Complainant is Fred T. Elsberry, Jr. of College Park, Georgia, United States, and is represented by Troutman Sanders, LLP, of Atlanta, Georgia, United States.
Respondent is Mechanic’s Responds News Publication of Marietta, Georgia, United States, and is represented by The GigaLaw Firm, of Atlanta, Georgia, United States.
The disputed domain name is <fredelsberry.com> (the “Domain Name”), which is registered with GoDaddy.com, LLC (the “Registrar”).
Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2012. The Center acknowledged receipt of the Complaint on June 26, 2012. The same day, the Center emailed the Registrar a request for registrar verification in connection with the Domain Name.
On June 27, 2012, the Registrar emailed the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details. On that day, 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.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and this proceeding commenced on June 27, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Respondent’s responsive submission was July 17, 2012. Respondent filed the Response with the Center on July 10, 2012. The Center acknowledged receipt of the Response on July 11, 2012.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 17, 2012. This Panel finds that it was properly constituted. This Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Complainant filed an Additional Submission on July 24, 2012. The Center acknowledged receipt of the Additional Submission that same day. Also that day, Respondent emailed a request that this Panel disregard Complainant’s Additional Submission or grant leave for Respondent to file its own responsive submission.
Complainant is the President and CEO of the Better Business Bureau Serving Metro Atlanta, Athens & Northeast Georgia (the “Atlanta BBB”). Since 1978, he has provided educational services, including classes and radio segments on various consumer protection topics. Complainant operates a website at “www.fredelsberry.org,” which includes information about himself and links to various Better Business Bureau (the “BBB”) websites. Complainant registered FRED ELSBERRY as a service mark with the Georgia Secretary of State on May 21, 2012.
Respondent is a limited liability company which appears to have been founded for the purpose of criticizing Complainant, the Atlanta BBB, and the BBB. Respondent operates its primary website at “www.mechanicsresponds.com,” which provides links to web pages containing commentary and news-related information alleging misconduct by the website’s targets.1 Respondent is affiliated with Mechanic’s Heating & Air Conditioning (“MHAC”),2 an Atlanta-area company that appears to have an ongoing dispute with Complainant over the grading policies of the Atlanta BBB and the BBB.
The Domain Name was registered on March 12, 2009. At some point after that date, Respondent started using the Domain Name to resolve to a website highly critical of Complainant. The purpose of the website is to publicize allegations that Complainant discriminates between BBB-members and non-members when assigning letter grades. The website at the Domain Name contains the following content:
- Two “Mechanic’s Responds” logos identical to those used on Respondent’s primary website.
- An urgent call for Respondent to take action to protect the public from sexual offenders, suggesting that Respondent is not taking such action.
- Accusations that Complainant discriminates against non-members, and that good grades can be purchased.
- A statement that Respondent is willing to assist others in dealing with the BBB.
- Several photographs purporting to be of Complainant.
- Links to Complainant’s public divorce records.
- Complainant’s home address and the names of his family members.
- A parody photograph depicting Complainant as a tortoise mating with another tortoise representing non-members.
- Links to MHAC’s website with testimonials of satisfied customers. At the linked MHAC website, customers can find MHAC’s business telephone number.
- A bold disclaimer stating that “THE INFORMATION CONTAINED IN THIS WEBSITE INVOLVES ISSUES OF PUBLIC INTEREST AND / OR CONCERN. WE UNDERSTAND THAT MEDIA OUTLETS AND PUBLIC OFFICIALS MAY EXPLORE THIS WEBSITE AND REQUEST ALL ADMINISTRATIVE, LOCAL, STATE, AND FEDERAL GOVERNMENT BODIES TO INVESTIGATE THE MATTERS CONTAINED HEREIN. The information contained herein is for informational purposes only, and expresses the opinions of the authors. We encourage all interested parties to verify the information contained herein on their own. The information contained herein was derived from public information sources, private sources, from our records, or from Reports or Complaints filed with us.”
