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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sutherland Institute v. Continuative LLC

Case No. D2009-0693

1. The Parties

Complainant is Sutherland Institute, Salt Lake City, Utah, United States of America, represented by Ray Quinney & Neberker, P.C., United States of America.

Respondent is Continuative LLC, Salt Lake City, Utah, United States of America.

2. The Domain Name and Registrar

The disputed domain name <sutherlandinstitute.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2009. On May 27, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On May 27, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 Respondent of the Complaint, and the proceedings commenced on May 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent`s default on June 19, 2009.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 23, 2009. 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.

By email dated June 10, 2009, Complainant transmitted to the Center and Respondent a supplemental submission in the form of a Second Declaration of Lisa Montgomery, dated June 10, 2009, stating information with respect to alleged Internet user confusion involving the disputed domain name taking place on or about May 29, 2009. Because this information is of a factual nature relevant to this proceeding, and relates to events occurring subsequent to the filing of the Complaint, the Panel accepts the supplemental submission.

At the request of the Panel, by email dated July 7, 2009 the Center advised the parties that the due date for transmittal of the Panel`s decision was extended until July 10, 2009.

4. Factual Background

Complainant is self-described as a "non-profit state-based public-policy think tank" incorporated and operating in the State of Utah, United States of America.

Complainant was incorporated in 1994, commenced operations in 1995, and since at least August 1999 has maintained an active website at "www.sutherlandinstitute.org". Complainant has not sought to register a trademark or service mark with the United States Patent and Trademark Office (USPTO).

Complainant asserts federal common law service mark rights in the term SUTHERLAND INSTITUTE. Complainant indicates that its services consist of "non-profit, public-policy advocacy services". By reference to the content of the website operated by Complainant, it appears that those services mainly consist of the development and publication of political advocacy position papers, and the promotion of its policy viewpoints in public fore, including with the intention to influence legislative processes within the State of Utah. Complainant has provided copies of several articles in the mainstream Utah press (e.g., the Salt Lake Tribune) dating back to 1996 referring to the "Sutherland Institute" and its policy advocacy. Complainant asserts that it is well-known by its service mark within the State of Utah. A simple Google search by the Panel of the term "sutherland institute" returned over 400,000 hits. The first five pages of the results (and the limit of the Panel`s inquiry) virtually entirely referenced Complainant (Panel research of July 9, 2009). The third listing on the first page of the Google search results identified Respondent in this proceeding (with the first two listings referring to Complainant).

According to the Registrar`s verification, Respondent is the registrant of the disputed domain name. The Administrative and Technical Contact, at the same address as Respondent, is "West, Nick". According to the Registrar`s verification, the record of registration of the disputed domain name was created on May 16, 2006.¹ Based on copies of correspondence between Nick West and Respondent`s president, the Panel treats Respondent`s Administrative and Technical Contact, Mr. West, as acting on behalf of the registrant of the disputed domain name, Continuative LLC.

The disputed domain name <sutherlandinstitute.com> is being used by Respondent to direct Internet users to a website homepage headed with a stylized script banner "The Sutherland Institute" that is identical to the stylized script banner "The Sutherland Institute" heading the website home page of Complainant at "www.sutherlandinstitute.org", except that the white stylized script used on Respondent`s website is placed against a green background while the white stylized script on Complainant`s website is placed against a blue background. Both website homepages use the same text block/module organization formatting. On the far right block, both website homepages use a text block headed with the terms "Sutherland Governing Principles". Both website homepages have identical horizontal blocks linking to internal pages, with identifiers for "Home", "About Us", "Events", "Newsroom", "Legislation", "Journal", "Contribute" and "Contact". The color scheme differs as between the two websites. Respondent`s website principally uses green, yellow and white. Complainant`s website principally uses blue, gray and white. Respondent`s website home page includes in an upper left-hand block a picture of residential housing captioned by the statement "Private Property as the cornerstone of economic freedom". A computer printout of Complainant`s website as of April 29, 2009 shows a row of residential housing set against a snow-covered mountain background with the caption "Private Property as the Cornerstone of Economic Freedom".

