WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Iowa Family Policy Center v. Basic Rights Oregon

Case No. D2011-1846

1. The Parties

Complainant is Iowa Family Policy Center of Pleasant Hill, Iowa, United States of America (“U.S.”), represented by Mount, Spelman & Fingerman, P.C., U.S.

Respondent is Basic Rights Oregon of Portland, Oregon, U.S., represented by Stoel Rives, LLP, U.S.

2. The Domain Names and Registrar

The disputed domain names <marriagemattersoregon.com> and <marriagemattersoregon.org> (“the Domain Names”) are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 26, 2011 and November 3, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On October 27, 2011 and November 3, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Names. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. The Response was filed with the Center on November 28, 2011.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 6, 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

Complainant Iowa Family Policy Center is a nonprofit, religious organization that seeks to strengthen marriages for troubled people through education. It offers mentorships, educational seminars, entertainment programs and other events.

Complainant owns U.S. Trademark Registration No. 2,642,250 for the mark “MARRIAGE MATTERS” (“the MARRIAGE MATTERS Mark” or “the Mark”), which issued in 2002. Complainant has been using the Mark in fields of education, entertainment and public interest by providing educational training seminars and lectures, counseling, and radio and television programs. Complainant also acquired the domain name <marriagematters.org> on or before 2007 and has been using it since that time.

Respondent is an Oregon nonprofit organization that seeks to promote its message of marriage equality, the importance of marriage, freedom to marry and other matters related to marriage in Oregon. Respondent registered the Domain Names <marriagemattersoregon.com> and <marriagemattersoregon.org> on July 10, 2009.

5. Parties’ Contentions

A. Complainant

The Domain Names are confusingly similar to the MARRIAGE MATTERS Mark in which Complainant has rights. Under the trademark and intellectual property law that governs Oregon (the U.S. Ninth Circuit Court of Appeals), adding a location modifier following a trademark is confusingly similar to the trademark as a matter of law because it suggests a local subsidiary, franchise or affiliate relationship with the trademark owner.

Respondent has no rights or legitimate interests in the Domain Names. Respondent has never applied for trademark protection in “marriagemattersoregon”. Such an application would be rejected. For example, an entity recently applied to register the mark “marriagemattersjackson” (as in Jackson, Wyoming) with the U.S. Patent and Trademark Office (“USPTO”) but was denied the registration because the mark was found confusingly similar to Complainant’s MARRIAGE MATTERS Mark.

Also, Respondent’s first use of the Domain Names does not precede Complainant’s first use of the MARRIAGE MATTERS Mark or the <marraigematters.org> domain name. Thus, Respondent has no common law rights or any expectation of such rights in “marriage matters”. The Internet archive (Wayback Machine) shows the first use of the Domain Name <marriagemattersoregon.com> to be May 16, 2010, and of the Domain Name <marriagemattersoregon.org> to be November 15, 2009. GoDaddy.com, Inc. WhoIs records show that Respondent registered the Domain Names on July 10, 2009. Also, Respondent has never been commonly known by the Domain Names.

Further, Respondent’s use of Domain Names that are confusingly similar to the Mark does not constitute nominative fair use. Internet users are automatically transferred to Respondent’s “Basic Rights Oregon website” at <lovecommitmentmarriage.org>. Thus, the sole function for using the Domain Names is to direct traffic otherwise destined for Complainant’s website to Respondent’s website.

Respondents are purposely disrupting Complainant’s business. Complainant advocates traditional family values and traditional marriage. Respondent advocates same gender unions. The positions of these organizations are diametrically opposed. Respondent operates the Domain Names only as a disguise or “bait” to transfer Internet users to a website that advocates competing positions. Respondent is attempting to leverage off the recognition, reputation and legitimacy of Complainant’s Mark. It is essentially using the Mark to help it “steal” and influence parties, leveraging Complainant’s investment in the Mark, rather than investing in its own. This constitutes unfair and illegal tactics in the worldwide cultural debate concerning marriage.

