WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Equality Charter School, Inc. v. Mona Davids / A Happy DreamHost Customer
Case No. D2011-1226
1. The Parties
Complainant is Equality Charter School, Inc. of Bronx, New York, United States of America, represented by Cohen Schneider LLP, United States of America.
Respondent is Mona Davids of Bronx, New York, United States of America / A Happy DreamHost Customer of Brea, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <equalitycharterschool.com> is registered with New Dream Network, LLC dba DreamHost.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 19, 2011, the Center transmitted by email to New Dream Network, LLC dba DreamHost.com a request for registrar verification in connection with the disputed domain name. On July 20, 2011, New Dream Network, LLC dba DreamHost.com 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. As the Complaint did not name as Respondent the registrant of the disputed domain name identified in the verification response, the Center issued a notification that the Complaint was administratively deficient on July 28, 2011. In response, Complainant filed an amendment to the Complaint on August 2, 2011.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 25, 2011.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on September 5, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The disputed domain name was registered on March 21, 2011 and routes to a web page displaying at the top the title and tag line: “EQUALITY CHARTER SCHOOL A Failing, Corrupt, Mismanaged Charter School” (italics in original). The website displays “news” and “commentary” of a critical nature about Complainant’s operation of its charter school and statements of concern allegedly by parents, teachers and former teachers respecting poor faculty and staff retention, along with poor student exam performance.1 It also posts links to news articles at online newspaper websites revealing negative developments at other New York charter schools. Some of the criticism is presented in a satirical manner (one article is headlined “Your Man Doesn’t Have A Job | Start a Charter & Create a Job”). The lead article on the home page is by-lined “Inequality.” The webpage to which the disputed domain name routes looks quite different from the homepage of Complainant, which uses the domain name <equalitycharterschool.org>.
5. Parties’ Contentions
Due to their brief and conclusory nature, the factual and legal grounds alleged by Complainant in its request for transfer of the disputed domain name are reproduced below in their entirety:2
“A. The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
Equality Charter School is a public charter school authorized by the State of New York [Annex IV – Copy of Charter] located at (…) Bronx, NY (…) as one of 202 charter schools in New York. As a not-for-profit education corporation, ECS registered the domain ‘equalitycharterschool.org’ on June 21, 2008 at 5:25pm to act as the portal through which constituents of the school may obtain pertinent information on the School’s program, academics, staff, board, calendar etc. This site is routinely used by students and their families, teachers and prospective teachers, other schools, state and local officials and others with an interest in the School and the New York State Charter School community.
There is only one Equality Charter School in New York State (and to the best of our knowledge, only one in the United States) and ECS takes care to protect its brand and use of its mark. ECS has reason to believe that one or more parents with frequent complaints and criticisms of ECS elected to register equalitycharterschool.com in March 2011 for the sole purpose of providing misleading, disparaging and in some cases defamatory information on the site. Because the only difference between the URLs is the ‘.org’ versus ‘.com’ extension, many constituents have been confused when visiting each of the sites; therefore, there is clear confusion in the marketplace caused solely by the registrant’s population of the .com site with disparaging demeaning information.
For the avoidance of doubt, the mark ‘Equality Charter School’ has been in existence and used in the marketplace [See copy of Charter – Annex IV] since 2008, when ECS was founded. The services connected to the mark are the provision of grades 7-12 education to public school students in New York City. The registrant of the ‘.com site’ offers no real good or services but does offer information about ECS that is not authorized, in some cases untrue but in any event, a clear infringement on ECS’s rights to its trademark.
B. The Respondent has no rights or legitimate interests in respect of the domain name(s);
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The respondent has no rights or legitimate interests in respect of the domain name and purely has an agenda to hinder the charter school. A cease and desist letter was sent to the respondent with no response. [Annex VI] ECS seeks to have the domain name transferred and cancelled to end any confusion stemming from the similar domain. The respondent’s unauthorized use tarnishes the mark at issue.
There is no evidence of the Respondent’s use of the domain name in connection with a bona fide offering of goods or services because the domain is used for not other purpose than to disparage ECS.
Respondent has no legitimate use because the sole purpose of their domain is to disparage and in some cases provide false, defamatory information to tarnish the reputation of ECS.
