WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Honest History Co. v. Registration Private, Domains By Proxy, LLC / Barron Douglas, Mercury
Case No. D2021-3028
1. The Parties
The Complainant is Honest History Co., United States of America (“United States”), represented by Framework Law Group PC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Barron Douglas, Mercury, United States, represented by Hemingway & Hansen, LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <honesthistory.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2021. On September 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 6, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. Further to the Respondent’s request, the Center granted an extension for response until November 5, 2021. The Response was filed with the Center on November 4, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 15, 2021. 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 Complainant is a business corporation registered on August 21, 2017 under the laws of the State of California, United States and headquartered in Inglewood, California, United States. The Complainant publishes a quarterly history magazine for children and operates a website at “www.honesthistorymag.com” (the “Complainant’s website”). The Complaint attaches archived screenshots of the Complainant’s website starting in August 2018 and copies of the covers of the quarterly publication beginning with the “Premiere Issue” in Fall 2018, all featuring the mark HONEST HISTORY. The record shows that the Complainant’s magazine attracted attention from the beginning, including a photograph of the Canadian Prime Minister displaying a copy of the premiere issue. The print magazine has a subscription circulation of 12,000 and received a National Parenting Product Award in 2020. The Complaint attaches evidence of media recognition in parenting and educational publications and blogs including Mother Mag, Language During Mealtime, Mom.com, Tabby’s Pantry, The Pages Inbetween, The Mama Maven, Long, Wait for Isabella, Marcie In Mommyland, Mirabelles Magazine Central, Atlanta Parent Magazine, Outnumbered 3 – 1, Mom Fab Fun, Goop, Picture this Post, Miss Nina Speaks: Toddler Truth, Adventure Moms DC Blog, and Owliverspost. The Complaint shows that the publication is sold in retail bookstores in the United States (including the large Barnes & Noble chain since January 2019), advertised on Facebook and Instagram, and mailed to subscribers online. The Complaint states 2020 revenues of USD 800,000 and projected 2021 revenues of USD 1.4 million.
In addition to claiming common law rights in the mark, the Complainant holds the following United States trademark registrations for HONEST HISTORY
HONEST HISTORY, standard characters
March 10, 2020
HONEST HISTORY, standard characters
September 28, 2021
HONEST HISTORY, standard characters
September 28, 2021
In each trademark registration, the Complainant disclaims exclusive use of the word “history” apart from the mark as shown. The earliest registration was applied for on April 19, 2018, claiming a first use in commerce on August 30, 2018.
According to the Registrar’s WhoIs database, the Domain Name was created on December 3, 2013 and was registered in the name of a domain privacy service when the Complaint was filed in this proceeding. After receiving notice of the Complaint, the Registrar identified the underlying registrant as the Respondent Barron Douglas, listing the organization as “Mercury”, with a postal address in Irving, Texas, United States. The Response was filed on behalf of Mercury One, Inc. (“Mercury One”) of Irving, Texas, United States, which the online database of the Texas Secretary of State lists as a Delaware corporation registered to do business in Texas since August 1, 2012. The Delaware Division of Corporations website shows that the Respondent was incorporated on November 8, 2011. The Response attaches the Declaration of Suzanne Grishman (the “Grishman Declaration”), who has served as the Executive Director of Mercury One since February 2016. Ms. Grishman states that the Respondent is a nonprofit charitable organization that engages in humanitarian aid campaigns, disaster relief efforts, and education initiatives. Ms. Grishman identifies Mr. Barron as an employee of Mercury One at the time he acquired the Domain Name on behalf of Mercury One. Hence, Barron Douglas and Mercury One are referred to hereafter collectively as “the Respondent”.
The Respondent operates a website at “www.mercuryone.org”. The website explains that the Respondent is a tax-exempt organization founded in 2011 by media personality Glen Beck to take action through humanitarian aid and educational programs. The Response cites the Respondent’s recent involvement in evacuating thousands of refugees from Afghanistan and notes that the independent Charity Navigator gives the Respondent a score of 100 (out of a possible 100) for finance and accountability. The largest reported expense in the “education” category, according to the Charity Navigator summary, was nearly USD 2 million spent in the most recent fiscal year on “initiatives to teach future generations the honest history of the godly principals [sic] our country was founded upon.”
The Response attaches a copy of the sales receipt dated May 29, 2019 showing that the Respondent acquired the Domain Name on that date from the Registrar as a “.com premium domain” for USD 2,595. The Grishman Declaration states that the acquisition of the Domain Name was in furtherance of a business plan to Respondent establish “an on-line archival database” of tens of thousands of historical artifacts and documents. The Response lists examples of some of these materials, such as historic editions of the Bible and the Declaration of Independence, a flag that flew on a ship at the Normandy D-Day landings, a Ben-Hur movie miniature “fighting ship”, and a lock of George Washington’s hair.
