Free Speech/Criticism as Legitimate Interest
The 3-member Forum Panel in <veatchcarlson. com> denied the complaint and found that the Respondent has a legitimate interest in using the disputed domain name for criticizing the Complainant. The issue of free speech/criticism remains one of the grey areas in UDRP jurisprudence. Continue reading the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.41), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Free Speech/Criticism as Legitimate Interest (veatchcarlson .com *with commentary)
‣ UDRP Not Suited to Adjudicate Trademark Infringement Claims (f5networksolutions .com *with commentary)
‣ Unanimous Panel Rejects Complainant’s Withdrawal Request and Proceeds to Find RDNH (upterra .com *with commentary)
‣ Competing Car Dealership Manager Registered Domain Name ”for God” (luthergenesis .com *with commentary)
‣ Complainant Fails to Establish Common Law Rights in his Personal Name (stevenpapermaster .com *with commentary)
Free Speech/Criticism as Legitimate Interest
Veatch Carlson, LLP v. Foster Taft, NAF Claim Number: FA2409002114255
<veatchcarlson .com>
Panelist: Mr. David E. Sorkin, Mr. Darryl C. Wilson, Esq, and Ms. Debrett G. Lyons (Chair)
Brief Facts: The Complainant is a California-based Law Firm providing legal services since the 1950s. It asserts trademark rights in VEATCH CARLSON. The disputed Domain Name was registered on November 5, 2023, and has been used to particularize a motor vehicle accident and procedural aspects of the litigation for personal injury. The Complainant represented a party in a personal injury lawsuit brought by the Respondent. The Complainant alleges that the Respondent has no rights or legitimate interest in the domain name because the Respondent has no association with the Complainant other than as the losing party in lawsuits where the Complainant either represented the Respondent’s opposition or was the defendant in the Respondent’s court proceedings. The Complainant further alleges that the use of the disputed Domain Name is injurious to its reputation and ability to attract new clients, as the Respondent uses the disputed Domain Name to spitefully post false and misleading information about the Complainant.
The Respondent contends that the disputed Domain Name was registered “to talk about the complainant’s behavior, as loudly as legally possible” and that he has the legitimate and protected right to offer criticism and commentary about the Complainant and that he simply reports true facts without “name calling… nor even any judgmental statements.” Further, the Respondent contends that he did not misrepresent himself in any way in registering the domain name; does not misrepresent himself as the Complainant, nor any law firm or provider of legal services, nor does he refer or direct people to any legal services. The Domain Name is not used to solicit money for any purpose, commercial or gratuitous, nor does it direct people to any site that does. Finally, the Respondent has never offered the disputed Domain Name for sale, nor offered anything for sale by means of the Domain Name.
Held: Interpretation of this “fair use” provision has been divided, partly because UDRP panelists, drawn internationally, have brought their own legal perspectives to the question. The Respondent was involved in a motor accident collision. As stated, the Complainant represented the individual who is said to have driven into the Respondent’s vehicle. In the following lawsuit brought by the Respondent for personal injury, the Complainant subpoenaed the Respondent’s medical records. The Respondent (successfully it seems) resisted that subpoena, but the Complainant allegedly subpoenaed and obtained those records through another avenue without notice to the Respondent. The Response states that “[t]his behavior is what the essence of what domain site is about. (sic).” The Panel finds that the criticism of the Complainant on the webpage is non-commercial and is not a pretext for cybersquatting, tarnishment, or some purpose inhering to the Respondent’s benefit (WIPO Overview #2.6.1). Moreover, the Panel finds on balance that the Respondent reasonably believes its use to be truthful and well-founded (#2.5.2).
The matter might have been more clear-cut had the Respondent registered <veatchcarlsonsucks .com> in the sense that Internet users would intuitively understand that any website was not operated by, or associated with the Complainant but on the facts the Panel finds that the Respondent’s behavior brings it within paragraph 4(c)(iii) of the Policy. In making that finding the Panel has taken into account (a) Respondent’s uncontested claim that Complainant once owned and used the disputed Domain Name but since 2001 has used the domain name <veatchfirm .com>, as its public facing internet presence; and (b) that in spite of Respondent’s admission that he “has engaged in the domain name market”, there is nothing to suggest that he has in the past acquired or used a domain name in bad faith. The Panel finds that the Complainant has not made a prima facie case that the Respondent lacks rights or a legitimate interest in the Domain Name.
