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Justice for Children v. R neetso / Robert W. O'Steen [2004] GENDND 812 (4 June 2004)

1. The Parties

The Complainant is Justice for Children, Houston, Texas, United States of America. Complainant is a nonprofit corporation organized under the laws of Texas, United States of America, and is represented by Ben D. Tobor and Kimberly L. Brown of the law firm Bracewell & Patterson, LLP, Houston, Texas, United States of America.

The Respondent is R neetso / Robert W. O'Steen. Mr. O'Steen resides in College Park or Beltsville, Maryland, United States of America.

2. The Domain Names and Registrar

The disputed domain names are <justiceforchildren.net> and <justiceforchildren.org> (Disputed Domain Names) and are registered with Address Creation, California, United States of America (Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on March 8, 2004.

On March 10, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On March 15, 2004, 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 for the administrative, billing, and technical contact.

Also on March 10, 2004, the Center notified Respondent by email of the filing of the Complaint. That same day Respondent replied to the Center by email, stating

"Never heard of you, and I'm quite sure you have NO jurisdiction in the UNITED STATES OF AMERICA. The website in question (`www.justiceforchildren.net') belongs to me, Robert W. O'Steen Jr. and is currently properly registered with ICANN. That website is currently seeking the correction of INJUSTICE in the United States Court system, and is by all means protected by the First Amendment, most specifically the plight of Gerald John Delbridge, a falsely accused father who has been imprisoned in Pennsylvania for over five years. Recently the Pennsylvania Supreme Court remanded Mr. Delbridge's case to the Luzerne County Court of Common Pleas for further hearing on the issue of `taint.' Taint is the result of biased interviewers using leading questions when interrogating pre-school children. It brings about disastrous results. We will be following and reporting on Mr. Delbridge's case closely. I suggest you familiarize yourselves with THE CONSTITUTION "http://www.usconstitution.net/constquick.html" ICANN's Universal Domain Dispute Resolution Policy is as follows below. I further suggest you make your grievances through them, and DO NOT BOTHER me ANY MORE. The ACLU has already been contacted about this website in the past and a staff lawyer has given a favorable opinion, so has a sitting judge in the Circuit Court for Anne Arundel County Maryland, case #C-1999-59781-DV. So The long ARM (joke implied here) of the WIPO Arbitration (you need a new acronym) dose not impress me in the least ..... in other words `Get in Line ... and take it up with a real Court System,' try the Special Court of Appeals in the State of Maryland, because that is where we are headed."

The Center acknowledged receipt of this email and directed Respondent to the Policy and Rules.

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 (the Supplemental Rules).

In accordance with Rules 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2004. In accordance with Rule 5(a), the due date for Response was April 6, 2004.

The Respondent did not submit a response. The Center accordingly notified the parties of Respondent's default on April 7, 2004. In reply to this email Respondent submitted a second email to the Center, as follows:

The Center appointed Richard G. Lyon as the Sole Panelist in this matter on April 16, 2004. I submitted my Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. I find that the Panel was properly constituted.

4. Procedural Matters

Respondent has not submitted a formal response and is therefore in default. Using my discretion under paragraph 12 of the Rules, I shall consider the statements made by Respondent in the two emails quoted above in considering this matter, in order to afford Respondent "a fair opportunity to present its case." (Rules paragraph 10(b))

On April 28, 2004, the Panel issued Procedural Order No. 1, requesting that Respondent submit the "opinion [of the] sitting judge in the Circuit Court for Anne Arundel County Maryland, case #C-1999-59781-DV" referred to in Respondent's March 10 email. Respondent notified the Center by email on May 1, 2004, that he needed additional time to supply the opinion because of difficulties in obtaining a trial transcript.

On May 3, 2004, the Panel issued Procedural Order No. 2, clarifying its request and ordering Respondent to produce by May 11, 2004, any written portions of the opinion and a summary of the oral portion, and to produce the transcript portions or a summary of the order by May 18, 2004. When informed by the Center that a copy of Procedural Order No. 2 had inadvertently not been transmitted to Respondent, On May 19, 2004, the Panel issued Procedural Order No. 3, re-sending Procedural Order No. 2 and extending the dates for the additional material requested. Respondent acknowledged receipt of Procedural Order No. 3 but made no further submission by the deadlines.

