Although complaints under the UDRP brought by politicians in the past have sometimes failed on the inability to prove an unregistered trademark, the recent decision in William J. Clinton and The William J. Clinton Presidential Foundation v Web of Deception (NAF Case No. FA0904001256123) failed on the ground of bad faith; that last element could not be proved and the case failed.
The case concerned former US President Bill Clinton and decided in effect that a registrant who registers a domain name in, say, Bill Clinton’s name and then links it to the website of a rival political party, in Clinton’s case the Republican Party, has not done so in bad faith and can keep the domain name registration.
Or at least, to be more precise, bad faith could not be shown in the case in question.
President Clinton had taken exception to the Respondent’s having registered three domain names,< williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> and possibly greater exception to the fact that the Respondent went by the name Web of Deception.
Even worse, the Respondent had then linked the domain names to the Republican National Committee’s websites, giving the false impression that Clinton had changed sides or perhaps had always been a secret Republican rather than the Democrat we always believed him to be.
The former President, like all Complainants under the UDRP, had to prove three things to win and have the three domain names transferred to him. First, he had to show that he had an unregistered trademark in his own name. Unlike other celebrities like Madonna and J K Rowling, he did not have a registered trademark and had to prove he his name was associated with particular goods or services. This he did, because he had written several books and made money from them. So he won the first point.
Secondly, he had to prove that the Respondent had no legitimate interest in the domain name. Again, Mr. Clinton was able to do this easily. The Panelist found that Mr. Clinton had made out his prima facie case and that it had not been rebutted by the Respondent. He said:
“Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy 4(a)(ii). Respondent’s rebuttal fails. Respondent’s disputed domain names resolve to an official website related to the Republican Party, which is the party in direct opposition to the political party Complainant endorses. Such use of the disputed domain names does not equate to a bona fide offering of goods and services pursuant to Policy 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).”
But it was at the third hurdle that Mr. Clinton stumbled and fell. Here, he had to prove that the Respondent had registered and used the domain name in bad faith. This he could not do.
To prove bad faith, the ICANN Policy allowed him to prove any one of four things. He could prove that the domain names had been registered to resell them, as a form of greenmail. Or he could prove that the Respondent had been trying to stop him, Clinton, from registering the same domain names. Another option open was to show that the respondent had been trying to disrupt the former President’s business. None of those options seemed likely to succeed.
In fact, it was only the next option that had a chance of success. That option was that by registering the domain names and diverting them to the Republican website, Web of Deception had been misleading internet users seeking information on the former President.
The Panelist appointed to decide the case stated the issue accurately enough;
“Allegedly, the disputed domain names resolve to the official Republican party website in direct competition with (Mr. Clinton), giving the impression (he) is affiliated with its political competitor.”
But it was the answer that the arbitrator gave to this proposition that has caused a great deal of interest.
The decision on this issue was expressed very concisely. The Respondent, it was said, had not transgressed the Policy and had not acted in bad faith, either in registration or use of the domain name. By implication, but only by implication, his argument that he was exercising his rights of free speech under the First Amendment and was acting in the public interest, by showing how easy it was to register domain names, may well have been accepted or at least partly influential in the decision.
So the Clinton domains remain where they were, in the ownership of the Web of Deception and continue to resolve to Republican websites.
The decision has given rise to a lot of comment. A number of website contributors have said that, of course, the conduct of the Respondent was a clear case of attempting to mislead people.
But would voters be misled? Astute voters may not be misled at all. The moment they are directed to the site of a political party that they know is the arch enemy of the person whose domain name has been registered, they will realise that something is wrong and, from that point on, they would not be misled.
Possibly. But what about the case of a politician who promotes views alien from those of his or her party and different from those you would expect to hear that politician espousing. Finding that the domain name took you to the website of an opposing political party would add to the confusion already present.
Moreover, this could be doubly confusing if the politician concerned is an independent or from a minor party and with policy stands that are not well known. In that case, on complicated issues like carbon trading, voters could be easily misled when they arrive at the website of a party with which they have not previously associated the politician.
Of course, this is not the first time that a politician has brought in a Complaint to try to have a domain name transferred.