Complaint Denied
Complainant’s Counsel: Kenneth W. Baisch of Veatch Carlson, LLP, California, USA
Respondent’s Counsel: Self-represented
Case Comment by Panelist, Igor Motsnyi: Igor is an IP consultant and partner at Motsnyi IP (dba Motsnyi Legal) in Belgrade, Serbia, “Linkedin”. His practice is focused on international trademarks and domain names, including ccTLDs disputes and the UDRP. Igor has over 22 years of experience in international TM and IP matters. Igor is a UDRP panelist at the Czech Arbitration Court (CAC) and the ADNDRC and is a URS examiner at MFSD, Milan, Italy.
The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
The 3-member Forum Panel in <veatchcarlson. com> denied the complaint and found that the Respondent has a legitimate interest in using the disputed domain name for criticizing the Complainant.
The issue of free speech/criticism remains one of the grey areas in UDRP jurisprudence.
While WIPO Overview 3.0 abolished a split between “View 1” and “View 2” in favor of the “impersonation” approach (essentially “View 1”), panels’ views on free speech as legitimate interest are still somewhat divided.
As noted by Gerald Levine in “The Clash of Trademarks and Domain Names on the Internet”:
“View 1 may have won the day but it is essentially a Pyrrhic Victory…” (“The Clash of Trademarks and Domain Names on the Internet”, Volume 1, Gerald M. Levine 2024, “Legal Corner Press”, page 111).
WIPO Overview 3.0 suggests that a legitimate right to criticism “does not necessarily extend to registering or using a domain name identical to a trademark” (see sec. 2.6.2) and some Panels support transfer of domain names used for genuine criticism/free speech when such domain names are identical or nearly identical to complainant’s mark.
At the same time, par. 4 c. (iii) of the Policy provides for “a legitimate noncommercial use” defense and it does not contain a limitation that it does not apply to domain names identical to trademarks.
I gave a talk on free speech and the UDRP at the CAC 2024 Panelists meeting in Prague on October 03, 2024.
I suggested that the issue has not been fully settled and that a blank impersonation test that focuses only on the domain name composition without looking at the other factors may not necessarily be the correct approach to free speech/criticism UDRP cases. After all, one should remember that the Policy is limited to “to cases of deliberate, bad faith abusive registrations” and “domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations” should not be considered abusive (see “Final Report of the WIPO Internet Domain Name Process”, 1999, par. 166 and 172).
One of the key questions is, of course, the issue of legitimacy, i.e. what is legitimate and what is not.
Some panels tend to focus on the domain name composition only where a key difference is between <mark.tld> (illegitimate even when genuinely used for free speech purpose) vs. <marksucks.tld> (legitimate).
In <veatchcarlson.com> a 3-member panel decided in favor of the Respondent despite the disputed domain name being identical to the claimed common law trademark.
This decision appears to be only the second 3-member panel decision in the year 2024 on genuine free speech/criticism (the first one was a WIPO decision in <familypolicyfoundation.org> where the complaint was denied for lack of trademark rights and where the Panel did not directly deal with the second element).
What is notable, in my opinion, in the <veatchcarlson.com> decision is Panel’s acknowledgement of the division on “free speech” cases and that WIPO Overview 3.0 represents just “one position”.
Even WIPO Overview 3.0 provisions on free speech and impersonation can be subject to different interpretations not necessarily indicating that only one view is correct and that even the impersonation test can be more nuanced taking into account various factors and not just domain name composition (see also “Scrum Alliance, LLC v. Contact Privacy Inc. Customer 1247644697 / Matthew Barcomb”, WIPO Case No. D2021-2932, Panel’s analysis of the impersonation test and “a more nuanced assessment” of all factors).
Why did not the Respondent in <veatchcarlson.com> choose a different domain name, e.g. by adding “sucks” or any other qualifier? The Respondent himself was clear: “the domain is identical to name of the Complainant because it is about the Complainant” and that he registered the disputed domain name “to talk about the complainant’s behavior, as loudly as legally possible”.