C. The domain name(s) was/were registered and is/are being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
“The respondent clearly exhibits a purpose to obstruct ECS’s services by tarnishing its reputation. Its unauthorized use deters prospective fund raising, enrollment development and instruction in general. This has a chilling effect on its employees [Annex V – Website Pages] illustrates its disparaging and/or defamatory content; alleging ‘corrupt’ leaders, ‘failing’ school and a ‘mismanaged’ charter school as a whole. Its similar domain name clearly employs a sole purpose to direct negative attention towards the charter school and impede its normal operation and reputation to serve respondent’s needs and views to the exclusion of all others. There are no circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to the competitor of that Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The domain name was, however registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name; preventing the owner from controlling the site. This domain name was registered primarily for the purpose of disrupting the business of a ‘competitor,’ ECS.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
In this case, the Panel can easily conclude that the disputed domain name is identical to the alleged trademark EQUALITY CHARTER SCHOOL, since, under the UDRP, panels disregard the domain name suffix in evaluating identity and confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Despite the Complaint’s allegations set forth above, however, the Panel has serious reservations that the Complaint discharges Complainant’s burden of establishing that the phrase “Equality Charter School” constitutes a trademark held by Complainant.
There is no registration of the putative trademark alleged in the Complaint; therefore, Complainant must show that it has rights to a common law trademark. The Complaint makes brief averments about the activities and founding of the school. The Complaint does not, though, provide any concrete evidence of the type normally required to establish the existence of common law trademark rights based on descriptive or dictionary terms such as financial statements reflecting spending on promotion, the size of enrollment or any other proof of secondary meaning or public recognition and association of the name Equality Charter School with the services identified in the Complaint.3
While the Panel may accept as true reasonable factual statements made in a complaint, it is not required to do so in the absence of actual evidence supporting the factual statements.4 In this case, however, the Panel need not decide the legal question of whether the Complaint establishes the existence of Complainant’s trademark since the Panel has determined that the Complaint fails on other grounds, as elaborated below.
B. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, after which, if shown, the burden of rebuttal passes to Respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Policy outlines circumstances which, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in the disputed domain name. Policy paragraph 4(c). One of those circumstances is when a respondent is “making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Id. paragraph 4(c)(iii).
As explained below, even without the benefit of a response by Respondent, the Panel finds that the Complaint fails to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complaint does not fulfill Policy paragraph 4(a)(ii).
i. Applicable Standards for Finding Non-commercial Free Speech Right as Fair Use Under the UDRP
Complainant states that it has “reason to believe” that the disputed domain name was registered by “one or more parents with frequent complaints and criticisms of [the school].” Complainant does not identify its “reason to believe,” and, other than annexes copying the webpages to which the disputed domain name routes, Complainant does not provide any evidence supporting its alleged belief. However, the Panel agrees and infers that the individual Respondent may be a disgruntled parent,5 supported by the nature of the critical commentary and news appearing on the website to which the disputed domain name routes.
Significantly, the Complaint does not allege, nor does the evidence appear to establish, that Respondent uses the disputed domain name for any commercial purposes. The present case is, to this Panel, clearly of a non-commercial nature. The real question presented by this case, then, is whether such use of the disputed domain name, which is identical to the alleged trademark EQUALITY CHARTER SCHOOL, constitutes fair use, to underpin the existence of rights and legitimate interests on the part of Respondent.
To this Panel’s view, the record presents a classic case of using a disputed domain name in connection with a forum for criticism and sharing of negative information respecting the school run by Complainant, the alleged trademark holder. There exists a substantial body of decisions under the Policy addressing whether the kind of commentary posted on the site to which the disputed domain name routes constitutes fair use under the Policy. Some authorities recognize a non-commercial free speech right in the use of a website employing a disputed domain name that is identical or confusingly similar to the complainant’s trademark, while others, although acknowledging the existence of the non-commercial free speech fair use defense, have declined to grant the defense in certain cases.
It has been noted elsewhere that there may be a tendency for decisions dealing with United States of America (“US”) parties, US mutual jurisdiction (or US panelists) to favor a broader free speech-based result most, although this tendency has exceptions, and there are on the other hand cases involving non-US parties, non-US mutual jurisdiction (or indeed, non-US panelists) that have also reached a free speech- based result. And of course it has been noted that there may be a tendency by non-US panelists or in cases involving at least a single non-US party or non-US mutual jurisdiction to recognize the principle of free speech but to limit the free speech fair use defense to certain categories of cases, such as where the disputed domain name did not wholly comprise the relevant trademark (e.g., <trademark.com>). E.g., WIPO Overview 2.0 Paragraph 2.4. But see Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947 (rejecting that there is a distinction in outcome based on US and non-US factors).