The Response attaches a September 2018 report from a marketing consultancy concerning the Respondent’s project called “Branding the American Journey Experience” (or “AJE”). The report highlighted the mission of the AJE project in redressing “civic ignorance” in the United States or, as Ms. Grishman puts it, providing “an honest history of America including the good, the bad, and the ugly”. A June 1, 2019 consultancy report attached to the Complaint explained why the consultants and the Complainant’s in-house team concluded that the AJE project should be branded “honest history”:
“Our research uncovered a strong wish to have American history told honestly, warts and all. Tested in a national survey of 1000 adults, ‘honest history’ was the highest-rated positioning idea, favored by 68% of the total audience, and by 84% of those interested in American history. Quite unexpectedly, this idea generated the strongest visitation interest among both Conservatives and Liberals (self-described), proving that a single idea can appeal to both ends of the philosophical spectrum. Given today’s environment of division, this is no small accomplishment.
Adding to the positioning is another notion that further strengthens it. Honesty and Authenticity are the two personal values that Americans overall consider the most important guiding principles in their lives. Aligning the brand with the values of the audience is the best way to convert prospects and create loyalty.
All in all, one of the requirements of a positioning is that it is rational and provable. The Honest History positioning emphatically checks those boxes.”
The Response includes receipts and time summaries showing that staff and outside consultants have spent thousands of hours in 2019, 2020, and 2021 on artifact research and data entry for the AJE project. They have already photographed thousands of items and created an archive database that is password-accessed while under development. According to the Grishman Declaration, the Respondent plans to publish the database on the website associated with the Domain Name in the first quarter of 2021.
In the interim, the Respondent has evidently not made use of the Domain Name but has not directed it to an “Under Construction” or similar message. The Internet Archive’s Wayback Machine does not have archived screenshots associated with the Domain Name since the Respondent acquired it in May 2019. The Complaint attaches screenshots of the landing page to which the Domain Name resolved on June 29 and September 10, 2021, consisting of a blank page save for a purported copyright notice, “© 2021 honesthistory.com” (notably there is no content on the blank page to copyright). At the time of this Decision the Domain Name is locked by the Registrar and resolves to a landing page advertising the services of HugeDomains.com (“Find the domain that’s right for you”), which does not display the Domain Name.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical to its HONEST HISTORY mark, a registered mark since 2020 and in which it claims common law rights since 2018.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name and suggests the Respondent acquired it to attack the Complainant’s mark, in anticipation of the trademark registration. The Complainant observes that the United States Patent and Trademark Office (“USPTO”) published the Complainant’s first application for trademark registration on May 7, 2019, and that the historical WhoIs record shows that the Respondent acquired the Domain Name a little over three weeks later, on May 30, 2019.
The Complainant argues for bad faith as follows:
“Respondent either was aware or should have been aware of HONEST HISTORY because: (1) Complainant had made widespread use of its mark before the date of Respondent’s Registration; (2) Complainant had an application for trademark registration published by the USPTO before the date Respondent registered the domain name; (3) Internet search results demonstrate the public associates HONEST HISTORY with Complainant; and (4) Respondent registered a domain name identical to Complainant’s mark. Each of these also serves as evidence of bad faith generally.”
The Respondent challenges the “legitimacy and coverage” of the Complainant’s trademark rights, arguing that the mark is weak because it is descriptive and the Complainant has disclaimed half of it, the word “history”. The Respondent argues that there is little documentation of advertising and sales under the mark to support the claim for common law protection.
The Respondent claims “rights and legitimate interests in respect of the disputed domain name due to Respondents’ bona fide business plans and use of, and intentions to use, the disputed domain name in a merely descriptive manner.”
The Respondent denies any prior knowledge of the Complainant or its mark and furnishes evidence that it rejected offers from third parties to purchase the Domain Name. The Respondent emphasizes that “the Respondent’s acquisition of the disputed domain name was part of an established business plan and business analysis that recommended acquisition of a descriptive domain name identifier for the Respondent’s historical item computer archive of over 20,000 documents and artifacts.”
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for HONEST HISTORY as a word mark. The Domain Name is identical. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that the Domain Name is identical to the Complainant’s mark for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it 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) that the respondent has been commonly known by the domain name, even if it 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights, a lack of permissive use, and an absence of actual use of the Domain Name to date by the Respondent. This shifts the burden of production to the Respondent.
