WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Courtney Cox, Ivy Lane Living v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Betsy Riot, Betsy Riot
Case No. D2018-1256
1. The Parties
Complainant is Courtney Cox, Ivy Lane Living of Alexandria, Virginia, United States of America (“United States”), represented by Clare Locke LLP, United States.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Betsy Riot, Betsy Riot of Fema Camp, Utah, United States.
2. The Domain Name and Registrar
The disputed domain name <ivy-lane-living.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2018, the Registrar 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. The Center sent an email communication to Complainant on June 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 13, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 19, 2018. 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.
As a further procedural matter, this Complaint was filed jointly by two parties, Complainant Courtney Cox, which has been identified as an individual and co-founder and co-owner of Complainant Ivy Lane Living, a business entity. Where multiple related parties have rights in the relevant mark on which a UDRP complaint is based, a UDRP complaint may be brought by any one party or both parties filing as joint complainants.See Rules, paragraph 10(e); Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. See also, e.g., Chicago Mercantile Exchange Inc. and CME Group Inc. v. Johnson Atru, WIPO Case No. D2015-1941; Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley, WIPO Case No. D2016-1692.
4. Factual Background
Complainant Courtney Cox is an individual and interior design artist and professional, and co-founder and co-owner of Complainant Ivy Lane Living, an interior design business located in Alexandria, Virginia, United States (collectively, the “Complainants”). Complainant Courtney Cox is married to the National Rifle Association’s (“NRA”) chief lobbyist and principal political strategist, Chris Cox.
Complainants have used the IVY LANE LIVING mark in connection with interior design related services for approximately 10 years. Complainants opened their showroom office in Alexandria, Virginia, United States in October 2014, and registered their domain name <ivylaneliving.com> on July 2, 2014. A Google search for “Ivy Lane Living” also returns results in which Complainants’ business is featured in every result on the first page.
Complainants’ use of the IVY LANE LIVING mark pre-dates the registration of the disputed domain name, <ivy-lane-living.com>, which occurred on August 14, 2017.
Respondent in this case is identified as “Betsy Riot,” a political resistance group composed of loosely affiliated individual members from across the United States.
The disputed domain name previously resolved to a website that approximated Complainants’ website in look and feel, including using images from Complainants’ website, but which included political commentary and related criticism of Complainants, relating to gun control and similar issues. The disputed domain name subsequently redirected to another domain name controlled by Respondent or a party affiliated with Respondent, namely <waynelapierre.com>, which was also used by Respondent or an affiliated party as a political commentary, criticism, and satire website associated with NRA Executive Vice President Wayne LaPierre.
5. Parties’ Contentions
Complainants assert that they have common law trademark rights in the mark IVY LANE LIVING, and that the disputed domain name is identical to Complainants’ mark. Complainants assert that the IVY LANE LIVING mark is arbitrary and inherently distinctive and has been in continuous use for over a decade, and is therefore inextricably connected to Complainants’ interior design business. Complainants also assert that their common law rights in this mark have been established through Complainants’ registration and use of the domain name <ivylaneliving.com>, which directs Internet users to Complainants’ primary website associated with its interior design business. Complainants also assert that such common law rights are also demonstrated by the multitude of unsolicited press about Complainants, and the Google search results for “Ivy Lane Living” which generally refer to Complainants.
According to Complainants, the disputed domain name is identical to the IVY LANE LIVING mark, as it uses the mark in its entirety, with the only distinction being the added dashes in between the words.
