the Panel’s decision had been extended until October 1, 2007.
4. Factual Background
Complainant has registered the word service mark OPERATION HOMEFRONT on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3167380, dated November 7, 2006, in International Class 36, covering “Charitable fund-raising for families of deployed US military personnel”, claiming first use on January 10, 2002 (“20020110”), and in first use in commerce on February 2, 2001 (“20010202”) (Complaint, Annex 2). The filing date of the application for registration of the aforesaid service mark is March 19, 2004 (id.)
Complainant is a nonprofit organization that provides assistance of various kinds to US military families. Complainant seeks charitable contributions from the public for the purpose of fulfilling its objectives. Complainant has received substantial national recognition in the United States of America for its work on behalf of military families, including coverage of its activities on major television networks. (Complaint)
Complainant operates a website at “www.operationhomefront.net”. This website is integral to its fund-raising and charitable services operations. (Id.)
“Operation Homefront began in 2001 originally as a project by military wives (the nonprofit CinCHouse.com) and the top-ranked talk radio program in Southern California. …
Operation Homefront (as CinCHouse.com) then filed for trademark protection to prevent inappropriate use of our name to solicit donations in the name of assisting military families.”
According to the Registrar’s verification response, Respondent is the registrant of the disputed domain name, <operationhomefront.org>. According to a GoDaddy.com WHOIS database printout furnished by the Center, the record of registration for the disputed domain name was created on September 23, 2001. In its initial Complaint, Complainant furnished an InterNIC WHOIS database printout showing that as of June 27, 2007 the registrant of the disputed domain name was “Patrick Quinn”.
The disputed domain name was initially registered on September 23, 2001 by Patrick Quinn as an individual, following his service as Illinois State Treasurer and prior to his election as Lt. Governor of the State of Illinois (Response, para. 30 & Annexes A & B). Initially, the disputed domain name was used in connection with an information website operated by Mr. Quinn in his private capacity (id). Mr. Quinn subsequently transferred the disputed domain name to the Office of the Lt. Governor, the Respondent in this proceeding. (Id., para. 10). Based on the information in the WHOIS printouts provided by Complainant and the Center, this transfer appears to have taken place between June 27, 2007 and the commencement of this proceeding. The GoDaddy.com WHOIS printout shows the last update of the disputed domain name registration data taking place on July 12, 2007.
As early as February 1991, in his capacity as Illinois State Treasurer, Mr. Quinn used the term “Operation Home Front” for a State program to provide information to military personnel regarding the availability of financial and legal assistance under U.S. federal legislation for individuals serving in the National Guard. (Response, para. 10 & Annexes C & D, newspaper reports). This included preparation of a brochure titled “Operation Home Front” stating that it was “Printed by Authority of the State of Illinois By the State Treasurer”, dated February 1, 1991 (id., Annex E). The State of Illinois Treasurer’s Report for Fiscal Years 1990 and 1991 lists “Operation Home Front” as an information service provided by the Treasurer’s Office (id., Annex F).
The disputed domain name <operationhomefront.org> is presently used by the Office of the Lt. Governor of the State of Illinois to provide information regarding services and assistance of various kinds available to military families in Illinois (Response, Annex G). The home page identified by the disputed domain name is headed “Operation Home Front”, and the principal subheading reads “Protecting Our Reservists & National Guard Members, Helping out Military Families in Illinois” (id.) The website operated at the address of the disputed domain name includes links to various charitable and other organizations, including, for example, the USO. The website provides information regarding the means to contribute to various military support funds, including the Illinois Military Family Relief Fund which, inter alia, permits Illinois taxpayers to designate a contribution for the support of military families. (Id)
The last piece of information on Respondent’s main web page is a disclaimer of affiliation with Complainant’s organization, stating:
“This site is operated by the Lieutenant Governor of Illinois’ Office. To contact the webmaster for this site please e-mail firstname.lastname@example.org. This site is not affiliated with OperationHomefront.net, and that site can be reached by clicking here.”
According to Complainant, this disclaimer was added by Respondent subsequent to receipt of the Complaint in this proceeding.
Complainant has provided data from Respondent’s website indicating that a significant number of visits to Respondent’s web site are from individuals living outside the State of Illinois (Response, Annex 4).
Complainant has provided one letter from a charitable organization, Operation First Response, indicating that it had difficulty contacting Complainant as a result of confusion with the Illinois Operation Home Front. There is no clear indication in that letter that the problem arose from information obtained on the Internet (Complaint, Annex 4, letter of July 2, 2007). Complainant also provided information regarding two instances of confusion from persons attempting to contact Complainant’s organization, including one who had submitted an application to the Illinois Military Relief Fund but had not received a response. In neither instance is there any clear indication that the confusion arose because of information obtained on the Internet. (Id., Annex 4).
