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Generic Top Level Domain Name (gTLD) Decisions |
Bill Sizemore v. DIS, Inc. c/o Ernest
Delmazzo
Claim Number: FA0312000221173
PARTIES
Complainant
is Bill Sizemore, 23630 S. Bluhm
Road, Beavercreek, OR 97004 (“Complainant”).
Respondent is DIS, Inc. c/o Ernest Delmazzo, P.O. Box 614, West Linn, OR 97068 (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <billsizemore.com>
and <billsizemore.org>, registered with Tucows, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Richard
B. Wickersham, Judge (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on December 22, 2003; the Forum received
a hard copy of the Complaint on December
31, 2003.
On
December 23, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain names <billsizemore.com> and <billsizemore.org> are registered with Tucows, Inc. and that
the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
January 12, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 2, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent
via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing
contacts, and to postmaster@billsizemore.com and
postmaster@billsizemore.org by e-mail.
A
timely Response was received and determined to be complete on February 2, 2004.
On
February 6, 2004 an Additional Submission was received and was timely. It was fully considered by Panelist.
On February 12, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Richard B.
Wickersham, Judge (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Bill
Sizemore is my personal name; the name under which I have been registered to
vote for more than 20 years; and the name that appeared
on the ballot in the
primary and general election when I was the Republican candidate for governor
of Oregon in 1998. Bill Sizemore was
part of my business name, Bill Sizemore, Carpet Broker, from 1981-1985; the
name of my radio program, The Bill Sizemore
Show, which is temporarily on hold,
but has aired daily for the past four years in Portland, Oregon. Bill Sizemore is part of the name of my
ongoing business, Bill Sizemore Consulting.
I
also have registered the mark BILL SIZEMORE with Oregon’s business registration
instrument, the Secretary’s of State Corporate Division.
The
name Bill Sizemore has appeared on hats, T-shirts, and bumper stickers. I have also used my name on dozens of
billboards appearing all over the greater Portland area, and on thousands of
yard signs. I intend to do all of the
above again to promote my radio show when I have negotiated a new contract with
another station, and when
I attempt another run for public office.
The
websites currently using my name, both <billsizemore.com> and <billsizemore.org>,
represent themselves as an information site on Bill Sizemore, but are in fact
one anti Bill Sizemore site designed to tear down
my name and diminish the
value of my name and mark. The sponsor
uses my name exactly as it is widely known to the public and associated with
me, to besmirch me and the various political
organizations I started for the
purpose of political action. ICANN Rule
3(b)(ix)(1); ICANN Policy ¶4 (a)(i).
The
Respondent is using the domain name on behalf of labor unions, my arch enemies
in Oregon politics, to disperse negative propaganda
about me and my political
committees. They may have a right to
distribute their opinions about me, but do not have the right to register my
name as a domain by which they
may spread their hate and prevent me from access
to the billsizemore.com and billsizemore.org domains. The site currently using my name contains a disclosure that says
that unions are not paying for the site, but almost everything on
the site
echoes union propaganda I have seen in the past.
The
site is not offering to sell goods. It
is just one big hit piece on Bill Sizemore.
The site has not interest in the name, Bill Sizemore, other than to
tarnish or diminish it.
B. Respondent
I
believe the Complainant has failed to satisfy any of the three elements
required under the ICANN Policy ¶ 4(a) of the Policy requires
that the
Complainant must prove each of the following three elements to obtain an order
that a domain name should be cancelled or
transferred:
(1) the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant
has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain
name, and;
(3) the
domain name has been registered and is being used in bad faith.
There
is no likelihood of confusion by visitors that this web site is managed or run
by Bill Sizemore. In other words, no
attempt has been made to create an association with the Complainant. ICANN
Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
Bill
Sizemore is a fairly common name to which the Complainant cannot hope to have
exclusive rights. A search of “Bill
Sizemore” in Yahoo! People Search
alone brought 182 results. This is
likely a small percentage of the persons with this name. At the same time Bill Sizemore is not a
household name (such as Martha Stewart or Michael Jordan).
The
relevant date of registration of <billsizemore.org> (Nov. 22,
2000) is more than two years before the filing of the Complaint. Site content has existed for 37 months and
the Complainant must have known that the domain name was owned for much of that
time as
it has been linked for a couple years from the web site of Oregon’s
largest newspaper, The Oregonian, as
a source for information. Although
since removed from links elsewhere at their site, the link to my site from
<oregonlive.com/special/politics/sizemore.ssf>
is evidence that Oregon’s
dominant media company viewed the web site as a source for credible and
newsworthy information. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶
4(a)(ii).
My
web site links to articles by prominent and well respected media. Articles linked to include such titles as
“State seeks to close Sizemore operation,” “Sizemore camp fights dissolution,”
“State allowed
to join suit against Sizemore group,” and “Judge halts Sizemore
funding.” My web site provides a
single, easily accessible location for news and information. It is a public service. As it has existed for 37 months and found a
following, loss of the domain will cause irreparable harm to me.
