Complainant is Lisa Migliore Black, Migliore and Associates LLC of Louisville, Kentucky, United States of America, represented by the law firm Dinsmore & Shohl LLP, United States.
Respondent is Kentuckiana Reporters of Louisville, Kentucky, United States, represented internally.
The disputed domain name <lisamigliore.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2012. On August 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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” 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2012. The Response was filed with the Center on August 30, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 14, 2012. 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 following facts are not in dispute. The parties do offer additional facts, some of which are contested, and dispute the Policy conclusions to be drawn from them, as set forth in Section 5 below.
Both parties operate stenographic and certified court reporter services in the city of Louisville, Kentucky, United States. Complainant Lisa Migliore Black is herself the sole reporter for Migliore and Associates and has been operating her business as Migliore and Associates since 2001. She has also used her own name as a business identifier – as Lisa Migliore from 1997 through her marriage in 2009, after that as Lisa Migliore Black. None of these three names (Lisa Migliore, Lisa Migliore Black, or Migliore and Associates) is incorporated into a registered trade or service mark, either nationally with the United States Patent & Trademark Office (USPTO) or with any state. Migliore and Associates is registered as a limited liability company with the Commonwealth of Kentucky.
Respondent operates stenographic and certified court reporting services in Louisville, other cities in Kentucky, and elsewhere in the United States. Respondent is an organization with fourteen full-time employees that engage additional independent contractors as required to meet its customers’ requirements. It registered the disputed domain name in August 2011. Respondent also registered domain names incorporating three other Louisville court reporting services’ names, or slight misspellings of the names.
At some point prior to June 19, 2012, the disputed domain name redirected to Respondent’s website “www.kentuckianareporters.com”. Complainant’s counsel, on behalf of Complainant and the other three reporting services, sent a cease-and-desist letter to Respondent on June 19, 2012, threatening a suit under the Lanham Act (U.S. federal trademark infringement statute) and demanding, among other things, transfer of each such domain name to the owner of the business to which its name corresponded.
Respondent replied immediately after receipt, and immediately discontinued the re-direction to its own website. The parties continued discussions regarding the disputed domain name, but eventually Respondent refused to transfer the disputed domain name to Complainant.
Complainant contends as follows:
1. Complainant holds common law rights in “Lisa Migliore” by reason of her use of her name, standing alone and as Migliore and Associates, to identify her business for more than a decade. The disputed domain name is identical to Complainant’s name except for the generic top-level domain “.com”, which is irrelevant for Policy purposes and similar to her business name because it incorporates that identifier’s dominant feature.
2. Complainant has never authorized Respondent to use her name for any purpose, and Respondent has never been known by the disputed domain name. The only use to which the disputed domain name has been put, namely to divert Internet traffic to a competitor, is not a legitimate or bona fide use under the Policy. Anticipating Respondent’s free speech defense (which had been cited in the parties’ pre-Complaint correspondence), Complainant notes that Respondent did not include a derogatory or pejorative term in the disputed domain name, which is normally required to eliminate confusion and establish the bona fides of a legitimate gripe site.
3. Respondent’s conduct falls within two of the examples of evidence of bad faith in paragraph 4(b) of the Policy: paragraph 4(b)(iv),1 by reason of the diversion to Respondent’s website: and paragraph 4(b)(ii),2 by reason of Respondent’s similar registration, without authority, of domain names incorporating the names (or close misspellings) of other competitors.
Respondent contests Complainant under each Policy head, contending as follows:
1. Complainant lacks common law rights in her maiden name, as she has used her married name or business name in commerce since 2008 and not her maiden name as her commercial address. Further, no one is likely to be confused, as “[n]o one is going to type [the disputed domain name] when trying to find Complainants’ webpage”; rather an Internet user will type the name of Complainant’s business. Complainant has noted on online for a that Respondent in fact owns the disputed domain name, further obviating any possible confusion.
2. Respondent registered the disputed domain name for possible use for criticism of Complainant or as a “fact check site” regarding Complainant’s public statements. The court reporting business is “extremely political” and Complainant is active in proposing or endorsing possible legislation impacting the business. In an affidavit, Respondent’s business manager identifies some of Complainant’s public commentary and notes Complainant’s membership on several industry committees or task forces formed to influence or promote legislation in Kentucky and elsewhere. While acknowledging a split of authority on whether a criticism site confers a right or legitimate interest as “legitimate noncommercial or fair use” under paragraph 4(c)(i) of the Policy, Respondent asserts that such a defense is appropriate here, as the parties are both United States corporate citizens and the speech Respondent seeks to make is undeniably political and of public interest, precisely the sort of speech the United States Constitution intends to protect.
