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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Paul McMann v. J McEachern Case No. D2007-1597
1. The Parties Complainant is Paul McMann, Weston, Massachusetts, United States of America,
represented by Jus Maxima Law Offices, India.
Respondent is J McEachern, Concord, Massachusetts, United States of America,
represented by Public Citizen Litigation Group, United States of America.
2. The Domain Names and Registrar
The disputed domain names <paulmcmann.com> and <paulmcmannsucks.com> are
registered with GoDaddy.com, Inc. (the Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the Center) on October 29, 2007. On October 31, 2007, the Center transmitted by
email to GoDaddy.com, Inc. a request for registrar verification in connection with the
domain name <paulmcmann.com>. On October 31, 2007, GoDaddy.com, Inc.
transmitted by email to the Center its verification response confirming that the
Respondent is listed as the registrant and providing the contact details. 1
The Complaint has been thrice amended: first to substitute Respondents name for the
name of the privacy service, second to correct an administrative defect, and third to add
the domain name <paulmcmannsucks.com> to the Complaint.
Following Complainants request to add this additional domain name to this
proceeding, on November 26, 2007, the Center transmitted by email to GoDaddy.com,
Inc. a request for registrar verification in connection with that domain name. On
November 26, 2007, GoDaddy.com, Inc. transmitted by email to the Center its 1 Respondent registered the domain name <paulmcmann.com> using a privacy service. The Registrar
confirmed the name and whois particulars of the actual registrant. page 2 verification response confirming that the Respondent is listed as the registrant and
providing the contact details. Complainant filed its Third Amended Complaint, the
pleading now at issue, 2 on December 21, 2007.
The Center verified that the Complaint together with the amendments to 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 December 21, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was
January 10, 2008. At Respondents request the Center extended the due date for the
Response to January 17, 2008. The Response was filed with the Center on
January 18, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on
January 28, 2008. The Panel finds that it was properly constituted and has jurisdiction
over this proceeding. The Panel has submitted his Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure
compliance with the Rules, paragraph 7.
On January 30, 2008, the Panel issued Procedural Order No. 1, requesting additional
documentation regarding one of the lawsuits that Complainant has brought against
Respondent. Complainant submitted the requested documents on February 5, 2008.
4. Factual Background
A. The Parties and the Disputed Domain Names
The basic facts in this proceeding are simple and not disputed.
Complainant is a commercial builder who does business under his own name in and
around Boston, Massachusetts, United States of America. He has a trademark for his
name registered with the Commonwealth of Massachusetts. Until March 2006,
Complainant owned the disputed domain name <paulmcmann.com>. Through
inadvertence Complainant failed to renew this domain name.
Respondent is an individual residing in Concord, Massachusetts, United States of
America. Concord is a suburb of Boston. Respondent and her husband entered into a
contract with Complainant to develop some land, but the work was never completed
and a dispute eventually led to a lawsuit. In March 2006 Respondent retaliated by
registering the disputed domain name <paulmcmann.com> and launching a criticism
site at that web address.
On a website at this domain name Respondent maintains a list of companies owned by
Complainant and a blog to which she invites members of the public to post information
regarding dealings with Complainant. The website includes two disclaimers. At the
top is noted: The website is not affiliated in any way with Paul McMann, who is a
small Massachusetts real estate developer or any of his companies; at the bottom, 2 References in this decision to the Complaint are to the Third Amended Complaint. page 3 The information provided on this website is either an opinion or can be backed up with
public records. Respondent registered the second disputed domain name,
<paulmcmannsucks.com>, in November 2007. The newly-created website at
www.paulmcmannsucks.com has a similar disclaimer of affiliation with Complainant
and a similar blog inviting posts about business dealings with Complainant.
B. Litigation between the Parties Involving the Disputed Domain Names Complainant has commenced three actions in court against Respondent.
The First Action was filed in the United States District Court for the District of
Massachusetts in 2006. In Paul McMann v. John Doe 3 Civil Action No. 06-11825, Complainant asserted claims under Massachusetts state law for violation of his
statutory right of privacy, infringement of his common law right to privacy, including
common law copyright, and defamation. Complainant sought leave to subpoena the
Registrars domain name registry for Respondents identity. In an opinion issued
October 31, 2006, reported at 460 F. Supp. 2d 259, the district court denied this motion.
