The Complainant is James Murtagh M.D. of, Blacksburg, Virginia, United States of America ("US"), represented by SD Smith, Esquire, PLLC, US.
The Respondent is Clark Baker, Office of Medical and Scientific Justice of Los Angeles at the time of filing of the Complaint listed the address of the registrar's "Private Registration Service" as Drums, Pennsylvania, US, represented by Mark A. Weitz, US.
The disputed domain name <jamesmurtaghmd.com> is registered with Network Solutions, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 1, 2014. On May 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2014, 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 Complainant filed an amendment to the Complaint on May 2, 2014.
On May 9, 2014, in an exchange of emails between the Center and the Complainant's representative, the Complainant modified the Complaint by agreeing, with express reservation, to mutual jurisdiction in "the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint was submitted to the Center." See Rules, paragraph 1, definition of "Mutual Jurisdiction." The Complainant, as well as the Respondent, note that the Respondent's actual domicile is in Los Angeles, California, US; the Panel notes that the Parties are presently engaged in separate litigation in this forum, and as such need not opine further as to the issue of mutual jurisdiction.
The Center verified that the Complaint together with these amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On May 14, 2014, the Respondent filed with the Center a document entitled "Respondent's Motion to Abate or Dismiss" the Complaint. The Respondent also requested an extension of time to file his Response. On May 20, 2014, the Complainant in response to the Center's invitation to comment on the extension request added a document entitled "RESPONDENT'S MISREPRESENTATIONS AND INACCURACIES IN VIOLATION OF RULES FOR UNIFORM DISPUTE RESOLUTION POLICY, RULE 5(viii)." In this document the Complainant opposed the Respondent's Motion to Abate or Dismiss. The Center treated and the Panel will treat the Complainant's filing as a supplemental filing subject to paragraph 12 of the 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 May 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2014. The Response was filed with the Center on June 10, 2014.
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 23, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a physician licensed to practice medicine in several states of the United States. While not holding any registered service mark for his name, for years he has practiced his profession, written articles, and conducted research under his name followed by the designation M.D., which in the US denotes a licensed physician.
The Respondent Clark Baker is a private investigator principally for criminal defense lawyers. He owns or controls the Respondent Office of Medical and Scientific Justice (OMSJ),1 which operates a website at "www.omsj.org". The Respondent maintains a website at the disputed domain name that includes commentary that discusses or describes various professional activities of the Complainant, with related hyperlinks to documents cited in the text or to websites related to the commentary. There is a link to <omsj.org>, asking readers with certain information to "Contact OMSJ." The website at the disputed domain name includes a photograph of the Complainant. The Respondent has never been a patient of the Complainant, but questions the Complainant's stated methods and philosophy of treating certain medical conditions.
This is not the first legal proceeding between the parties. In November 2013 the Complainant filed suit against the Respondent Baker in a California state court. This case, which the Panel discusses further in Section 6-A below, apparently remains pending.
The record in this proceeding raises two procedural matters that the Panel must determine: whether to accept the Complainant's supplemental filing, and the Respondent's Motion to Abate or Dismiss.
The Complainant, when invited to respond to a request for extension of time, chose also to state his opposition to the Motion to Abate or Dismiss (paragraph 1; paragraph 2, first sentence) and to assert that the Respondent made certain false statements in the Response or Motion (balance of paragraph 2; paragraph 3). Under well-established UDRP precedent, the latter item is not appropriate without the Panel's invitation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2 ("The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of 'exceptional' circumstances.")
The Panel finds nothing exceptional about the latter portion of the Complainant's supplemental filing. Rather it is more in the nature of a reply statement that the Panel did not request and which the Panel considers unnecessary or an interpretation of the Policy and Rules that the Panel must make for himself. See The Teaching Company, LLC d/b/a The Great Courses v. Worldwide Media Inc., WIPO Case No. D2014-0457. Leave to submit that material is denied and the Panel will not take it into account in his decision on the Motion or the merits of this proceeding.