Respondent’s use tarnishes the value of the Mark. Complainant has spent millions of dollars over the last decade building the reputation of the MARRIAGE MATTERS Mark. Association of the Mark with opposing positions casts the Mark in an unflattering light, one that is not viewed positively by Complainant’s supporters. Respondent is well aware of the benefits it gains by leveraging Complainant’s investment to “steal” people truly in need of marriage assistance. Further, Respondent’s use of the Domain Names to “steal” market share of the public is working. A search using the Google search engine for “marriage matters Oregon” shows that the Domain Name <marriagemattersoregon.org> represents the second, third, and fourth hits. The first hit is Respondent’s website at <lovecommitmentmarriage.org>, to which Respondent directs the Domain Names.

All sustainable entities, whether service or product, or for profit or not for profit, need income to survive. By redirecting potential clients and donors using the Domain Names from Complainant’s website to Respondent’s website, Respondent is “stealing” clients and potential donors for its own commercial gain.

Respondent has registered and used the Domain Names in bad faith according to the Policy by registering them primarily for the purpose of disrupting the business of a competitor or by using them to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on Respondent’s website or location.

Respondent, through its Executive Director Jeana Frazzini, has been informed numerous times of this dispute and has taken no action. Ms. Frazzini was first informed of the concern in mid-April, and stated in an April 21, 2011, email that Respondent thought it could “accommodate your [Complainant’s] request in a timely manner.” On May 12, 2011, Complainant’s counsel sent an email inquiring again about the improper use. In response, Ms. Frazzini admitted that the use was improper, stating: “We are in the process of vetting a new URL to ensure that we don’t end up in a similar situation with trademark issues.” On June 6, 2011, Complainant’s counsel again requested status of the change. Given the promises without action, Complainant’s counsel sent a final cease and desist letter on August 31, 2011, demanding immediate assignment of all rights, title and interest in the Domain Names. As such, Respondent has had ample warning of the infringement and improper use of the Domain Names and has essentially admitted that the use is improper. Since Respondent operates its own website having a domain name, its continued use of the Domain Names are undoubtedly in bad faith with the intent of “stealing” market share, clients and donors without investing in its own marks and URLs.

B. Respondent

For purposes of this proceeding, Respondent does not contest that the Domain Names are confusingly similar to Complainant’s MARRIAGE MATTERS Mark.

Notwithstanding Complainant’s registration for its MARRIAGE MATTERS Mark, Respondent is using “marriage matters” descriptively in the Domain Names. The words or phrase “marriage matters” may be used to describe issues or matters relating to marriage or express that the act of marriage is important. Considering that Respondent is an Oregon non-profit organization that seeks to promote its message of marriage equality, the importance of marriage, freedom to marry, and other matters related to marriage in Oregon, Respondent uses the Domain Names consisting of the terms “marriage,” “matters,” and “Oregon” to describe its main purpose and best advertise its message. Prior UDRP panels have found that a party can establish a legitimate interest in a domain name by showing that the domain name consists of descriptive terms related to the content of the website at the domain name and the domain name was not registered in a trademark sense or with a particular trademark in mind. In addition, a number of UDRP panels have concluded that a party has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive words or phrases, even where the domain name may be confusingly similar to the registered mark of another party.

Respondent understands that Complainant’s registration of the trademark MARRIAGE MATTERS grants it a presumption of rights in the mark, however these rights do not grant Complainant the sole authority to use the words “marriage” and “matters” in any capacity. If the words are used to evoke a source or origin for a particular good or service, then Complainant is well within its rights to enjoin such use. However, Complainant’s rights do not extend to enjoining the use of the individual terms or phrase comprising their trademark, if those terms are used purely for their descriptive value, as Respondent is using them in the Domain Names. Moreover, Respondent had neither heard of Complainant’s organization, nor did Respondent have knowledge of Complainant’s registered trademark before registering the Domain Names. Without such knowledge, it cannot be said that Respondent registered the Domain Names with any particular trademark in mind, let alone with Complainant’s trademark in mind. Complainant has provided no evidence to the contrary nor is there any basis from which to infer that Respondent targeted Complainant’s trademark. Respondent registered the Domain Names simply because of their descriptive value.