Another significant variation in panel approaches, related to the variation discussed immediately above, is dealing with the threshold question of whether to apply national law or some source of international law to determine the question of fair use, since Policy paragraph 15(a) empowers panels to determine the principles of law they deem applicable. See WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas, WIPO Case No. D2009-1105; Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379; Fundación Calvin Ayre Foundation v. Erik Deutsch, supra.
The outcome of many decisions can also turn on whether the disputed domain name is on the one hand identical or, on the other hand, merely confusingly similar to the complainant’s trademark. Some panels in the former cases (<trademark.com>) have found that the principle of free speech on the Internet does not go so far under the Policy as to permit the initial confusion experienced by Internet users to be dispelled only upon viewing content of a respondent’s webpage containing criticism, protest or parody. In some of the latter cases (e.g., <trademarksucks.com>), fair use is found because the panel feels that a respondent’s choice to add words to the trademark itself alerts Internet users that the respondent’s webpage is not that of the complainant (such as in the so-called <trademarksucks.com> cases). Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. Thus in the latter cases, it is sometimes considered that the respondent’s use of the disputed domain name does not obstruct access or confuse the public about the website of the trademark holder.
The panel in Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, supra, having decided as an initial matter that one could not categorically reject fair use for a disputed domain name identical to a complainant’s trademark under the Policy, examined the factors that determine what is legitimate and fair. The panel first wrote that “the registration and use of a domain name for bona fide, non-commercial use is legitimate, even if it is identical or confusingly similar to a complainant’s mark, if it does not materially obstruct access by Internet users to the complainant.”
The panel continued:
“Access to the complainant is materially obstructed if it is not immediately apparent to Internet users on visiting the respondent’s website that it is not connected or associated with the complainant. It is therefore an essential condition of legitimate use of such a domain name for the purpose of this provision that the respondent makes it very clear, whether by a disclaimer or other content or both, in the first field of vision of a person visiting his/her/its website, that it is independent of the complainant. .
“Access may also be obstructed if the respondent registers all or most of the obvious domain names suitable for the complainant or the brand in question. This may prevent or unduly interfere with the complainant’s provision of convenient access to its website.”
The present state of Panel views on these issues is well reflected in the WIPO Overview 2.0. paragraph 2.4. Some recent UDRP decisions have attempted to summarize the differing viewpoints arising among the panels and to provide a useful analysis and multi-part tests to apply in such cases. See, e.g., Fundación Calvin Ayre Foundation v. Erik Deutsch, supra.
ii. Non-commercial Free Speech as Fair Use, Standards Applied
The Panel will now proceed to apply its view of the Policy to the evidence presented, rather than spill more ink exploring and attempting to reconcile these debates.
Complainant understandably finds the material appearing on Respondent’s website to be stinging and harsh, and alleges that it is misleading, disparaging and defamatory. However, there is no indication on the record that the individual Respondent is hosting news and criticism of the school presumably attended by her children that she believes to be untrue or insincere.
First, to this Panel, it is unnecessary to jump into the fray to answer the question whether national law or some supranational rule controls in this case among parties which are based in the US, because the Panel concludes that either way, the result would be the same. In the Panel’s view, both US law and international norms are in agreement that the kind of non-commercial speech presented in this case is protected.
The national right to free speech vying for application here is enshrined in the US Constitution and other well-documented US legal standards and precedent. The potential sources of international law that support freedom of expression and vie for potential application in this case include the Universal Declaration of Human Rights, the European Convention on Human Rights, and the Charter of Fundamental Rights of the European Union (Article 11). Article 19 of the Universal Declaration of Human Rights reads: “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”
It seems to this Panel that the right to free speech, whether under US or international standards guaranteeing freedom of expression, must include the right to make comment, and invite others to comment, on such fundamental concerns as serious issues believed to be affecting one’s children’s education at an institution licensed by the state and receiving public moneys. Thus, the Panel feels that the non-commercial free speech right, as reflected in the decisions of UDRP panels and the court decisions and international norms discussed in those decisions does seem sufficiently broad to cover the present situation.
For the purpose of determining whether Complainant has made out a prima facie case, the Panel will ultimately conclude that the circumstances establish Respondent’s right or legitimate interests if, in the two inquiries that follow below, it is determined that Respondent has not overstepped the bounds of that non-commercial speech right.
