Clinton Decision (l0348567.doc

Clinton Decision (L0348567.DOC;1)

6/5/09 11:35 AM

NATIONAL ARBITRATION FORUM DECISION William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception Claim Number: FA0904001256123 PARTIES Complainant is William J. Clinton and The William J. Clinton Presidential Foundation (“Complainant”), represented by Michael Maoz, of Kramer Levin Naftalis & Frankel LLP, New York, USA. Respondent is Web of Deception (“Respondent”), represented by Joseph Culligan, of Post Office Box 52-1636, Florida, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com>, registered with The Name It Corporation d/b/a Nameservices.net. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. R. Glen Ayers served as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2009. On April 13, 2009, Tthe Name It Corporation d/b/a Nameservices.net confirmed by e-mail to the National Arbitration Forum that the <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> domain names are registered with the Name It Corporation d/b/a Nameservices.net and that the Respondent is the current registrant of the names. The Name It Corporation d/b/a Nameservices.net has verified that Respondent is bound by the The Name It Corporation d/b/a Nameservices.net registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On April 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 12, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to [email protected], [email protected] and [email protected] by e-mail. A timely Response was received and determined to be complete on May 11, 2009.

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An Additional Submission for Complainant was timely received on May 18, 2009. Respondent timely files its Additional Submission in Response on May 22, 2009. On May 18, 2009, pursuant to Complainant’s request to have the dispute decided by a singlemember Panel, the National Arbitration Forum appointed R. Glen Ayers served as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant, the former President of the United States, William J. Clinton, through counsel, asserts that the three referenced domain names, <williamclinton.com>, <williamjclinton.com>, and <presidentbillclinton.com> are identical to or confusingly similar to the Complainant’s name. The Complainant asserts that he has established a common law trademark in his name, William Clinton and its variations. The Complainant offers the following facts to establish the existence of a common law trademark. 

His election and service as the 42nd President of the United States

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His election and service as the Governor of the State of Arkansas for two separate terms

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His authorship of a series of best-selling books, including Putting People First (1992); Between Hope and History (1996); and My Life (2004)

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His recognitions of Time’s Magazine’s Man of the Year in 1992

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His selection as the 17th Most Admired Person of the 20th Century according to a Gallop poll

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The philanthropic foundations founded by him which bear his name (several of these entities hold registered as federal trademarks)

Complainant asserts that this common law trademark was well-established at least by 1992 and in use since that period. As Complainant points out, the Respondent has registered three domain names which are identical to the alleged common law trademark. Complainant, in its introductory materials, goes on to assert that Respondent is known to deliberately register domain names of politicians for various nefarious reasons. Complainant also argues that the Respondent has no rights or legitimate interest in the domain names and has not made any demonstrable preparation to use the domain names in the context of any “bona fide offering of goods or services.” Respondent asserts that Complainant does not own any trademark registrations reflecting the names and Respondent is not commonly known by the names. Respondent is also, Complainant asserts, not commonly known by the names. Complainant also takes the opportunity to rebut any alleged use by Respondent which is non-commercial or fair use. Complainant follows by alleging a number of factors which could show bad faith. The first evidence is the identity of the domain name to the alleged common law mark. Complainant also argues that http://domains.adrforum.com/domains/decisions/1256123.htm

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is the identity of the domain name to the alleged common law mark. Complainant also argues that bad faith is shown because the domains provide direct links to a website for the Republican National Committee. Finally, Complainant asserts that Respondent’s conduct in registering famous names, particularly the names of politicians such as President Obama and Senator John McCain shows “a pattern of registering famous names to prevent the rightful owners the ability to register their names as domain names.” B. Respondent In Response, Respondent goes to the trouble of admitting and denying each and every allegation contained in the Complaint. Respondent first asserts that there is no evidence that there is a common law mark. While Respondent is willing to admit that the Complainant is famous, Respondent denies the facts alleged to support the existence of a common law mark. As to rights in the name, Respondent makes little attempt to assert rights in the name and goes almost directly to the issues of bad faith. However, Respondent does assert that he has used “the site in connection with a bona fide offering of goods or services.” Respondent asserts that the link to the Republican National Committee website constitutes such an offering. In denying bad faith, Respondent sets forth at length his activities in registering the names of politicians and his use of the registration process in this arena. He specifically denies that any of the elements of bad faith set forth at UDRP 4(b) exist, for he has not registered the domain name for the purpose of selling it, or to prevent the owner of the mark from using the name in a corresponding domain name or in order to disrupt business, or in order to attract Internet users for commercial gain. Certainly, he says, there is no such evidence presented. Respondent throughout asserts that his registration and use of the domain names constitutes fair use and should be considered constitutionally protected speech under the First Amendment the United States Constitution. C. Additional Submissions Complainant’s Additional Submission The Complainant filed a timely Additional Submission. In its Additional Submission, Complainant focuses upon its argument that there is a common law mark citing a number of cases, but not adding any particular facts. As to rights in the name, Complainant focuses in its Response on the issue of fair use of the domain name in an attempt to show that, irrespective of the political context of this dispute, that Respondent still has shown no rights in the name. Finally, there is a long discussion of events that allegedly show Respondent’s bad faith. Those include articles about Respondent reprinted from newspapers. Finally, the Additional Submission concludes by arguing that when a web user attempting to reach a website related to the Complainant winds up on a website sponsored by the Republican National Committee, such a result is evidence of bad faith. In fact, Complainant suggests in its Additional Submission that an Internet user might be confused and think that former President Clinton had become a Republican. After all, says Complainant, Senator Arlen Spector recently left the Republican Party and became a Democrat. Respondent’s Additional Submission Respondents timely Additional Submission first focuses on the issue of common law marks, arguing that most of the famous person common law mark opinions are defaults. As to bad faith, Respondent notes that he has never acted in bad faith. When requested, for example, he surrendered http://domains.adrforum.com/domains/decisions/1256123.htm

