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Anti-Defamation League v. Boris Pribich [2005] GENDND 1612 (22 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Anti-Defamation League v. Boris Pribich

Case No. D2005-0751

1. The Parties

Complainant is the Anti-Defamation League (“Complainant”), a non-profit corporation located in the United States of America and in Israel and Russia. Complainant is incorporated in the District of Columbia, United States of America with its headquarters located in the State of New York, United States of America.

Respondent is Boris Pribich (“Respondent”), an individual located in the State of California, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <adlusa.com> (the “Domain Name”). The registrar is Go Daddy Software, Inc. (the “Registrar”) located in the State of Arizona, United States of America.

3. Procedural History

On July 14, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On July 15, 2005, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On July 16, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On August 1, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

Numerous email communications have been exchanged between Complainant, Respondent and the Center. On August 26, 2005, the Center received the Response of Respondent via email.

On September 7, 2005, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel. Hardcopy of the entire file was forwarded to the Panel for its consideration.

As a procedural matter, Respondent has asked that the Panel defer to the jurisdiction of the courts located in Simi Valley, State of California, United States of America which is the residence of Respondent. The Panel hereby rules that jurisdiction is proper within the Policy and that this matter will proceed. Pursuant to paragraph 4(k) of the Policy, if Respondent feels aggrieved by the Panel’s ruling, he has recourse to present this matter to the courts of Simi Valley, State of California, United States of America. Complainant has consented to such jurisdiction in paragraph 32 of the Complaint.

4. Factual Background

Complainant is a well-known non-profit organization the purpose of which is to resist, anti-semitism, discrimination and prejudice in all forms. Complainant was established in 1913 and has continuously maintained its stated purpose since then.

Complainant uses the phrase “ADL” to identify itself and has several registrations with the United States Patent and Trademark Office in “ADL Anti-Defamation League,” incorporating the phrase “ADL” as its prominent feature. Complainant has registered the domain name <adl.com> and has a website located at “www.adl.com”.

On July 18, 2002, Respondent registered the Domain Name <adlusa.com> on which he posts information critical of Complainant and a range of other entities of different walks of life throughout history. It contains allegations of treason, robbery, corruption and harassment.

5. Parties’ Contentions

A. Complainant’s contentions

i) Complainant contends that it is the owner of a trademark in the phrase “ADL” and has registrations of the trademark “ADL Anti-Defamation League.” Complainant asserts that its trademarked phrase “ADL” together with its registrations in “ADL Anti-Defamation League” constitute the “ADL Mark.” Complainant further asserts that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ADL Mark. 15 U.S.C. § 1115.

ii) Complainant argues that the Domain Name is confusingly similar to the ADL Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the ADL Mark with the addition of the non-distinctive geographical identifier “USA.”

iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because he is not known by the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the ADL Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because he is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondent does not indicate anywhere on his website that he is making political commentary or criticism of Complainant. Complainant alleges that Respondent’s website merely contains false and misleading information about Complainant. Complainant alleges that Respondent’s First Amendment rights to comment and criticism do not extend to the misleading use of a trademark in a domain name, hence creating confusion as to the source or sponsorship of the website. Complainant asserts that any First Amendment protection can attach only to the content of the website.

iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant argues that the Respondent registered the Domain Name after receiving a cease and desist letter from Complainant regarding the use of ADL Mark on a website operated by the Respondent. Thus, Respondent had actual knowledge of the existence of Complainant’s rights in the ADL Mark.

Complainant alleges that Respondent is also operating the website for commercial gain by offering engineering services and products unrelated to any political commentary or social criticism.

Complaint alleges that these circumstances are sufficient for the Panel to find bad faith under Paragraph 4(b)(iv) which defines one set of actions by a respondent considered to be bad faith:

(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.

Complainant also argues that the elements of Paragraph 4(b)(i)-(iv) are not exclusive and that the actions of Respondent should be deemed to be in bad faith given their intentional and misleading nature.

