WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Susan Scheff v. Psyborgue

Case No. D2008-1177

1. The Parties

The Complainant is Susan Scheff, Weston, Florida, United States of America, represented by Broad and Cassel, United States of America.

The Respondent is Psyborgue, Paris, France, represented by Michael John Crawford, France.

2. The Domain Name and Registrar

The disputed Domain Name <sueschefftruth.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2008. On August 1, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2008. The Response was filed with the Center on August 27, 2008.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 8, 2008. 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 Susan Scheff is an individual residing in Florida, United States of America (“United States”). According to the Complaint and the Complainant’s website at “www.suescheff.com”, the Complainant is a “parent advocate” who “assists parents of troubled teens research and identify programs and schools that can assist their troubled teens in getting back on track to a healthy, productive lifestyle.” The Complainant’s website includes testimonials from grateful parents but does not expressly offer consulting or other business services.

The Complainant states that she is the founder of an organization named Parents’ Universal Resource Experts (“P.U.R.E.”). According to the online registry maintained by the Florida Department of State, Parents’ Universal Resource Experts, Inc. is a Florida profit corporation, not a nonprofit organization. P.U.R.E. maintains a website at “www.helpyourteens.com”. The P.U.R.E. website, which is linked from the Complainant’s website, offers parents help in researching and selecting schools and residential programs for children with substance abuse and other problems. According to the website, P.U.R.E. does not charge parents a fee for this consulting service. Rather, “P.U.R.E.™ is funded by several schools and programs as well as private funding.”

The Complainant is also the author of a book titled “Wit’s End”. The book is advertised on the Complainant’s website, with a link to a publisher’s website at which the book can be purchased online. According to the publisher’s website, the book was published in April 2008.

The Complainant holds a registered service mark for a short form of her name, SUE SCHEFF. United States Registration No. 3448492, registered June 17, 2008, associates this mark with “[i]nformation about parenting topics, namely, drug and alcohol awareness”.

The registration shows first use in commerce on January 1, 2001.

The Complainant also holds a registered service mark identical to the domain name of her website,”WWW.SUESCHEFF.COM” with the same description of services and the same claimed date of first use in commerce. This mark was also registered on June 17, 2008, United States Registration No. 3448494.

The Complainant asserts that she has used the two SUE SCHEFF marks since 2001 in connection with “offering consulting services, the Complainant’s books, and other forms of counsel.”

The Domain Name, <sueshefftruth.com>, was registered on August 7, 2007 in the name of the Respondent, “Psyborgue”. The registrant’s address was given as an apartment on Rue Rennequin in “Slippery Rock, PA”, but with a postal code in France, not Pennsylvania. Michael Crawford was shown as the administrative and technical contact, at the same address. There is no evidence in the record indicating that “Psyborgue” is a natural or legal person.

Michael Crawford submitted the Response in this proceeding, naming himself as the Respondent and giving an address on Rue Rennequin in Paris, France. According to the Declaration of Michael Crawford annexed to the Response, Mr. Crawford is a citizen of the United States of America, a resident of the state of Virginia who has been in the information technology industry for ten years. Mr. Crawford is currently “on vacation in France.”

Mr. Crawford states in his Declaration that he registered the Domain Name primarily to “provide information to the public regarding Sue Scheff, her company PURE, and the quality of services offered under that name free of charge to parents.” The website associated with the Domain Name posts Mr. Crawford’s blog comments, media articles, court documents, and postings by readers concerning the Complainant. Typical postings question the Complainant’s objectivity, assert that she or her daughter have financial ties to some of the institutions and programs that the Complainant recommends to parents, and allege that some of these programs have been implicated in charges of child abuse or neglect. A disclaimer at the head of the website advises, “This site is not endorsed by or affiliated with Sue Scheff™”.

According to the Complaint, the Respondent’s website links to an Amazon Associates Store selling products unrelated to the website, and the website also provides a “donation” shopping cart. Neither currently appears on the website, and no printouts were furnished with the Complaint. However, both features appear on an archived version of the website dated October 24, 2007, as displayed through the Internet Archive Wayback Machine (“www.archive.org”). The Response does not deny that the website formerly linked to Amazon and solicited donations, both for the express purpose of supporting the website itself, as stated on the archived web page. The Response avers that no products were ever sold through the website and no donations were ever received.