First the court determined that it lacked subject matter jurisdiction, since the causes of
action all arose under state law and there was no proof that the fictitious defendant
resided in a state other than Massachusetts. 4 Given the novelty of the jurisdictional issues the court added an alternative ground for dismissal. After carefully considering
procedural issues relating to discovery generally and Constitutional concerns
including the then-anonymous posters rights to free speech and anonymous speech, the
court stated that it would deny the motion on the merits and dismiss the complaint for
failure to state a claim. This conclusion was based in part upon the Courts
determination that the substance of the postings on Respondents website were bland,
vague and subjective and do not constitute defamation, therefore bringing them within
the ambit of the First Amendment.
Complainant then filed the Second Action in state court in Maricopa County, Arizona, 5 also against John Doe, Case No. CV2006-092226. After full briefing and oral
argument, by Minute Order dated January 18, 2007, the Arizona court granted
Respondents Motion to Quash Complainants Request for Subpoena for the Registrar
to obtain Respondents contact information on grounds similar to the courts
alternative holding in the First Action: The Court believes that the correct standard
to be applied in this situation is that announced in, Doe v. Cahill, 884 A.2d 451 (2005).
Under that standard the Plaintiff [Complainant] must show that its claim would survive
a Motion for Summary Judgment before being entitled to discover the identity of an
anonymous speaker through any compulsory discovery process. The Arizona court
dismissed the Second Action without prejudice.
Complainant at some point discovered Respondents identity, for following dismissal of
the Second Action he commenced the Third Action in Massachusetts state court against
Respondent, Respondents husband, and the Registrar. In Paul McMann v.
GoDaddy.com, William G. Thompson, and Jean M. McEachern, Superior Court, 3 Complainant brought this action against a fictitious defendant, claiming not to know Respondent's
identity. Respondent acknowledges that she used a privacy service to register <paulmcmann.com> but
asserts that her identity was at all times available from the website at that address. The Panel notes that a
recent examination of the website confirms that Respondent, and her current address, are now so listed. 4 In the United States of America, the federal district courts have limited subject matter jurisdiction,
generally limited to cases involving an issue of federal (United States) law or involving citizens of
different states. 5 Complainant presumably selected Arizona because that is the district in which the Registrar maintained
its principal office. page 4 Middlesex County No. MICV200702882, Complaint asserts claims for defamation and
commercial disparagement against Mr. Thompson and the Registrar, and civil
conspiracy against all defendants. Complainant asks for money damages and an
injunction prohibiting continued operation of Respondents website. After a hearing,
the court on October 17, 2007, denied Complainants motion for preliminary injunction.
Complainants action for damages and a permanent injunction remains pending.
Complainant has recently filed an amended complaint against only Respondent and her
husband, alleging trademark infringement, defamation, commercial disparagement, and
intentional infliction of emotional distress. Again Complainant seeks money damages,
an injunction (including prohibition on registration of any domain name that includes
Complainant's name), attorneys' fees, and additional relief.
Shortly after commencement of the Third Action, Respondent registered the disputed
domain name <paulmcmannsucks.com>.
5. Parties Contentions
A. Complainant
Complainant contends as follows:
Rights in a Mark
Complainant has rights in his name as a trademark by virtue of his Massachusetts
registration and continuous use of that name in commerce for a number of years. One
of the disputed domain names is identical to the name and the second is confusingly
similar to it.
No Right or Legitimate Interest
Complainant has never authorized Respondent to use his name, and Respondent is in no
way affiliated with Complainant. Respondents use of the disputed domain name has
never been legitimate or bona fide under the Policy as Respondent does not have the
right to identify or sale as Complainant, which she has done by adopting his name as
the web address for her criticism site. Complainant cites a number of Policy decisions
holding that the Constitutional right to free speech does not extend to use of anothers
mark as the site at which the criticism is gathered. Quoting (without attribution) from
this Panels decision in Justice for Children v. R neetso / Robert W. OSteen, WIPO
Case No. D2004-0175, Complainant argues: Under the Policy the most revered and
thoughtful critic or political speaker may not increase his audience by taking advantage
of the renown or attraction that attaches to anothers protected mark. Respondent is not
entitled to use a soapbox or broadcast frequency owned by Complainant to lure
Complainants audience to his harangue.