Complainants assert that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainants, Respondent is not named and does not own a business that goes by “Ivy Lane Living,” but rather goes by the name “Betsy Riot.” Moreover, Respondent is not using the domain name in connection with the bona fide offering of any goods or services, but rather as part of a malicious scheme to disrupt Complainants’ business. According to Complainants, Respondent’s website located at the disputed domain name contained vulgar and offensive material that essentially claims that Complainants have profited from the deaths of children who were killed in recent mass shootings. According to Complainants, the website contained doctored images taken from Complainants’ own website that underscored Respondent’s political message. According to Complainants, Respondent also created a post on its Facebook page linking to the disputed domain name in connection with further political commentary concerning the issue of gun control in the United States. Complainants also assert that Respondent appears to have yet another improper motive for using the disputed domain name: to divert legitimate customers away from Complainants’ business and to Respondent’s own website, where it advertises and profits from the sale of Betsy Riot merchandise. According to Complainants, following the commencement of this proceeding, Respondent changed their use of the disputed domain name, instead using it to redirect to another website located at <waynelapierre.com>, which Complainants assert falsely purports to be NRA Executive Director Wayne LaPierre’s personal website, but instead lampoons Mr. LaPierre. According to Complainants, the fraudulent Wayne LaPierre website also links directly to Respondent’s website, where it advertises the products and merchandise of its members, from which it profits. In its supplemental filing, Complainants assert that Respondent has further modified the content of the disputed domain name, which now resolves to a page specifically mocking Complainants and this proceeding, and linking to the original website to which the disputed domain name initially resolved. Complainants claim that accordingly, Respondent has not demonstrated any bona fide commercial reason for its registration and use of the disputed domain name.
Complainants also assert that Respondent has no legitimate noncommercial or “fair use” purpose for using the disputed domain name. According to Complainants, Respondent’s use of a proxy service to anonymize itself in connection with its registration and use of the disputed domain name, and by further using fictitious address and contact information to register the disputed domain name (the data behind the proxy service), creates a presumption against finding that Respondent has rights or legitimate interests in a noncommercial or fair use of the disputed domain name. Complainants also assert that Respondent is not engaged in a noncommercial or “fair use” of the disputed domain name because it is used to divert legitimate customers away from Complainants to Respondent’s own website, where it advertises and profits from the sale of Betsy Riot merchandise. According to Complainants, the sales pitch for the Betsy Riot “line of products” includes a pledge that “[a]ny funds raised in excess will go toward other Betsy actions” and that purchasing the merchandise “show[s] your support for [Betsy Riot].” Complainants also assert that Respondent cannot claim fair use under any right to free speech because the disputed domain name is confusingly similar to the IVY LANE LIVING mark and does not append any additional terms clearly indicating that Respondent’s website is intended as a criticism or parody site directed toward Complainants, misleadingly diverts consumers to Respondent’s own website where it sells its own merchandise, and tarnishes the IVY LANE LIVING mark through the nature of the content of the website located at the disputed domain name.
Complainants assert that the disputed domain name was registered and is being used in bad faith, as demonstrated by Respondent’s intent to use the disputed domain name in order to disrupt and destroy Complainants’ business and trade, its course of conduct in registering several domain names using prominent persons’ names in order to likewise attack those individuals and prevent them from using those domain names, its use of the disputed domain name to bolster its own public profile and attract Internet users to its own website for commercial gain, and the entirety of the circumstances and Respondent’s actions in maliciously attacking and disparaging Complainant’s business with the intent of destroying that business and the careers of its owners and employees. Complainants assert that Respondent’s use of fake registration information to register the disputed domain name further evidences Respondent’s bad faith.
Accordingly, Complainants have requested that the disputed domain name be transferred to Complainants.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainants must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Respondent’s default in this case does not automatically mean that Complainants prevail, and the Panel must evaluate the Complaint on its merits despite the lack of any Response by Respondent. See, e.g., Lonsdale Sports Limited v. Holger Doelle, WIPO Case No. D2016-1140.
A. Identical or Confusingly Similar
Complainants assert common law rights in the IVY LANE LIVING mark. To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. See WIPO Overview 3.0, section 1.3. The fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP. See id. The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier. See id.
Here, Complainants have provided sufficient evidence that they have common law rights in the IVY LANE LIVING mark, based, inter alia, on their use of the mark in connection with Complainants’ interior design business for approximately 10 years, including through their website located at the <ivylaneliving.com> domain name, which was registered in 2014. The extensive unsolicited press and Internet search results referring to Complainants and the IVY LANE LIVING mark also serve to demonstrate such rights.
With Complainants’ rights in the IVY LANE LIVING mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainants’ mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the disputed domain name is effectively identical to the IVY LANE LIVING mark as the disputed domain name uses the same words, merely separated by hyphens. The use of hyphens to separate words in a domain name where the words are otherwise identical to a trademark is insufficient to overcome a finding that the domain name is identical or confusingly similar to the trademark. See, e.g., MasterCard International Incorporated v. Hector Cancel, WIPO Case No. D2007-1121 (“The insertion of hyphens to separate a trademark in two has been found to be confusingly similar, as an example of typo-squatting, and is not sufficient to differentiate the domain name from the Complainant’s trademark.”).