Complainant alleges that the Domain Name is confusingly similar to its FRED ELSBERRY mark, because it merely adds an insignificant top-level domain, conveys a false impression of sponsorship by Complainant, and can be mistakenly typed by Internet users looking for Complainant’s website. Complainant asserts that it has rights to the FRED ELSBERRY mark because Complainant has for many years offered educational services under his own name, has invested “substantial time, money, and other resources” to promote his services, recently registered the FRED ELSBERRY mark with the Georgia Secretary of State, and operates a website incorporating the mark. Overall, Complainant argues that the mark is distinctive, has acquired secondary meaning, and identifies Complainant’s services.
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Complainant notes that it never authorized Respondent to use the FRED ELSBERRY mark, and that Respondent registered the Domain Name over thirty years after Complainant began offering services under his name. Complainant argues that any value Respondent derives from the Domain Name is due solely to the value in Complainant’s FRED ELSBERRY mark. Complainant argues that Respondent has made no bona fide offering of goods or services, is not commonly known by the Domain Name or the FRED ELSBERRY mark, and makes no noncommercial or fair use of the Domain Name.
Finally, Complainant alleges that Respondent registered and is using the Domain Name in bad faith. Complainant argues that Respondent does not offer any goods or services associated with the Domain Name or the FRED ELSBERRY mark, but rather uses the Domain Name to divert customers for commercial gain by creating a likelihood of confusion. Complainant argues that Respondent profits from advertisements on the website at the Domain Name, which amounts to misappropriation of Complainant’s hard-earned goodwill. Furthermore, Complainant notes that Respondent registered and is using the Domain Name with full knowledge of Complainant and his mark, and argues that Respondent’s actions constitute federal trademark infringement under the Lanham Act.
For all the foregoing reasons, Complainant requests this Panel transfer the Domain Name to Complainant.
Respondent defends by arguing that Complainant has not established that he has service mark rights in the FRED ELSBERRY mark. Specifically, Respondent asserts that the state registration is not significant because it was not examined for secondary meaning. Furthermore, Respondent argues that Complainant’s assertions of secondary meaning in the FRED ELSBERRY mark are not sufficient because they are conclusory and unsupported by any evidence. Finally, Respondent argues that personal fame is not enough to establish sufficient secondary meaning in a name.
Respondent also defends by arguing that Complainant failed to disprove Respondent’s rights in the Domain Name. Respondent asserts that it is making legitimate noncommercial or fair use of the Domain Name without intent to divert customers for commercial gain, that it uses the Domain Name to present news, and that it does not derive revenue from advertisements on the website.
Finally, Respondent also defends by arguing that Complainant failed to prove that Respondent registered and is using the Domain Name in bad faith. Respondent notes that Complainant made no allegation that Respondent attempted to sell the Domain Name, that Respondent registered the Domain Name to block Complainant, that Respondent and Complainant are competitors, or that the website is for commercial gain. Respondent notes that Complainant registered the mark only after Respondent registered the Domain Name. Finally, Respondent asserts that allegations of trademark infringement are irrelevant under the Policy.
For all the foregoing reasons, Respondent requests that this Panel deny Complainant’s request to transfer the Domain Name. Respondent also requests that this Panel exercise its authority under paragraph 15(e) of the Rules to declare that Complainant filed the Complaint in bad faith in an attempt at Reverse Domain Name Hijacking. In support of this argument, Respondent refers this Panel to its arguments above. In addition, Respondent argues that Complainant is represented by a large, international law firm, and therefore, Complainant knew or should have known the following facts:
“[1] the Disputed Domain Name was created prior to Complainant’s State of Georgia trademark registration, which itself is irrelevant for purposes of the Policy; [2] that it made no attempt to support any allegations of common law trademark rights; [3] that it misled the panel by falsely stating that Respondent receives payment for advertisements on its website when, as shown in Complainant’s own exhibit, Respondent’s website contains no advertising; [4] that Respondent’s website contains news and opinion protected by the Policy and the law; and [5] that Respondent quite obviously has not acted in bad faith because Complainant has not even attempted to provide evidence of bad faith under any four of the subparagraphs of paragraph 4(b) of the Policy.”