The text within the boxes headed "Sutherland Governing Principles" differs as between the website homepages. Respondent`s stated governing principles are:

"Oppose The Gay Agenda

Limited Government Except When We Don`t Get Our Way

Our Bigoted Definition of Family

The One True Religion

Personal Responsibility & Taking Away Others Choice

Anti Same Sex Marriage Legislation

Free Markets, Exclude Homosexuals from Places of Employment"

Complainant`s governing principles are:

"Limited Government

Family

Private Property

Religion

Personal Responsibility

Charity

Free Markets"

Respondent`s website includes within four vertically arranged text boxes information headed "Join The Si Network", "The Natural Family: A Patently Wrong Manifesto", "Transcend Series Concludes with ‘More Brainwashing Sheep`", and " Sutherland In The News". Complainant`s website also includes four vertically arranged text boxes that include "Stay Connected by Signing up for Sutherland`s Newsletter", news items, and announcements concerning materials and events. Complainant states its "mission" as follows:

"The Sutherland Institute is a conservative public policy think tank committed to shaping Utah Law and policy based on a core set of governing principles.

We strive to make Utah an example of good government for the rest of the nation and a great place to live, work and raise a family."

Respondent`s website homepage includes two disclaimers, each in a small font. At the end of the text in the third vertical column the following appears:

"NOTE: This website is not affiliated with, endorsed or sponsored by the Sutherland Institute. It is a parody site, an opposing political platform."

At the bottom of the page the following appears:

"Copyright © 2009 SutherlandInstitute.com All Rights Reserved. | This site is a parody of The Sutherland Institute, a Southern Utah based ‘think tank` that tries to mask its ‘anti-gay agenda` as a do good public policy and political organization. Obviously we are not affiliated with, endorsed or sponsored by the Sutherland Institute but we still love them anyway. Want to contact us? PO Box […] Salt Lake City, Utah 84125-0055"

Internal links on Complainant`s website are operational and direct Internet users to various information and materials. The link headings on Respondent`s website are not operational.

Complainant provided a copy of an e-mail message appearing to have been sent from Respondent to Complainant`s president on February 19, 2009, providing:

"Mr. Paul Mero,

Your `opinion` during the debate was nothing more than confrontational statements intended to ridicule your opponents lifestyle and their value. All you really did was to demean yourself by exposing your own shortcomings. When are you going to concede that you have to show a modicum of effort working towards solutions, offering ways to reach a consensus or move forward, not just hurling insults. Your confrontational style can only get you so far.

Since you use the only legal tactic you have against the gay communities, your voice and your wallet. We will be using our newly formed institute, our voice and our wallet... to be called Sutherland Institute as in http://www.sutherlandinstitute.com to provide an opposing political platform, a legal parody website exposing your chosen verbal diarrhea to the masses.

Best regards,

Nick J. West"

Complainant has provided a sworn declaration from the president of Sutherland Institute, Mr. Paul Mero, dated April 29, 2009, and two sworn declarations from the assistant to the president, Lisa Montgomery, dated April 29 (First Declaration) and June 10, 2009 (Second Declaration).

Mr. Mero indicates that when he first saw Respondent`s website he:

"… was initially very confused. I reached the website after clicking on a link from a Google search-results page. When the home page loaded into my browser, I was confused because the background color was green, even though our official website`s background color is blue. Because the logo, menu arrangement, and headings were identical to our official website, it appeared to me at first glance that our official website`s background color had been changed. It required several minutes for me to study and read the content, which included many offensive comments, before I realized that it was a parody website. Although I have been with Sutherland Institute since 2001, this was the first time that I became aware that Sutherland Institute did not currently own rights to the ‘.com` domain name incorporating Sutherland Institute`s trademark.