My
web site has not been used for commercial gain and no money has been received
in conjunction with it. There is
absolutely no truth to Mr. Sizemore’s accusation that I’m using the domain on
behalf of labor unions, and anyway it’s irrelevant
to the issue at hand. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶
4(a)(iii).
I
have never bought a domain in order to sell it for profit. In fact, I have never sold a domain that I
have bought. I do, as a web site
designer, purchase domains regularly for clients. I build and maintain a large percentage of these sites for
free. On these I usually retain
ownership of the domain.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain
name has been registered and is being used in bad faith.
Finding for Complainant
Complainant alleges rights in the BILL
SIZEMORE mark based on the fact that it is Complainant’s personal name, which
is widely known
in the State of Oregon, and is used in connection with its
political career, consulting business, and with a Portland, Oregon radio
program. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding
that ICANN Policy does not require that Complainant have rights in a registered
trademark
and that it is sufficient to show common law rights in holding that
Complainant has common law rights to her name); see also Barnes v. Old Barn Studios, Ltd., D2001-0121 (WIPO Mar.
26, 2001) (finding all that is required for a well-known person to establish a
common law trademark is likelihood
of success in an action for passing off in
the event of use in trade without authority); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26,
2000) (holding that confusingly similarity under the Policy is decided upon the
inclusion of a trademark
in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson,
D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark
in the domain name).
Likewise,
the Panel may find that Complainant has established rights in the BILL SIZEMORE
name through its use in business and/or
as a media entertainer via its radio
program. See Monty & Pat Roberts, Inc. v. Keith, D2000-0299
(WIPO June 9, 2000) (holding that for a claim to be brought under the ICANN
Policy based on a personal name, the Complainant
must establish the distinctive
character of the name, which relates to whether or not the person in question
is sufficiently famous
in connection with the services offered by that
complainant.); see also Libby v. Tuzlaci, D2001-1342 (WIPO Jan. 24, 2002)
(“Complainant has conducted a successful business for many years under his name
and for most of
the last five years has used the Domain Name in the course of
his professional practice. The Panel has no hesitation in finding that
the
Complainant has common law rights in his name and service mark.”); see also
Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2001) (“[P]erformers
can establish trade mark rights either by showing that they have registered
their
names as marks for certain goods or services, or because, through
deployment of the names as source indicators in commerce, they
have
unregistered or "common law" rights to protection against misleading
use.”) see also Fox News Network, L.L.C. v. Pro-Life Domains Inc.,
D2003-0335 (WIPO July 2, 2003) (“[P]revious Panels have found that
entertainment personalities do acquire common law trademark rights
in their
names when they use their names to sell entertainment services. The Panel finds
this to be true in this Case.”) see also Rudner v. Internetco Corp.,
D2000-0581 (WIPO Aug. 3, 2000) (Although Complainant did not allege a trademark
registration for the “Rita Rudner” name, the use
of the name to identify
various products and entertainment services was “more than enough to establish
common law trademark rights,”
especially because Complainant also used the name
in connection with her company, Rita Rudner Enterprises.).
In
its Additional Submission, Complainant also notes that it has used its BILL
SIZEMORE name and mark in very public ways for more
than two decades, which
Respondent implicitly acknowledges when it refers to Complainant in its
Response as a “public figure.” Complainant also has provided evidence of its
registration of the BILL SIZEMORE mark with Oregon’s Secretary of State.
Rights and Legitimate
Interests Policy ¶ 4(a)(ii).
Finding
for Complainant
Complainant argues that Respondent is not commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) because the
attached
website is merely a reactionary stance to Complainant’s political
views. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly
known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known
by the mark).
Additionally,
Complainant contends that Respondent is not offering any type of goods or
services pursuant to Policy ¶ 4(c)(i), which
Respondent concedes.
Complainant
argues that Respondent is not making a legitimate noncommercial or fair use of
the disputed domain names pursuant to Policy
¶ 4(c)(iii) because the contents
provided under the names tarnish the BILL SIZEMORE mark through hateful
propaganda. See Royal Bank of Scotland Group & Nat’l Westminster Bank v. Lopez,
D2002-0823 (WIPO Dec. 3, 2002) (“[T]he Respondents have used domain names that
are identical and substantially similar to Complainants'
trademarks to exercise
their freedom of expression and this has the direct consequence of tarnishing
Complainants' trademarks. Respondents'
can very well achieve their objective of
criticism by adopting a domain name that is not identical or substantially
similar to Complainants'
marks.”); see also Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding
that Respondent’s showing that it “has a right to free speech and a legitimate
interest
in criticizing the activities of organizations like the Complainant .