Bad Faith
For the same reasons Respondents registration and use of the disputed domain names
were in bad faith, and undertaken to disrupt Complainants business. Much of the
content of Respondents website is defamatory. Respondents use of a proxy
registration to hide her name further indicates her bad faith in registration and use of the
disputed domain names.
page 5 B. Respondent
Respondent contends that Complainant has failed to meet any of the Policy criteria:
Rights in a Mark
Complainant lacks a valid trademark in his name. The Massachusetts registration is not
evidence of a mark and there are serious deficiencies in Complainants registration,
including a claimed use in commerce since his date of birth. 6 Complainant cites InterNational Organization for Standardization ISO v. Capaccio Environmental
Engineering, Inc., WIPO Case D2006-1190, as evidence that Massachusetts, like many
states, operates a deposit system with little review of the trademarks validity, and
that the United States Patent & Trademark Office does not consider state registrations
as competent evidence in trademark usage. Complainant has not provided competent
evidence of his use of his name as a business identifier to establish common law
trademark rights sufficient to invoke the Policy.
Right and Legitimate Interest; No Bad Faith
Citing cases decided under the Policy, Respondent asserts that her use of the disputed
domain names for non-commercial criticism sites directed against Complainant and his
business practices is an exercise of her First Amendment Right of Freedom of Speech,
not an effort to commandeer the customers of complainants business. As such her
use is non-commercial and protected by paragraph 4(c)(iii) of the Policy, and not in bad
faith. Respondents sites include prominent disclaimers of any affiliation with
Complainant. As such her use of the disputed domain names has been legitimate, under
trademark law and the Policy; as bad faith under the Policy is not synonymous with
criticism. Nor is use of a proxy registration evidence of bad faith; such a registration,
not involving false information, is usually harmless and is here consistent with First
Amendment Right to remain anonymous in her criticism.
6. Discussion and Findings A. Identical or Confusingly Similar
Complaint must establish two things to meet the requirements of paragraph 4(a)(i) of
the Policy: whether he has rights in a mark, and, if so, whether the disputed domain
names are identical or confusingly similar to it.
Complainant has established rights in his name sufficient to invoke the Policy. A state
trademark registration usually suffices to establish such rights, see, e.g., Teresa
Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Webers Mackinac
Island Florist, WIPO Case No. D2001-0653, WIPO Overview of WIPO Panel Views on
Selected UDRP Questions (WIPO Overview), paragraph 1.1. Unlike some states of
the United States of America and contrary to Respondents assertion, Massachusetts
does not issue trademarks automatically upon filing; the Secretary of the
Commonwealth does give filings some scrutiny before authorizing a mark, 7 so the exception in the Overview does not apply.
6 Respondent has asked the court in the Third Action to order cancellation of the trademark, an application
that apparently remains pending. 7 About Trademarks and Service Marks, website of the Secretary of the Commonwealth of
Massachusetts, http://www.sec.state.ma.us/cor/corpweb/cortmsm/tmsminf.htm. page 6 In any event Respondent, who had done business with Complainant, was well aware of
Complainants use of his name as a commercial identifier when she registered the
disputed domain names; that was one reason she selected these names for her websites.
That fact alone is enough to satisfy the first element of paragraph 4(a)(i) here, even if as
Respondent argues there are technical defects in his state registration. 8 See, e.g., James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391; Teresa
Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Webers Mackinac
Island Florist, supra.
One of the disputed domain names is identical to Complainants mark and the other has
the mark as its dominant feature, so the second element is also satisfied. Addition of a
derogatory term does not obviate confusion under paragraph 4(a)(i). WIPO Overview,
paragraph 1.3 (Majority View); Joseph Dello Russo M.D. v. Michelle Guillaumin,
WIPO Case No. D2006-1627.
B. Rights or Legitimate Interests
As the parties respective pleadings and citations make clear, neither the courts in the
United States of America nor panels in Policy proceedings have reached a clear
consensus as to whether a critic may use her subjects trademark as a web address to
post critical commentary, even when (as in this proceeding) the gripe site is entirely
non-commercial. As to the Policy, see WIPO Overview, paragraph 2.4, and discussion
in InMed Diagnostic Services, LLC, InMed Diagnostic Services of S.C., LLC, InMed
Diagnostic Services of MA, LLC and InMed Diagnostic Services of IL, LLC v. James
Harrison, WIPO Case No. D2006-1230. 9 Panels remain divided over whether such use is 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 and so within the safe harbor of paragraph 4(c)(iii) of the Policy.
Compare majority opinion and D. Bernstein, dissenting, in Joseph Dello Russo M.D. v.
Michelle Guillaumi, supra.