5. Jurisdiction

Because Respondent in his first email challenges the jurisdiction of the Panel, I must address specifically the Panel's authority to resolve this matter. The registration agreement, accepted by Respondent when he registered the Disputed Domain Names1 includes the registrant's agreement to submit to the Policy. Since the Center is a dispute resolution provider approved by the Internet Corporation for Assigned Names and Numbers (ICANN), panels established by the Center in accordance with the Policy, Rules, and Supplemental Rules are properly authorized to determine such disputes. Respondent's emails indicate that he received due notice of the Complaint and the commencement of this administrative proceeding, and indeed that he is fully aware of the Policy. The Panel has jurisdiction to resolve this dispute.2

6. Factual Background

Complainant is a non-profit organization, supported by donations. Complainant and its supporters are "concerned about children's rights and their protection from abuse. One purpose of [Complainant] is providing advocacy for children who are known to be abused, but who are not being protected adequately by the agencies that are required by law to protect them." (Complaint, paragraph V-A) This advocacy includes active assistance in litigation in which child abuse is at issue.

Complainant is the owner of the service mark JUSTICE FOR CHILDREN, registered with the United States Trademark Office. Complainant has been using its service mark in commerce since August 1988. Complainant maintains its own website at "www.justiceforchildren.com."

Respondent registered the Disputed Domain Names in October 2002. Initially the Disputed Domain Names resolved to a site maintained by Respondent and captioned "Injustice for Children" that copied or simulated much of the headers from Complainant's website but then followed this copied format with a paragraph of text in which Respondent criticized Complainant's activities. Much of this was done in a style similar to that used by Complainant on its website. Complainant correctly characterizes this 2002 web content as copying the "look and feel" of Complainant's official website. I refer to this as the "First Iteration."

On November 14, 2002, Complainant sent a cease and desist letter to Respondent. The copy sent by regular mail was returned without being opened but there was no indication that the email transmission (sent to an email address listed on Respondent's website and with the Registrar in connection with the Disputed Domain Names) was not received. Five days later, the content of Respondent's website changed. While Respondent remained critical of Complainant and its activities, Respondent's principal target was now an Anne Arundel County, Maryland, state court judge, who was presiding over (or had presided over) a contested divorce case between Respondent and his former wife. Respondent accused Complainant of assisting his ex-wife and "coaching" his son prior to testifying in that case. Among other things Respondent urged readers to vote against the re-election of this judge.3 This format is the "Second Iteration."

Following commencement of this proceeding, the content of Respondent's website changed again. Now, "at the request of my attorney," Respondent makes no further reference to his own case, although he continues to complain of perceived injustices to fathers in divorce and child custody proceedings. This is the "Third Iteration."

Several features of each of the three Iterations are noteworthy.

- In none of the Iterations does Respondent offer a product or service for sale.

- The First and Third Iterations have no hyperlink to any commercial website. The only hyperlinks are to the text and a practical interpretation of the United States Constitution, and to the website of the American Civil Liberties Union, a respected nonprofit organization dedicated to protection of individual rights against government intrusion. The Second Iteration includes a few hyperlinks to various news organizations (e.g., Reuters), and many others to specific articles about the target judge, bias in the county courts, and specific news stories about perceived miscarriages of justice related to fathers' rights.

- While the Second Iteration places significant emphasis on Respondent's own case, each Iteration focuses on claimed injustice to fathers in custody cases, a topic that is undeniably a matter of opinion and social interest.

- Each Iteration, to some degree, addresses a function of government, the judicial system in custody matters, bringing it within a United States citizen's right to petition the government for redress of grievances.4

- The Second Iteration includes commentary on an upcoming election, and thus falls within a category (political speech) where United States courts guard a citizen's freedom of speech most closely.