The Panel therefore finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the IVY LANE LIVING mark and in showing that the disputed domain name is identical or confusingly similar to this mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainants must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainants make such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainants. Generally, if Respondent fails to come forward with evidence showing rights or legitimate interests, Complainants will have sustained their burden under the second element of the UDRP.
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
In this case, Respondent is not primarily using the disputed domain name in connection with what is normally understood as a bona fide offering of goods or services, as the disputed domain name has been used primarily in connection with various politically motivated commentary and criticism websites. The inclusion of links on the various websites associated with the disputed domain that direct Internet users to Respondent’s political resistance group website, where Respondent offers its own merchandise for sale in support of its political activities, does not constitute a bona fide offering of goods or services insofar as that activity relates to the disputed domain name (although the Panel notes that there is nothing per se illegitimate about selling merchandise to support one’s cause). See, e.g., The Honorable Ron Paul v. DN Capital Inc., Martha Roberts, WIPO Case No. D2013-0371 (finding that sales of merchandise relating to a political candidate were not a bona fide sale of goods and services conferring on respondents a right or legitimate interest in the disputed domain name, but that such sales of merchandise were incidental to respondents noncommercial and fair use of the disputed domain name in connection with political speech).
Respondent is also not commonly known by the disputed domain name.
However, in this case, Respondent may have a claim to fair use of the disputed domain name, which the Panel explores below.
The majority of UDRP panels take the view that the use of a domain name identical to a complainant’s trademark carries a high risk of implied affiliation, which causes an impermissible risk of user confusion, and as such would not support a claim to fair use. See WIPO Overview 3.0, sections 2.5.1 and 2.6.2.
That latter section (2.6.2), however, goes on to say that in “certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.”
Section 2.5.1 of the WIPO Overview 3.0 acknowledges that a false suggestion of affiliation with the trademark owner is not fair in the sense of the UDRP, and that the domain name itself (i.e., whether identical or otherwise) contributes to the overall degree of implied sponsorship or endorsement.
WIPO Overview 3.0, section 2.5.1 further indicates that the assessment of implied sponsorship or endorsement relies not only on the domain name but also on an examination of the broader facts and circumstances of the case, such as the website use and the overall conduct of the respondent. In this regard, taking WIPO Overview 3.0, section 2.6.2 and paragraph 15(a) of the UDRP Rules into account, in the unique circumstances of claimed free speech cases between United States Parties, the Panel may also look to relevant principles of United States (First Amendment) jurisprudence in conducting its assessment under the Policy.
The Panel also notes that UDRP Rules, paragraph 15(a) allows the panel to look to relevant national law, e.g., “[i]n some limited cases such as where the parties share a common nationality and the import of a specific national law concept is particularly germane to an issue in dispute, panels have applied national law principles in assessing the UDRP elements. In such cases, panels have often noted in the applicable UDRP decision the fact that the laws of a particular jurisdiction (possibly that elected by the complainant under UDRP paragraph 4(k)) may well govern any subsequent court case.” WIPO Overview 3.0, section 4.15.
The question which must be answered in the instant case therefore is whether it is possible here to overcome the implied sponsorship, endorsement or impersonation in a <trademark.TLD> domain name.
Here however, on balance, and applying relevant principles from UDRP jurisprudence and applicable law of the United States, where both Complainant and Respondent are located, the Panel finds that Respondent’s registration and use of the disputed domain name constitutes an adequate claim to fair use such that Complainant has not met its burden under the Policy. Here, the following factors used in prior UDRP proceedings to evaluate fair use are relevant: (i) the domain name has been registered and is being used for legitimate purposes and not, on the evidence before the Panel, as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit; (ii) the respondent reasonably believes its use to be truthful and well-founded; (iii) it is clear to Internet users (the Panel would note that this requires some care and scrutiny) visiting the respondent’s website that it is not operated by the complainant, and that there is no likelihood of actual confusion as to any connection between the complainant’s trademark in the disputed domain name and the corresponding website content; (iv) the disputed domain name is not used to divert Internet users to a competitor of the complainant or otherwise attempt to obtain an unfair commercial advantage in the complainant’s industry, and (v) the domain name registration and use by the respondent is consistent with a pattern of bona fide activity by the respondent. See WIPO Overview 3.0, section 2.5.2.