Second, the Panel must address the Complaint’s allegations that Respondent’s use of the disputed domain name tarnishes and disparages Complainant’s putative trademark. The Panel notes that it is often the nature of critical commentary to make negative associations with a trademark or trademark holder; nonetheless, critical content on a website using a confusingly similar or identical domain name has been held by panels and courts to be fair use and permissible. As noted by others, it has long been established that tarnishment in the context of the Policy
“refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (citing Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, Case No. D2000-1415 (WIPO Jan. 23, 2001)). Fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in … libel must be brought in other legal venues. Id.”
Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
The Panel has reviewed the record in detail, and finds that “unseemly” conduct such as that classically constituting tarnishment under the Policy, as described above, is absent from this case.
Third, the Panel recognizes that Respondent adopted Complainant’s putative trademark itself as a domain name (a <trademark.com> case), and thus does cause initial confusion among Internet users. Users for the most part would only become aware that they are not visiting Complainant’s website once they arrive to view Respondent’s home page.
Despite the historical split of authority among some panels on this question, the Panel joins those panels that have ruled that a flexible, context-based approach to fair use cases is required. Fundación Calvin Ayre Foundation v. Erik Deutsch, supra, <calvinayrefoundation.org> (citing Bridgestone Firestone v. Myers, WIPO Case No. D2000-0190; Britannia Building Society v Britannia Fraud Prevention, supra; Satchidananada Ashram - Integral Yoga Institute v. Domain Administrator, NAF Claim No. FA0209000125228; Elm Grove Dodge Chrysler Jeep v Schedule Star, NAF Claim No. FA0410000352423; Invention Technologies v Alliance for American Innovation, NAF Claim No. FA0607000758833; Civic Development Group v John Paul Schaffer, NAF Claim No. FA01090001038; Jenny Solursh v. American European Marketing, NAF Claim No. FA0612000864749; Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, supra; Brahma Kumaris World Spiritual Organization v. John Allan, NAF Claim No. FA0709001075486).
Therefore, this Panel finds that no bright line may be drawn denying the existence of a non-commercial free speech right under the UDRP simply based upon whether Respondent has or has not added words (other than the gtld suffix) to Complainant’s alleged trademark. Id.
Accordingly, the Panel must weigh the question of whether the context here supports fair use. Put otherwise, the Panel must examine whether Respondent’s exercise of its right to make comment does not unduly confuse users or obstruct access to complainant’s website, despite the initial confusion that might occur when users directly type <equalitycharterschool.com> into their browser address bar or otherwise access Respondent’s website.6
The Panel notes that many if not most Internet users would employ a search engine to find a website corresponding to a school name or trademark in today’s search-engine based online culture. The Panel has conducted such searches.
Searching for “Equality Charter School” in the popular search engines at “www.yahoo.com”, “www.bing.com” and “www.google.com”, Respondent’s website appeared only after several other listings pointing to Complainant’s website at “www.equalitycharterschools.org.” The listing for Respondent’s website in the extremely popular Google search engine did not appear until the bottom of the second page of listings.
In each instance, the search engines displayed descriptive content that users would see before clicking the link to be taken to Respondent’s website. The search engine descriptions of Respondent’s website picked up the critical nature of its content; users who glance at the descriptions in the search results rather than simply clicking links without reading would already be alerted to the critical nature of Respondent’s website before clicking on the link indexing the website in the search tool.
Once arriving at Respondent’s home page, a user would see displayed at the top the prominent subtitle “A Failing, Mismanaged Charter School.”
This Panel believes that a formalistic disclaimer is not indispensible to alerting users that they have reached a website that is not Complainant’s, employing a context-based approach. See, e.g., Fundación Calvin Ayre Foundation v. Erik Deutsch, supra. The Panel finds that the subtitle quoted above, the other headlines and the tone of postings on the site would alert any reader upon first viewing that the website is not sponsored by Complainant, but is instead boldly critical of Complainant’s school.
In this way, this case is very similar to Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, supra, in which the respondent’s website started with the headlines “TESS REDMOND /A story of deception and harassment at the hands of the Chief Executive and Medical Director of Chelsea and Westminster Hospital London.” In that case, as in the instant case, the panel concluded that although the domain name in question did not add terms to the complainant’s mark, no one viewing the website could have thought it was the complainant’s website.