The Panel in <veatchcarlson.com> focused on the actual use of the disputed domain name and noted that “use” means “the use, not just the domain name”. This observation is, in my view, important in better understanding the issue.
Indeed, the 4.c(iii) defense of the Policy speaks about “a legitimate noncommercial or fair use of the domain name” rather than just selection of a domain name (registration).
When assessing whether use is legitimate one has to look beyond a mere domain name composition. WIPO Overview 3.0 also recognizes that “beyond looking at the domain name and the nature of any additional terms appended to it (whether descriptive, laudatory, derogatory, etc.), panels assess the overall facts and circumstances of the case…” (see sec. 2.5.2).
Here, the Panel found that “the criticism of Complainant is non-commercial and is not a pretext for cybersquatting, tarnishment, or some purpose inhering to Respondent’s benefit” and that “Respondent reasonably believes its use to be truthful and well-founded”.
While the Panel noted that “the matter might have been more clear-cut had Respondent registered <veatchcarlsonsucks.com>, the Panel found that “Respondent’s behavior brings it within paragraph 4(c)(iii) of the Policy”.
Sometimes respondents may have an honest intention to criticize complainants and their marks, yet they do not know that they are supposed to add “sucks” or any other qualifier to be able to rely on 4.c.(iii) of the UDRP.
Not all respondents may be familiar with WIPO Overview or UDRP jurisprudence. Legitimacy of the use arguably cannot only depend on one factor ignoring other factors, including actual use of a domain name.
It is also worth noting that that the <veatchcarlson.com> was a dispute between US parties decided by the Panel consisting of mainly US panelists.
Had the same dispute been decided by only non-US panelists and /or between non-US parties, perhaps the outcome could have been different.
However, this leaves us wondering which the correct approach should be to criticism/free speech cases when a domain name is used by respondent for genuine non-pretextual criticism.
“UDRP Perspectives on Recent Jurisprudence” (“Perspectives”) deal with free speech and criticism issue in sec. 2.10.
Perspectives in sec. 2.10. recognize that a split between panels exists, but it suggests that “Taking into account the totality of factors is appropriate when evaluating whether a Respondent has a right or legitimate interest based upon free speech. The key is whether the use is a ruse rather than a legitimate exercise of free speech”.
The “all circumstances” approach could be the correct one irrespective of the parties and Panel nationalities, taking into account both the actual Policy language and its limited scope reflected, inter alia, in its legislative history.
As always, I would like to know what our readers think about this topic, and I will be happy to receive your feedback.
UDRP Not Suited to Adjudicate Trademark Infringement Claims
F5, Inc., f/k/a F5 Networks, Inc. v. Kevin Morse, WIPO Case No. D2024-3297
<f5networksolutions .com>
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The Complainant owns United States trademarks for F5 (registered on February 6, 2001, and December 1, 2009) and F5 NETWORKS (registered on October 31, 2000). The Complainant’s trademark registrations describe goods and services relating to computer hardware and software useful for building or managing computer networks, and so on. Apart from identifying these registrations, the Complainant does not describe its business in the Complaint, except indirectly when it alleges that the Respondent offers the same services as the Complainant. The Respondent registered the disputed Domain Name on April 19, 2017, wherein he promotes its IT management services. The Complainant alleges that the Respondent’s goods and services are identical to its goods and services and that this use has caused and is likely to continue causing confusion or the mistaken belief that the Respondent is associated with the Complainant.
The Respondent contends that “I am a small business doing business in a 100 sq mile radius”, presumably from Yucaipa, California, and that “nothing I have is similar to Complainant. A web search doesn’t even bring up my company at all and all likely combinations result in the Complainants web address. so there is NO generated traffic as a result”. The Respondent further contends that the disputed Domain Name is neither identical nor confusingly similar to the Complainant’s trademarks because the disputed Domain Name, unlike the Marks, capitalizes “F5” and includes the singular form of “Network” rather than the plural “networks”. The Respondent also denies any intention to trade Complainant’s mark and asserts he included F5 in his business name and the disputed Domain Name as a “play off the F5 key on a keyboard”, a function key on a standard keyboard that causes the computer to refresh or reload the current webpage.