For the reasons given in the majority opinion in the Dello Russo case, the Panel may
easily resolve this proceeding as to the domain name <paulmcmannsucks.com>. That
domain name is in and of itself an exercise of Respondents First Amendment rights
and therefore protected:
[I]n a proceeding involving parties resident in the United States of
America, the free speech guarantee of the First Amendment to the
Constitution confers a right or legitimate interest on the use of a
domain name that itself is an expression of opinion, at least in the
absence of other evidence that the registration of this domain name
was merely a pretext for cybersquatting. Circumstances particular to this proceeding, moreover, provide compelling reasons why
the Complaint should be denied as to the <paulmcmann.com> domain name as well.
Strictly speaking none of the judicial opinions in the three lawsuits brought by
Complainant is res judicata and thus binding upon the Panel. The court in the First
Action itself noted that it lacked subject matter jurisdiction, a prerequisite for 8 The Panel expresses no opinion on this issue, which as noted in the text is not relevant in the
circumstances of this proceeding. 9 A number of cases on this subject are collected and discussed in the recent decision in 1066 Housing
Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461. page 7 application of res judicata. The Court in the second action dismissed the action without
prejudice so its order, like the order denying the motion in the Third Action, is not a
final judgment of the court, a separate requirement for application of that doctrine. Nor
is the alternative opinion of the court in the First Action binding as collateral
estoppel, again because of the courts lack of subject matter jurisdiction and also
because the legal and factual determinations were made under different substantive law
standards.
Nevertheless in this, a subsequent administrative proceeding between the same parties
involving very similar and sometimes overlapping subject matter, the Panel, a private
individual operating within a very limited brief, owes great deference to all three
judges determinations, even if they be only advisory in nature or of interim effect. All
three judges received extensive briefing; two held a hearing with oral argument. Each
judge had a record far more elaborately developed than is possible in a Policy
proceeding in which testimony and oral argument are normally banned. Judge Tauros
opinion in the First Action is thoughtful, thoroughly researched, and well reasoned.
The Panel will not presume to depart from that opinion or the other courts findings and
holdings. In light of those findings Complainant has not proven that Respondent lacks
a right or legitimate interest in <paulmcmann.com>.
Prudential reasons and Policy precedent support this approach. It was Complainant
who chose to proceed first in court, and there to assert claims under state law rather
than federal law, the latter of which includes the Anti-Cybersquatting Consumer
Protection Act, 10 a statute that authorizes transfer of a disputed domain name on grounds very similar to those under the Policy. This omission, and his advancing
charges of intentional torts such as defamation, make it clear that Complainants
dispute with Respondent goes well beyond entitlement to the disputed domain name.
He sought (and in the Third Action currently seeks) money damages and equitable
relief and not the disputed domain name. As Complainant began this proceeding only
after commencing three lawsuits, the Panel finds it difficult not to conclude that
Complainant did so either for tactical advantage in court, as one part of a much broader
dispute between the parties, or hoping to find a friendlier audience than the three judges
who have ruled against him. When the broader dispute remains pending in court the
Panel ought not to assist either party, see Clover Gifts Inc. v. Airs Fragrance Products,
WIPO Case No. D2005-0776 (Respondents pending action against Complainant, in
Complainants home district, is the forum in which these matters should be
determined.); Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 (a plague o
both your houses). The Policy was not intended for this. Particularly the Panel ought
not to assist a party that first selected the courts by offering him a third or fourth bite at
the same cherry.
As to both disputed domain names the Complaint fails under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
As the Policys requirements are conjunctive the Panel need not address the issue of
bad faith.
10 Complainant cites to this statute in the Complaint here, so he or his counsel was aware that a court action allowed for recovery of the disputed domain names. page 8 7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon Sole Panelist Dated: February 9, 2008
The web site itself may have changed. You can check the current page or check for previous versions at the Internet Archive. Yahoo! is not affiliated with the authors of this page or responsible for its content. WIPO Arbitration and Mediation Center page 1
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Paul McMann v. J McEachern Case No. D2007-1597
1. The Parties Complainant is Paul McMann, Weston, Massachusetts, United States of America,
represented by Jus Maxima Law Offices, India.
Respondent is J McEachern, Concord, Massachusetts, United States of America,
represented by Public Citizen Litigation Group, United States of America.
2. The Domain Names and Registrar
The disputed domain names <paulmcmann.com> and <paulmcmannsucks.com> are
registered with GoDaddy.com, Inc. (the Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the Center) on October 29, 2007. On October 31, 2007, the Center transmitted by
email to GoDaddy.com, Inc. a request for registrar verification in connection with the
domain name <paulmcmann.com>. On October 31, 2007, GoDaddy.com, Inc.
transmitted by email to the Center its verification response confirming that the
Respondent is listed as the registrant and providing the contact details. 1
The Complaint has been thrice amended: first to substitute Respondents name for the
name of the privacy service, second to correct an administrative defect, and third to add
the domain name <paulmcmannsucks.com> to the Complaint.