Complainant also owns registrations to at least two domain names identical to its alleged trademark, with the “.org” and “.info” gtld suffixes. Thus, the Panel concludes under the authorities referenced above that Respondent’s use of the disputed domain name for critical commentary and news does not unfairly mislead users seeking to find Complainant’s website or unreasonably obstruct users from reaching Complainant’s website.
In summary, the Panel concludes that the Complaint fails to establish a prima facie case that Respondent lacks rights and legitimate interests under Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In light of the Panel’s conclusion that the Complaint fails to establish that Respondent lacks rights or legitimate interests in the disputed domain name, it is, strictly speaking, unnecessary to address whether the disputed domain name was registered and is being used in bad faith. In the interests of completeness, however, the Panel will address Complainant’s allegations intended to support this third element under the Policy and why the Panel concludes that the Complaint also fails to establish registration and use in bad faith.
The Complaint concedes that several of the grounds ordinarily supporting bad faith are not present in the circumstances, since the website is being used for a non-commercial purpose. However, the Complaint does contend that Respondent (1) registered the disputed domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name (2) “primarily for the purpose of disrupting the business of a ‘competitor,’ ECS.”7
The Panel rejects the first of these allegations because the Panel does not believe the allegation is based upon a correct factual premise. Complainant registered its name and putative trademark as a “.org” domain name on June 21, 2008, nearly three years before Respondent registered the disputed “.com” domain name in March 2011. It seems unlikely that Respondent’s intention was to prevent registration of a domain name that Complainant already registered and used.
Moreover, on March 25, 2011, after registration of the disputed domain name, Complainant registered an additional domain name <equalitycharterschool.info> based on its alleged trademark. Thus, the owner was not prevented from reflecting its alleged mark in a corresponding domain name. The Panel therefore declines the Complaint’s invitation to infer that Respondent intended to prevent registrations reflecting the mark in question.
Second, Complaint’s summary allegation that Respondent is a “competitor” for the purposes of Policy paragraph 4(b)(iii) is unsupported by any evidence in the record.8
The examples of bad faith cited in the Policy paragraphs 4(b)(i), (ii) and (iii) are not exhaustive, e.g.,Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. However the Panel does not find other indications of bad faith on the record before it.
The Panel reiterates that it is in the nature of non-commercial free speech or criticism that negative statements may be made about a trademark holder’s concern. If negative commentary were a touchstone of bad faith, then in every UDRP decision recognizing a fair use right supported by protest or criticism, the respondent registering the disputed domain name to launch the commentary would be found to have registered in bad faith.
The Panel believes that such a result is unwarranted and inconsistent with the Policy and the decisions rendered under it.9
In summary, even assuming the existence of the necessary trademark rights in favor of Complainant, the Complaint fails to establish the second and third elements of Policy paragraph 4(a). The Complaint is therefore denied.
Jeffrey D. Steinhardt
Dated: September 20, 2011
1 Copies of these web pages are annexed to the Complaint. The Panel has also viewed on the Internet the pages to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.
2 Language from the Complaint appearing in boldface was copied in the Complaint without modification from the online model Complaint provided by the Center.
3 The only concrete evidence provided consists of copies of official charter registration documents which establish only that the state approved the charter school in 2009.
“a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required [for a complainant to successfully assert common law or unregistered trademark rights]. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.”
5 All references to “Respondent” and her motivations or conduct below signify the individual Respondent Mona Davids.
6 It bears pointing out that those who seek to find the website for Complainant’s non-profit charter school without the help of a search engine or other search tool might assume (as it turns out, correctly) that Complainant initially selected a domain name in the form designated for non-profit organizations such as its own, using the “.org” gtld and not a “.com” gtld like Respondent’s disputed domain name, from the outset.
7 Both of these allegations in the Complaint are based on the non-exhaustive list of examples of bad faith registration and use set forth in Policy paragraphs 4(b)(ii) and 4(b)(iii), respectively.
8 The competitor allegation also squarely contradicts other statements in the Complaint. The Complaint repeatedly alleges not that Respondent is engaged in commerce, but that Respondent’s registration was made for purposes of providing misleading, disparaging and sometimes defamatory information, and that Respondent does not offer goods or services through the disputed domain name.
9 To the extent that a respondent’s criticism might contain defamatory statements, it is well recognized that the UDRP proceeding is not the mechanism to address them.