texansforlawsuitreform.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Texans For Lawsuit Reform, Inc. v. Kelly Fero

Case No. D2004-0778

1. The Parties

The Complainant is Texans For Lawsuit Reform, Inc., Houston, Texas, United States of America, represented by Orlesia A. Hawkins of the law firm Graves, Dougherty, Hearon & Moody, Austin, Texas, United States of America.

The Respondent is Kelly Fero, an individual residing in Austin, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <texansforlawsuitreform.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2004. On September 29, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue, and Network Solutions, LLC 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. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2004. The Center’s email transmission was returned undelivered and post/courier delivery returned for “incorrect address”.

The Respondent did not submit any response. Accordingly, the Center notified the parties (by email) of Respondent’s default on October 22, 2004. There is no indication that this notification was not received by both parties.

The Center appointed Richard G. Lyon as the sole panelist in this matter on October 26, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a non-profit advocacy organization, said to have more than 11,000 members,¹ whose principal objective is (in the words of the Complaint) “eliminating abusive litigation in the State of Texas.” Complainant has a pending application in the United States Patent and Trademark Office to register the mark “Texans for Lawsuit Reform” for various association services. Complainant filed this application on September 13, 2004, claiming a first use in commerce in March 1994.

In summer 2003, citizens of Texas were presented a referendum on whether to amend the State’s constitution to permit the legislature to set limits on non-economic damages awarded to plaintiffs in certain civil lawsuits. This referendum was hotly contested and generated widespread publicity throughout the state. Advocacy groups supporting or opposing this referendum spent substantial amounts of money on public advertisements urging the voters to back their perspective positions on the matter. Complainant was a prominent supporter of this referendum.

Respondent registered the disputed domain name on June 9, 2003, in the midst of the public debate on the referendum. At that time Respondent used the website to express views directly contrary to those advocated by Complainant, urging voters to reject the constitutional amendment.

Currently Respondent makes no use of the disputed domain name. An Internet user receives the standard “this page cannot be displayed” response to an attempt to reach the disputed domain name.

5. Parties’ Contentions

A. Complainant. Complainant contends as follows:

Identical to a mark in which Complainant has rights. Complainant cites its pending trademark application and claims to have used its name in commerce since 1994. The disputed domain name is identical to the Complainant’s name except for the addition of a top-level domain (.com).

Rights or legitimate interests. Respondent has never been known by the disputed domain name and has no trademark or service mark rights in it. Respondent does not use the mark in connection with any existing business, or indeed for any purpose at all.

Bad faith. Respondent’s bad faith is shown by:

- Registering the name with an intent to divert Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

- Registration and use with intent to tarnish or disparage Complainant’s mark by creating this likelihood of confusion.

- Registration of the mark to prevent Complainant from making use of its own name in a domain name.

- Registration of the disputed domain name as a deliberate attempt to disrupt Complainant’s activities, by using the disputed domain name to express political views directly opposite to those advanced by Complainant. This makes Respondent a “competitor” of Complainant.

B. Respondent. Respondent has not replied to the Complaint.

6. Discussion and Findings

Jurisdiction. A preliminary issue in cases such as this one, where no Response has been filed and there is no evidence in the record as to whether the Respondent actually received the Complaint, is whether the Panel has obtained jurisdiction over the Respondent. Paragraph 10(b) of the Rules requires that “each Party [be] given a fair opportunity to present its case”. Paragraph 2(a) of the Rules requires that the Center employ “reasonably available means calculated to achieve actual notice to Respondent”.

As outlined above, the Center employed each of the measures listed in Paragraph 2(a) of the Rules. The Center has advised the Panel that it does not ordinarily go beyond the express requirements of Paragraph 2(a) of the Rules.

As a general rule and in the circumstances of this case, the Center discharges its responsibility under the Rules to employ “reasonably available means calculated to achieve actual notice to Respondent” by its strict compliance with Paragraph 2(a) of the Rules. More is required only in exceptional circumstances, including a showing that additional action is likely to provide actual notice and that compliance with the Rules may not. Respondent can blame no one but himself if he has not received actual notice of these proceedings, since that is the natural consequence of his failing to provide accurate or current contact information to the Registrar.²

Respondent has consented to the Policy by contract, in its agreement with the registrar. Even if he did not receive actual notice of the Complaint, there is no unfairness to him when Complainant and the Center complied with the prescribed notice procedure.