Following Complainants request to add this additional domain name to this
proceeding, on November 26, 2007, the Center transmitted by email to GoDaddy.com,
Inc. a request for registrar verification in connection with that domain name. On
November 26, 2007, GoDaddy.com, Inc. transmitted by email to the Center its 1 Respondent registered the domain name <paulmcmann.com> using a privacy service. The Registrar
confirmed the name and whois particulars of the actual registrant. page 2 verification response confirming that the Respondent is listed as the registrant and
providing the contact details. Complainant filed its Third Amended Complaint, the
pleading now at issue, 2 on December 21, 2007.
The Center verified that the Complaint together with the amendments to 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 December 21, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was
January 10, 2008. At Respondents request the Center extended the due date for the
Response to January 17, 2008. The Response was filed with the Center on
January 18, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on
January 28, 2008. The Panel finds that it was properly constituted and has jurisdiction
over this proceeding. The Panel has submitted his Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure
compliance with the Rules, paragraph 7.
On January 30, 2008, the Panel issued Procedural Order No. 1, requesting additional
documentation regarding one of the lawsuits that Complainant has brought against
Respondent. Complainant submitted the requested documents on February 5, 2008.
4. Factual Background
A. The Parties and the Disputed Domain Names
The basic facts in this proceeding are simple and not disputed.
Complainant is a commercial builder who does business under his own name in and
around Boston, Massachusetts, United States of America. He has a trademark for his
name registered with the Commonwealth of Massachusetts. Until March 2006,
Complainant owned the disputed domain name <paulmcmann.com>. Through
inadvertence Complainant failed to renew this domain name.
Respondent is an individual residing in Concord, Massachusetts, United States of
America. Concord is a suburb of Boston. Respondent and her husband entered into a
contract with Complainant to develop some land, but the work was never completed
and a dispute eventually led to a lawsuit. In March 2006 Respondent retaliated by
registering the disputed domain name <paulmcmann.com> and launching a criticism
site at that web address.
On a website at this domain name Respondent maintains a list of companies owned by
Complainant and a blog to which she invites members of the public to post information
regarding dealings with Complainant. The website includes two disclaimers. At the
top is noted: The website is not affiliated in any way with Paul McMann, who is a
small Massachusetts real estate developer or any of his companies; at the bottom, 2 References in this decision to the Complaint are to the Third Amended Complaint. page 3 The information provided on this website is either an opinion or can be backed up with
public records. Respondent registered the second disputed domain name,
<paulmcmannsucks.com>, in November 2007. The newly-created website at
www.paulmcmannsucks.com has a similar disclaimer of affiliation with Complainant
and a similar blog inviting posts about business dealings with Complainant.
B. Litigation between the Parties Involving the Disputed Domain Names Complainant has commenced three actions in court against Respondent.
The First Action was filed in the United States District Court for the District of
Massachusetts in 2006. In Paul McMann v. John Doe 3 Civil Action No. 06-11825, Complainant asserted claims under Massachusetts state law for violation of his
statutory right of privacy, infringement of his common law right to privacy, including
common law copyright, and defamation. Complainant sought leave to subpoena the
Registrars domain name registry for Respondents identity. In an opinion issued
October 31, 2006, reported at 460 F. Supp. 2d 259, the district court denied this motion.
First the court determined that it lacked subject matter jurisdiction, since the causes of
action all arose under state law and there was no proof that the fictitious defendant
resided in a state other than Massachusetts. 4 Given the novelty of the jurisdictional issues the court added an alternative ground for dismissal. After carefully considering
procedural issues relating to discovery generally and Constitutional concerns
including the then-anonymous posters rights to free speech and anonymous speech, the
court stated that it would deny the motion on the merits and dismiss the complaint for
failure to state a claim. This conclusion was based in part upon the Courts
determination that the substance of the postings on Respondents website were bland,
vague and subjective and do not constitute defamation, therefore bringing them within
the ambit of the First Amendment.