Email correspondence between Mr. Crawford and legal counsel for the Complainant indicate that Mr. Crawford posted the disclaimer on the Respondent’s website and removed the Amazon link and the donation shopping cart in direct response to the Complaint in this proceeding. There is no indication of any earlier communications between the parties.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to the registered SUE SCHEFF marks and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant argues that the Respondent’s use of the Domain Name for a criticism website is not legitimate, noncommercial, or fair use because the Domain Name misleads Internet users as to source or affiliation, the Respondent’s website was used to tarnish the Complainant’s marks, and the website was also used to advertise products and solicit donations.

The Complainant contends, therefore, that the Domain Name was registered and used in bad faith, to mislead Internet users for commercial gain and to divert them from the Complainant’s website through “initial interest confusion”, to the Complainant’s commercial disadvantage.

B. Respondent

The Respondent questions the validity of the Complainant’s recently registered marks and the likelihood of confusion with the Domain Name <sueschefftruth.com>, which suggests a website offering “the truth” about the Complainant rather than a website maintained by the Complainant herself. The Respondent asserts that the registered marks, one of which is identical to the Complainant’s domain name “www.suescheff.com”, included a false claim of first use in commerce in 2001, since the Complainant did not register her domain name until September 13, 2006.

The Respondent contends that he has made fair use of the Complainant’s name for nominative purposes in association with a criticism website. He denies prior knowledge that the Complainant was asserting trademark rights in her own name or using her name to brand goods or services.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed 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

It is undisputed that the Complainant holds the registered service marks SUE SCHEFF and “WWW.SUESCHEFF.COM”. Whether these registrations were obtained based on false statements concerning first use is beyond the scope of this proceeding.

The Domain Name incorporates the SUE SCHEFF mark in its entirety, and this is also the distinctive element of the mark “WWW.SUESCHEFF.COM.” The addition of the generic (in this context) word “truth”, which is not pejorative on its face, does not eliminate confusing similarity with marks based on a distinctive personal name, particularly where the Complainant repeatedly promises to give parents “the truth” about treatment programs for troubled youth.

The Panel finds, therefore, that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c)(iii) recognizes the following right or legitimate interest claimed by the Respondent:

“you are 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.”

The Respondent’s website is clearly concerned with the question of whether the Complainant is giving parents good advice as to where to commit their troubled children. On the face of it, this appears to be a legitimate noncommercial or fair use of the Domain Name. The Complainant characterizes the remarks on the Respondent’s website as “disparaging”, but the Panel is not required (or equipped) in this UDRP proceeding to determine the truth or falsehood of the criticisms that appear on the website.

More germane to paragraph 4(c)(iii) is the Complainant’s argument that the Respondent’s real intent is to misleadingly divert consumers for commercial gain or to tarnish the Complainant’s marks, either of which would at least potentially disqualify or discredit the Respondent’s claimed right or legitimate interest in the Domain Name.

In the Panel’s view, a link to a commercial Amazon website and a solicitation of donations, as formerly found on the Respondent’s website, are themselves insufficient in this instance to establish the Respondent’s intent to misleadingly divert consumers for commercial gain. The website is overwhelmingly devoted to criticism of the Complainant’s interests, methods, and advice, not to commercial offers or solicitations of funds. The UDRP panel in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 reached a similar conclusion in similar circumstances:

“The Complainant contends that by offering for sale t-shirts and other ‘merchandise’ and by acquiring financial donations the Respondent is making commercial gain. On the evidence, these are activities that are merely ancillary to the Respondent’s main purpose which is to criticize the Complainants’ activities, and the Complainants have not provided any evidence that the Panel could consider as actually or potentially diverting the Complainants’ business to the Respondent.”

As for the Complainant’s assertion that the Respondent intended to tarnish the Complainant’s marks, the Panel agrees with the conclusions of the panel in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505:

“Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001); cf. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (January 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000) (protection for genuine criticism sites is provided by Policy’s legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues.”

Since the Respondent’s intent is also the subject of the bad-faith element of the Complaint, and depends on largely the same evidence, the Panel will make its ultimate findings on this issue below.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

An examination of the Respondent’s website reveals that it is decidedly polemical rather than commercial in nature. The earlier Amazon link and “shopping cart” for donations were both buried at the end of the series of blog posts. They were not prominent, and they were not even visible on the first screen. The Panel on balance finds the Respondent’s explanation credible, that these were weak attempts to help fund the website itself and not a significant purpose of the website. Unlike the website discussed in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, the principal case on which the Complainant relies, the Respondent here did not prominently feature product offers or provide links to the Complainant’s commercial competitors. The Respondent’s criticism website is filled with copious editorial, media, and judicial content critical of the Complainant, not with ancillary advertising. The Panel is not persuaded in these circumstances that the Respondent registered and used the Domain Name to divert Internet users for his commercial gain. The tail does not wag the dog.