Resp. at 10.
Paragraph 4(a) of the Policy states that Complainant is entitled to transfer of the Domain Name if he can prove that (1) the Domain Name is identical or confusingly similar to a mark in which he has rights, (2) Respondent has no rights or legitimate interests in the Domain Name, and (3) Respondent registered and is using the Domain Name in bad faith. Complainant has the burden to prove each of these elements by a preponderance of the evidence. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.7;3 Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
Before turning to the merits, this Panel will address whether to consider Complainant’s Additional Submission and whether to allow Respondent to file its own supplemental submission. The Policy and the Rules do not afford any Party a right to submit supplemental submissions, but this Panel can consider such submissions at its discretion under paragraph 10(d) of the Rules. Furthermore, paragraph 10(b) imposes on this Panel the responsibility to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”
Although Complainant’s Additional Submission is untimely4 and largely duplicative of the Complaint,5 and despite the fact that Complainant already had a full opportunity to present its case in the Complaint,6 this Panel will consider the Additional Submission to minimize any risk of the Decision turning on a procedural technicality. However, for the reasons discussed below, this Panel’s Decision renders moot Respondent’s request for leave to file its own responsive submission.
Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Name is identical or confusingly similar to a mark in which Complainant has rights. The Domain Name contains two elements: Complainant’s name “Fred Elsberry,” and the suffix “.com.” Since the suffix and the space between the words are not relevant,7 the Domain Name is identical to the FRED ELSBERRY mark. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Boardwalk Bank v. Patrick Thorogood, WIPO Case No. D2000-0213; Ann Coulter v. Mark Vadnais, NAF Claim No. 137221. Therefore, the only issue is whether Complainant has service mark rights in his own name.
Registration of a mark by a complainant is typically presumptive evidence that the complainant has trademark or service mark rights in the mark. See WIPO Overview 2.0, paragraph 1.6; Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431. However, since the Georgia Secretary of State does not examine mark registrations for distinctiveness, Complainant’s registration does not give rise to this customary presumption. See Trademarks and Service Marks: Frequently Asked Questions, Georgia Secretary of State, http://sos.georgia.gov/corporations/tmfaq.htm (last visited July 23, 2012); Ga. Code Ann. § 10-1-441; WIPO Overview 2.0, paragraph 1.6; Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445. Absent an examined registration, the Policy recognizes service mark rights in a personal name if Complainant can prove that the personal name has acquired secondary meaning by being used in commerce as an indicator of source to a degree sufficient to have become associated with Complainant in the minds of the consuming public. See WIPO Overview 2.0, paragraphs 1.1, 1.6; Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, WIPO Case No. D2008-1475.
Complainant fails to prove secondary meaning with the evidence offered in the Complaint. Notably, Complainant does not include any typical evidence of secondary meaning, such as consumer surveys on association, market data on sales, evidence of advertising, or media recognition of the mark. See WIPO Overview 2.0, paragraph 1.7. What evidence Complainant does offer is insufficient to this Panel. Complainant’s assertion that “substantial time, money, and other resources” have been invested in the mark is not supported by proof, and therefore is conclusory. See WIPO Overview 2.0, paragraph 1.7; Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, WIPO Case No. D2008-1475. Complainant’s registration of the mark, which if given time might increase public notice of the mark, is insignificant here because the registration is so recent. Complainant’s evidence of notoriety—including his media appearances, his teaching, and his website—proves only name recognition and not secondary meaning. See WIPO Overview 2.0, paragraph 1.6 (“The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the [Policy]. Merely having a famous name [. . .], would not necessarily be sufficient to show unregistered trademark rights.”); Jay Leno v. Garrison Hintz, WIPO Case No. D2009-0569.
