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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kathleen Kennedy Townsend v. B. G. Birt
Case No. D2002-0030
1. The Parties
1.1 The Complainant is Kathleen Kennedy Townsend, an individual resident of the State of Maryland, United States of America, giving an address c/o Friends of Kathleen Kennedy Townsend, at P.O. Box 1735, Annapolis, Maryland, United States of America.
1.2 The Respondent is B. G. Birt, an individual with an address at 4715 Forest Park Avenue, Baltimore, Maryland, United States of America.
2. The Domain Name and Registrar
The domain names at issue are <kennedytownsend.com>, <kennedytownsend.org>, <kennedytownsend.net>, <kathleenkennedytownsend.org>, and <kathleenkennedytownsend.com>, the first two of which domain names are registered with Network Solutions, Inc. and the last three of which are registered with Melbourne IT, Ltd. (the "Registrars").
3. Procedural History
3.1 A Complaint was submitted to the WIPO Center on January 15, 2002. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated January 17, 2002.
3.2 On January 18, 2002, the Registrars confirmed by e-mail that the domain names at issue are registered with the Registrars, are currently in active status, and that the Respondent is the current registrant of the names. The Registrars also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.3 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a three-member Panel were paid on time and in the required amount by the Complainant.
3.4 No formal deficiencies having been recorded, on January 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrars, and ICANN), setting a deadline of February 12, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.5 A Response and Request for Reverse Domain Name Hijacking (the "Response") was received electronically on February 14, 2002. An Amended Response was received by the WIPO Center on February 20, 2002.
3.6 On March 1, 2002, the WIPO Center Sent a Notification of Panel Appointment, appointing Sandra A. Sellers and G. Gervaise Davis III, as Panelists, and M. Scott Donahey as Presiding Panelist. All of the Panelists appointed had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The date on which the decision was to be forwarded to the WIPO Center was March 15, 2002.
3.7 On March 1, 2002, the WIPO Center received a Request for Recusal or Disqualification of Panelist Sandra A. Sellers from Respondent. On the same date the WIPO Center forwarded the Request for Recusal to the Presiding Panelist.
3.8 On March 1, 2002, the Presiding Panelist issued his Order of Presiding Panelist, a copy of which is attached to this Decision. The Order stated that "[n]othing in the [Rules or Supplemental Rules cited by the Respondent] empowers the Presiding Panelist, or indeed a majority of the Panel, to rule on a Request for Recusal of a fellow Panelist. The presiding Panelist therefore has no jurisdiction to deal with this request. Moreover, even if the Presiding Panelist had such jurisdiction, he would decline to exercise it, because such exercise would be inappropriate and unseemly. Accordingly, the Presiding Panelist declines to rule on the Request for Recusal or to consider it for any purpose."
3.9 On March 4, 2002, Respondent forwarded to the WIPO Center his request to submit a Supplemental Filing, attaching a copy of the decision in the matter of Marvin Lundy LLP v. Scott E. Idamond (Scott E. Diamond), WIPO Case No. D2001-1327. On March 12, 2002, the Panel issued its determination to accept Respondent's Supplemental Filing. The Panel granted complainant until March 20, 2002 in which to file a reply. The Panel's time in which to decide the case was extended until April 3, 2002.
3.10 On March 19, 2002, the Panel received a copy of Complainant's Response to the Respondent’s Supplemental Filing.
3.11 On April 2, 2002, the time in which the Panel could issue its decision was extended to April 12, 2002, due to the medical condition of one of the Panelists.
4. Factual Background
4.1 Complainant is currently the Lieutenant Governor of the State of Maryland, serving in the eighth year and second term in that elected position. Complainant is a potential candidate for Governor of the State of Maryland in the election to be held in the fall of 2002.
4.2 Complainant is the eldest daughter of the late Attorney General of the United States Robert F. Kennedy, is the niece of the late John F. Kennedy, former President of the United States, and is the niece of Senator Edward M. Kennedy of Massachusetts.
4.3 Complainant and her possible candidacy for Governor of Maryland is the subject of a number of newspaper articles. Attachments to Complainant's Reply.