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Respondent notes that he has never acted in bad faith. When requested, for example, he surrendered domain names to the United States Government. Respondent also states that he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names. He further notes that he has never sold a politician’s domain name. He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians. FINDINGS Reluctantly, the Panelist concludes that President Clinton has established a common law mark in his name. A mark is a secondary identifier of the source of goods and services. President Clinton’s best-selling books are probably enough to qualify his personal name as a common law mark. [This Panelist is partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum Sept. 11, 2000).] A finding that a common law mark exist means, because of the near identity of domain names and mark, that the marks are identical to or confusingly similar to the domain names. Therefore, the Panelist finds that this personal name is a common law mark and that the first element of the UDRP has been established. As to rights in the name, the Panelist finds that the facts are persuasive. Respondent has no rights in the name. The non-commercial preparation for use of redirecting traffic addressed to these domain names to the Republic National Committee site just is not enough. Respondent meets none of the other elements of rights in the name. In fact, Respondent is not even making fair use of the name by establishing an anti-President Clinton or parody or other use. This leaves bad faith. The Panelist simply cannot find bad faith in this case. None of the elements of bad faith are met. The Respondent’s conduct in registering, acquiring and utilizing these domain names is simply not within the UDRP definition of bad faith. The facts alleged by Complainant are simply unpersuasive. Evidence of bad faith (i) requires a showing that the names were registered or acquired for the purpose of selling or transferring the name to the mark holder; (ii) in order to prevent the mark holder from registering the domain; (iii) to disrupt a competitor’s business; or (iv) to attract Internet users by confusing them. The only one of these that could possibly apply is (ii), which requires a showing of a pattern of conduct. While Respondent’s conduct in registering the names of politicians does reflect a pattern, Respondent has adequately rebutted any inference of bad faith. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar http://domains.adrforum.com/domains/decisions/1256123.htm

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A trademark registration is uneccessary where Complainant can prove common law rights by establishing that its mark has acquired secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Additionally, Complainant asserts common law rights in the WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i) through its history of use. Complainant provides evidence that it has used the WILLIAM CLINTON mark in connection with service as the 42nd President of the United States from 1993 to 2001, the Governor of Arkansas from 1979 to 1981 and 1983 to 1992, a longstanding career in public service, and various philanthropic devotions. In addition, Complainant is one of the most famous and recognized people in the world evidenced by Time Magazine’s selection of Man of the Year in 1992 and various books written in his honor. Complainant has established common law rights that predate Respondent’s registration date of the disputed domain names by acquiring sufficient secondary meaning in the WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). See James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name). Respondent’s <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> domain names are identical or confusingly similar to Complainant’s WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). Respondent’s <williamclinton.com> domain name contains Complainant’s mark in its entirety, omits a space, and adds the generic top-level domain (“gTLD”) “.com.” The omission of a space and the addition of a gTLD fail to distinguish the <williamclinton.com> domain name from the WILLIAM CLINTON mark, and are therefore identical pursuant to Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Respondent’s <williamjclinton.com> domain name contains Complainant’s mark, adds a “j,” and adds the gTLD “.com.” Lastly, Respondent’s <presidentbillclinton.com> domain name contains an abbreviated form of Complainant’s WILLIAM CLINTON mark, adds the term “president,” and adds the gTLD “.com.” The addition of the term “president,” or the use of an abbreviated version of Complainant’s mark in a disputed domain name creates a confusing similarity between the disputed domain name and Complainant’s mark. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of a gTLD is irrelevant in distinguishing a disputed domain name from a http://domains.adrforum.com/domains/decisions/1256123.htm

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4(a)(i)). The addition of a gTLD is irrelevant in distinguishing a disputed domain name from a mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Respondent’s disputed domain names are confusingly similar to Complainant’s WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The burden shifted to Respondent to show he does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant has shown that Respondent is not commonly known by the disputed domain names. Complainant states that Respondent is known as “web of deception,” which is also how Respondent is identified in the WHOIS information. Complainant also claims that Respondent is not affiliated in any way with Complainant. Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name). Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s rebuttal fails. Respondent’s disputed domain names resolve to an official website related to the Republican Party, which is the party in direct opposition to the political party Complainant endorses. Such use of the disputed domain names does not equate to a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to , where services that compete with Complainant are advertised.”). Registration and Use in Bad Faith However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Compare S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) http://domains.adrforum.com/domains/decisions/1256123.htm

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4(b)(iii). Compare S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); and EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). Respondent is allegedly using the disputed domain names in order to intentionally attract Internet users to an opposing website by creating confusion among Internet users who are seeking Complainant’s WILLIAM CLINTON mark. Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with Complainant, giving the impression Complainant is affiliated with its political competitor. The Panelist declines to find that this is a violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use. Compare Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); and State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). Links to the Republican National Committee website are simply not within the scope of this Policy. Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Respondent has not registered or used the disputed domain names in bad faith; Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)). DECISION Having established all three elements required under the ICANN Policy, the Panelist concludes that relief shall be DENIED.

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R. Glen Ayers, Panelist Dated: June 1, 2009

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