B. Respondent’s contentions

i) Respondent does not dispute that the Complainant has registrations of the trademark “ADL Anti-Defamation League.” Respondent asserts that Complainant has no protection in the phrase “ADL.”

ii) Respondent asserts that the Domain Name is not identical or confusingly similar to the trademark because a reasonable person would not assume the Domain Name is actually being used or sponsored by Complainant. Respondent provides a long list of trademarks and of domain names which use the phrase “ADL” as evidence that an Internet user is not likely to mistake Respondent’s website as having a relation to Complainant.

iii) Respondent asserts that he has rights to or legitimate interests in the Domain Name because he is conducting a legitimate, advocacy enterprise of benefit to the general public. Respondent asserts that the website to which the Domain Name resolves is being maintained for the good of the United States of America as an act of patriotism and not for any commercial gain. Respondent further contends that the content of his website is protected by his First Amendment right to free speech. Respondent notes that he has used the Domain Name for three years without objection by Complainant and implies that the passage of so much time confers upon Respondent property rights in the Domain Name which cannot be taken away.

iv) Respondent denies that he registered or used the Domain Name in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies according to Respondent. Respondent contends that there is no evidence of bad faith based on Paragraph 4(b)(iv) because Respondent is making a fair, non-commercial use of the Domain Name motivated by patriotism as an American. Respondent asserts that the bad faith in this controversy is on the side of the Complainant who has identified him as anti-semitic, causing Respondent to receive insults and threats via email.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772.

Trademark Rights

Complainant contends that it has registrations covering the ADL Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ADL Mark. 15 U.S.C. § 1115.

Respondent does not dispute that the Complainant has registrations of the trademark “ADL Anti-Defamation League.” Respondent asserts that Complainant has shown no enforceable rights in the phrase “ADL.”

Complainant asserts that the phrase “ADL” is the most prominent feature of its trademark registration and argues that it has enforceable rights in the phrase “ADL.” The Panel does not find any registration of the phrase “ADL” in the record which has been presented. To the extent that Complainant asserts rights in the phrase “ADL,” the rights must be based upon common law rights supported by a showing that the phrase “ADL” has acquired secondary association.

Complainant has presented evidence that the phrase “ADL” is the most prominent feature of its trademark registration and of media references to Complainant as “ADL.” Complainant has also registered the domain name <adl.org> which resolves to a website at “www.adl.org” dedicated to Complainant’s mission. With this evidence, Complainant has come forward with some relevant evidence of secondary association.

Respondent’s evidence to counter Complainant’s assertion of enforceable rights in the phrase “ADL” includes a list of trademarks including the initials “ADL.” The list covers marks in wholly unrelated areas such as computer science and medicine. None of the trademarks appears to be related to political commentary. Another list provided by Respondent is an apparent search for the sequential occurrence of the letters “A” then “D” then “L” using a website at “www.abbreviationz.com”. Neither of these lists provides persuasive evidence that the phrase “ADL” is commonly used by others in a way which would diminish the evidence of secondary association shown by Complainant. Therefore, the evidence presented by Respondent is not sufficient to overcome the evidence of Complainant.

Based on the limited record presented in this matter, the Panel finds for purposes of this proceeding that the phrase “ADL” has acquired secondary association in the areas of political commentary. Consequently for purposes of this proceeding, the Complainant has enforceable rights in the ADL Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is confusingly similar to the ADL Mark pursuant to the Policy paragraph 4(a)(i), because the Domain Name wholly incorporates the ADL Mark with the addition of the non-distinctive geographical identifier “USA.”

Respondent asserts that the Domain Name is not confusingly similar to the ADL Mark because the registration of Complainant is for the entire phrase “ADL Anti-Defamation League” and does not cover the phrase “ADL.” In addition, Respondent points out that his use of “ADLUSA” commonly includes an American flag between “ADL” and “USA.” For each of these reasons, Respondent asserts that an Internet user is not likely to mistake Respondent’s website as being sponsored by or affiliated with Complainant.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

In this proceeding, the owner of the trademark does not have to show “likelihood of confusion”, as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this first factor. Under Paragraph 4(a)(i), the question of identity and confusing similarity is routinely evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. It thus is irrelevant, for purposes of evaluating the first factor, whether consumers would avoid confusion by reviewing the content of Respondent’s website or seeing Respondent’s letterhead.

Having determined that Complainant, for purposes of this proceeding, has enforceable rights in the ADL Mark, the Panel notes that the entirety of the ADL Mark is used in the Domain Name. The additional phrase “USA” is a geographic reference commonly understood to refer to the United States of America and is non-distinctive. As noted above, the content of Respondent’s website or the use of the American flag in his letterhead is not sufficient to dispel the confusing similarity between the ADL Mark and the Domain Name.