Some of those cases have failed, but usually it has been because the politician has not had a registered trademark and has not been able to prove a common law or unregistered trademark.
The cases started with Anne McLellan v. Smartcanuk.com, AF 0303 (eResolution Sept 25, 2000). The domain names were <annemclellan.com> and <annemclellan.org>. The panel found that the Complainant, a Member of Parliament, who was also the Minister of Justice and Attorney General of Canada, had acquired sufficient common law rights in her name.
The part of the Panel’s decision devoted to the issue of the unregistered trademark is quite brief. It merely said:
“This 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 the province in which both the Complainant and Respondent reside.”
In contrast, Kathleen Kennedy Townsend v. B. G. Birt, (WIPO Case No. D2002-0030) was a case of a politician who failed to establish common law trademark rights, because it was held that Ms Kennedy Townsend was a public figure but her name was not associated with goods or services.
The distinguished three person panel deciding then case therefore found that Ms Townsend, the daughter of the late Senator Robert Kennedy, did not have an unregistered trademark in her own name.
It was put thus:
“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.”
It drew a distinction, however, between Ms Townsend herself and the fund- raising entity that was used to raise money for candidates in the present case and also between the present case and a situation where a trademark owner was exploiting intellectual property, as had been done in Princess Diana’s Case, CMG Worldwide, Inc. v. Naughtya Page, (NAF Case No. FA95641). These circumstances, the Panel said, would both have provided the requisite commerciality, as both of those entities were engaged in commerce.
As the panel put it:
“… 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.”
The panel also explained why it was not following the previous and inconsistent Anne McLellan v. smartcanuk.com Case, which of course had decided in favour of a politician and not a fund raising entity having common law trademark rights. It justified not following McLellan in the following way, that a year after the decision had been given:
“…the World Intellectual Property Organisation 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."
So for that reason the panel concluded that it was right in not allowing a finding of common law trademark rights in the case of Ms Kennedy and that the previous decision in McLellan, if not wrong, had been overtaken by events.
Then in 2002 was the unsuccessful case Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, (WIPO Case No. D2002-1073), a quasi political case:
“Complainant Gloria Feldt is the President of Complainant Planned Parenthood Federation of America, Inc. (“Planned Parenthood”). Complainant Planned Parenthood is a not-for-profit corporation organized and existing under the laws of the State of New York.
For almost 30 years, Complainant Feldt has spoken publicly in support of women’s reproductive rights. Complainant Feldt has established relationships and contacts based on her personal reputation and credibility. Complainant Feldt has been profiled in the press as a pioneer of the reproductive freedom movement and is the author of many articles on the subject, as well as the author of a book that was scheduled for publication in January 2003 on the subject of reproductive freedom. She has given testimony before legislative and administrative agencies on the subject. Complainant Feldt has given numerous public lectures and speeches at colleges, universities, and other institutions and has appeared on many television and radio news shows.
Complainant Planned Parenthood is a non-profit organization incorporated in 1922, dedicated to reproductive health care services and information for men and women. It has more than 850 health care centers in 49 states and the District of Columbia.”
But did that give her common law trademark rights in her name? The answer was ‘No’. The rationale was given by the majority of the panel as follows:
“Complainants have failed to show that the personal name at issue, “Gloria Feldt,” has been used in connection with the commercial offering of goods or services or that the personal name in question has acquired secondary meaning as the source of such goods or services. It is certainly true that Ms. Feldt has acquired a reputation as an articulate spokesperson for freedom of reproductive choice. However admirable that might be, it is not enough to acquire a common law trademark or service mark. Accordingly, the panel finds that Complainant Feldt does not have rights in a trademark or service mark.”
A concurring but separate opinion said that:
“…use of the term “commercial” should not be understood to suggest that only for-profit enterprises, or individuals, may acquire rights in common law service marks[7]. …If Ms. Feldt is providing reproductive rights “services”, we should not hold her to the requirement of doing so for a profit.” But she was not providing those services personally.”