In addition, there are several domain names using the terms or phrase “marriage matters” in a similar descriptive sense for websites containing information or counseling services related to marriage. Evidence that a number of third-party domain names use the individual words of a trademarked term in a descriptive manner supports a finding of legitimate use. For instance, the following domains all showcase counseling services for marriage and other family-related issues: <marriagemattersjackson.com>, <marriagemattersnow.com>, and <marriagematterstokids.org>. In addition, another domain name, <marriagematters.blogspot.com>, contains a blog discussing issues related to marriage equality and another domain name <mymarriagematters.org> is directed to a website that appears to be critical of marital affairs. None of these websites appear to belong to Complainant. It appears that the majority of these websites post content that is either neutral or aligns with Complainant’s interests regarding their views on traditional and same-sex marriage issues.

It appears Complainant has decided to single out Respondent’s Domain Names simply because their political stance clashes with Complainant’s. Furthermore, Complainant merely argues that Respondent does not have a trademark for the phrase “marriage matters Oregon”, does not have prior use rights in the term “marriage matters”, and is not making fair use of the Domain Names. These arguments are not sufficient evidence to establish that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent is not required to have trademark rights, or even prior rights to establish that it nonetheless has a legitimate interest in the Domain Names. Further, Complainant’s fair use argument misses the point because Respondent is not using Complainant’s marks in a trademark sense, but is merely using the terms in a descriptive sense to best describe its own offering to the public.

Complainant argues the Domain Names currently redirect users to <lovecommitmentmarriage.org> owned and operated by Respondent. Respondent uses this domain name to convey a similar message to what it previously made available to the public by way of the Domain Names. Until recently, the Domain Names resolved to active web pages presenting marriage-related issues. However, Respondent recently removed the material from the Domain Names after Complainant sent a letter threatening legal action. Because Respondent had built up goodwill and a reader base over the few years of active use, Respondent removed the material on the website and redirected the Domain Names to its other domain name in an attempt to avoid losing readers and political supporters until this matter was resolved. Respondent has a legitimate interest in a domain name, which simply transfers the user to another domain name and website owned by Respondent, where the latter domain name and website offer goods and services.

Respondent’s use of the Domain Names is noncommercial. In considering whether a domain name’s use is noncommercial, the Panel should consider the primary purpose of the website, which it may determine by examining the content. In cases involving non-profit organizations or other websites where the only financial transactions are in the form of monetary donations, the Panel must consider whether the financial transactions are a primary motive for the domain name and website or merely a secondary feature of the website such that the site retains is noncommercial status. Thus, just because a website may seek donations from the readers does not automatically render the website and domain name commercial. Respondent’s primary purpose in choosing the Domain Names was to exercise its First Amendment speech rights to provide its view and information relating to marriage equality and freedom to marry. The material contained on Respondent’s website illustrates this point. While the site may include a link for donations, that is clearly a secondary aspect to Respondent’s primary purpose of educating the public about its cause.

With respect to Complainant’s allegation of tarnishment, a party must show that the trademark is being misused and that the trademark is a famous mark. Respondent is not using the Mark in a trademark sense, so there can be no tarnishment. Further, Complainant has presented no evidence that the MARRIAGE MATTERS Mark is famous. Thus, Complainant has failed to show that Respondent has tarnished the Mark.