- None of content of any Iteration is obscene or defamatory, Complainant's contentions to the contrary notwithstanding. Any use of intemperate language is personal opinion and not independently actionable under United States law. None of the content of any Iteration is a category of speech outside the protection of the free speech guaranty of the First Amendment to the United States Constitution.5

7. Parties' Contentions

Complainant Complainant's case may be summarized as follows:

Identity of Respondent's domain names to Complainant's registered mark

The Disputed Domain Names incorporate verbatim Complainant's registered service mark and domain name. A different top level domain (".org" or ".net" rather than ".com") is immaterial and in fact exacerbates the likelihood of confusion, since at one time the ".org" top level domain was intended for non-profit organizations such as Complainant. Complainant provides evidence of a citizen actually confused by Respondent's conduct.

No Rights or Legitimate Interests

Complainant has not licensed or otherwise permitted Respondent to use Complainant's registered service mark. Respondent has never been known by the name Justice for Children. Anticipating a "fair use" defense, Complainant asserts that Respondent "has repeatedly attempted to divert unwitting users to" Respondent's websites by use of the Disputed Domain Names. This, according to Complainant, "enables [Respondent's] message to reach a broader audience." None of the Iterations is a parody (and therefore fair use under United States trademark law) because accessing the Disputed Domain Names and reading its contents are separate acts, while a parody requires the two messages to be contradictory and simultaneous. See People for the Ethical Treatment of Animals v. Doughney, [2001] USCA4 201; 263 F.3d 359 (4th Cir. 2001), Morrison & Foerester LLP v. Wick, 94 F.Supp 2d 1125 (D.Colo. 2000), Planned Parenthood Federation of American, Inc. v. Bucci, 42 U.S.P.Q. 2d (BNA) 1430 (S.D.N.Y. 1997).

Bad Faith

Respondent's bad faith is demonstrated by the following: disruption of Complainant's activities, accomplished by intemperate and inaccurate or unsupported statements on the website; diversion of Internet users seeking Complainant's website, a problem made particularly acute by the fact that the ".org" top-level domain name, included in one of the Disputed Domain Names, is originally intended for non-commercial, non-profit organizations such as Complainant; creating "a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement" of Respondent's website; "disparaging" Complainant and the county judge who handled Respondent's divorce case; providing false or incomplete information to the Registrar in connection with its registration of the Disputed Domain Names. Because the Disputed Domain Names are identical to Complainant's name and official domain name, Respondent must have registered the Disputed Domain Names intentionally to create confusion, "disparage" Complainant, and confuse or divert Internet users.

Respondent I glean the following argument from Respondent's emails: Respondent has duly registered the Disputed Domain Names, and his conduct is protected speech under the United States Constitution.

8. Discussion and Findings

The Complainant must prove the elements set out in paragraph 4(a) of the Policy:

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad faith.

The Complainant bears the burden of proof on each of these elements. Respondent's default does not automatically result in judgment for the Complainant.

Identity and Confusion

The Complainant has plainly established the first element. The Disputed Domain Names incorporate verbatim the Complainant's registered trademark. A separate top level domain name does not dispel any confusion.

Rights or Legitimate Interests

While Panelists in considering criticism sites have used all three clauses of paragraph 4(a) of the Policy to allow or deny a UDRP complaint brought by a mark owner against a critic who has used the mark in a domain name containing the criticism, I believe that paragraph 4(a)(ii), addressing the legitimacy of respondent's rights and interests in the domain name is the Policy element most difficult to determine. A critic's best argument is that he is "making a legitimate non-commercial 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." (Policy, paragraph 4(c)(iii)) The critic argues that his commentary is opinion and non-commercial and therefore within this safe harbor.

There is no majority rule or clear line of decision or authority, by Panelists under the Policy or, at present, by the United States courts, for resolution of the tension between appropriation of another's trademark and a citizen's right to free speech. One line of cases (Bright Line Rule) accepts the principle that sites whose contents are purely criticism are therefore outside the reach of the Policy. Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (<hjta.com>). A more recent line of cases, but by no means a clear majority view, sustains the mark owner's complaint on the theory that, while criticism is permissible, the respondent has no right to use another's mark in the website where the criticism is placed (Initial Interest Confusion Rule). E.g., Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (<covancecampaign.com>).6

This case presents squarely the question of whether a critic may, consistently with the Policy, make use of his target's mark in the domain name for his critical site. In this case, the site content is pure criticism, without any commercial element. The criticism is directly related to the activities of Complainant7 and on a subject of concern to all citizens and directly involving the functioning of government. Respondent has not added a derogatory or uncomplimentary word (e.g., "sucks") in the Disputed Domain Names, thus distinguishing this case from those in which a panel or a court found for Respondent on grounds that use of such a derogatory term would make the domain name unmistakably dissimilar to the mark, so that the Complainant failed to satisfy paragraph 4(a)(i) of the Policy.8 Although Respondent has no disclaimer of affiliation with Complainant on his website, once a reader has begun examining the content he or she will know quickly and unmistakably that its author is not Complainant.