Complainant has directed two cease and desist demands to Respondent. The first, dated January 8, 2006, was from Respondent’s representative in this proceeding, stating that Respondent was infringing Complainant’s trademark, and causing substantial confusion with respect to Complainant’s business operations (Complaint, Annex 5). The second was from Complainant’s legal counsel, dated February 22, 2007, suggesting that although Respondent had used the name “Operation Homefront” as early as 1991, and again in 2003, that USPTO trademark examiners had not found a competing use of that term when they registered Complainant’s service mark, and that complainant had abandoned any rights it may have had in that term (letter from John Munger to Hon. Pat Quinn, dated Feb. 22, 2007, id.).
The Registration Agreement in effect between Respondent and Go Daddy Software subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use, pursuant to paragraph 4(a) of the Policy.
5. Parties’ Contentions
Complainant states that it has rights in the service mark OPERATION HOMEFRONT based on use in commerce and as evidenced by registration at the US PTO. Complainant argues that its usage of the service mark commenced in 2001, including promotion on a nationally syndicated radio program, and that Respondent secured the disputed domain name following that well-publicized usage.
Complainant argues that the disputed domain name is identical or confusingly similar to its service mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its service mark, nor is Respondent affiliated with Complainant. Complainant states that there is no evidence that Respondent used the term “Operation Home Front” beginning in 1991. Complainant states that Respondent has refused to distinguish its organization from Complainant’s, suggesting that Respondent is attempting to take advantage of Complainant’s name and efforts.
Complainant argues that Respondent was aware of Complainant’s organization when it registered the disputed domain name because Complainant received substantial publicity after the events of September 11, 2001. Complainant argues that Respondent registered and is using the disputed domain name to attract Internet users to its website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that it used the disputed domain name prior to Complainant’s application for registration of OPERATION HOMEFRONT as a service mark. Respondent states that another organization, Help-A-Vet, also used “Operation Homefront” in the domain name <operationhomefront.com> prior to Complainant’s registration of its service mark.
Respondent states that it satisfies all three elements for establishing rights or legitimate interests in the disputed domain name provided for in Paragraph 4(c) of the Policy. Respondent states that it used a name corresponding to the disputed domain name in connection with a bona fide offering of services prior to notice of a dispute. It further claims that it used the disputed domain name well before Complainant filed for registration of the OPERATION HOMEFRONT service mark. Respondent indicates that Patrick Quinn was a private citizen when the disputed domain name was originally registered, and this explains why it was originally registered in his personal name, and subsequently transferred to the government. Respondent rejects Complainant’s allegation that he has sought to use the Illinois Operation Home Front operation for political gain.
Respondent contends that it did not register the disputed domain name in bad faith because it did so before Complainant registered its trademark and before Respondent became aware of Complainant’s organization. Respondent further contends that it continues to use the disputed domain name in good faith.
Respondent asks the Panel to reject Complainant’s request to direct the Registrar to transfer the disputed domain name.
Respondent requests a finding of reverse domain name hijacking against Complainant. Respondent argues that Complainant was well aware that Respondent was a bona fide business when it filed its Complaint. It further argues that Complainant hired a former employee of Respondent who had resigned under controversy, and who is now Complainant’s Illinois Chapter President, who is aware of the good-faith nature of Respondent’s operation. In addition, Respondent observes that Complainant’s trademark registration post-dates the date registration of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
Complainant and Respondent have each filed submissions. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has registered the service mark OPERATION HOMEFRONT on the Principal Register of the USPTO. The filing date of the application for registration is March 19, 2004, and the registration issued on November 7, 2006. On the application for registration, Complainant asserted different dates of first use and first use in commerce. The earliest of these was February 2, 2001. (See Factual Background, supra).
In U.S. law, the filing of a service mark application constitutes constructive use of the mark as of the filing date, contingent upon acceptance of registration (Lanham Act, sec. 7(c)). The date of first use claimed on an application for registration does not establish priority as against a party asserting senior (prior) use of the mark. Actual use preceding the filing date must be established by extrinsic evidence.1
Complainant has prima facie established rights in the service mark OPERATION HOMEFRONT as of the filing date of its subsequently accepted application for registration at the USPTO, March 19, 2004, based on constructive use as of that date.
Complainant has provided limited evidence as to the actual date of its initial use of the OPERATION HOMEFRONT service mark. It refers to use in 2001, but has provided no direct evidence of a specific date of use in 2001. It refers to publicity following the events of September 11, 2001, but not to specific dates or events.
Although Respondent has asserted senior use of the terms constituting the service mark as early as 1991 (by the Illinois State Treasurer’s Office), it has not expressly challenged Complainant’s present rights in the OPERATION HOMEFRONT service mark (as evidenced by Complainant’s recent registration at the USPTO).