Held: The Complainant offers no information about itself other than to reference its trademark registrations. There are no allegations or evidence about the current scope or quantity of the Complainant’s services and nothing about the extent of the Complainant’s reputation in 2017 when the Respondent registered the disputed Domain Name. The Panel considered the issue of constructive knowledge regarding the Complainant’s trademark rights, despite the Complainant not raising it. “Application of this concept [constructive knowledge] may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark.” WIPO Overview 3.0, section 3.2.2. The Complainant did not present any evidence to support claims of constructive knowledge. The lack of evidence from the Complainant makes it impossible to determine their reputation in 2017. The Complainant’s counsel should have anticipated the need for substantiating evidence, and thus, there is no proof that the Respondent was aware of the Complainant’s rights when registering the disputed Domain Name in 2017.
On the contrary, the Respondent says that he included “F5” in the disputed Domain Name as a play on the “F5” function key on the keyboard, which function key operates to refresh or reload the current web page. The Panel finds that this explanation is plausible. Because there is no record evidence quantifying the Complainant’s reputation in 2017, the Panel has no basis to reject the Respondent’s explanation or to find that the balance of probabilities favors the Complainant. The Complainant also alleges that the “Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s F5 Marks”, but this is merely a boilerplate recitation of Policy paragraph 4(b)(iv). The Panel finds the third element of the Policy has not been established. Additionally, the Complainant’s arguments are essentially allegations of a trademark case, and the Policy is not suited to adjudicate such claims, if any.
Complaint Denied
Complainant’s Counsel: Azora Law, United States.
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Complainant’s sometimes miss the forest for the trees, focusing on the indicia of bad faith under the Policy while failing to provide the most basic of background information about themselves. This was apparently the case here, with the Panelist noting that “apart from identifying [its trademark registrations] (with copies attached as an annex), Complainant does not describe its business in the Complaint, except indirectly when it alleges that Respondent offers the same services as Complainant.” This is an important reminder to Complainants that it is their job to provide background information about their company and their trademark.
The Complainant’s evidentiary failure in this case became even more apparent when it came to proving its reputation. As noted by the Panelist:
The Complaint does not allege that Respondent was aware of Complainant’s rights when he registered the Disputed Domain Name in 2017. Nor does Complainant allege any facts or offer any evidence to support a finding by inference that Respondent was aware of Complainant or its rights when he registered the Disputed Domain Name in 2017. Surprisingly, Complainant offers no information about Complainant other than to reference its trademark registrations. There are no allegations or evidence about the current scope or quantity of Complainant’s services, and nothing about extent of Complainant’s reputation in 2017 when Respondent registered the Disputed Domain Name. Complainant does not even identify its own domain name or website.
The absence of evidence of reputation was a crucial failure because the Respondent’s awareness of the Complainant was the key issue in this dispute. Although the Respondent’s Domain Name use was clearly infringing the Complainant’s trademark, that is insufficient alone under the Policy. The Policy requires evidence supporting a finding that the Complainant was the target of the registration. As the Panel noted, “if there is evidence that Complainant was so well known in 2017 that Respondent was probably aware of Complainant’s trademark rights, it was incumbent upon Complainant to make the required allegations and offer the historical evidence to support them.” Here, the Panel found that “there is no evidence to support an inference that Respondent was aware of Complainant’s rights and targeting Complainant when he registered the Disputed Domain Name in 2017” and accordingly the case was properly dismissed.
Crucially, the Complainant appears to have misapprehended the requirements of the UDRP in a manner which we sometimes unfortunately continue to see. As noted by the Panel:
“Complainant’s case can be summarized with the following excerpt from the Complaint:
Complainant asserts Respondent’s use of the F5 Marks is currently likely to cause consumer confusion in the marketplace and will continue to do so in the future. Respondent offers identical goods and services as well as goods and services related to and within the natural zone of expansion of the services provided by Complainant under a confusingly similar mark.”
These are essentially allegations of a trademark case, and the Policy is not suited to adjudicate such claims, if any.”
Exactly. The UDRP is not a trademark infringement court. Absent bad faith registration, cases of infringement are left to the courts, as the Panelist did here.