Prior UDRP panels have concluded that the conjunctive language in paragraph 4(a)(iii) of the Policy requires that a complainant conclusively establish both bad faith registration and bad faith use regarding the disputed domain name. Moreover, even if Complainant provides evidence showing that a domain name is currently being used in bad faith, such evidence does not support a showing that the domain name was initially registered in bad faith. In its Complaint, Complainant alleges that the Domain Names have been registered and are being used in bad faith. However, Complainant fails to provide specific evidence showing that Respondent registered the Domain Names in bad faith. All of the evidence and arguments are directed at Respondent’s current use of the Domain Names. It appears that Complainant is attempting to circumvent the requirements of the Policy by showing that Respondent’s alleged bad faith use establishes that Respondent initially registered the Domain Names in bad faith. Such tactics have been rejected by numerous UDRP panels because they conflict with the Policy and this Panel should do the same.

Moreover, since Respondent has established its legitimate, noncommercial interest in the Domain Names, it cannot be concluded that the Domain Names were registered in bad faith. Further, Respondent could not have registered the Domain Names in bad faith because Respondent did not know of the Mark when it registered them. Absent specific proof of an intent to profit from Complainant’s Mark, bad faith registration cannot be established.

The Domain Names were not registered primarily for the purpose of selling, renting, or otherwise transferring them, nor has Respondent engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks. Further, Complainant fails to establish that Respondent registered the Domain Names to prevent Complainant from reflecting their mark in a corresponding domain name or primarily to disrupt Complainant’s business. In fact, Complainant has already protected its commercial interests by registering and using the domain name <marriagematters.org>, which fully incorporates all the literal elements of its registered mark. At the time of registration, Complainant elected not to register additional domain names and it should not be given the opportunity now to rectify its decision, a few years after Respondent has already invested and developed good will in the Domain Names.

Because Complainant chose to register a phrase comprised of descriptive terms, it opened itself up to the possibility that others would use the terms or phrase merely as a descriptor to promote a message related to marriage. Complainant’s trademark registration does not grant it a monopoly on the use of the words “marriage” and “matters” in all forms, especially when the public has no options to use other words to accurately describe their message regarding marriage. The lack of reasonable substitutes is illustrated by the numerous websites using these two words descriptively in conjunction with marriage-related matters. Any disruption or diversion caused in this case can be attributed to Complainant’s choice in registering a trademark incorporating commonly used words and not to any bad faith on Respondent’s behalf.

Complainant attempts to paint Respondent’s response to the demand letters in a bad light, but such a characterization is improper. Respondent’s response was reasonable and illustrates that Respondent was seriously considering the issues raised by Complainant. Respondent took the affirmative steps of vetting separate domain names in the event that Respondent decided to change domain names. This action, however, is not an admission “that the use was improper” as Complainant suggests, but merely a decision by Respondent to evaluate its options and determine whether and how to accommodate Complainant’s request to avoid potential litigation or disputes. In the end, Respondent decided that it was in its best interests to remove the material from the website at the Domain Names, but maintain the Domain Names under its control so as to not lose its political supporters and readers. Nothing in these actions suggests that Respondent was acting in bad faith.

Complainant mentions that Respondent already owns the domain name <lovecommitmentmarriage.org> and that its ownership of additional domains demonstrates bad faith use of those additional domains. Respondent is unaware of any case law or panel decisions suggesting that a party can only own one domain name and that ownership of multiple domains suggests bad faith. In this case, Respondent is merely trying to spread its own message effectively and has decided that having multiple domain names would better serve its interests.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:

(i) Respondent’s 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 Domain Names; and

(iii) Respondent’s Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Panel finds that Complainant satisfies this element by virtue of its U.S. Trademark Registration No. 2,642,250 for the mark MARRIAGE MATTERS. As stated in the discussion following Question 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (“Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?”), the consensus view is: "If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.")

Furthermore, Respondent does not challenge Complainant’s rights in the MARRIAGE MATTERS Mark, and for purposes of this proceeding, Respondent does not contest that the Domain Names are confusingly similar to the MARRIAGE MATTERS Mark.