While Respondent's choice of words, writing style, and illogical presentation may be offensive to Complainant or other readers, these features do not, contrary to Complainant's arguments, take them outside the protection of the First Amendment. As social commentary and political speech they are entitled to the same level of protection as afforded any other citizen, including Complainant's members and supporters. Respect for and protection of free speech is not limited to elegant language or good taste. Furthermore, a panelist deciding a complaint under the Policy lacks the means to determine truth or falsity, effect on a mark, or effect on a party's business reputation, of a website's content. These are matters for civil litigation.

The divergent lines of cases are collected, and their respective rationale well set out, in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166, and especially well in the recently decided Howard Jarvis and Covance cases cited above. I will discuss in this opinion only the "initial interest confusion" that is the touchstone of the second line of cases, for it is that principle that leads me to sustain the Complaint here.

The initial interest confusion9 approach distinguishes between confusion of authorship upon reading the content of a website and confusion of an Internet user who is seeking the mark owner's website but is attracted to the critic's website by its similarity (in this case, identity) with a recognized mark.10 That confusion may arise when a user seeks the mark owner's site by entering the mark followed by a common top-level domain, by the critic's use of metadata that include the mark, or because a search engine identifies the critic's website by performing a similar search electronically. In this case, one of Complainant's members could easily find herself at Respondent's site by any of these routes. I believe that this confusion, obviously intended by Respondent, fits not only within paragraph 4(c)(iii) but also the general purpose of the Policy, to prevent cybersquatting, and with the rationale for decisions of Panelists in cybersquatting cases not involving criticism.

Decisions under the Policy focus upon a respondent's use of another's mark in a domain name to attract Internet users to respondent's site. This is true in typosquatting cases and in cases where a respondent selected his domain name in anticipation of subsequent sale to the mark owner. The content of Respondent's sites in these two categories of cases - cases in which respondents almost uniformly lose - is irrelevant to the harm to the mark owner and to the unwary consumer. That harm results from the confusion caused by the initial attraction to the site by means of borrowing the complainant's mark. And that is exactly the harm the Policy was adopted to address.

Respondent's use of the the Disputed Domain Names does not fit entirely within the paragraph 4(c)(iii) safe harbor, since Respondent undeniably intended "to misleadingly divert consumers" by taking advantage of Complainant's registered mark. By intentionally selecting Complainant's mark to present his views, he has not made a legitimate use of the domain names.

I consider initial interest confusion is certain in this case, as the Disputed Domain Names are identical to Complainant's mark. I therefore leave it to other panelists in relevant cases to consider whether use of an additional or modifying word, whether derogatory, distinguishing, or neutral (e.g., campaign in the Covence case) can mitigate the confusion, and whether such mitigation would require a different result. I do note that in the United States the content of a domain name may in certain circumstances itself constitute expression that is entitled to First Amendment protection. But where as here the domain name itself carries no message, trademark law may very well overcome any First Amendment penumbra that might apply11.

My decision in this proceeding no way abridges or chills Respondent's free speech rights. He may continue his social and political commentary and attack against Complainant's activities, on the Internet if he wishes, at another website, so long as he does not appropriate the protected mark of another as his web address. Under the Policy the most revered and thoughtful critic or political speaker may not increase his audience by taking advantage of the renown or attraction that attaches to another's protected mark. Respondent is not entitled to use a soapbox or broadcast frequency owned by Complainant to lure Complainant's audience to his harangue.

