Business Magazine

UDRP Panel Finds Reverse Domain Name Hijacking on Fair Criticism Site & Its Not a .Sucks

Posted on the 15 April 2015 by Worldwide @thedomains

Loney John Hutchins (“Complainant”), of Tennessee, has just been found guilty of Reverse Domain Name Hijacking (RDNH) on his matching domain name LoneyHutchins.com

The panel of Fernando Triana, Esq, found that the domain was being used as a fair criticism site of conduct of the person’s name in the .com address

So the domain holder was able to express his first amendment rights to free speech without having to use a .sucks address

Imagine that

Here are the highlights

Complainant is the owner of the trademark LONEY HUTCHINS registered at the United States Patent and Trademark Office (USPTO) on January 27, 2015.

FINDINGS

Complainant has owned the trademark LONEY HUTCHINS in State of Tennessee of the United States of America since May 1, 2014, to identify goods within international class 9.

Complainant has owned the trademark LONEY HUTCHINS in the United States Patent and Trademark Office (USPTO) since January 27, 2015 under the registration number 4,677,881 in International Class 9.

After a review of Complaint’s evidence regarding his alleged common law rights, the Panel only found the current screenshot of the ebay and iTunes, and an undated picture of what seems like a disc cover. Consequently, there is neither evidence of secondary meaning nor evidence of use. Thus, Complainant has not proven common law rights regarding the trademark LONEY HUTCHINS, since 1974.

Moreover, Respondent uses the disputed domain name to share his experience at the institution 21ST CENTURY LIVING SERVICES managed by a man who goes by the name of Loney Hutchins, that is not the same person as Complainant.

Complainant failed to prove its assertions regarding lack of rights or legitimate interests and the consequent bad faith

However, the Panel considers that the reproduction of Complainant’s trademark LONEY HUTCHINS by the disputed domain name is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[8] and the disputed domain name does not add any other distinctive element.

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus the requirement set forth in Paragraph 4(a)(i) of the Policy has been duly satisfied[9].

Rights or Legitimate Interests

Respondent acquired the disputed domain name before Complainant registered his trademark and has used it since 2012 in connection with an experience of Respondent related to an institution managed by a Loney Hutchins.

Thus, Respondent has used the disputed domain name before any notice of the dispute.

Concerning Paragraph 4(c)(iii) of the Policy: Respondent is making a legitimate non-commercial 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 fact, Respondent is exercising his freedom of speech, using the disputed domain name for non commercial purposes, only to document one episode of his life in a rehabilitation facility.

The Panel reviewed the content of the website to which the disputed domain name resolves to and found that Respondent is criticizing Loney Hutchins and his business activities related to a rehabilitation facility, which is not related to the trademark LONEY HUTCHINS, registered to identify audio recordings of international class 9; therefore, Respondent is exercising his right to free speech and gives him further justification to register and use the disputed domain name at issue.

Respondent has a grievance against Complainant and has chosen to publicize this grievance via a web site. Protest and commentary is the quintessential non-commercial fair use envisioned by the Policy.

Protest and commentary are also considered typical fair use under U.S. law relating to domain names.

When commenting on the “Anticybersquatting Consumer Protection Act”, the House Judiciary Committee specifically referred to comment and criticism as lawful non-commercial fair use of a mark. Thus Respondent has raised a plausible claim that he has a legitimate interest in the domain name “mclanenortheast.com” and Complainant has not met its burden of proving an absence of such a legitimate interest. Complainant’s bare allegation of tarnishment does not overcome Respondent’s claim of a legitimate interest”.

Similarly, in this case Respondent is using the disputed domain name to express his point of view by disapproving Loney Hutchins and his business activities related to a rehabilitation facility and to let the public know a specific episode of his life in such rehabilitation facility. Consequently, the Panel finds that Respondent has shown that he is using the disputed domain name in connection with a legitimate non-commercial and fair use of the domain name, consistent of criticizing Loney Hutchins and his business activities related to a rehabilitation facility in use of its constitutional right to free of speech.

Moreover, a previous Panel has found legitimate interests in a similar case. In Bridgestone Firestone, Inc. v. Myers[12], the Panel stated:

“The question presented in this case is whether fair use and free speech are defenses to a claim for transfer of a domain name under the Policy. Under Paragraph 4 (c)(iii) of the Policy, non-commercial fair use is expressly made a defense. Although free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, the list is not exclusive, and the Panel concludes that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii). The internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law”.

As stated above, the Panel finds that the use of the Complainant’s trademark as an exercise of free speech is lawful and the criticism of third party’s products or services is free under the United States Constitution. The trademark rights held by Complainant cannot prevail over the constitutional right of the people to freely express their opinion. Furthermore, Respondent’s criticisms through the website to which the disputed domain name resolves to, are not even related with Complainant’s trademark LONEY HUTCHINS, which is registered under goods related to audio music recordings.

Moreover, Respondent’s criticisms do not even refer to Complainant or Complainant’s trademark, but to someone else named Loney Hutchins.

Thus, in view of the above arguments taken together, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy has not been satisfied.

Registration and Use in Bad Faith

Complainant asserts that Respondent registered the disputed domain name in bad faith as Respondent is selling illegal advertisements with the trademark LONEY HUTCHINS, is profiting commercially from the fame associated with Complainant’s trademark and had actual and constructive notice of Complainant’s trademark when registered the disputed domain name.

However, none of those claims were supported by evidence of any kind either in the Complaint or the Additional Submission.

On the contrary, all what was proven was that Respondent’s website to which the disputed domain name resolves to, contains his view of an experience he had in a rehabilitation facility and his website does not sell illegal advertisement and it is not for profit.

Furthermore, as Complainant was not able to prove his alleged common law rights, there is no evidence that the disputed domain name was registered in bad faith.

Moreover, Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name, since the domain name registration was prior to the trademark registration; or (ii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s trademark, since the disputed domain name registration was prior to the trademark registration[13].

Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.

Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case.

Reverse Domain Name Hijacking

Finally, as per Paragraph 15(e) of the Rules, the Panel is entitled as follows:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

In the present case, the disputed domain name was registered in 2012, for Respondent to express his feelings of an experience he had in a rehabilitation facility managed by someone named Loney Hutchins different from Complainant.

Complainant registered its trademark in 2014 before the State of Tennessee, not even under a Federal trademark registration which was obtained only in 2015, but the domain name dates back to 2012, which means that at least when registering his domain name Complainant should have known that the disputed domain name was not available and neglected to proceed against it, until 2015, which is 3 years after Complainant should have known of the existence of a conflict.

Furthermore, Complainant is not clear regarding his identity, since Respondent stated that there are at least two persons holding the name Loney Hutchins to which Complainant does not make any references. The first one, manager of the institution 21ST CENTURY LIVING SERVICES and the second one, Complainant himself, owner of the trademark LONEY HUTCHINS.

Moreover, Complainant tried to confuse the Panel regarding Respondent’s bad faith, as the Complaint asserted that Respondent offered selling illegal advertisements and obtained commercial profit and portraying pornography, when from the Response it is obvious that Respondent is not selling anything, is not obtaining commercial profit from his domain name and no pornography was found whatsoever.

Finally, Complainant’s delay in bringing this action is the final factor supporting a finding of its bad faith. The fact that Complainant filed this proceeding nearly 3 years after Complainant should have known of the existence of the disputed domain name suggests that Complainant knew it had a very weak claim and nevertheless filed its UDRP Complaint in bad faith.

The Panel accordingly finds that Complainant’s actions constitute an abuse of the UDRP process.


You Might Also Like :

Back to Featured Articles on Logo Paperblog

These articles might interest you :

Magazines