The Panel does allow and will consider the portion of the supplemental filing that constitutes the Complainant's opposition to the Motion. The Rules (paragraph 18) expressly authorize such an application, and the Complainant should be given an opportunity to contest it.2
The Panel believes it appropriate to address this issue prior to consideration of the merits, for if he grants the Motion any discussion of the merits is unnecessary. See DNA (Housemarks) Limited v. Tucows.com Co, WIPO Case No. D2009-0367 (the "Dunlop Case,"), cited with approval in E. Remy Martin & C° v. Whois Privacy Services Pty Ltd/ Emedia Development Ltd and Mr. Pepin, WIPO Case No. D2013-1984.
Paragraph 18(a) of the Rules sets only general standards for evaluation of such an application: "In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision." The Dunlop Case contains the most exhaustive examination of the reasons most often cited for granting or denying a Rule 18 application. In each case, however, the exercise of the panel's discretion turns on the particular facts of the proceeding and its panel's determination as to whether in light of the facts it is prudent to proceed to a decision or to leave the parties to the courts.
The Complainant instituted the California court case upon which the Respondent bases the Motion. In his court complaint the Complainant pleads as factual predicate for relief numerous past events involving the parties, principally statements, alleged to be false and sometimes said to have included privileged or confidential information improperly obtained by the Respondent, made by the Respondent to employers or prospective employers of the Complainant. The Complaint asserts three causes of action: intentional interference with contractual relations, inducing breach of contract, and a permanent injunction 'restraining Defendant [Respondent] from contacting Plaintiff [Complainant], Plaintiffs employers, colleagues or family." As relief the Complainant seeks compensatory and exemplary damages and the prohibitive injunction quoted in the preceding sentence.
During the California litigation the Complainant brought on a motion for preliminary injunction, which the court denied on the ground that the Respondent's Constitutional right of free speech3 precluded a pretrial injunction; the statements, said the court, were opinion and the Respondent "has not crossed the line over into threats."
After taking the Complainant to task for not disclosing the lawsuit in the Complaint, the Respondent pitches its Motion upon two grounds. First, he states that the relief the Complainant requests in court, particularly the third cause of action for injunction, is "inextricably tied up in the lawsuit;" granting the injunction "would clearly have encompassed any and all material published on the jamesmurtaghmd.com web-site." Second, paragraph 4(k) of the Policy authorizes any party to proceed in court if dissatisfied with a panel decision. The pendency of the California lawsuit means that the "losing party in this arbitration will not even have to file a lawsuit;" it will merely amend his pleading in the current litigation. Thus "To go through the time and expense of a proceeding that is before a court now and were it not, will be placed before a court in a currently pending matter is a blatant waste of time and money."
The Panel may quickly dispense with one of the Respondent's assertions. As required by paragraph 3(b)(xi) of the Rules, the Complaint does include a reference to the California lawsuit, which is described in part "Complainant's rights to the [disputed] domain name are not a subject of those proceedings." For several reasons the Panel agrees with the Complainant's characterization. First, the gravamen of the court complaint turns on the truth or falsity of the statements allegedly made by the Respondent and his right (or not) to make them. None of this is at issue here; all the Policy addresses is the Respondent's entitlement (or not) to the disputed domain name. Second, there is no claim in court regarding ownership of or entitlement to the disputed domain name. The website at the disputed domain name is but one of several venues for the Respondent's statements. A court decree awarding the injunction sought by the Complainant will not take the disputed domain name away from the Respondent, though of course it will preclude his stated reason for registering and using it. In this respect the court case and this proceeding are complementary, not overlapping. Third, "Complainant has carefully limited this case to transfer of the . . .disputed domain name[].. . .The Policy determination does not depend upon an issue disputed in litigation []. The record does not show that ownership of the disputed domain names is at issue in any other legal proceedings." Yellowstone Mountain Club LLC v. Offshore Limited D and PCI, WIPO Case No. D2013-0097; see also cases cited at footnotes 6 and 7 of that case. In such circumstances panels have usually denied applications under paragraph 18(a) or for denial of the complaint on the basis of interrelated issues in litigation.
The Respondent's other basis for abatement or dismissal presents more troublesome issues – that proceeding to decision is a needless waste of time and money, given either party's ability to go to court following a Panel decision. This was the primary basis for this Panel's decision in the Dunlop Case, though in that case the pending court case included (and was limited to) the same issues as presented in the UDRP proceeding. Given the gravity of the court charges and stridency of both parties' language a court challenge to this Panel's decision by either party appears a possibility far from remote. Should that occur any Panel decision will have no res judicata or collateral estoppel effect; it will be, as stated in the Dunlop Case, advisory only. In fact neither party needs to wait for a Panel decision, as either might amend his pleading in the lawsuit to include a claim or counterclaim for entitlement to the disputed domain name.
