UDRP Refresher: JackAbramoff.com

This recent decision from the National Arbitration Forum (NAF)1 seemed like a good opportunity for a refresher on the UDRP.2  Former lobbyist and ex-convict Jack Abramoff lost in his attempt to recover jackabramoff.com from the Democratic Congressional Campaign Committee (DCCC).  The domain redirects to a page on the DCCC site asking visitors to sign a petition reminding "Abramoff that [they] remember his role in the Republican Culture of Corruption and will work to defeat ethically-challenged Republicans in 2012."  Also that he shouldn't attempt "to re-write history with a new book and media tour."

The decision came down to Abramoff's inability to establish trademark rights in his name as required by the first of three prongs in section 4(a) of the policy.3  In summary,
Complainant has provided no evidence of actual use of JACK ABRAMOFF as a trademark in connection with particular goods or services prior to the time Respondent registered the disputed domain name.  Complainant claims to be “famous,” yet the record reflects he is, in fact, “infamous”.  In any event, “fame” of an individual name does not equal trademark rights in and to that name.  Complainant would have to prove secondary meaning therein to establish trademark rights.  Complainant has not done so. (emphasis added)
His book authorship in November 2011 and availability for speaking engagements (plus actual speaking engagements in the past few years) didn't meet the panel's evidentiary standard of proof "by a preponderance of the relevant, credible, admissible evidence" to establish rights.  Proceedings in front of WIPO panels apply the same evidentiary standard.4  Ultimately, it is the equitable doctrine of unclean hands that denies Abramoff common law trademark rights in his name prior to DCCC's registration of the domain name on July 6, 2006 since any potential rights would have been acquired based on illegal conduct.  Thus, the panel found a lack of bad faith "because the registration predated Complainant’s possible acquisition of any trademark rights in the JACK ABRAMOFF mark pursuant to Policy ¶ 4(a)(iii)."  This is the consensus view on prior use.

Still, should we let personal names be squatted upon like this?  The Second WIPO Internet Domain Name Process in 1999 considered the issue of personal names at some length, noting that although there's no international agreement on the protection of names and some places might attach rights for notoriety alone, the consensus view in UDRP decisions and the policy itself require establishing trademark rights.  If arguably defamatory speech were at issue on the contested site, Abramoff might choose the difficult option in court of showing defamation of a public figure, among other potential claims.

I'm a bit surprised the panel here doesn't mention DCCC's prior registration of other politicians' personal names (or variations), which might point to a pattern of bad faith registrations under section 4(b)(ii).  A reverse Whois lookup to see other domains registered to 'DCCC' displays the following:
Our records show 169 currently registered domains and 59 previously registered domains with that search string in the WHOIS record. The oldest record in our archive for which your search string appears is for the domain RONPAULVOTES.COM and was captured on 10/06/2000
However, I don't have (paid) access to the complete results to see if DCCC has registered political opponents' names more than twice nor does NAF make the parties' filings available to see if Abramoff brought this up.  A few of DCCC's currently owned domains are shown here, along with this reverse-Google Analytics lookup.  In the hypothetical case of Ron Paul,6 it might be an easier showing considering his activities (according to Wikipedia) prior to becoming a Senator in 1997, though I wonder what weight a panel would give to ethical rules on Senators' activities that might limit their ability to establish "use in commerce" in order to gain trademark rights.  Here, the NDF panel cites a WIPO panel decision denying a political figure's claim for a number of domain names.  Politicians take note, that panel cites two U.S. cases7 for the proposition that a potentially different result might occur if a PAC had brought the claim; there, the hypothetical "Friends of Kathleen Kennedy Townsend" instead of an individual claim.  Under Section 15(a) of the UDRP Rules of Procedure,5 the panel applies law it deems applicable, which decisions consistently hold to include that of the parties' location, so this issue will likely pop up again in the U.S.  I wonder if the same result would hold for a claim by a politician's book publisher or agent.

The panel also doesn't argue with the DCCC's claim of lack of competition between the parties, a factor in U.S. courts' likelihood of confusion trademark infringement analysis which usually wouldn't be discussed (in court) in the absence of threshold questions of the existence and validity of a mark.  This also brings to mind the analysis in the "sucks" and "legitimate non-commercial criticism" decisions, which the panel avoids since DCCC's political speech is "protected by the First Amendment, and, for trademark purposes constitutes nominative fair use."  The political speech further squashes Abramoff's claim by establishing DCCC's rights or legitimate interests in the domain under the second factor of the UDRP analysis,8 although I'm not sure why nominative fair use pops up since it would presume the existence of a trademark.  Also, section 4(c)(ii) of the UDRP isn't discussed, which states that a respondent (Abramoff) could establish rights under the second factor by showing he or she has "been commonly known by the domain name," even without having acquired rights.

The vindictive political implications feel a bit dirty, though far less so given Mr. Abramoff's past and that he isn't an elected official whose name is being squatted upon and actually misleading or confusing people.  Given that it's private arbitration between parties, considerations of the public good or public interest won't come into play as they might in a court.9  And despite the substantial sums involved, the scope of PAC activities is likely to continue to fall outside of the definition of commercial uses that might otherwise tip the scales.  I suppose if PACs and other politically minded organizations wanted to snap up the personal names of opponents and redirect to pages outlining a different agenda, we'd have seen more UDRP decisions on point by now. 

So what's next for good ol' boy Jack?  One article notes that he'll likely sue in court, which section 4(k) of the UDRP allows.  The ACPA is similar to the UDRP, with more explicit protection of personal names covered by the section,10 so perhaps Abramoff's claim will do better there, or lead to an appellate opinion reflecting on the issues raised above.

1. Although WIPO's Arbitration and Mediation Center seems to handle more UDRP challenges each year, the NAF handles a considerable amount along with a few others authorized by ICANN. In addition to the UDRP Procedural Rules, both have supplemental rules for filing (NAF, WIPO) and offer searchable databases of prior decisions (NAF, WIPO), while WIPO also publishes resources including overviews of common issues. WIPO proceedings can only be filed electronically while NAF's e-filing appears more limited. Panelists and parties involved in proceedings, including this one, in both organizations seem to regularly cite one decisions in both.
2. Previous posts here, here.
3. Under the UDRP, the complainant must prove that
(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 of the domain name; and
(iii) [respondent's] domain name has been registered and is being used in bad faith.
UDRP, §4(a)
4. See http://www.wipo.int/amc/en/domains/search/overview/index.html#47
5. In addition to ICANN's Rules, both the NAF and WIPO have supplemental forum-specific rules. Each also publishes a similar flowchart for parties (NAF, WIPO).
6. At the time of this writing, ronpaulvotes.com is available to purchase.
7. As the panel notes, "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."
8. note 3.
9. The criticized and hard-to-define doctrine of initial interest confusion also lurks in the background here.
10. He'll likely run into the same problems about use of his name as a trademark, though. See 15 U.S.C. §1125(d). See also §8131 (formerly §1129) which protects living persons from registration of their names by unauthorized profit seekers.

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