Complainant’s Additional Submission does not prove secondary meaning either. Its only new contributions are in the Exhibits. Exhibit A includes several fliers for public speaking events by Complainant. Exhibit B is an affidavit from Michael L. Boynton, an officer at the Atlanta BBB, attesting to Complainant’s educational activities since the 1970s. Exhibit C includes a list of 758 instances of media communication by Complainant in the past thirty months. These three Exhibits do reinforce the otherwise well-established fact that Complainant has been active in educating consumers.8 However, as explained, publicity and name recognition are not the same as secondary meaning. See WIPO Overview 2.0, paragraph 1.6; Margaret C. Whitman v. Domains For Sale, WIPO Case No. D2008-1534 (denying common law rights to a business leader whose recognition came from being head of a well-known business). Therefore, Complainant does not prove secondary meaning.
The Policy applies only in cases of cyber squatting, where the typical complainant’s trademark or service mark rights are well-established. See The Management of Internet Names and Addresses: Intellectual Property Issues, WIPO (1999), https://www.wipo.int/amc/en/processes/process1/report/finalreport.html; Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183. To that end, paragraph 4(a)(i) of the Policy requires that Complainant prove trademark or service mark rights in a mark identical or confusingly similar to the Domain Name. Failing to satisfy the requirements of the Policy and the Rules does not preclude success in a court of competent jurisdiction, but does prevent redress by this Panel. See Policy at paragraphs 4(a) & 4(k). Because Complainant cannot satisfy his burden on the first element of paragraph 4(a) of the Policy, this Panel must deny Complainant’s request to transfer the Domain Name.
Respondent requests that this Panel declare that Complainant filed the Complaint in bad faith in an attempt at Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides the following:
“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.”
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Respondent argues that Complainant knew or should have known that the facts of this case render the Complaint obviously insufficient. Respondent’s arguments are taken in turn.
“[1] the Disputed Domain Name was created prior to Complainant’s State of Georgia trademark registration, which itself is irrelevant for purposes of the Policy; [2] [Complainant] made no attempt to support any allegations of common law trademark rights”
This Panel’s discussion of Complainant’s service mark registration and attempts to prove common law rights, above, makes clear that neither of these arguments is persuasive. Though true that Complainant registered the mark after Respondent registered the Domain Name, Complainant does not allege otherwise. Furthermore, as discussed above, a state registration is not irrelevant under the Policy. Similarly, as discussed above, Complainant makes an attempt—albeit an unsuccessful one—to prove common law rights.
“[3] that it misled the panel by falsely stating that Respondent receives payment for advertisements on its website when, as shown in Complainant’s own exhibit, Respondent’s website contains no advertising”.
The links on the website to customer reviews of MHAC’s services can fairly be characterized as advertisements which benefit MHAC, even if they do not do so on a pay per click basis. Furthermore, Complainant introduces the allegation of profit from advertisement with the qualifying language that the allegation is “[u]pon information and belief.” Compl. at 7. Therefore, Complainant’s allegation was not in bad faith.
“[4] that Respondent’s website contains news and opinion protected by the Policy and the law”
This argument relates to whether Respondent has a right or legitimate interest in the Domain Name under paragraph 4(a)(ii) of the Policy. Specifically, Respondent argues that Complainant should have known that Respondent’s use of the Domain Name was noncommercial or fair under paragraph 4(c)(iii) of the Policy. Resp. at 6, 10. The facts of this case do not render Respondent’s rights or legitimate interests in the Domain Name so obvious as to find Complainant filed the Complaint in bad faith. Although the law affords protection to “news and opinion” that is critical of business practices, the Policy is not nearly so accommodating of criticism that is commercial in nature. See Policy 4(c)(iii); WIPO Overview 2.0, paragraph 2.4. The website includes MHAC’s logo, features links to MHAC’s own website where Internet users can obtain MHAC’s services, and defends MHAC against the BBB’s rating system. Respondent’s criticism appears to have been primarily commercial. This Panel refrains from deciding whether Respondent has any rights or legitimate interests in the Domain Name. However, the commercial nature of Respondent’s use of the Domain Name, makes the question of legitimate rights close enough that this Panel cannot conclude that Complainant acted in bad faith when alleging that Respondent lacked any right or legitimate interest in the Domain Name.