The list of bad-faith behavior in paragraph 4(b) is not exclusive, however, and some of the UDRP decisions concerning noncommercial criticism websites have discerned bad faith when it appeared that the respondent’s purpose was to mislead Internet users as to source, tarnish the complainant’s reputation, or cause commercial harm by diverting Internet users from the complainant’s website. See, e.g., Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136:

“Respondent has the right to express its views in any forum of its choice, subject of course to libel and similar causes of action. Nevertheless, the right to express one’s views is not the same as the right to identify itself by another’s name when expressing those views. Thus, while Respondent may express its views about the quality, or lack thereof, of the U.S. legal profession, in general, or any firm offering legal services, in particular, Respondent does not have the right to identify itself as that particular firm. And, there is nothing in the domain name to indicate that the site is devoted to criticism, even though that fact is apparent when visiting the site. By using Complainant’s service mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users.”

The domain name at issue in that case was identical to the complainant’s service mark (except for the substitution of the word “and” for an ampersand). Here, the addition of the word “truth” in the Domain Name at least reduces the likelihood of confusion as to source and does not interfere with the Complainant’s ability to use her own name for a domain name in the “.com” top-level domain, as, indeed she does. See Covance, Inc., supra.

As in Covance, t he Respondent in this proceeding makes nominative fair use of the Complainant’s name, with a modifier that at least casts doubt on affiliation. The website content itself, even without the addition of the disclaimer, is plainly critical and not associated with the Complainant. The Respondent denies any intent to mislead Internet users as to source or affiliation, and the Panel does not find evidence of such intent.

To the extent that the Complaint may be read as suggesting that the Respondent registered and used the Domain Name in bad faith because his purpose was to defame the Complainant, such a claim is essentially outside the scope of the Policy. See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190.

Moreover, the Policy is concerned with protecting trademarks, not personal names - unless the latter are used as trademarks to label goods or services in commerce. See, e.g., David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514 (a business executive in the publishing industry did not demonstrate that his personal name was used as a mark); The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184 (“ The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services” ). While the Respondent was obviously aware of the Complainant and established a website specifically to criticize her, it is not at all clear that the Complainant’s personal name served as a trademark at the time the Respondent registered the Domain Name in August 2007. The Complainant asserts that she has used the two SUE SCHEFF marks since 2001 in connection with “offering consulting services, the Complainant’s books, and other forms of counsel.” No examples are provided with the Complaint showing that the marks have been used in association with consulting or counseling services, and none appears from a perusal of the Complainant’s website. There is no mention in the Complaint or on the Complainant’s website of any books other than the 2008 “Wit’s End”, and the registered marks are classified for services, not books or other tangible goods. Both the Complaint and the Complainant’s website indicate that the Complainant has been featured on television and radio programs broadcast by BBC, Fox, NPR, and other networks, as well as in articles in print media such as Newsweek magazine. It is likely that these broadcasts and articles mention the short form of the Complainant’s name, “Sue Scheff”, but no evidence was furnished with the Complaint indicating that the name was used in these broadcasts or articles, or in any advertising, in a trade or service mark sense to label a consulting business or other goods or services.

To prevail on the third element of the Complaint, the Complainant must establish the likelihood that the Domain Name was selected in contemplation of the Complainant’s mark. See, e.g., The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483:

“For the Complainants to succeed on this part of the Complaint, they must persuade the Panel that, in registering the remaining Domain Names, the Respondent was targeting the Complainants and their marks, or at least had the Complainants or their marks in mind and intended to derive commercial or other benefits, not from the attractiveness of the remaining Domain Names as close approximations of common descriptive expressions, but from their value as close approximations of the Complainants’ trade marks.” (emphasis in original)

The record in this proceeding fails to establish that the Complainant’s personal name was a common-law trademark in August 2007 and that the Respondent was, more likely than not, aware of this fact. Without such evidence, the Panel could not, in these circumstances, determine that the Respondent registered the Domain Name in contemplation of a mark held by the Complainant.

The Panel concludes that the third element of the Complaint, as well as the second, has not been established.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Date: September 22, 2008