Administrative panels and arbitrators considering similar cases where registrants simply added a country name to a registered trademark have found such domain names to be confusingly similar. See AT&T Corp. v. WorldclassMedia.com (<attmexico.com>, <att-latinamerica.com>), WIPO Case No. D2000-0553 (transfer ordered where domain names incorporating the AT&T trademark plus a country or place name were found to be confusingly similar to the AT&T trademarks); America Online, Inc. v. Dolphin@Heart (<aolfrance.com>, <aolgermany.com>, <aolireland.com>, <aolspain.com>), WIPO Case No. D2000-0713 (transfer ordered where domain names were confusingly similar because the “addition of a place name generally does not alter the underlying mark to which it is added.”); Wal-Mart Stores, Inc. v. Walmarket Canada (<walmartcanada.com>), WIPO Case No. D2000-0150 (transfer ordered where <walmartcanada.com> domain name was found to be confusingly similar to complainant’s WAL-MART trademark); and Cellular One Group v. Paul Brien (cellularonechina.com), WIPO Case No. D2000-0028 (transfer ordered where <cellularonechina.com> domain name was found to be identical or confusingly similar to the CELLULARONE trademark).

Therefore, the Panel finds that the Domain Name is confusingly similar to the ADL Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Respondent has no relationship with or permission from Complainant for the use of the ADL Mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interests in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] 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.

The Complainant alleges that Respondent is offering no legitimate goods or services on his website, is not commonly known by the Domain Name and that Respondent is making no legitimate noncommercial or fair use of the Domain Name. Complaint argues that any right to political commentary in the text of a website does not allow Respondent to tarnish the ADL Mark by its use in an unauthorized Domain Name. Respondent may be free to make political commentary, but must do so using a Domain Name which is not confusingly similar to the ADL Mark. The Panel finds that Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Name.

Respondent argues that he has used the Domain Name for three years without any objection from Complainant. Respondent further argues that his website is a primary source for information about treason against the United States of America and about the historical record of the expulsion of Jews from countries throughout written history. The Panel finds that this statement is not sufficient to rebut the prima facie showing of Complainant.

The Panel finds that the Respondent has not met any of the criteria under paragraphs 4(c)(i)-(iii) of the Policy. Furthermore, Respondent’s arguments about having operated his website without objection for three years and about being a primary source of information regarding treason and the historical expulsion of Jews is not sufficient to establish rights or legitimate interests in the Domain Name pursuant to paragraph 4(c) of the Policy.

The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c) or any other basis for rights of legitimate interest of the Respondent in the Domain Name. Therefore, the Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(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; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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

Complainant argues that the Respondent registered the Domain Name after receiving a cease and desist letter from Complainant regarding the use of “ADL” on a website operated by the Respondent. Thus, Respondent had actual knowledge of the existence of Complainant’s rights in the ADL Mark. Complainant alleges that Respondent is also operating the website for commercial gain by offering engineering services and products unrelated to any political commentary. Complaint contends that these circumstances are sufficient for the Panel to find bad faith under Paragraph 4(b)(iv).

Respondent denies that he registered or used the Domain Name in bad faith. Respondent contends that there is no evidence of bad faith based on Paragraph 4(b)(iv) because Respondent is making a fair, non-commercial use of the Domain Name motivated by patriotism as an American. Respondent asserts that the bad faith in this controversy is on the side of the Complainant who has identified him as anti-semitic, causing Respondent to receive insults and threats via email.

The Panel finds that the evidence presented in this file is sufficient to support a finding under Paragraph 4(b)(iv) of bad faith.

The Panel further finds that the elements of Paragraphs 4(b)(i)-(iv) are not exclusive. The Panel previously found that within the realm of political commentary Complainant has acquired secondary association in the phrase “ADL.” Given the content of Respondent’s website (as mentioned under the factual background above, the information is critical to a wide range of people and organizations throughout history) and the personal animosity betrayed by the parties in this proceeding, the Panel finds that Respondent had actual knowledge of the Complainant and of Complainant’s use of the ADL Mark. Furthermore there is no reasonable explanation in this record why Respondent would choose to use “ADL” as part of the Domain Name, except to attract Internet traffic relating to Complainant to the Respondent’s statements on a wide range of entities and issues.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and the existence of bad faith given the other circumstances of the relation between Complainant and Respondent. Therefore, the Panel finds that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

Reverse Hijacking.

Complainant has prevailed on its claim and, therefore, has not engaged in reverse hijacking.

7. Decision

The Panel concludes (a) that the Domain Name <adlusa.com> is confusingly similar to Complainant’s enforceable rights in ADL Mark, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Date: September 22, 2005