“[5] that Respondent quite obviously has not acted in bad faith because Complainant has not even attempted to provide evidence of bad faith under any four of the subparagraphs of paragraph 4(b) of the Policy.”
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that are evidence of bad faith registration and use of a domain name. Complainant provides extensive briefing on the issue of bad faith registration and use in pages 12 through 15 of the Complaint. Furthermore, Complainant includes exhibits with evidence relevant to at least two of the circumstances. For example, Exhibit 6, which reproduces the website at the Domain Name, provides some evidence that Respondent registered the Domain Name “primarily for the purpose of disrupting” Complainant’s business interests under paragraph 4(b)(iii) of the Policy. Similarly, Exhibit 6 and the identity of the Domain Name also provide some evidence that Respondent attempted to attract Internet users for commercial gain by creating initial interest confusion regarding the source of the website under paragraph 4(b)(iv) of the Policy. Although this Panel refrains from deciding whether Respondent registered and is using the Domain Name in bad faith, this Panel cannot conclude that Complainant so alleged in bad faith.
Lack of success by Complainant is not enough to establish bad faith or Reverse Domain Name Hijacking. See WIPO Overview 2.0, paragraph 4.7. Complainant does not satisfy its burden under Rule 4(a)(i) of the Policy, but alleges and proves facts sufficient to prevent a finding of bad faith. Respondent’s arguments to the contrary are unavailing. Therefore, this Panel declines Respondent’s request to declare that Complainant filed the Complaint in bad faith in an attempt at Reverse Domain Name Hijacking.
For all the foregoing reasons, this Panel denies Complainant’s request to transfer the Domain Name and denies Respondent’s request for a declaration regarding Reverse Domain Name Hijacking.
Michael A. Albert
Sole Panelist
Dated: July 31, 2012
1 This Panel does not make any findings regarding the validity of the allegations found on Respondent’s websites.
2 Respondent and MHAC share the same registered agent, whose address in Marietta, Georgia, is the same as MHAC’s principle office. Corporations Search, Georgia Secretary of State, http://corp.sos.state.ga.us/corp/soskb/csearch.asp (search for “Mechanic’s”) (last visited July 24, 2012). Their logos are nearly identical and feature the same penguin mascot. Their names share the same irregular “Mechanic’s” element, and the website at the Domain Name provides links to MHAC’s own website at “www.airconditioningatlanta.com.”
3 “Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the [Policy].” Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445, at n.2.
4 Complainant filed this submission fourteen days after Respondent filed the Response, seven days after the Center appointed this Panel, and seven days before this Panel’s decision is due.
5 The Additional Submission largely cites arguments made in the Complaint, and the only new contributions are the evidence in Exhibits A through C, discussed below.
6 Paragraphs 3(b)(ix) and 3(b)(xv) of the Rules require Complainant to include grounds on which the Complaint is made and to attached all evidence relied upon. Because the Rules requires a complete complaint, Complainant must show exceptional circumstances before this Panel will allow the this submission. See WIPO Overview 2.0, paragraph 4.17. This Panel makes exception in this case but notes that the admission of the Additional Submission does not affect this Panel’s ultimate decision.
7 In fact, domain names cannot contain spaces. Beginners Guide to Domain Names, ICANN (Dec. 10, 2012), http://www.icann.org/en/about/learning/beginners-guides/domain-names-beginners-guide-06dec10-en.pdf.
8 The Exhibits are not clear regarding what portion of Complainant’s notoriety is due to Complainant individually rather than in association with the Atlanta BBB or the BBB. For example, all three fliers in Exhibit A introduce Complainant in his capacity as an official for the Atlanta BBB. Furthermore, 186 of the 758 media communications (roughly one quarter) explicitly mention the Atlanta BBB, suggesting that Complainant may have acted as its representative in many if not most of the other instances.