4.4 Complainant asserts a common law trademark in her name.
4.5 Complainant has a fund raising committee, the Friends of Kathleen Kennedy Townsend. The committee maintains a web site that is managed by Carol/Trevelyan Strategy Group. ("CTSG"). Response, Annex 4. CTSG has registered the following domain names during the period April 24, 2001, through November 7, 2001: <friendsofkennedytownsed.com>, <friendsofkennedytownsd.net>, <friendsofkennedytownsed.org>, <townsend2002.net>, <friendsofkathleenkennedytownsed.com>, <friendsofkathllenkennedytownsed.net>, <friendsofkathleenkennedytownsed.org>, <friendsofkathleen.com>, <friendsofkathleen.net>, <friendsofkathleen.org>, <kathleentownsend2002.com>, <kathleentownsend2002.net>, <kathleentownsend2002.org>, <kennedytownsendforgovernor.com>, <kennedytownsendforgovernor.net>, <kennedytownsendforgovernor.org>, <kathleenkennedytownsendforgovernor.com>, <kathleenkennedytownsendforgovernor.net>, and <kathleenkennedytownsendforgovernor.org>.
4.6 Respondent registered the five domain names at issue during the period November 15, 1999, through April 23, 2001.
4.7 Respondent has also registered the domain names<kathleenkennedy.net>, <votekathleenkennedytownsend.com>, <votekennedytownsend.com>, <electkennedytownsend.com>, <electkathleenkennedytownsend.com>, and <kennedytownsendvote.com>. None of these names are at issue. None of these names are currently used to resolve to a web site.
4.8 Sometime in the summer of 2001, representatives of Complainant discovered that the above referenced domain names had been registered by Respondent. Complainant alleges that attempts were made during that period to contact Respondent and purchase the names, which Respondent indicated would require great deals of money. Respondent does not apparently deny these contacts, but disputes their substance. Response, Annex 5.
4.9 On November 21, 2001, the Treasurer of Friends of Kathleen Kennedy Townsend sent a letter to Respondent, identifying the 11 domain names related to Complainant that Respondent had registered, laying claim to the names under the Anticybersquatting Consumer Protection Act (the "ACPA") and the Policy. Complaint, Annex 3.
4.10 On November 26, 2001, Respondent sent a letter in response, requesting the purpose of the previous inquiry. On December 19, 2001, the Treasurer sent Complainant another letter, requesting transfer of the eleven identified domain names to CTSG, the web site manager for the committee. By letter dated December 26, 2001, Respondent refused to consent to the transfer of the domain names. Response, Annex 5.
5. Parties’ Contentions
5.1 Complainant contends that Complaint has a common law trademark right in her name. Complainant alleges that Respondent has registered domain names, which are identical and/or confusingly similar to the Complainant's common law trademark. Complainant contends that Respondent has no rights or legitimate interests in respect of the domain names at issue. The domain names at issue do not invoke free speech rights since they can be used only for identification purposes. Finally, Complainant alleges that Respondent has registered and is using the domain names at issue in bad faith, because Complainant registered the domain names at issue for the purpose of selling the names to Respondent, that Complainant has not made any use of the domain names in all the time since they were registered, and that Respondent is engaged in a pattern of conduct intended to prevent Complainant from reflecting her common law trademark in a domain name.
5.2 Respondent contends that the complaint is not in compliance with Uniform Rules, Rule 3(b)(viii), in that it fails to "describe the goods or services [if any] with which the mark is used." Respondent further argues that the domain name involves personality rights and falls outside the scope of the Policy, citing the First and Second Final Reports of the WIPO Internet Domain Name Process. Respondent contends that Complainant's statements regarding offers to sell the domain name at issue were not attested to under oath and were lacking specificity as to time, content, and participants, and therefore must fail as proper evidence. Respondent contends that Complainant's name has not acquired common law trademark status. Respondent alleges that since Complainant is a political figure, Respondent has a protected Free Speech interest in the names. Respondent contends that the fact that Respondent has yet to use the domain names to resolve to a web site is immaterial, because Complainant has yet to declare her candidacy for office. Respondent further argues that Complainant already is in possession of more than sufficient domain names to accomplish her political objectives, and that Respondent is not attempting to prevent her from reflecting her personal name in a domain name. Finally, Respondent argues that the ACPA bars her claim under the UDRP.
Respondent requests that the Panel make a finding of reverse domain name hijacking.
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."
Since both the Complainant and Respondent are domiciled in the United States, and since 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.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
(3) that the domain names have been registered and are being used in bad faith.