Bad Faith

Respondent's conduct does not fit neatly into one of the examples of bad faith listed in paragraph 4(b)(ii) of the Policy: There is no evidence that he registered the Disputed Domain Names to sell them to the Complainant; there is no evidence that he "engaged in a pattern of . . . conduct" to prevent mark owners from reflecting marks in corresponding domain name; the evidence is unclear whether he registered the domain name "primarily for the purpose of disrupting" Complainant's business (emphasis added); and, as noted, there is no indication of any attempt, intentional or otherwise, of using the site for commercial gain. Paragraph 4(b)(ii)'s examples are non-exclusive, however, and on the facts of this case bad faith in registration and use are readily apparent. By analogy to the typosquatting cases, where bad faith is presumed from the intentional similarity to the Complainant's mark, Respondent's registration and continued use were undertaken intentionally and expressly to disrupt Complainant's activities, to prevent Complainant from making use of its own mark in two popular top-level domains, and to expand the audience for his criticism by misleading Internet users as to the "source, sponsorship, affiliation, or endorsement" of his website, by means of the initial confusion discussed in the preceding section.

Estoppel

Estoppel has rarely been raised as a defense in a proceeding under the Policy, and to this panel's knowledge has never been the basis for denying a complaint when all elements of the Policy were established. While I believe that paragraph 15(a) of the Rules allows me to consider it as an element of "applicable law," a panelist in a limited administrative proceeding should not mistake his jurisdiction for that of a court of equity. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616. In the few cases in which estoppel was raised by a Respondent or considered by a Panel the delay was usually relatively short, and there was no basis for finding reliance on the delay.12 Often the websites had not been developed at all. Here though the Respondent changed his content after receiving the cease and desist letter, then continued without complaint for sixteen months with conduct now challenged in the Complaint.

Complainant sent its cease and desist letter in November 2002, then waited until March 2004, to initiate this proceeding. The record before me indicates that throughout this period Respondent continued its use of the Disputed Domain Names for his strident criticism of Complainant's activities and political views. The Panel is surprised that Complainant offers no explanation for this delay, particularly in light of the First Amendment dimensions of this case. But there is no evidence of detrimental reliance, by Respondent or anyone else, on the delay. There is thus no basis for an estoppel finding.

9. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Names, <justiceforchildren.net> and <justiceforchildren.org>, be transferred to the Complainant.

Richard G. Lyon
Sole Panelist

Dated: June 4, 2004

1 A copy of the Registrar's standard agreement is attached as Exhibit O to the Complaint.

2 In this context I note that, in a sense, the dispute clause aims to redress, for certain cases, an imbalance which results from the fact that registrants may register domain names on a showing of nothing more than availability in a data base, without any possible or required verification by the registrar of the registrant's certification that such registration does not violate third party rights.

3 In many states of the United States judges are elected by the general public.

4 See United States Constitution, Amendment 1: "Congress shall make no law . . .abridging . . .the right of the people. . . to petition the Government for redress of grievances."

5 United States Constitution, Amendment 1: "Congress shall make no law . . .abridging . . .the freedom of speech. . . ."

6 As articulated by the panelists in the Covance and Howard Jarvis cases, there is some geographic basis used to determine which of these rules to apply. Constitutional protection of free speech in the United States tends to favor the Bright Line Rule, while the Initial Interest Confusion Rule has gained more favor in other jurisdictions. While under paragraph 15 of the Rules a panelist is free to follow "applicable law," rules of decision that vary by the residence of one or both of the parties would not serve constancy of decisions and equality of parties under the Policy.

7 Compare Pepsico, Inc. v. "The Holy See," WIPO Case No. D2003-0229 (Site used for antiabortion position papers, unrelated to Complainant's business).

8 E.g., Asda Group, Ltd. v. MrPaul Kilgour, WIPO Case No. D2002-0857.

9 The term in the Internet context comes from Brookfield Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F. 3d 1036 (9th Cir. 1999)

10 "The nature of the Internet is such that, on viewing the disputed domain name, the public will think it leads to a website endorsed by the Complainant. . . .[U]pon arriving at the Respondent's website, the public would realize that this is instead a protest site devoted to exposing what the Respondent and others feel are the Complainant's shortcomings." MicroFinancial, Inc. v. Harrison, WIPO Case No. D2003-0396

11 See OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 197-198 (W.D.N.Y. 2000), and cases cited.

12 Estoppel cases are collected and discussed in Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544.