The Panel therefore finds that Complainant satisfies Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Because the Panel has determined that the Complaint must fail because Complainant has not carried its burden of showing that Respondent registered the Domain Names in bad faith, it need not decide the issue of rights or legitimate interests. However, because some of the Panel’s conclusions for bad faith registration apply here as well, the Panel has addressed this element, and concluded that Complainant has failed to show that Respondent lacks rights or legitimate interests in the Domain Names.

Pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy, Complainant is required to make at least a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names. Once that prima facie case has been made, the burden of production shifts to Respondent to show by concrete evidence, that it has rights or legitimate interests in the Domain Names. See, e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. The burden of proof always remains on Complainant to establish that Respondent lacks rights or legitimate interests in the Domain Names. See Section 2.1 of the WIPO Overview 2.0. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Names, even if it had not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant alleges that Respondent has no rights or legitimate interests in the Domain Names for reasons that include: (i) Respondent has not filed an application with the USPTO to obtain a registration for “marriagemattersoregon”; (ii) Respondent has no common law rights or any expectation of such rights in the Mark because of Complainant’s prior rights in the Mark and Complainant’s domain name; (iii) Respondent has never been commonly known by the Domain Names; (iv) Respondent’s use of the Domain Names is not a nominative fair use; (v) Respondent’s use tarnishes the value of the Mark; and (vi) Respondent’s use of the Domain Names “steals” target clients and donors away from Complainant. The Panel finds that these allegations are sufficient to sustain the required prima facie showing that Respondent lacks rights and legitimate interests in the Domain Names.

Respondent’s main argument in support of its legitimate rights stems from its assertion that the phrase “marriage matters” may be used to describe issues or matters relating to marriage or to express that the act of marriage is important. Respondent thus argues that because it is an Oregon non-profit organization seeking to promote messages related to marriage (e.g., marriage equality, the importance of marriage and freedom to marry) in Oregon, Respondent is using the terms “marriage,” “matters,” and “Oregon” to describe its main purpose and best advertise its message. In this regard, Respondent provided the Panel with the results of an Internet search showing that the phrase “marriage matters” is in common use on websites and in domain names for various messages relating to marriage. The Panel confirmed this by performing a similar search (discussed below). This however does not automatically show that the use of the phrase as part of a domain name corresponds to a bona fide offering of goods or services.

Pursuant to the consensus view for Section 2.1 of WIPO Overview 2.0 (“Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?”), factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include: the status and fame of the trademark; whether the respondent has registered other domain names containing dictionary words or phrases; and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning. Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services) may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).

As discussed in Section C, below, Complainant has failed to provide evidence demonstrating that its MARRIAGE MATTERS Mark is famous or well known. So there is no support for such a finding or for an inference that Respondent knew of Complainant's MARRIAGE MATTERS Mark when it registered the Domain Name and decided to register the Domain Names incorporating the MARRIAGE MATTERS Mark for its trademark value. Moreover, Respondent contends that it had neither heard of Complainant’s organization, nor did Respondent have knowledge of Complainant’s registered trademark before registering the Domain Names. Respondent maintains that it registered the Domain Names simply because of their descriptive value, like many others who are using the phrase “marriage matters” on their websites and in their domain names in reference to their websites relating to marriage. Without proof of Respondent’s knowledge of Complainant’s MARRIAGE MATTERS Mark, it is unnecessary for the Panel to make a finding on the extent to which such knowledge may or may not have supported Respondent’s argument that it registered the Domain Names incorporating the MARRIAGE MATTERS Mark for its generic or descriptive meaning. Even had such knowledge been proven, Complainant would still had to have demonstrated targeting of its Mark in particular for profit.

As it is without proof of knowledge of Complainant’s trademark, the Panel finds that Respondent, an active voice and promoter of issues such as marriage equality, the importance of marriage, and the freedom to marry in Oregon registered the Domain Names in connection with a purpose relating to the Mark’s generic or descriptive meaning and, thus, had a legitimate interest in the Domain Names for purposes of the Policy.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has not been satisfied.