On February 26, 2009, I personally met with the largest donor to Sutherland Institute. This donor had compiled a list of ideas to improve Sutherland Institute, and we discussed this list in detail. One of the ideas in the list was to improve Sutherland Institute`s website. Our donor appeared to be very troubled by certain content on the website. I was surprised by this suggestion because we had recently updated and modified the website. Furthermore, I could not believe that our website had caused such a negative reaction from a donor who has been such a long-time supporter of Sutherland Institute. Upon further investigation, I determined that our donor was referring to sutherlandinstitute.com, not the official Sutherland Institute website sutherlandinstitute.org. It required several attempts to clarify to our donor that the ‘.com` website was not sponsored by Sutherland Institute because our donor did not immediately understand that ‘sutherland institute` could be used as a domain name for both the ‘.org` and ‘.com` top-level domains. More specifically, our donor did not understand the significance of top-level domain differences."

Lisa Montgomery states, inter alia:

"… in the execution of my responsibilities for Sutherland Institute, I have firsthand knowledge of patrons of Sutherland Institute who are confused by the sponsorship of sutherlandinstitute.com. For example, we recently hosted an event for which we requested RSVP through our official website. A woman called me to explain that she had been looking for the RSVP information on our website, but was unable to discover it. As I discussed this problem with her, it became clear to me that the woman had visited the website sutherlandinstitute.com and not realized that was a website not sponsored by Sutherland Institute." (First Declaration).

She also states:

"Presently, Sutherland Institute engages i4Solutions for its website design and Web hosting services.

On May 29, 2009, I discussed certain accounting items with an account representative at i4Solutions. Sutherland Institute had not been receiving certain billing statements from i4Solutions, and I called to investigate the problem. An account representative from i4S01utions informed me that i4Solutions had been sending our billing statements to the email addresses ‘lmontgomery@sutherlandinstitute.com,` which is correct except for the top level domain of ‘.com` instead of ‘.org.` i4Solutions did not know why my email address was recorded in their database with the ‘.com` top-level domain instead of the correct ‘.org` top-level domain. Typically, email addresses are only changed when authorized by the customer.

Approximately ten minutes after our conversation ended, the same account representative called me back to ask me if I still wanted the statements. Apparently, a man had just called her in the intervening time period and asked that the billing statements not be sent. The man also told her that i4Solutions should be ashamed for doing business with Sutherland Institute. After speaking with him, she called me because she was very confused. Apparently, she did not realize that i4Solutions had been mistakenly sending billing statements for Sutherland Institute to the owner of the domain name sutherlandinstitute.com. It appears that the owner of the domain name sutherlandinstitute.com (or a representative) called to complain about receiving i4Solution`s billing statements for Sutherland Institute, and then proceeded to disparage i4Solutions for providing its services to Sutherland Institute. The account representative from i4Solutions was very confused by the man`s phone call until I explained that someone else owned the domain name sutherlandinstitute.com and that i4Solutions had been mistakenly sending that domain-name owner billing statements for Sutherland Institute.

Based on the above, I believe that service providers, including i4Solutions and possibly many others, are likely to confuse sutherlandinstitute.com as originating from or being affiliated with Sutherland Institute.

Correcting the confusion caused by sutherlandinstitute.com consumes valuable resources of Sutherland Institute. Furthermore, confusion among service providers substantially injures Sutherland Institute. For example, i4Solution`s confusion resulted in the leak of Sutherland Institute`s confidential information to the owner of the domain name sutherlandinstitute.com. Sutherland Institute is concerned about this and other possible breaches of confidentiality arising from the existence of a domain name confusingly similar to Sutherland Institute`s trademark. Sutherland Institute is especially concerned about this possible breach of confidentiality because the owner of sutherlandinstitute.com has expressed hostile intent toward individuals associated with Sutherland Institute, including posting telephone numbers on the Internet with implicit calls for harassment." (Second Declaration)

The Registration Agreement in effect between Respondent and Wild West Domains, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties` Contentions

A. Complainant

Complainant alleges that it has U.S. federal common law rights in the trademark SUTHERLAND INSTITUTE based on (a) the distinctive character of the mark, (b) recognition of the mark by the public, and (c) long use in commerce in the United States.