3. The free speech purpose of the disputed domain name demonstrates that Respondent did not register the disputed domain name in bad faith. Free speech explains Respondent’s registration of domain names of its other three competitors as well. All three of these other court reporting services are, along with Complainant, members of an industry committee seeking to influence or promote legislation and thus “potential political opponents” of Respondent. None of these three other reporting services has commenced a Policy proceeding to retrieve a domain name.
Respondent did not select domain names with “sucks” or other derogatory term for its criticism sites to avoid any possible charge of defamation. Certainly its failure to include such a term should not be deemed evidence of bad faith
The brief diversion to Respondent’s website was accidental. Respondent’s information technology (IT) is managed by a third party, which “[i]t is assumed . . . inadvertently” began the re-direction from the disputed domain name when told by Respondent to implement re-direction from other commercial websites that Respondent owned. Lack of bad faith is further shown by the fact, acknowledged at the time by Complainant, that upon receipt of Complainant’s cease-and-desist letter, Respondent immediately instructed the third party IT manager to discontinue the re-direction, which it did forthwith.
Respondent supports all of the factual assertions in this subsection 3 by the sworn statement of its business manager.
In this Policy proceeding Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is well settled that common law rights in a mark may suffice for Policy purposes and that in proper circumstances a person’s name may be a mark in which Complainant has rights. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 1.6, 1.7, Consensus Views.
Respondent all but acknowledges that prior to her marriage Complainant used her name as a business identifier: as a member of the same service industry in the same city Respondent could hardly deny this.3 Adding her new last name to the existing service mark does not diminish the vitality of Lisa Migliore as a common law mark nor prevent Complainant’s use of it under paragraph 4(a)(i). As Complainant argues, this mark is identical to the disputed domain name. In a Policy proceeding, unlike a trademark infringement action, actual confusion need not be shown to meet the “standing” requirement4 of paragraph 4(a)(i). The Panel finds that Complainant has established this Policy element.
Complainant asserts and Respondent acknowledges that Complainant has not authorized Respondent to use its name and that Respondent has never been commonly known by the disputed domain name. The burden of production thus shifts to Respondent to provide evidence of a right or legitimate interest, which Respondent seeks to do so under paragraph 4(c)(iii) of the Policy, which provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(iii) 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.”
At first blush, Respondent’s stated purpose of a criticism or fact-check site might require this Panel to weigh in on the split of authority as to whether a criticism or “gripe” site that uses Complainant’s mark without elaboration comes within the safe harbor. See WIPO Overview 2.0, paragraph 2.4, View 1 and View 2, and compare Panel opinion and D. Bernstein, dissenting, in Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627. That is unnecessary, however, as Respondent provides no evidence of any such use.
Paragraph 4(c)(iii) of the Policy speaks in the present tense: you are making. Unlike its counterpart in paragraph 4(c)(i), which affords a defense based upon “demonstrable preparations” to use as well as actual use, read literally the noncommercial or fair use exemplar requires actual use. Respondent has made no such use. If the Panel were to allow “demonstrable preparations” for fair use to support a defense (aside from the issue identified in the preceding paragraph, not an unreasonable proposition), Respondent still fails. The sworn statement of Respondent’s business manager, which the Panel has no reason to doubt, speaks only of Respondent’s intentions: he identifies no actual preparations so to use the disputed domain name. More than intention is required for a defense, and here Respondent has shown or alleged no actual use or preparations of any kind to use the disputed domain name for criticism or demonstrated any other evidence which could provide it with a right or legitimate interest in the disputed domain name.
Complainant has carried its evidentiary burden under paragraph 4(a)(ii).
The only use to which Respondent ever put the disputed domain name was a re-direction of Internet users to Respondent’s own website. This is ordinarily classic cybersquatting, expressly identified in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use.
Does Respondent’s claim that the re-direction was inadvertently caused by a third party absolve Respondent of use in bad faith? This question has arisen primarily in cases in which the offending use, normally pay-per-click hyperlink sites, is automatically generated by the registrar. See WIPO Overview 2.0, paragraph 3.8, and cases there cited, which indicate that a respondent generally is responsible for third party use, including that of the registrar. The reasons for this approach (which the Panel notes has not reached consensus status) – the “commercial gain” referred to in paragraph 4(b)(iv) is present, the harm to the complainant has occurred, standard principles of agency, and the fact that the respondent could with reasonable action have prevented the offending use – apply with far greater force when the responsible third party is Respondent’s own IT representative.