Whether a respondent’s use of a domain name constitutes a legitimate fair use will often hinge on whether the corresponding website content prima facie supports the claimed purpose (e.g., for referential use, commentary, criticism, praise, or parody), is not misleading as to source or sponsorship, and is not a pretext for tarnishment or commercial gain. See WIPO Overview 3.0, section 2.5.3. Here, Respondent has provided a link on the websites to which the disputed domain name has resolved to Respondent’s own political organization website, through which Respondent sells certain products used to fund Respondent’s political activities. However, the disputed domain name is not primarily used as a pretext for commercial gain, and to the extent that Respondent solicits contributions or funds its political activities through the sale of self-branded merchandise, Respondent is arguably still exercising its free speech right and is not competing with Complainants based purely on a separate profit motive. See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (“[T]here is no evidence in this record that Respondent is pursuing its actions with any intent for commercial gain. Rather, Respondent’s activities appear to be directed towards non-commercial speech. To the extent that Respondent solicits contributions or encourages consumers not to join HJTA, he is exercising his free speech right; he is not competing as an alternative tax reform organization.”). See also, e.g., The Honorable Ron Paul v. DN Capital Inc., Martha Roberts, WIPO Case No. D2013-0371 (denying complaint on the basis that respondents had legitimate interest in disputed domain name used for political website, even where respondents sold merchandise relating to the political candidate through the website). The Panel also notes that the pages linked to Respondent’s primary website where certain merchandise is being sold by individual members of Respondent’s organization are not linked directly from the disputed domain name, and can only be found on specific archived content on Respondent’s primary website, rather than being available from a general page where Respondent advertises goods or services for sale. In other words, the relationship between the disputed domain name and any commercial gain by Respondent is sufficiently attenuated here such that it is not immediately clear that the disputed domain name itself is used primarily as a pretext for commercial gain by Respondent.
The Panel also notes that it is an open question whether Respondent’s site can be characterized as evidencing an intent to “tarnish the trademark or service mark at issue.” See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (citing American Express Co. v. Vibra Approved Labs. Corp., 10 U.S.P.Q. 2d 2006 (S.D.N.Y. 1989) (mark DON’T LEAVE HOME WITHOUT IT tarnished by condoms sold under the slogan “Never Leave Home Without It”); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996) (adult entertainment site at domain name <candyland.com> is tarnishment of CANDYLAND trademark for children’s games); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (tarnishing to link actress’ name to website selling adult entertainment). Moreover, while there is a modicum of commercial activity at Respondent’s websites, under relevant United States law, such as Section 43(c) of the Lanham Act, there is no cause of action for trademark dilution (which encompasses both blurring and tarnishment) if a party is making a “[n]oncommercial use of a mark,” 15 U.S.C. § 1125(c)(4)(B), which is not the case here. Northland Insurance Co. v. Blaylock, 115 F. Supp. 2d 1108 (D.C. Minn. 2000) (criticism site at “www.northlandinsurance.com” is protected speech and, because the website was noncommercial commentary, it could not generate initial interest confusion and did not constitute dilution); see also L.L. Bean v. Drake Publishers Inc., 811 F.2d 26 (1st Cir.) (First Amendment is defense to dilution tarnishment claim when use is noncommercial parody); cert. denied, 483 U.S. 1013 (1987); Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1574 (S.D. Cal. 1996) (parody not dilution because use was noncommercial), aff’d, 109 F.3d 1394 (9th Cir. 1997)). This is true, even though some of the commentary used by Respondent is violent in nature, relating to gun control issues involving loss of life. This is also true even if the gripes and commentary may be untrue – the proper cause of action in that circumstance would be one for defamation, not dilution or cybersquatting. See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (citing Brittania Building Society v. Brittania Fraud Prevention, WIPO Case No. D2001-0505).