The Panel assumes that Complainant has rights in the service mark OPERATION HOMEFRONT based on use in commerce, and particularly as evidenced by registration on the Principal Register of the USPTO. The Panel further assumes Complainant’s constructive use of the mark as of the filing date of the application for registration of the service mark, March 19, 2004. Based on the evidence submitted by Complainant, the Panel is unable to determine with precision the date of actual first use of the mark by Complainant. It may have been before or after registration of the disputed domain name on September 23, 2001.
Assuming that Complainant has rights in the service mark, the disputed domain name is identical to that mark for purposes of the Policy. The disputed domain name, <operationhomefront.org>, directly incorporates Complainant’s presumed service mark, OPERATION HOMEFRONT, but for the elimination of spacing between words and addition of the generic top-level domain identifier (gTLD) “.org”.
The Panel assumes that Complainant has satisfied the first element of the Policy by demonstrating that it has rights in a service mark and that the disputed domain name is identical to that mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii) of the Policy). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c))
Respondent is the Office of the Illinois Lt. Governor. For the purpose of establishing rights or legitimate interests, Respondent is relying upon activities undertaken by Patrick Quinn, the current Lt. Governor of the State of Illinois, both during his service as an elected official in the State of Illinois (e.g., as State Treasurer) and as a private citizen residing in Illinois. The disputed domain name was initially registered in the name of the individual, Patrick Quinn, and transferred to the Office of the Illinois Lt. Governor (on or about July 12, 2007) at or about the time Complainant filed its initial Complaint in this proceeding (e-mail received by the Center on July 13, 2007).
Because the individual Patrick Quinn is now the Lt. Governor of the State of Illinois, it is reasonable for the Panel to treat the July 12, 2007 transfer between Patrick Quinn and the Office of Lt. Governor as one between two parts of the state government; that is, as a transfer from the now Lt. Governor to the Office of the Lt. Governor. For example, such a transfer might have been undertaken to facilitate legal representation in this proceeding by State employees.
The term “Operation Home Front” was used by the State of Illinois in 1991 under the direction of Patrick Quinn when he was State Treasurer for purposes, inter alia, of printing brochures advising individuals serving in the National Guard regarding financial and other benefits available to them under federal law. It is reasonable for the Panel to treat use of the term “Operation Home Front” in 1991 by the State Treasurer as use by the same person as use of “Operation Home Front” by the Office of the Lt. Governor in 2007. These are both uses by the government of the State of Illinois.
It is more difficult to draw a conclusion regarding reliance by the Respondent when assessing registration of the disputed domain name by Patrick Quinn as a private individual on September 23, 2001. The question is whether activities of the private individual are attributable to the government when the individual subsequently becomes part of the government through the election process.
Here, the Office of Lt. Governor would be relying on the conduct of the private individual as the basis for its prior use of a service mark in a domain name. A satisfactory analysis of the issues raised by this claim of reliance might involve an inquiry into the State law of Illinois regarding ownership and transfer of property as between private individuals and the government. However, in the context of this proceeding it is unnecessary to answer whether the actions of Patrick Quinn as a private individual can be subsequently attributed to the State of Illinois.
As Illinois State Treasurer, Patrick Quinn made public use of the term “Operation Home Front” in 1991 in apparent good faith and well prior to use by Complainant of that term as a service mark. The 1991 use by the State Treasurer can be relied on by the Office of Lt. Governor as prior use by the State of Illinois.
Based on the 1991 conduct of Respondent in using the term “Operation Home Front” as the name of a program designed to provide information to military personnel residing in Illinois, Respondent made use of a name corresponding to the disputed domain name for a bona fide offer of services prior to notice of a dispute within the meaning of paragraph 4(c)(i) of the Policy. Moreover, the program of the State of Illinois was commonly known by the domain name, even though it may not have established trademark or service mark rights in that name, within the meaning of paragraph 4(c)(ii) of the Policy.
The Panel finds that Complainant has failed to establish that Respondent has no rights or legitimate interests in the disputed domain name. Respondent prevails in this proceeding. The Panel will not address the issue of registration and use in bad faith.
C. Reverse Domain Name Hijacking
The Panel rejects Respondent’s request for a finding of reverse domain name hijacking. Complainant is the owner of a service mark registration that is identical to the disputed domain name. Furthermore, there is some evidence of consumer confusion between Complainant’s organization and Respondent’s operation. Respondent has not presented evidence of a bad faith motive by Complainant in bringing this action such as to justify an adverse finding against Complainant. A determination regarding the participation and conduct in Complainant’s actions by Respondent’s former employee would require evidence beyond that offered by Respondent.
D. The Policy and Trademark Infringement
A proceeding under the Policy employs specific legal criteria regarding whether a party has engaged in abusive domain name registration and use. These legal criteria are different than those employed in a trademark infringement action in a civil court. The determinations in this proceeding are without prejudice to the question whether Respondent is infringing a service mark owned by Complainant.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: October 1, 2007
1 See, e.g., McCarthy on Trademarks, 4th ed., §20:71.