Unanimous Panel Rejects Complainant’s Withdrawal Request and Proceeds to Find RDNH
UpTerra Corporation v. Maria Cypher, JustTheWord .com, WIPO Case No. D2024-3177
<upterra .com>
Panelist: Mr. John C. McElwaine (Presiding), Ms. Kimberley Chen Nobles and Mr. David E. Sorkin
Brief Facts: The Complainant was incorporated in the State of Delaware on January 1, 2022, and applied for a United States trademark for UPTERRA on October 20, 2020, on an intent-to-use basis. The Complainant’s US trademark for UPTERRA was registered on January 16, 2024, and claims the first use of the UPTERRA mark on March 21, 2023. The Respondent is the founder and owner of JustTheWord .com / Catchword, a United States-based naming agency that has been in business since 1998. The Respondent registered the Domain Name on January 24, 2013. Prior to filing the Complaint, the Complainant or its representatives made several attempts to purchase the Domain Name from the Respondent.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name and that it was registered and used in bad faith and that the Respondent offered to sell the Domain Name for USD 18,500, which was more than its out-of-pocket costs. The Respondent contends that the disputed Domain Name was registered by the Respondent in 2013, over 10 years before the Complaint was filed. The Respondent further alleges that it is a well-known naming agency that has legitimately owned and used the Domain Name since 2013 and that the Complainant’s trademark rights only arose in 2024, long after the Domain Name’s registration.
Complainant’s request for withdrawal of Complaint: The Complainant submitted a request to withdraw its Complaint after realizing the Respondent had owned the domain since 2013, claiming it had filed in good faith due to a perceived ownership change. The Respondent objected to the withdrawal request, arguing that the Complainant should not escape a finding of Reverse Domain Name Hijacking (RDNH) at this stage, as it had prior knowledge of the Respondent’s rights and ignored a warning letter. The Complainant maintained it acted in good faith and lacked clear evidence until reviewing the Response, while also stating its counsel was ill when the warning letter arrived. The Respondent countered that the Complainant’s explanations were not credible and demonstrated bad faith, including ignoring the Respondent’s warning letter, proceeding with a meritless Complaint, and attempting to use the UDRP after failing to purchase the domain name in the marketplace.
Held: On its face, paragraph 4(b)(i) of the Policy requires more than the allegation that the Respondent is attempting to sell the domain name in excess of its out-of-pocket costs directly related to the domain name. The disputed Domain Name must have been registered to sell it to “the complainant who is the owner of the trademark or service mark or to a competitor of that complainant.” Such facts were never alleged to have existed. The Domain Name was registered by the Respondent on January 24, 2013, more than nine years before the Complainant was incorporated and more than eleven years before the Complainant’s trademark was registered.
The facts of this case are similar to those in Charter Communications, Inc., Charter Communications Holding Company, LLC and Charter Communications Operating LLC v. Perfect Privacy, LLC / Sheri K Corwin, WIPO Case No. D2017-0040. In that case, the panel found that the Respondent’s registration of the MySpectrumNews .com domain name predated the complainant’s trademark rights, and therefore, there could be no finding of bad faith registration. Therefore, the Panel finds that the Respondent did not register the Domain Name in bad faith targeting the Complainant or its trademark rights because the Complainant had no trademark rights at the time that the Respondent registered the Domain Name.
RDNH: The Complainant’s ex post facto claim in its Reply that it had a “credible belief” that a change in registration occurred is not only unsupported by the evidence but was known at the time the original Complaint was filed. The evidence demonstrates that the Complainant was aware of the Respondent’s ownership and use of the Domain Name well before filing the Complaint. This is evidenced by multiple attempts to purchase the domain in May 2021, July 2023 and lastly, on February 28, 2024, when the Complainant’s counsel contacted the Respondent expressing interest in acquiring the Domain Name. The Complainant “knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.” See also Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905 (finding Reverse Domain Name Hijacking where “Complainant is represented by Counsel who even on a rudimentary examination of the Policy and its application in this area should have appreciated that the Complaint could not succeed where the Respondent’s domain name had been registered three years prior to filing a trademark application or actual use of the mark.”).