. . is a very different thing from having a right or legitimate
interest in
respect of [a domain name that is identical to Complainant’s mark]”); see
also Monty & Pat Roberts, Inc. v.
Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute
Respondent’s right to establish and maintain a website critical of
(the
Complainant) . . . . However, the panel does not consider that this gives Respondent
the right to identify itself as Complainant.”);
see also Direct Line Group Ltd. v. Purge I.T.,
D2000-0583, (WIPO Aug. 13, 2000) (finding that use of Complainant’s name and
adoption of it in a domain name is inherently likely
to lead some people to believe
that Complainant’s are connected with it); see also Name.Space Inc. v.
Network Solutions, [2000] USCA2 17; 202 F.3d 573, 585 (2d Cir. 2000) (although the content
of Respondent’s site may be entitled to First Amendment protection,
Respondent’s use of
Complainant’s trademark in the domain name of its site is
not protected. Since Respondent’s domain name merely incorporates Complainant’s
trademark, it does not constitute a protectable, communicative message); see
also DFO, Inc. v. Williams, D2000-0181 (WIPO May 14, 2000) (finding that
Respondent did not use the domain name <dennys.net> as a legitimate
noncommercial
or fair use because Respondent chose a name that would lead
Internet users to the conclusion that the attached website was affiliated
with
the Denny’s restaurant chain. Moreover,
Respondent’s disclaimer failed to remedy the confusion and infringing use of
Complainant’s mark).
Registration and Use in Bad Faith Policy
¶ 4(a)(iii).
Complainant
argues that Respondent registered and uses the disputed domain names in bad
faith by appropriating Complainant’s BILL
SIZEMORE mark in the names, designing
the attached website in a dubious way such that Internet users are duped into
believing the
site is official, and failing to provide a disclaimer on the site
that informs the user that the content is not affiliated with Complainant. Taken as a whole, Complainant argues this is
evidence of bad faith registration and use.
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad
faith where Respondent knowingly chose a domain name, identical to
Complainant’s mark,
to voice its concerns, opinions, and criticism about
Complainant); see also Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although
Respondent’s complaint website did not compete with Complainant or earn
commercial
gain, Respondent’s appropriation of Complainant’s trademark with a
view to cause “damage and disruption to [Complainant] cannot be
right, still
less where the use of the Domain Name will trick internet users intending to
visit the trademark owner’s site into visiting
the registrant’s site” in
holding that the disputed domain name was registered in bad faith); see also
Jenner & Block LLC v. Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept.
27, 2002) (“Respondent’s argument that there is an inherent conflict between
the Internet and the
Constitutional right to free speech at the address to a
business sounds impressive but is no more correct that than the argument
that
there is a Constitutional right to intercept telephone calls to a business in
order to speak to customers. Respondent’s conduct
is not the equivalent of
exercising the right of free speech outside Complainant’s business street
address but of impermissibly blocking
traffic to that street address.”); see
also Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (finding that Respondent registered the domain
names <kwasizabantu.com>, <kwasizabantu.org>,
and <kwasizabantu.net>
in bad faith where Respondent published negative comments regarding
Complainant’s organization on the
confusingly similar website).
The
Panel may find that Respondent knowingly infringed on Complainant’s mark, which
evidences bad faith registration and use.
See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse.");
see also Samsonite Corp. v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly
known mark at the time of
registration); c.f. Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between Complainant’s mark and the content
advertised on Respondent’s
website was obvious, Respondent “must have known
about the Complainant’s mark when it registered the subject domain name”); see
also Albrecht v. Natale, FA 95465
(Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where
there is no reasonable possibility, and
no evidence from which to infer that
the domain name was selected at random since it entirely incorporated
Complainant’s name).
The Panel may also find bad faith
registration and use because Respondent attempted to pass itself off as
Complainant. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18,
2001) (finding that Respondent's use of <monsantos.com> to misrepresent
itself as Complainant
and to provide misleading information to
the public supported a finding of bad faith); see also DaimlerChrysler
Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that
Respondent’s use of the title “Dodgeviper.com Official Home Page” gave
consumers the impression that Complainant endorsed
and sponsored Respondent’s
website).
Moreover,
the Panel may find that Respondent has misled the Panel by asserting that
Complainant has been “found guilty in a court
of law for racketeering and other
violations of law,” which is itself sufficient to rule in favor of Complainant.
See Rodale, Inc. v. Resource Mktg., DBIZ2002-00156 (WIPO July 7, 2002)
(finding that Complainant affirmatively attempted to mislead the Panel through
a material
omission and its affirmative misstatement, providing a sufficient
basis alone for the Panel to rule for Respondent).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <billsizemore.com>
and <billsizemore.org> domain names be TRANSFERRED from
Respondent to Complainant.
Richard B. Wickersham, Judge (Ret.),
Panelist
Dated: February 26, 2004
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