Finally, Complainant argues that Respondent lacks a legitimate interest because Respondent’s websites malign and disparage Complainants and “deliberately cause actual and potential customers to stop using their goods and services” and “contained extremely vulgar and offensive material that essentially claims that Complainants have profited from the deaths of children who were killed in recent mass shootings.” Although such commentary may be unpleasant, such criticism appears to fit within the protections afforded by fair use and free speech, as defenses under the UDRP. As the Panel in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014noted: “The Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites. Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.”
In the Complaint, Complainants rely primarily on Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175, to support their position that Respondent has no rights or legitimate interests in the disputed domain name based on fair use. In this case, the panel sustained the complaint on the basis of user confusion, even though the panel found that the content located at the disputed domain name was “pure criticism, without any commercial element.” See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175. As noted above, given the totality of circumstances in this case, the Panel is not persuaded by the argument that use of the disputed domain name to create user confusion is sufficient to overcome the intention of Respondent to use the disputed domain name in connection with protected political speech.
In short, as Respondent is making a fair, i.e., critical, use of the disputed domain name as a platform for its political messaging and commentary and criticism, Complainants have not sustained their burden of establishing by a preponderance of the evidence that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
It is clear that Respondent did not register the disputed domain name in order to sell, rent, or otherwise transfer it to Complainants or any other party for valuable consideration in excess of Respondent’s registration costs.
Complainants assert that Respondent has registered the disputed domain name in order to prevent Complainants from reflecting their mark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct. Respondent has registered a number of domain names associated with its political commentary relating to gun control, including the disputed domain name as well as the <waynelapierre.com> and <johnlott.com> domain names. While the disputed domain name corresponds to Complainants’ trademark, the other two domain names refer to public figures and are similarly used for the purpose of political speech relating to these individuals’ activities in connection with the NRA. While this conduct does prevent the respective various trademark owners from reflecting their marks in corresponding domain names, these domain name registrations were made in furtherance of Respondent’s political activities, presumably so as to disseminate Respondent’s views to a wider audience and notably in this case not to prevent Complainant from reflecting its mark in a domain name (as it owns the non-hyphenated version).
Finally, Complainant points to Respondent’s use of a proxy service and its use of false contact information in connection with the disputed domain name registration. In general, these factors would tend to support a finding of bad faith in a typical UDRP proceeding, where other bad faith indicia are present (such as evidence that the domain name was registered primarily for commercial gain, either by being offered for sale or through the use of other monetization mechanisms in connection with the domain name or related website). However, in this case, where Respondent is engaging in political expression that might be viewed unfavorably by its opponents, or others who might have an interest in such expression, the use of a proxy service and even inaccurate contact information to register the domain name, in this context and in light of the other circumstances present in this case, do not support a finding of bad faith where Respondent has employed these means to protect its identity. Cf. Solers, Inc. v. Doe, 977 A.2d 941, 954-57 (D.C. 2009); Sinclair v. TubeSockTedD, 2009 WL 320408, at *2 (D.D.C. Feb. 10, 2009); Highfields Capital Mgmt. v. Doe, 385 F. Supp.2d 969, 975-76 (N.D. Cal. 2005).
Ultimately, Complainants’ arguments concerning bad faith boil down to its claim that “Respondent is attacking a woman-owned business for no reason other than to destroy that business and the trade, reputation, and profession of its co-owner, Ms. Cox (and now rigging the fraudulent domain to automatically direct unknowing visitors to the fraudulent website and associate Complainants with NRA Executive Director Wayne LaPierre for the same purposes).” But the evidence suggests that this activity is considered to be central to Respondent’s political activities, which are protected speech under applicable law and prima facie defensible under the UDRP as fair use – even if the political message leads consumers to reject Complainants’ business. The caveat to this finding, of course, is if Respondent’s speech is false and defamatory, or it is otherwise engaging in conduct that violates Complainants’ rights under applicable law (such as potential copyright infringement through the unauthorized use of images from Complainants’ website). As the Panel sees this case involving two United States parties and United States free speech principles, the UDRP is not the most appropriate mechanism for raising concerns about Respondent’s conduct.
Accordingly, Complainant has failed to meet its burden of demonstrating that the disputed domain name was registered and is being used in bad faith within the meaning of the Policy.
For the foregoing reasons, the Complaint is denied.
Brian J. Winterfeldt
Date: August 16, 2018