Complainant argues that the disputed domain name is identical to its common law trademark.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. According to Complainant, Respondent has not been commonly known by the disputed domain name, did not use the disputed domain name for a bona fide offer of goods or services prior to notice of a dispute, and is not making legitimate noncommercial or fair use of the disputed domain name without intent to misleadingly divert Internet users or tarnish Complainant`s trademark. More specifically, Complainant argues that although Respondent has the right to criticize Complainant and its policy positions, Respondent does not have the right to do so with a domain name and website that give the impression that Respondent is, in fact, Complainant. Complainant contends that Respondent is misleading Internet users. Therefore, alleges Complainant, even taking into account some decisions under the Policy that allow the use of third-party trademarks in identical domain names for criticism purposes, Respondent does not fall within the category of a legitimate noncommercial user of its mark because of that intent to mislead.

Complainant argues that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent was clearly aware of its trademark when it registered the disputed domain name, and did so in a way designed to disrupt Complainant`s business operations, including interfering with fundraising by Complainant. Complainant further contends that Respondent is misleadingly and in bad faith diverting Internet users to its website, even if Respondent is not gaining commercially from Internet user confusion.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant`s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The courier tracking record in the files of the Center indicates that the hard copy Complaint dispatched to Respondent was successfully delivered at the address indicated in its record of registration. There is no indication of any technical difficulties in the transmission of e-mail notices from the Center to Respondent. The Center has taken those steps specified in the Policy and Rules designed and presumed to provide adequate notice to Respondent. The Panel determines that Respondent was provided adequate notice of these proceedings and a reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent`s domain name is identical or confusingly similar to a trademark or service mark in which 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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has asserted common law service mark rights in the combination term "Sutherland Institute". Because "Sutherland" is a surname, it is not considered inherently distinctive. The surname is combined with "Institute", a common descriptive term for a type of research, academic or policy organization.

"Sutherland" is not an especially common surname in the United States, and there is no evident reason to consider that it may not acquire secondary meaning when used in combination with another term. Complainant has provided evidence of recognition in the public press of its identifier "Sutherland Institute" dating back as early as 1996. An Internet search for the term "Sutherland Institute" using the Google engine returns a large number of websites referring to Complainant, and review of a sampling of the identified websites makes it evident that Complainant is well-known by the term "Sutherland Institute" among the "policy community" in the State of Utah. It may be that many of the persons knowing of Complainant and its "Sutherland Institute" identifier, and commenting on its policy positions take a contrary position - and very strongly in some cases - but this does not contradict the fact that Complainant is well-known among the relevant public in the State of Utah.

Complainant is providing a service to its contributors and supporters in the form of the development and dissemination of political and policy positions, including with the intent to influence legislators in the State of Utah. Lobbying on behalf of a community of supporters constitutes the provision of a service.

Complainant has succeeded in demonstrating secondary meaning in the term "Sutherland Institute" in the State of Utah, and substantial use of the term in commerce in the State of Utah. The Panel determines that Complainant has established rights in the service mark SUTHERLAND INSTITUTE.

The disputed domain name <sutherlandinstitute.com> is identical to the service mark from the standpoint of assessment under the Policy.

Complainant has established rights in the service mark SUTHERLAND INSTITUTE and that the disputed domain name is identical to its mark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c))

There is no evidence on the record of this proceeding that Respondent was known as "Sutherland Institute" prior to its registration of the disputed domain name.

Respondent was certainly aware of Complainant and its service mark when it registered, and when it began using, the disputed domain. This is evidenced, inter alia, by an email from Respondent to Complainant concerning its intentions. Moreover, the similarity between Respondent`s website and Complainant`s website makes it apparent that Respondent intended to create a similarity in presentation that would at least initially confuse Internet users seeking Complainant`s website. Setting aside the question of legitimate noncommercial or fair use, Respondent did not make a bona fide offer of goods or services using the disputed domain name within the meaning of Paragraph 4(c)(i) prior to notice of a dispute.