Nevertheless the reasons given in the second preceding paragraph argue for a Panel decision. This does not appear to be a case in which the Complainant seeks a second bite at the same cherry denied by a court. Compare Paul McMann v. J McEachern, WIPO Case No. D2007-1597, in which the complainant commenced a Policy proceeding only after three times failing to gain transfer or closure of the respondent's website. Here the Complainant seeks to enjoin the Respondent's statements, not the use of the disputed domain name. Unlike the Paul McMann case, the standard applied by the court on the Complainant's preliminary injunction motion differs significantly from the Policy standard for entitlement or good faith (Policy, paragraphs 4(a)(ii) and (iii). The burden of proof in a Policy proceeding is preponderance of the evidence. In contrast US courts, in deference to the First Amendment, place an extraordinary burden of proof upon an application for preliminary relief to enjoin speech – a 'prior restraint" in US parlance – as the California judge recognized. The Panel's decision in this case thus differs in legal issues presented and particularly as to standard of proof.
Subsequent court proceedings over ownership or use of the disputed domain name are not a foregone conclusion. Perhaps more importantly, a dissatisfied party's subsequent proceeding in court in part is a possibility in any UDRP proceeding, see Policy, paragraph 4(k). While a close call (considerably closer than the result on the merits of this proceeding), this Panel believes that proceeding to a decision is the proper course. The Respondent's Motion is denied.
On the merits the parties contend as follows:
The Complaint contends:
1. The Complainant has rights in his name and his name plus the common designation MD by reason of longtime use of both to identify the medical services he provides. The disputed domain name is confusingly similar to the first and identical to the latter.
2. The Respondent lacks a right or legitimate interest in the disputed domain name. The Complainant has never authorized the Respondent to use his name and the Respondent has never been known by it. The Respondent, a "vocal advocate for competing services," has no right to use the Complainant's name.
3. The Respondent registered and has used the disputed domain name for the express purpose of disparaging the Complainant. The Respondent's activities against the Complainant predate registration of the disputed domain name. In summary "Respondent further shows bad faith by directly using [the Complainant's] name to bait internet users looking for information about Complainant's services and then switching them to articles disparaging [the Complainant's] services and finally planting 100s [sic] of hyperlinks to the competing OMSJ website asking for money."
The Respondent contends that the Complainant has failed to demonstrate any of the necessary Policy elements.
1. The Complainant has never registered his name as a trademark or service mark, or even as a business name and so lacks any enforceable rights in it. The Complainant has been aware of the Respondent's use of the disputed domain name for more than two years and has never taken any action. The Respondent's website "could not be clearer" that it is unaffiliated with the Complainant. "It is entirely non-economic" as the Respondent is a private investigator and not a provider of medical services and not the Complainant's competitor. "In summary, the name is not in anyway confusing because, although it is Complainant's name, it is not being confused with anything the Complainant has or does."
2. The Respondent uses the disputed domain name solely as an informational site about the Complainant, as a critic and "protect[or] of the public from medical and scientific fraud." As such this is an exercise of his Constitutional right of free speech and fair use under US trademark law. "There is no economic message of any kind and Respondent is in no way trying to use Complainant's likeness as a source of generating income."
3. The Respondent has not acted in bad faith. His site is non-commercial, he has never offered the disputed domain name for sale, he is not a competitor of the Complainant, he has not engaged in any pattern of depriving mark owners of the opportunity to incorporate marks into domain names; there is no likelihood of confusion.
At the outset the Panel emphasizes that none of the following is at issue in this limited administrative proceeding: the truth or falsity of any statement made by the Respondent on the website at the disputed domain name; the legal consequences (defamation or disparagement) of any of the Respondent's commentary; either party's views on any medical or investigative matter; the effect (if any) of the Respondent's statement on the Complainant's business; or the Respondent's unquestioned right freely to criticize the Complainant or otherwise to exercise his freedom of speech, on the Internet or elsewhere. The Policy deals only with the Respondent's entitlement, or not, to the disputed domain name. As stated in Yellowstone Mountain Club, supra, "the Policy gives the Panel no power in terms of outcome beyond an order of transfer (or cancellation), or not, of the disputed domain names. Nothing in the Policy authorizes restriction in any manner of the content of any website, even one maintained by a respondent at a disputed domain name." For the avoidance of doubt the Panel states expressly that he disclaims any opinion on any of the matters listed in the first sentence of this paragraph or anything else at issue in the pending litigation between the parties.