The evidence also strongly suggests that the Complainant attempted to use the UDRP process for leverage after failing to acquire the domain name through negotiation. This is an improper use of the UDRP process, as noted in previous cases such as Charter Communications, Inc., Charter Communications Holding Company, LLC and Charter Communications Operating LLC v. Perfect Privacy, LLC / Sheri K Corwin, WIPO Case No. D2017-0040 (“This stratagem has been described in many UDRP cases as ‘a highly improper purpose’ and it has often contributed to findings of RDNH”). In conclusion, the Complainant’s actions demonstrate the Complainant knew or should have known that it could not prove the essential elements required by the UDRP, particularly given the significant time gap between the domain registration and the Complainant’s trademark rights. This conduct falls squarely within the circumstances described in WIPO Overview 3.0, section 4.16, justifying a finding of Reverse Domain Name Hijacking.
Complaint Denied (RDNH)
Complainant’s Counsel: Fish IP Law LLP, United States.
Respondent’s Counsel: Muscovitch Law P.C., Canada
[Note: The Respondent was represented by Zak Muscovitch, in his capacity as a private practice lawyer and not as ICA General Counsel.]
Case Comment by Digest Editor, Ankur Raheja:
The Panel apparently took great care in reviewing the evidence and arriving at its determination that the Complainant’s actions demonstrate the Complainant knew or should have known that it could not prove the essential elements required by the UDRP.
Notably, the Complainant had attempted to withdraw its Complaint after the Response was filed. The Response was filed after sending a warning letter to the Complainant explaining why the Complaint was meritless and requesting withdrawal.
As noted in UDRP Perspectives at 0.4, withdrawing a Complaint after a Response is filed is not always permitted. Complainants sometimes want to withdraw their Complaint after receiving a Response that disproves a Complainant’s allegations of cybersquatting and requests a finding that the Complaint was brought in bad faith, i.e. Reverse Domain Name Hijacking, as was apparently done in this case. Respondents in such circumstances may want to see a Complaint proceed to a final determination on the merits and particularly on the request for a finding of RDNH, as the Panel ultimately permitted in this case.
Permitting a Complainant to simply withdraw a Complaint in such circumstances puts the Respondent to considerable effort and expense and can encourage Complainants to try their luck with an abusive Complaint, knowing that if they are called out for it by a defending Respondent, that they can simply withdraw and even try again later with no repercussions.
Where a Complainant requests termination and the Respondent objects after filing its Response, that will generally be a sufficient reason for the Panel to proceed to a decision. In the same way as a Complainant is prima facie entitled to ask for a full decision so that its position is publicly vindicated, so is a Respondent. This is particularly so where the respondent has actively sought a finding of Reverse Domain Name Hijacking. Rule 10(b) of the Rules, namely that the Panel shall treat the parties with equality and ensure that each is given a fair opportunity to present its case, supports this approach.
The case law is clear that where a Response has been filed, a Respondent may have a valid objection to a unilateral Complainant request to terminate the proceedings, particularly where; a) the Complainant has not asked for termination with prejudice; b) where the Respondent desires an adjudication on the merits; and/or c) where the Respondent has requested a finding of RDNH (See for example, Hale Law, P.A v. Roger Hale, WIPO D2023-0084, <gotohale.com>, Denied, RDNH (terminating the proceedings at this stage would result in Complainant avoiding consideration of the merits in general and the issue of RDNH in particular, leaving Respondent in a disadvantaged position).
Competing Car Dealership Manager Registered Domain Name ”for God”
The Luther Holding Company v. RYAN BROWN, NAF Claim Number: FA2408002112710
<luthergenesis .com>
Panelist: Mr. Eduardo Magalhães Machado
Brief Facts: The Complainant is the owner of two trademark registrations, with the USPTO, for the LUTHER word and composite marks, with the first use in 2001, to identify “Dealerships in the field of automobiles” and “Automobile repair and maintenance”. The disputed Domain Name was registered on May 4th, 2016, and currently redirects to a GoDaddy “for sale” page. In addition, a search of the disputed Domain Name with the registrar GoDaddy would result in a page offering the domain for US $75,000.00. This Panel performed independent research, in which it confirmed that, at the end of 2015, Hyundai announced that GENESIS would become an independent luxury brand. The Complainant claims that, since 2016, it has advertised a range of GENESIS cars for sale on its website and at its “Genesis of Minneapolis” authorized dealership location in Bloomington, MN, being the only party authorized to use both the LUTHER and GENESIS marks together in connection with auto sales.