An interesting and instructive illustration of the principle is found in Hillary Rodham Clinton v. Michelle Dinoia a/k/a SZK.com (NAF case no. FA0414641). Like some other celebrities, the then Senator Clinton was able to establish a trademark in her own name, not simply because she was famous and not simply because she was a Senator and the wife of a former President, but because in addition to that, she earned income from trade or commerce under her name as the author of several books that had big sales and produced income.
In a contrast to the Hillary Clinton decision, although decided before it, a panelist in Mark Warner 2001 v Mike Larson (NAF case no. FA95746) found that the Complainant had common law rights in his own name because he was:
“…a former candidate for the U.S. Senate and is the presumptive candidate for Governor of the Commonwealth of Virginia in 2001.” [1]
The facts were that the “Respondent registered the domain name “markwarner2001.com” on February 20, 2000 and registered the domain name “warner2001.com” on February 25, 2000. When accessed, both web sites purport to be “warner2001.com” and feature a banner announcement stating “Coming In The Fall of 2000”, an outline of the Commonwealth of Virginia, and an e-mail address. Additionally, these web sites state, “This site is not affiliated with any registered political party or candidate for public office.” Neither web site provides any other information, commentary, or links.”
The Respondent argued that there was no trademark and then that there was no bad faith. He also argued that:
“…his registration of the domain names in question are not actionable given the political and non-commercial context of their use and that Complainant seeks to squelch the Respondent’s right to engage in constitutionally protected free speech.”
One would have thought that that was a persuasive argument. However, the panel found in favour of Mr. Warner and justified its decision in finding there was a common law trademark in the following way:
“Mr. Warner, who is not a movie star, an NFL quarterback, or a member of the Canadian Parliament, has, in the opinion of the undersigned, established sufficient common law rights in his name. Mr. Warner is a former candidate for the U.S. Senate and is the presumptive candidate for Governor of the Commonwealth of Virginia in 2001.”
But there was no mention of a commercial or financial aspect which had been thought to be essential and really none of the sort of evidence generally expected to be adduced before a finding of common law trademark is made.
In that case, on the later and separate issue of rights and legitimate interests, the panel found that the Respondent had no right or legitimate interest in the domain name because he could not bring himself within any of the provisions of the Policy.
So the Complainant won on that issue as he had on the first issue, identicality or confusing similarity. But, as in the recent William Clinton Case he was not able to show bad faith in the Respondent both in registering and using the domain name.
The Panel’s decision on bad faith was:
“There is also no evidence that Respondent is or ever will attempt to attract internet users to its web site for commercial gain. See Maureen A. Healy v. Andreas Kuhlen (WIPO Case No. D2000-0698 Aug. 24, 2000) (finding no bad faith where Respondent registered the domain name “dvdnews.com” in order to create a “web of DVD sites” or a DVD community despite the fact that Complainant had registered mark for DVD NEWS). While the use of a candidate’s name or campaign as a domain name will attract internet users, the attraction is arguably for political, not commercial gain.”
So the Complainant failed on bad faith.
Another politician also lost, namely Mark Partridge. A note on this case [2] says:
“A similar result was reached in Robin K.A. Ficker v. John W. Thouhy, 305 F.Supp.2d 569 (D.Md. 2004). The defendant registered the domain name and used it to provide summaries of critical news stories during Robin Ficker’s run for Congress in 2004. Ficker sought a TRO. The court denied relief on several grounds. First, the Court concluded that the web site was clearly a political web site and was protected by the First Amendment. Second, because the site included a disclaimer stating that it was an unofficial site and not “Robin Ficker for U.S. Congress,” visitors would not be mislead. Finally, the court questioned whether the ACPA protected “personal names that are not trademarked” where the web site was not a commercial use.”
The most that can be said is that there is still room for debate on this issue and that future political cases will depend on their own facts, as of course they should.
But if politicians want to avoid being the victims of mischief or fun, they should follow the advice given to businesses; register all the domain names that have any similarity with your companies’ name and products. It will cost a bit, but in the long run it will seem cheap.
[1] He subsequently became and served as Governor of Virginia, was nominated as a candidate for the Senate, was mooted as a possible Democrat Party candidate for President of the USA and delivered the keynote speech at the Democrat Convention in August 2008.
[2] http://www.circleid.com/posts/personal_names_politics_and_cybersquatting