To meet the "standing requirement" of paragraph 4(a)(i) of the Policy the Complainant must show that a "straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name" (i) demonstrates identity or confusing similarity to (ii) a mark in which the Complainant has rights. WIPO Overview 2.0, paragraph 1.2. As the comparison clearly discloses similarity or identity, the issue is whether the Complainant has rights in his name. Under longstanding Policy precedent the Panel finds that he does.
Common law rights suffice for Policy purposes, id, paragraph 1.1, and the mark at issue need not be a registered trademark.4 All that is necessary is continued use of the name as an identifier of goods and services, something the Complainant has demonstrated and the Respondent does not and cannot deny.5 The Complainant has established this Policy element.
Whether the Respondent's content at the disputed domain name is truly criticism and not at least in part commercial is a serious issue. While there are not "hundreds" of links, as the Complainant pleads, the site does include a link to the Respondent's professional (and unquestionably commercial) site, and the linked page offers a "confidential consultation." The topic options at the linked page do not relate to the Complainant but to subjects about which the Respondent offers his investigative services.
The Policy's criticism site precedent applies only to those that "practice genuine, noncommercial criticism." WIPO Overview 2.0, paragraph 2.4. While incidental registrar-generated commercial content might be excused, here the commercial link, though not a large or even necessary part of the site, was inserted by the registrant and its use may benefit the Respondent financially.
The Panel need not decide whether the link takes the Respondent outside a safe harbor. This concurs with WIPO Overview 2.0, paragraph 2.4, View 1:
"The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner."
Here the disputed domain name incorporates the Complainant's commercial identifier verbatim, without any derogatory or other distinguishing word. Confusion is not limited to the disputed domain name; the Respondent's website opens with "WELCOME to the unofficial page of James J. Murtagh, MD" and prominently displays a photograph of the Complainant. Official or unofficial, this is in no way the site "of" the Complainant. Confusion is likely and undeniably was intended, strictly to increase readership of the criticism. This is deception and does not make out a right or legitimate interest in the disputed domain name.
At the risk of repeating himself, the Panel stresses that – as in any criticism case under the Policy – the Respondent's free speech rights are in no way chilled or abridged. The only thing restricted is "use by Respondent of Complainant's soapbox[] for [his] criticism. . . That is exactly what the Policy was intended to do and all that the Policy can do." Yellowstone Mountain Club, Joseph Dello Russo MD v Michelle Guillaumin, WIPO Case No. D2006-1627.
Though not within the non-exclusive examples of evidence of bad faith set out in paragraph 4(b) of the Policy, the Respondent's intentionally misleading the public by holding himself out via the disputed domain name as the Complainant constitutes bad faith in registration and use of the disputed domain name, for the reasons given in Yellowstone Mountain Club and especially in Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., WIPO Case No. D2009-0062.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <jamesmurtaghmd.com> be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Date: June 26, 2014
1 For simplicity's sake the Panel refers to the two Respondents collectively as "the Respondent."
2 In his supplemental filing the Complainant also requests leave to address the Motion further. For the reasons stated in Section 5-B(iv) of the text, the Panel believes the Motion turns primarily upon the content of the complaint in the lawsuit, as to which he believes himself fully informed.
3 This refers to the First Amendment to the Constitution of the United States of America, which provides: "Congress shall make no law . . . abridging the freedom of speech. . ."
4 In certain circumstances, notably when as here the respondent undeniably was aware of the complainant and its goods or service identifier, the mark may be one incapable of registration. See, e.g. Paul McMann v. J Mceachern, supra (paulmcmann.com>); Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409 (<memorydealer.com>); James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391 (<pornreports.com>); Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber's Mackinac Island Florist, WIPO Case No. D2001-0653 (<mackinacislandflorist.com>).
5 As noted in the Paul McMann case, supra, no critic can deny knowledge of his target or its commercial identifier, having chosen the domain name at issue for its similarity.