We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. Complainant places its chief reliance on the case of Anne McLellan v. smartcanuk.com, eResolution Case No. AF-303a and AF-303b. In that well-reasoned decision, the Panel found that "[t]he Policy does not require that the Complainant hold a registered trademark or service mark. It is sufficient that the Complainant can demonstrate that she has rights in a common law trademark or sufficient rights to ground an action for passing off." "The Panel finds that the Complainant has established common law trademark rights in her name sufficient to support a complaint under the ICANN Policy. Anne McLellan is well known in Canada as the Member of Parliament for the federal riding of Edmonton West, and also as the Minister of Justice and Attorney General of Canada. She is the most senior Government of Canada official in the province of Alberta, which [is] the province in which both Complainant and Respondent reside."
That analysis would apply equally to the facts before us had not circumstances changed from the date on which the case was decided, September 25, 2000. However, almost one year following the issuance of that opinion, the World Intellectual Property Organization issued its Final Report on the Second WIPO Domain Name Process, dated September 3, 2001 ("Second WIPO Report"). In that report, WIPO carefully considered to what degree protection should be extended to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. "Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society." Second WIPO Report, 1999.
This, however, does not close our inquiry. Under the Patent and Trademark laws of the United States, trademarks connected with political activities have enjoyed trademark status. In the case of National Rural Electric Cooperative Association v. National Agricultural Chemical Association, 26 U.S.P.Q. 2d 1294 (D.C.D.C. 1992), at issue was an alleged trademark for a political action committee. The court found such a mark to be protectable. Likewise, in the case of United We Stand America Inc. v. United We Stand, America New York Inc., 44 U.S.P.Q. 2d 1351 (2d Cir. 1997) the mark of a political organization that adopts a platform and endorses candidates acts "in commerce" has trademark rights in the name adopted.
Neither of these cases, however, involved individuals. Both of these cases involved political organizations that adopted platforms, endorsed candidates, and raised campaign funds. To similar effect is the case of CMG Worldwide, Inc. v. Naughtya Page, NAF Case No. FA95641. In that case, the authorized representative for The Diana, Princess of Wales Memorial Fund sought the domain names <princessdi.com> and <princessdiana.com>. The names had been registered while the late princess was still alive, but were not pursued until after her death, and were pursued by the authorized entity for the purpose of fundraising.
The Panel carefully considered whether it was appropriate to draw the distinction concerning who – the individual or the political organization supporting that individual – is engaged in the political fund-raising activities that may constitute commercial activity sufficient to support rights in a mark protected under the Policy. We were compelled to draw such a distinction. For many reasons, political candidates authorize the formation of separate legal entities to raise funds on the candidates' behalf. These reasons generally include the avoidance of the appearance of impropriety, the protection of the individual from legal liability, as well as sheltering the individual from the personal income tax consequences of receipt of large sums of money. This legal separation of individual candidate from fund-raising activity cannot be used as a protective cloak in certain circumstances, but shed when beneficial to do so. Accordingly, we determined that the legal fund-raising entity would have been the appropriate party to bring a complaint based upon service mark rights grounded upon political fund-raising activities.
Here, the claim for the domain names is brought by the individual politician, and not by the political action committee actively engaged in the raising of funds and promotion of Complainant's possible campaign. Had the claim been brought in the name of the Friends of Kathleen Kennedy Townsend, the result might well have been different. But it was not. The Panel finds that the protection of an individual politician's name, no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation as set out in the Second WIPO Report.
This does not mean that Complainant is without remedy. The ACPA contains express provisions protecting the rights in personal names. Complainant is free to pursue her claims in that forum. And, as mentioned, the committee may have rights in the marks that are sufficiently commercial as to entitle the committee to protection under the Policy.
For all of the foregoing reasons, the Panel decides that the Complainant does not have rights in a mark that is protectable under the Policy. The Panel does not believe that this is an appropriate case for a finding of reverse domain name hijacking.
M. Scott DonaheyG. Gervaise Davis III
Sandra A. Sellers
Dated: April 11, 2002
1. Also, the Panel notes that the present case is distinguishable from McLellan in several respects. In McLellan, the individual was not running for election and thus political fund raising was not at issue. Further the respondent in McLellan clearly had attempted to use McLellan's name to channel traffic to the respondent's web site for the respondent's commercial gain.