Respondent was “treated with equality” and “given a fair opportunity to present its case” so the Panel has jurisdiction over Respondent and the disputed domain name.

Policy Elements. The Complainant must prove the elements set out in Paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 Panel shall issue its decision based on the Complaint, the evidence presented, the Policy, the Rules, and the Supplemental Rules. Complainant bears the burden of proof on each of these elements. Respondent’s default does not automatically result in a decision for Complainant.

Identical to a mark in which Complainant has rights. As the disputed domain name incorporates verbatim the phrase in which Complainant asserts rights, the Panel considers whether Complainant has established rights in its name sufficient to invoke the Policy.

The allegations in the Complaint plainly accomplish this. Regrettably, however, evidence supporting those allegations is sparse. For example, Complainant has provided no evidence to support its allegations of thousands of members or regular use of its name since 1994.

Unsupported allegations of legal conclusions are of no moment under the Policy. Proof from which the panel may make the necessary conclusions is required. Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805. In the Panel’s view, a complainant must also prove its factual allegations with evidence, even in the absence of a response.³ To be sure, paragraph 3(b)(xiv) of the Rules requires a party’s certification of the accuracy and completeness of the information in the pleading. That certification, however, cannot overcome a dearth of hard evidence, especially when counsel (who usually lacks personal knowledge of the factual allegations for which the party is responsible) submits a pleading on a party’s behalf. Panels regularly require a respondent to produce evidence of legitimate use to overcome a complainant’s prima facie case to the contrary under paragraph 4(a)(ii) of the Policy (e.g., Kevin Garnett v. Trap Block Technologies, FA 128073 (NAF 2002)); no less is required of a complainant, who bears the burden of proof on each element of the Policy. See e.g., The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661; Lyons Partnership LP v. NetSphere, Inc., WIPO Case No. D2004-0118.

Addressing the proof provided in this matter, Complainant has shown use in commerce at the time Respondent registered the disputed domain name. Its trademark application asserts use in commerce since 1994. Though the statements in this application are arguably self-serving, a trademark applicant is subject to criminal and civil sanctions for false statements. Respondent resides in Texas and from the content of his website was clearly aware of Complainant and Complainant’s message. There is evidence that his selection of Complainant’s name was intentional. This evidence suffices -- just barely-- to prove rights in its name as a common law mark, sufficient to invoke the Policy.

Rights or Legitimate Interest. The descriptions of Respondent’s use of the disputed domain name in summer 2003, suggest that Respondent’s purpose was criticism of Complainant and the views Complainant advocated. This case therefore raises the as-yet-unsettled question of whether use of another’s mark for political commentary and criticism constitutes a legitimate non-commercial use under Paragraph 4(a)(ii) of the Policy. This issue involves Respondent’s free-speech rights given the social and political issues surrounding the referendum.

The undersigned Panel recently discussed at length this issue and the split among panelists in resolving it in Justice forChildren v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175, and followed the “initial interest confusion” approach to political criticism. Under that approach appropriating another’s mark for use as the web address for the criticism site is not legitimate use of the domain name. The Panel reaches the same conclusion, for the same reasons, in this proceeding.

Complainant has made out a prima facie case of no right or legitimate interest and Respondent has not overcome that showing. This element of the Policy has been satisfied.

Bad Faith. As in Justice forChildren v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175 case, Respondent’s bad faith in registration and use of the disputed domain name has been established. Respondent’s registration and use during the referendum campaign were undertaken intentionally and expressly to disrupt Complainant’s activities, to prevent Complainant from making use of its own mark to broadcast its own views, and to expand the audience for criticism by misleading internet users into the “source, sponsorship, affiliation, or endorsement” of Respondent’s website, by means of the initial confusion caused by selecting Complainant’s mark for his web address.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <texansforlawsuitreform.com>, be transferred to the Complainant.

Richard G. Lyon
Sole Panelist

Dated: October 31, 2004

¹ As discussed below, this is one of several factual allegations in the Complaint that is unsupported by any evidence.

² In Respondent’s “Service Agreement” with the Network Solutions, Respondent undertook to furnish and update “current, complete, and accurate” contact information.

³ Complainant’s lack of proof is inexplicable, since it could have been easily furnished in a short affidavit supported by readily obtainable business records.