The Complainant alleges that the disputed Domain Name fully reproduces its LUTHER mark, and the addition of the term GENESIS to the Complainant’s LUTHER mark in the disputed Domain Name would likely confuse consumers, as the Complainant sells GENESIS automobiles and advertises these vehicles through the Complainant’s domain at <lutherauto .com>. The Complainant further alleges that the Respondent would have constructive knowledge of the existence of the Complainant’s federal trademarks, and it would be attempting to divert and mislead consumers, in addition to profiting on the reputation of the Complainant’s brand. Such bad faith would be compounded by the offer to sell the disputed domain via a GoDaddy brokerage site for an unreasonably high price. The Respondent claims that the disputed Domain Name was not purchased with the intent of confusing consumers or acting illegitimately.
The Respondent contends that it was intended for the use of God… to spread the word of the book of Genesis in the eyes of Martin Luther, offering theological insights and interpretations. In addition, it states that it no longer has an interest in the domain and waives any rights to it. The Complainant filed an additional submission, affirming that, despite having registered the domain name in 2016, the Respondent never put the domain name into use to spread the word of God. In addition, it claims that the Respondent would be a “New Vehicle Sales Manager” at the Complainant’s competitor business as a Hyundai dealer, having worked there since at least as early as March 2016. Thus, at the time of registering the Domain Name, the Respondent would have had full knowledge of the Complainant’s LUTHER dealerships, as well as of the Hyundai GENESIS brand.
Held: The Respondent failed to show any use of or demonstrable preparations to use the disputed Domain Name in connection with any bona fide offering of goods or services. Although the Respondent claims that it has been using the Domain Name to “spread the word of the book of Genesis in the eyes of Martin Luther”, the Respondent is not making a legitimate non-commercial or fair use of the Domain Name, nor has it proven that it ever has, given that the disputed Domain Name redirects to a GoDaddy “for sale” page. The Panel finds that the Respondent has no rights or legitimate interests in the domain name.
The Complainant presented very compelling evidence that the Respondent is in fact a “New Car Sales Manager” at a company that also deals with Hyundai vehicles in Minnesota, the same place where the Complainant owns a dealership to sell GENESIS brand cars. In addition, the fact that the disputed Domain Name was registered almost a month after the agreement between the Complainant and Hyundai for the sale of GENESIS brand cars raises very strong suspicions that the Respondent registered the Domain Name intending to damage the Complainant’s business in some way, either to divert its clientele or to prevent it from registering the Domain Name.
Further, the Complainant affirms that it has never granted anyone else any permission or authorization to register any domain name containing its LUTHER trademark. In addition, the Respondent, as a car sales manager, likely had prior knowledge of the Complainant and its business, which supports a passive holding bad faith use. Therefore, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent’s bad faith registration and use of the Domain Name has been proven.
Transfer
Complainant’s Counsel: Hannah Lutz of Taft Stettinius & Hollister LLP, Minnesota, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
Complainant Fails to Establish Common Law Rights in his Personal Name
Steven G Papermaster alias Steve Papermaster v. Mark Smith, Mark Smith, WIPO Case No. D2024-3059
<stevenpapermaster .com>
Panelist: Mr. Jeremy Speres
Brief Facts: The Complainant, of Austin, Texas, describes himself as a recognized expert and leader in technology entrepreneurship, public policy, and energy efficiency. He has acted in various positions within the United States government, including as a member of the President’s Council of Advisors on Science and Technology. The Complainant’s prior engagements include being the co-founder of the Ernst & Young World Entrepreneur of the Year program, a speaker at various TedX talks, an author at <inc .com>, and more. The Complainant claims common law rights over his alias STEVE PAPERMASTER, which corresponds closely to his personal name STEVEN G PAPERMASTER, and which the Complainant claims has garnered reputation. The Complainant owned the Domain Name <stevepapermaster .com> from 2014 and operated his primary website from that domain name. The disputed Domain Name was registered on February 19, 2022, and resolves to a website featuring photographs of the Complainant, and containing various accusations about the Complainant, including that he is a “conman” and a “fraudster”.
