In the recent decision of William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception (Nat. Arb Forum 1256123, June 1, 2009), a single member panel was faced with a dispute over three domains: www.williamclinton.com, www.williamjclinton.com and www.presidentbillclinton.com. This very interesting case provides an insight into the potentially arbitrary nature of the non-binding UDRP arbitration system and the application of the three element ICANN UDRP test for domain disputes. Complainant needs no introduction, so some background on Respondent is helpful. The Panel summarized Respondent’s Additional Submission arguments, as follows:
Respondents timely Additional Submission first focuses on the issue of common law marks, arguing that most of the famous person common law mark opinions are defaults. As to bad faith, Respondent notes that he has never acted in bad faith. When requested, for example, [Respondent] surrendered domain names to the United States Government. Respondent also states that he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names. He further notes that he has never sold a politician’s domain name. He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians.
The Panel began its analysis of the case by “reluctantly” [actual words used by Panel] finding that Clinton had established a common law mark in his name. Interestingly, the Panel felt obliged to also note that he is “partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum Sept. 11, 2000).”
In addressing the first prong, whether the domain was identical or confusingly similar to Complainant’s mark, the Panel went through a more detailed analysis of applying the common law mark theory. Regarding one of the disputed domains, the Panel noted, “The addition of the term “president,” or the use of an abbreviated version of Complainant’s mark in a disputed domain name creates a confusing similarity between the disputed domain name and Complainant’s mark.” Ultimately, the Panel found Complainant President Clinton had satisfied this element.
Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel explained:
Complainant has shown that Respondent is not commonly known by the disputed domain names. Complainant states that Respondent is known as “web of deception,” which is also how Respondent is identified in the WHOIS information. Complainant also claims that Respondent is not affiliated in any way with Complainant. Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
The Panel went further to make the following findings:
Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s rebuttal fails. Respondent’s disputed domain names resolve to an official website related to the Republican Party, which is the party in direct opposition to the political party Complainant endorses. Such use of the disputed domain names does not equate to a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel found that Clinton had satisfied the second prong and moved to the third prong, whether Respondent registered and used the domain in bad faith. This is where the Panel took some serious liberties in applying the UDRP policy.
However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii)….Respondent is allegedly using the disputed domain names in order to intentionally attract Internet users to an opposing website by creating confusion among Internet users who are seeking Complainant’s WILLIAM CLINTON mark. Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with Complainant, giving the impression Complainant is affiliated with its political competitor. The Panelist declines to find that this is a violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use….Links to the Republican National Committee website are simply not within the scope of this Policy.
As a result the Panel found that Clinton had not established bad faith and therefore DENIED the request for transfer.
DefendMyDomain Commentary: We are unsure how the Panel can square the second and third prong in light of the evidence and the finding that Respondent “use[s] the disputed domain names in order to intentionally attract Internet users to an opposing web site by creating confusion.” Since the domain was owned by “Web of Deception” and was being redirected to a Republican National Committee website, it seems clear that bad faith existed. Additionally, Respondent’s own arguments were that his reason for ownership was to show the ease of registration of such famous person domain names and was trying to promote the idea of protection under the federal statutes. One should ask whether Respondent’s use of the domain falls squarely within section 4(b)(iv) of the UDRP policy which discusses instances of evidence of bad faith and states “(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.” One should also ask whether Respondent’s admissions fit into section 4(b)(ii), which states “(ii) 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.” This single Panelist decision teaches us that for important domains, three member Panels may provide different results.