Here the re-direction was caused not by a registrar seeking to maximize its own revenue and affiliated with the domain name holder only through a contract centered on other matters, but rather by a party engaged by Respondent to “manage Respondent’s websites” and to conduct all “SEO [search engine optimization] work” for Respondent. Here the one occasional exception to responsibility for third party use – that the respondent might have been unaware that the registrar would generate PPC advertising – carries no weight.
The Panel treats Respondent’s third party IT manager’s actions under the circumstances no differently than had they been undertaken by Respondent’s employees, and holds Respondent responsible for them. Accordingly, the Panel finds that Complainant has established use in bad faith.
There remains the question of whether Respondent’s bad faith use allows the Panel to infer bad faith in registration. Registration in bad faith that must be separately proven under paragraph 4(a)(iii) of the Policy. Such an inference will often follow from re-direction, particularly where as here Respondent was admittedly aware of Complainant, a competitor, and her mark, and chose the disputed domain name expressly to refer to Complainant (albeit in a manner that Respondent claims to be legitimate). In fact, the evidence is consistent with the version offered by both parties. Complainant cites Respondent’s unauthorized registration of domain names consisting of the business names of other competitors as part of a pattern of bad faith; Respondent says that each was undertaken for the same permissible reason, for future criticism sites. Respondent’s direction to its IT manager to discontinue the re-direction immediately after receipt of the cease-and-desist letter could be interpreted as a gesture of good faith in negotiating or the act of a child caught with her hand in the cookie jar.
The Panel will make the necessary inference of bad faith registration here, for two reasons. The first is the lack of any contemporary (pre-Complaint) evidence to support Respondent’s claim of possible criticism site use. Such evidence, if it exists, is within Respondent’s control and, as with “demonstrable preparations” required under paragraph 4(c)(i) of the Policy, need not be substantial – establishment of other criticism sites, a draft business plan or a preliminary direction to the IT manager, for example. The second reason is similar: Respondent presents no pre-Complaint evidence that the re-direction to Respondent’s website was in fact inadvertent. Again this is something that, if it exists, is surely available to Respondent – an ambiguous directive to the IT manager, a sworn statement by the IT manager explaining how it occurred.5 All that Respondent offers is its business manager’s after-the-fact “assumption.” These dogs that did not bark in the nighttime6 add force to the natural inference that a competitor’s re-direction to its own site was to divert Internet traffic. See Costco Wholesale Membership Inc., Price Costco International, Inc. and Costco Wholesale Corporation v. Pacific Home Remodeling, Inc., WIPO Case No. D2008-1225.
Basing the Panel’s inference of bad faith in registration in part upon evidence not supplied by Respondent is entirely consistent with the Policy’s mandate that Complainant bears the burden of proof under each Policy head. Panels should strive, to the extent possible in the abbreviated UDRP format, to decide these proceedings on the evidence the parties place in the record. Here the only evidence of Respondent’s use of the disputed domain name is admitted re-direction to Respondent’s own website, done by Respondent’s IT manager. In the face of this, Respondent must come forward to show why the Panel should not make the ordinary inference of registration for this purpose. As with any other requirement of paragraph 4(a), the Policy calls for evidence or proof, not merely conjecture or unsupported ex post facto legal argument.
Complainant has established bad faith in registration and use of the disputed domain name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lisamigliore.com> be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: September 20, 2012
1 Paragraph 4(b)(iv) provides that the following “shall be evidence of the registration and use of a domain name in bad faith”: “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.”
2 Paragraph 4(b)(ii) provides that the following “shall be evidence of the registration and use of a domain name in bad faith”: “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”
3 Respondent’s knowledge of Complainant’s use of LISA MIGLIORE as her business identifier by itself supports Complainant’s use of that mark in a UDRP complaint, see Paul McMann v. J McEachern, WIPO Case No. D2007-1597. Particularly given Respondent’s knowledge, Complainant has provided sufficient evidence of use of her name as a business mark to satisfy paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 2.0, paragraph 1.1, Consensus View.
5 It should be noted that direct evidence of bad faith registration, including the examples of evidence cited in the text, was not (as it often is not in a proceeding that allows no discovery) available to Complainant.
6 Holmes: “[And there was] the curious incident of the dog in the nighttime.”
Watson: ”The dog did nothing in the nighttime.
”Holmes: “That was the curious incident.”
A. Doyle, Memoirs of Sherlock Holmes, “Silver Blaze.”