C. Registered and Used in Bad Faith

After carefully considering the totality of the circumstances in the record, the Panel does not find any evidence demonstrating that Respondent registered the Domain Names with the aim of profiting from and exploiting Complainant's rights in the MARRIAGE MATTERS Mark. While Complainant has established registration rights in the Mark sufficient to satisfy paragraph 4(a)(i) of the Policy, the MARRIAGE MATTERS Mark nonetheless comprises the common dictionary words “marriage” and “matters,” which the record and the Panel's own searching indicates is subject to significant and widespread third-party use in its ordinary or descriptive sense.

The requirements of Paragraph 4(a) of the Policy are conjunctive, thus Complainant bears the burden of proof on each. Telestra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If any required element is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the domain name because the complainant failed to prove bad faith registration).

Complainant alleges that Respondent has registered and used the Domain Names in bad faith citing to paragraph 4(b)(iii) and 4(b)(iv) of the Policy. More specifically Complainant claims that Respondent is purposely disrupting its business by leveraging the recognition, reputation and legitimacy of the MARRIAGE MATTERS Mark (in which it claims to have invested millions over the last decade) to “steal” Internet users away from Complainant’s website (advocating traditional family values and marriage) and to divert them to Respondent’s website (advocating same gender marriages). Complainant claims that this redirection is “stealing” clients and potential donors resulting in a commercial loss for it and a commercial gain for Respondent. Complainant also claims that Respondent’s use of the Domain Names has tarnished the value of the Mark, which also affects its financial support (commercial loss) from donors. Further, Complainant has provided the Panel with evidence, by way of email correspondence, that it informed Respondent of its rights in the MARRIAGE MATTERS Mark and that Respondent continued to use the Domain Names despite repeated requests to stop. Indeed, one could conclude from the correspondence that Respondent was aware it might be infringing Complainant’s rights in the MARRIAGE MATTERS Mark.

Regardless of whether Complainant may have an argument that Respondent is using the Domain Names in bad faith, Complainant has simply not provided the Panel with any evidence from which the Panel might infer bad faith registration of the Domain Names. To meet that burden Complainant must ordinarily demonstrate (not simply allege) that Respondent had actual knowledge of Complainant's mark and selected the disputed domain name to take advantage of it. Aspenwood Dental Associates, Inc. v. Thomas Wade, WIPO Case No. D2009-0675; see also Gibson, LLC v. Jeanette Valencia. WIPO Case No. D2010-0490 (“To prove bad faith registration, Complainant must show that Respondent was aware of Complainant's trademark when she registered the Domain Name and nevertheless registered the Domain Name with a bad faith intention, such as those that are listed in paragraph 4(b) of the Policy”). Complainant failed to provide the Panel with any such evidence.

In an attempt to give Complainant the benefit of the doubt, the Panel examined some of the statements Complainant made in alleging Respondent’s bad faith. For example, Complainant states generally that it has “spent millions of dollars over the last decade building the reputation of the [MARRIAGE MATTERS Mark]” and that Respondent has attempted to leverage off the “recognition, reputation and legitimacy of the [M]ark”. Even assuming these statements were made to show bad faith registration (Complainant did not address the elements of bad faith registration and use separately), there is no support in the record for such declarations such as evidence demonstrating: (i) that, in fact, Complainant made such expenditures for promoting the Mark; (ii) how such expenditures were actually used to promote the Mark in a manner that would have reached Respondent; and (iii) whether such expenditures resulted in the Mark achieving the renown Complainant represents it has at any time, but particularly in 2009 when Respondent registered the Domain Names. The Panel must weigh this lack of evidence against Respondent’s clear representation that it had neither heard of Complainant’s organization, nor did it have knowledge of Complainant’s registered trademark before registering the Domain Names.