The Complainant alleges that the Complainant contends that he enjoys common law rights in his alias STEVE PAPERMASTER, and the disputed Domain Name was registered and has been used in bad faith for the purpose of defamation, copyright infringement, privacy violations, harassment, cybercrime, and extortion. On the other hand, the Respondent refers to two written receivership orders of the courts of Texas, United States, and contends that the Complainant’s non-exempt assets including his trademark rights have been placed into receivership, and as such, the Complainant has no standing to bring these proceedings. The Respondent further contends that the Respondent has purchased, from the Complainant’s Court Appointed Receiver, the domain name and all trademark rights in that particular domain name. As such, the Respondent claims that the Complainant does not own the trademark rights he claims to own, and the Respondent calls on the Complainant to transfer the Complainant’s domain name to the Respondent.
Held: The Complainant’s evidence is largely limited to his roles as a business executive in various companies and his positions within various government agencies. Very little if any evidence is presented showing that the Complainant has used his alias as a distinctive identifier of his goods or services, i.e., as a source identifier, as required to establish unregistered or common law rights, in terms of WIPO Overview 3.0, sections 1.3 and 1.5. The only evidence presented by the Complainant of the use of his alias in a manner potentially meeting this requirement is his presentation of two TedX talks in 2018 and 2019, his claimed authorship at “Inc.com”, and his use of the domain name <stevepapermaster .com>.
The TedX talks on YouTube garnered about 1,200 to 2,100 views after six and five years, respectively. This view count alone seems inadequate to prove unregistered trademark rights. It’s unclear if using the Complainant’s alias in these talks constitutes use in commerce as a source identifier, especially since there’s no evidence of payment for these talks, suggesting “TedX” was the primary identifier rather than “Steve Papermaster.” Regarding the Complainant’s authorship at “Inc.com,” the provided link no longer cites them as an author. However, archives show one article from 2001, which is likely attributed to “Inc.com” as the source. Given its limited availability and age, its relevance is minimal. The Respondent’s evidence indicates they purchased the Domain Name and any associated trademark rights from the Court Appointed Receiver, which the Complainant did not dispute.
For purposes of the Policy, the Complainant would then appear to no longer have any rights in this Domain Name and – especially in light of the factors set out above concerning the claimed use of his name as a mark – cannot rely upon it in order to establish common law rights. The Panel therefore does not accept that the Complainant has proven, on balance of probabilities, that he owns common law rights in his alias. The Panel finds the first element of the Policy has not been established. The Panel notes the Respondent’s assertion that the placement into receivership of the Complainant’s rights in the disputed Domain Name negates his standing to bring these proceedings. There is no need for the Panel to decide this point given the findings raised above, and this Decision should not be read as expressing any view on that question.
Complaint Denied
Complainant’s Counsel: De Penning & De Penning, India
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: As noted in UDRP Perspectives at 1.9 and also in the WIPO Overview at 1.5, as referenced by the Panel, the case law has developed very specific requirements for asserting common law trademark rights over personal names. As noted by the WIPO Overview at 1.5.2, “the UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks”. Notably, the Policy was created with personality rights being conscientious omitted absent corresponding trademark rights (see Paragraph 135(ii) of the Final Report of the WIPO Internet Domain Name Process; and also see “Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy” at 4.1(c)). As noted in UDRP Perspectives at 1.9:
Personal names as such are not protected by the Policy. This is an inherent limitation of the UDRP reflected in the WIPO Final Report 1999 (par. 167) and confirmed later by the “ Report of the Second WIPO Internet Domain Name Process ” 2001 (see in particular section 5 and par. 201): “The most cogent of the arguments against modification of the UDRP is, we believe, the lack of an international norm protecting personal names and the consequent diversity of legal approaches deployed to protect personal names at the national level”.
In this case, the Panel dutifully held the Complainant to the requirements of the Policy and after carefully considering the evidence, found it failed to rise to the level of establishing common law trademark rights. The Panel stated in particular, that it “accepts that the Complainant enjoys a reputation, however, quoting the Overview at 1.5.2, noted that [m]erely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.” As noted in UDRP Perspectives at 1.9, the standard of establishing common law trademark rights for personal names should be the same as for other marks, namely specific and strong evidence of acquired secondary meaning rather than mere allegations.
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.