Respondent has not submitted a Response in this proceeding. It is left to the Panel to presume what Respondent would have argued had it made a submission, and to address the arguments that Respondent would have made, but didn`t. The Panel presumes that Respondent would argue that it is making a legitimate noncommercial use of Complainant`s service mark in the disputed domain name.

There are a substantial number of decisions under the Policy addressing the parameters of legitimate noncommercial use of trademarks and service marks, ² including in circumstances where a respondent has adopted a domain name identical to the trademark or service mark, including decisions by this sole panelist.³ Suffice it to say that each of these decisions is context specific.

Freedom of speech or expression is a strongly protected constitutional right in the United States. Yet individuals do not enjoy absolute freedom of expression with respect to terms protected as trademarks or service marks. Rights granted to trademark owners operate as a limited restriction on freedom of speech (see, e.g., Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560). The strong free speech right may come into tension with trademark rights, and it is the role of courts and administrative panels to sort out the proper balance.

From the standpoint of determining whether Respondent is engaged in legitimate non-commercial use of the disputed domain name, the basic question is whether Respondent is justified in (a) calling itself "Sutherland Institute" in the disputed domain name, and (b) creating a website with the evident purpose of causing Internet user confusion regarding whether its website is operated by Complainant, until a close examination of the website contents should (but apparently does not always) reveal that it is not operated by Complainant.

A relevant (though distinguishable) line of cases addresses the "nominative fair use" of trademarks.⁴ The Court of Appeals for the Ninth Circuit permits third-party use of a trademark where it would otherwise be difficult to identify the trademark product. However, the third party may use only so much of the trademark as is necessary, and may not create the impression that it has been authorized or endorsed by the trademark owner. Nominative fair use effectively allows freedom of expression with respect to trademark products for purposes of identification, but with the constraint that the third-party user does not excessively interfere with the trademark right (by using only so much of it as necessary) or deceive the public (by creating the misleading impression of sponsorship or endorsement).

In the present case, Respondent is not making nominative fair use of Complainant`s service mark. Respondent is not merely trying to identify Complainant or its services. Respondent is more precisely attempting to "substantially replicate" Complainant`s website for purposes of expressing criticism.

Respondent has suggested to Complainant that its use of its trademark is a form of protected (non-infringing) "parody" of Complainant. Parody is a more generally accepted defense against copyright infringement than trademark infringement, though trademark law is not without parody defense cases.⁵ In the traditional copyright defense, the copyright "parodist" has drawn the reader, viewer or listener to his or her work by first appearing to be the original, and then changing direction to make fun of or criticize the original.⁶ It is important to a parody defense that the distinction between the parody and original work ultimately be sufficiently clear. The parodist should not make such extensive use of the original work as to essentially rely on the original for its expressive effect. In other words, the parodist must not merely be re-packaging and selling the original.

Respondent appears to assume that its portrayal of Complainant`s positions is sufficiently "over the top" to make it clear that Respondent is criticizing Complainant. The response by Complainant`s constituency suggests that they perceive few limits to how far Complainant might go in expressing its particular position, perhaps only wishing that Complainant had expressed itself better. Even Complainant seems to have been confused about whether it really said the things Respondent has attributed to it. One of the reason Respondent`s approach "works" is that Respondent has gone to considerable lengths to make its website look like the website of Complainant. It has literally copied the design elements of Complainant`s website, including its stylized script banner, and including Complainant`s basic statement of philosophy, and a photo quite similar to that highlighted on Complainant`s website.

It is a difficult question whether Respondent`s website would be considered a non-infringing parody of Complainant`s website as a matter of copyright law. That is, whether Respondent has sufficiently transformed the content on Complainant`s website so that it is not taking undue advantage of Complainant`s content. The Panel need not make a determination about that.

Respondent has not sought to parody Complainant`s service mark, as such, in its domain name. Nor, for that matter, has it done so on its website. Respondent`s domain name is identical to Complainant`s service mark, and Respondent uses Complainant`s service mark on its website in a form identical to that used by Complainant. There literally is no transformation into a potential parody object. If for no other reason, Respondent`s use of the disputed domain name does not constitute a parody of Complainant`s service mark because there is no transformation of the service mark.⁷ The Panel need not further determine whether the extent of the similarity between Respondent`s and Complainant`s websites would likewise preclude a finding of protected parody.