Moreover, Respondent maintains that it chose to use the descriptive terms “marriage”, “matters” and “Oregon” to describe its main purpose, considering that Respondent is an Oregon non-profit organization that seeks to promote its message of marriage equality, the importance of marriage, freedom to marry, and other matters related to marriage in Oregon. Despite Complainant’s United States Trademark for the MARRIAGE MATTERS Mark, it is comprised of common descriptive words that Respondent is using in accordance with their common meaning, even though Respondent’s position on marriage differs from Complainant’s position. From performing an Internet search using the Google® web search engine the Panel found (as did Respondent) that numerous organizations are similarly using the terms “marriage matters” alone or with a geographic identifier at least in the content of their website if not also in their domain names (e.g., <marriagematters.com>, <marriagematters.net>, <marriagematters.ws> and <marriagemattersjackson.com>). Thus, in view of Complainant’s failure to adduce any evidence of bad faith registration, Respondent’s denial that it knew of Complainant or the Mark when it registered the Domain Names, and Respondent’s explanation for choosing the Domain Names in accordance with the descriptive meaning for the words “marriage”, “matters”, and “Oregon”, the Panel cannot infer bad faith registration on this record.

Complainant has raised the Mark’s United States Trademark Registration and its “indisputable status” although it has not argued specifically that Respondent had constructive notice of its rights when registering the Domain Names. Notwithstanding that, the Panel has considered whether there is any basis to make such a finding. As the panel articulated in Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172:

“Constructive notice (with some limited exceptions) is usually not applied in a Policy proceeding. The exception stated in the WIPO Overview paragraph 3.4, is in the Panel’s opinion somewhat over generalized. Most of the cases in which a Panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainant’s mark involved either a distinctive mark, see, e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128 (WUNR); Biogen, Inc. v. Kel Ellis, KELCO, WIPO Case No. D2002-0679 (Avonex); Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (Kate Spade), or some other indication of cybersquatting, e.g., Factory Mutual Insurance Company v. Valuable Web Names, WIPO Case No. D2008-1014 (link to complainant’s website); Briefing.com, Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970 (typosquatting). When the mark is an everyday word or phrase panels more often decline to find registration in bad faith based solely upon a claim of constructive notice, even when the parties are both American. E.g., Dr. Mitchell Mandel and Ms. Jill Slater v. CSC Laboratories, Inc., WIPO Case No. D2006-0719 (“Complainant’s assertion that, pursuant to the constructive notice provision of U.S. trademark law, Respondent should be charged with notice of Complainant’s rights in the SKIN DOCTOR mark as of its date of registration, i.e., May 23, 1995, is rejected by the Panel.”

See also PC Mall, Inc v. NWPCMALL LLC, WIPO Case No. D2007-0420. Because the Mark is comprised of descriptive or everyday words, Complainant has adduced no evidence from which the Panel can conclude that the Mark is distinctive or well known, and there is no evidence of cybersquatting, the Panel is not prepared to find that Respondent had constructive notice of Complainant’s U.S. Trademark Registration when it registered the Domain Names.

The Panel’s finding on bad faith registration here does not mean that Complainant currently lacks valid trademark rights or lacked them when Respondent registered the Domain Names, or that Complainant’s Mark has become so commonplace as to be unenforceable as a matter of trademark law. Complainant may pursue Respondent in court for infringement, where the nature of the adjudicative proceeding, the evidence uncovered, and the legal doctrines could favor Complainant. The Panel finds only that for purposes of this proceeding, under the Policy, that Complainant has failed to establish Respondent registered the Domain Names in bad faith.

The Panel has not addressed Complainant’s arguments regarding bad faith use of the Domain Names because of the omission of proof on bad faith registration.

The Panel therefore finds that Complainant has failed to satisfy paragraph 4(a)(i) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Harrie R. Samaras
Sole Panelist
Dated: December 20, 2011