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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Freedom of Information Foundation of Texas v. Steve Lisson
Case No. D2001-0256
1. The Parties
The Complainant in this administrative proceeding is Freedom of Information Foundation of Texas, whose address is 400 S. Record Street, Suite 240, Dallas, Texas 75202, U.S.A.
The Respondent is Steve Lisson, whose mailing address is P.O. Box 2013, Austin, Texas 78768-2013, U.S.A.
2. Domain Name and Registrar
The domain name in dispute is as follows, <foift.com>. The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on August 11, 2000.
3. Procedural Background
On February 16, 2001, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on February 28, 2001.
Respondent filed a Response, which was received by WIPO via e-mail on March 19, 2001. The Response was determined to be deficient in a number of respects and Respondent was given five (5) days in which to cure the deficiencies. On March 23, 2001, Respondent e-mailed WIPO to the effect that an amended response had been forwarded. However, in an e-mail dated March 30, 2001, WIPO indicated that it had not received an amended response and requested that such response be sent by e-mail and in hard copy as set out in the Rules. The amended response was never received by WIPO.
The file also includes various other e-mails, dated March 23, April 3, and April 6, 2001. The Panel, exercising its discretion, declines to rely on any of these e-mails in reaching its decision.
The decision of the Panel was due to WIPO on or before April 17, 2001.
4. Factual Background
Complainant The Freedom of Information Foundation of Texas, Inc. was conceived October 24, 1978, in Dallas, Texas, as a broad based, independent, non-profit organization. Its board of directors includes editors and reporters, broadcasters, photographers, professors and attorneys who do pro bono legal work on First Amendment issues for the Foundation. The Foundation's mission is to serve as a statewide clearinghouse of information on Freedom of Information issues and to take action in the public interest on Freedom of Information problems.
Complainant also provides speakers to professional and civic organizations who want to know more about their rights to public information. The Foundation also publishes a newsletter, "FOI Focus," serves as a First Amendment resource for teachers through its Education for Freedom project and curriculum aimed at teaching the next generation, and operates a telephone hotline to field questions or complaints. Complainant has a web site at the domain name foift.org.
In 1998, Respondent Lisson approached Complainant seeking assistance in retrieving documents through the Texas Attorney General's Office. Complainant assisted Respondent by writing a brief and contacting various governmental organizations. Apparently, Respondent was dissatisfied with the assistance he received.
Respondent, thereupon, registered the domain name in dispute with NSI. He also registered other domain names consisting in whole or in part of the names of various individuals who attempted to assist him. Respondent's foift.com web site consisted, in part, of a August 31, 2000 letter from Respondent to one of Complainant's staff,
Mr. Wiley, alleging various fraudulent solicitations, hoaxes, and conspiracies between the Texas Attorney General, Complainant, and a Texas-based law firm. Respondent also alleged at his web site that these entities have engaged in criminal activities. At the top of the web site, the following "disclaimer" appeared: "not necessarily affiliated with foift.com."
The Panel takes judicial notice of the fact that, at least as early as February 27, 2001, that is, prior to commencement of this proceeding, Respondent's web site became non-operational.
5. Parties' Contentions
Complainant contends that its has rights in the term FOIFT because, while the term is not registered, it is "at the very least a suggestive mark," and, thus, inherently distinctive. Alternatively, Complainant asserts that the term FOIFT has acquired secondary meaning. In support of such assertion, Complainant notes that it has used the FOIFT acronym since 1978, its telephone hotline receives about 200 calls per month, it provides speakers to professional and civic organizations, it publishes a newsletter, "FOI Focus," it serves as a First Amendment resource for teachers, and offers advice to agencies regarding compliance with the law. A Lexis-Nexis database search for the term "Freedom of Information Foundation of Texas" in the "Texas News" section of the database returned 403 articles mentioning the Foundation. See Complaint, Annex 5. A search in the same database for the term FOIFT yielded 48 articles. See Complaint, Annex 6.
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name, since the evidence establishes that Complainant has not licensed or in any way authorized Respondent to use the disputed name.
With respect to the issue of "bad faith" registration and use, Complainant argues that Respondent registered the disputed domain name, as well as the domain names consisting in whole or in part of the names of Complainant's staff, to disrupt the business of the Foundation and the board members who attempted to help him. "He is confusing the public about the important services provided by the FOIFT." An affidavit submitted by the Complainant's executive director indicates that, upon information and belief, "I believe that numerous citizens attempting to reach the Foundation's Website have inadvertently reached Mr. Lisson's Website." See Complaint, Annex 4.
Respondent's "Answer" consists simply of a general denial of "Complainant's false, fraudulent and malicious accusations ***, requests both immediate dismissal with prejudice and referrals to appropriate prosecutorial authorities for charges including perjury, disbarment and harassment."
6. Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant has met all the requirements set forth in para. 4.a. of the Policy.
First, there is no question that the domain name in dispute is confusingly similar to the term FOIFT. The inclusion of the top-level domain name .com in Respondent's domain name is without legal significance.
A more difficult question is whether Complainant has common law rights in the term FOIFT. Based on the evidence presented, the Panel concludes that it does. The evidence does not support a determination that FOIFT is a readily recognizable acronym. See Avtex Fibers, Inc. v. Gentex Corp., 223 USPQ 625 (TTAB 1984) (PFR held descriptive as a readily recognizable acronym for "permanently fire retardant" for fabrics). Moreover, the evidence supports a determination that, even if FOIFT is merely descriptive, the term has acquired the necessary distinctiveness to be protectable as a service mark. The evidence indicates that Complainant has used the term FOIFT substantially continuously and exclusively for over twenty (20) years and that the public associates such term with Complainant.
Further, the Panel determines that Respondent has no rights or legitimate interests with respect to the domain name, within the meaning of para. 4.c. of the Policy. As noted above, Respondent’s foift.com web site is not currently active; thus, it is clear that Respondent is not using the domain name in connection with the bona fide offering of goods or services. There also is no evidence that Respondent is commonly known by the domain name or that any current use is noncommercial or "fair.". Inasmuch as Respondent’s web site appears currently to be inactive, the Panel declines to rule on whether the content of the August 31, 2000 letter, previously found at Respondent’s foift.com web site, constituted legitimate noncommercial use, within the meaning of para. 4.c. (iii) of the Policy.
Finally, the Panel finds evidence of the requisite "bad faith" registration and use of the domain name. Respondent's "passive" holding of the domain name provides support for a determination of "bad faith" registration and use. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (Feb. 18, 2000). Moreover, the evidence also indicates that Respondent registered the domain name in dispute in order to prevent Complainant from using the mark in a corresponding domain name and has engaged in a pattern of such activity, within the meaning of para. 4.b of the Policy.
In view of the above, the Panel grants Complainant's request for transfer to it of the domain name <foift.com>.
Jeffrey M. Samuels
Dated: April 22, 2001