The Respondent claims that before notice of the dispute it made demonstrable preparations to use the Domain Name in connection with “bona fide business plans” a for a website providing access to a digitized archive of historical materials, consistent with one of the Respondent’s nonprofit educational objectives.
WIPO Overview 2.2 summarizes panel decisions assessing such claims:
“As expressed in UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.”
Here, the record is replete with such evidence. The Respondent demonstrates that it conducted market research and obtained consultant reports. The Response attaches receipts for third-party services, time summaries, and screenshots of the digital archive database and photographs it has prepared to date to post online. It is undisputed that the Respondent has been collecting and inventorying thousands of artifacts over a period of several years and has expended tens of thousands of dollars since 2018 preparing for the website for which the Domain Name was chosen. The consultant report dated June 1, 2019 explains why the Respondent chose “honest history” as a theme for the AJE project, based on market research, and thus why the Respondent acquired the corresponding Domain Name on May 29, 2019.
These facts would establish the Respondent’s legitimate interests in the Domain Name, comprised of two dictionary words, to prepare for a website with content relevant to that term, unless the Complainant offered persuasive evidence of pretext. The Complainant suggests that the Respondent selected the Domain Name not for its dictionary value but for its trademark value, attacking the Complainant’s common law mark or in anticipation that the Complainant would obtain the trademark for which it had recently applied, as the application was then recently published by USPTO on May 7, 2019. That inference could conceivably undermine the Respondent’s claim of “legitimate” interests and preparation for a “bona fide” offering. See WIPO Overview 3.0, section 3.8.2 (addressing the similar issue of bad faith in acquiring a domain name in anticipation of a trademark.)
The inference of pretext is not persuasive on the facts in this proceeding, however. In May 2019 the Complainant was recently established and had produced just three issues of its magazine. There is insufficient evidence of sales, advertising, and recognition at that early stage (notwithstanding e.g., the photo with the Canadian Prime Minister) to establish that the Complainant had an unregistered mark protectible at common law (see WIPO Overview 3.0, section 1.3 on the evidentiary factors necessary to establish rights in an unregistered mark under the Policy). The Complainant’s trademark application was published a few weeks before the Domain Name acquisition, but panels have not readily imputed “constructive notice” to the publication of trademark applications even in the same jurisdiction, and the Complainant’s inference that the Respondent “should have known” about the “impending” trademark is not persuasive, especially as the mark is based on dictionary words and had a limited reputation. See WIPO Overview 3.2.2 (“knew or should have known” in the bad faith context.) Given the evidence of the Respondent’s planning and consultation, it is more likely that the Respondent is telling the truth and chose the Domain Name for its common, dictionary sense rather than as a pretext to exploit the budding reputation of a new children’s magazine. The Response attaches, for example, screenshots of other websites using the term “honest history” in its dictionary sense.
Thus, there is no convincing evidence that in May 2019 the Respondent chose the Domain Name as a pretext to attack the Complainant’s unregistered or anticipated trademark. There is, on the other hand, evidence of the Respondent’s demonstrable preparations to use the Domain Name in connection with a bona fide service offering. The Panel notes that the business plans included with the Complaint do not fully describe the business model for the digital archive. Thus, it is not a matter of record whether or how the Respondent, a nonprofit, would charge for access to the online archive, as opposed to financing the activity through donations. The marketing research included with the Response shows that the Respondent has closely examined what kinds of donors can be expected to support the AJE project. The Panel considers the preparations to be within the scope of the Policy, paragraph 4(c)(i) because the Respondent has demonstrated a business and technical plan and substantial, ongoing preparations to use the Domain Name for a service offering that is relevant to the sense of the Domain Name, whether the Respondent intends to be remunerated through donations or usage charges.1
The Panel concludes that the Complainant has not established that the Respondent has no legitimate interests in the Domain Name and fails on the second element of the Complaint.
C. Registered and Used in Bad Faith
Given the Panel’s conclusion on the second element of the Complaint, it is not necessary to reach findings on the third element, bad faith.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: November 29, 2021
1 Thus, the Respondent’s activities meet the criteria of paragraph 4(c)(i) in connection with preparations for a “bona fide offering of goods or services” even if they might otherwise qualify as a “legitimate noncommercial or fair use of the domain name” under paragraph 4(c)(ii) if the Respondent’s planned website were already in operation on a purely noncommercial basis. Paragraph 4(c)(ii) relating to noncommercial fair use does not, however, include a parallel provision for “demonstrable preparations to use” and requires actual use at the time of the UDRP proceeding to establish legitimate interests.