The question for this Panel remains whether Respondent`s free speech interest in the disputed domain name is so compelling that it should take precedence over Complainant`s service mark rights even though Respondent has gone to considerable lengths to create Internet user confusion regarding Complainant`s association with its website. The level of "confusion-inducement" is apparently sufficient to cause individuals familiar with Complainant and its policy positions, as well as Complainant`s Internet service provider, to be uncertain as to the identity of the website operator. The Panel is not convinced that Respondent`s free speech interests take such significant precedence over Complainant`s interest in being properly identified by the public as to cause Respondent to have a legitimate interest in the disputed domain name, as such. The Panel determines that Respondent has not made legitimate noncommercial use of the domain name because of the extent to which the domain name and its website are designed to induce Internet user confusion.

Complainant has succeeded in demonstrating that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are "(i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent`s] documented out-of-pocket costs directly related to the domain name"; "(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; "(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor"; or and "(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of [respondent`s] website or location or of a product or service on your website or location".

The bad faith elements listed in Paragraph 4 of the Policy are well understood to be "non-exhaustive". In other words, a panel rendering a decision under the Policy is not bound to stay within the confines of the described grounds for finding "bad faith". An example is decisions that infer bad faith intent despite the fact that a respondent has not made any active use of a disputed domain name.⁸

Here Respondent is in this Panel`s view using the disputed domain name for purposes of constitutionally protected political speech. In this context, the Panel is reluctant to use a basis for a finding of bad faith other than those expressly enumerated in the Policy. Those expressly enumerated criteria of bad faith reflect the Policy`s principal concern with conduct that takes unfair advantage of trademark owners for purposes of commercial advantage.

Complainant has principally argued that Respondent registered the disputed domain name for the purpose of disrupting the business of a competitor. Yet only by the exercise of mental gymnastics may a group of gay rights activists be defined as a "competitor" of a conservative public policy think tank. A person seeking the services of a lobbyist or advocacy group who is unable to secure the services of a conservative think tank is unlikely to decide to take its business instead to a group of gay-rights activists. Perhaps in some very attenuated sense these two entities are "competitors in the marketplace for ideas", but the Panel does not think this is what the Policy means when it refers to "competitors".

There is no evidence to suggest that Respondent registered the disputed domain name for the purposes of selling it to Complainant or a third-party.

While Respondent many have registered the disputed domain name at least in part to prevent Complainant from registering its service mark in a domain name, there is no evidence that Respondent has engaged in a pattern or practice of this nature. The requirement of demonstrating a pattern or practice shows the concern of the relevant provision of the Policy (paragraph 4(b)(ii)) with addressing predatory commercial intent.

Finally, while Respondent undoubtedly registered and has used the disputed domain name to confuse Internet users concerning Complainant as a source, sponsor, affiliate or endorser of its website, there is no evidence that Respondent has done so for "commercial gain". The reference to "commercial gain" in paragraph 4(b)(iv) of the Policy evidences the purpose of the prohibition. It was not designed to inhibit "pure political speech."⁹ Complainant in its pleadings recognized that its allegation of bad faith based on Internet user confusion lacked the element of Respondent`s commercial purpose, and sought to disclaim the need for such a finding of commercial purpose by reference to an earlier administrative panel decision.¹⁰ But the decision cited by Complainant involved substantially different (and distinguishable) circumstances than the political speech context here and, in any case, involved parties outside the United States.

In the instant proceeding, the evidence before the Panel indicates that Respondent is engaged in "pure political speech". There are no advertising links on Respondent`s website. There are no requests for financial support on Respondent`s website.¹¹

Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant`s service mark incorporated in Respondent`s disputed domain name, it is preferable that a federal or state court make that application of the concept of "bad faith".

The Panel determines that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Frederick M. Abbott
Sole Panelist

Dated: July 10, 2009