Complainant then filed the Second Action in state court in Maricopa County, Arizona, 5 also against John Doe, Case No. CV2006-092226. After full briefing and oral
argument, by Minute Order dated January 18, 2007, the Arizona court granted
Respondents Motion to Quash Complainants Request for Subpoena for the Registrar
to obtain Respondents contact information on grounds similar to the courts
alternative holding in the First Action: The Court believes that the correct standard
to be applied in this situation is that announced in, Doe v. Cahill, 884 A.2d 451 (2005).
Under that standard the Plaintiff [Complainant] must show that its claim would survive
a Motion for Summary Judgment before being entitled to discover the identity of an
anonymous speaker through any compulsory discovery process. The Arizona court
dismissed the Second Action without prejudice.
Complainant at some point discovered Respondents identity, for following dismissal of
the Second Action he commenced the Third Action in Massachusetts state court against
Respondent, Respondents husband, and the Registrar. In Paul McMann v.
GoDaddy.com, William G. Thompson, and Jean M. McEachern, Superior Court, 3 Complainant brought this action against a fictitious defendant, claiming not to know Respondent's
identity. Respondent acknowledges that she used a privacy service to register <paulmcmann.com> but
asserts that her identity was at all times available from the website at that address. The Panel notes that a
recent examination of the website confirms that Respondent, and her current address, are now so listed. 4 In the United States of America, the federal district courts have limited subject matter jurisdiction,
generally limited to cases involving an issue of federal (United States) law or involving citizens of
different states. 5 Complainant presumably selected Arizona because that is the district in which the Registrar maintained
its principal office. page 4 Middlesex County No. MICV200702882, Complaint asserts claims for defamation and
commercial disparagement against Mr. Thompson and the Registrar, and civil
conspiracy against all defendants. Complainant asks for money damages and an
injunction prohibiting continued operation of Respondents website. After a hearing,
the court on October 17, 2007, denied Complainants motion for preliminary injunction.
Complainants action for damages and a permanent injunction remains pending.
Complainant has recently filed an amended complaint against only Respondent and her
husband, alleging trademark infringement, defamation, commercial disparagement, and
intentional infliction of emotional distress. Again Complainant seeks money damages,
an injunction (including prohibition on registration of any domain name that includes
Complainant's name), attorneys' fees, and additional relief.
Shortly after commencement of the Third Action, Respondent registered the disputed
domain name <paulmcmannsucks.com>.
5. Parties Contentions
A. Complainant
Complainant contends as follows:
Rights in a Mark
Complainant has rights in his name as a trademark by virtue of his Massachusetts
registration and continuous use of that name in commerce for a number of years. One
of the disputed domain names is identical to the name and the second is confusingly
similar to it.
No Right or Legitimate Interest
Complainant has never authorized Respondent to use his name, and Respondent is in no
way affiliated with Complainant. Respondents use of the disputed domain name has
never been legitimate or bona fide under the Policy as Respondent does not have the
right to identify or sale as Complainant, which she has done by adopting his name as
the web address for her criticism site. Complainant cites a number of Policy decisions
holding that the Constitutional right to free speech does not extend to use of anothers
mark as the site at which the criticism is gathered. Quoting (without attribution) from
this Panels decision in Justice for Children v. R neetso / Robert W. OSteen, WIPO
Case No. D2004-0175, Complainant argues: Under the Policy the most revered and
thoughtful critic or political speaker may not increase his audience by taking advantage
of the renown or attraction that attaches to anothers protected mark. Respondent is not
entitled to use a soapbox or broadcast frequency owned by Complainant to lure
Complainants audience to his harangue.
Bad Faith
For the same reasons Respondents registration and use of the disputed domain names
were in bad faith, and undertaken to disrupt Complainants business. Much of the
content of Respondents website is defamatory. Respondents use of a proxy
registration to hide her name further indicates her bad faith in registration and use of the
disputed domain names.
page 5 B. Respondent
Respondent contends that Complainant has failed to meet any of the Policy criteria:
Rights in a Mark
Complainant lacks a valid trademark in his name. The Massachusetts registration is not
evidence of a mark and there are serious deficiencies in Complainants registration,
including a claimed use in commerce since his date of birth. 6 Complainant cites InterNational Organization for Standardization ISO v. Capaccio Environmental
Engineering, Inc., WIPO Case D2006-1190, as evidence that Massachusetts, like many
states, operates a deposit system with little review of the trademarks validity, and
that the United States Patent & Trademark Office does not consider state registrations
as competent evidence in trademark usage. Complainant has not provided competent
evidence of his use of his name as a business identifier to establish common law
trademark rights sufficient to invoke the Policy.
Right and Legitimate Interest; No Bad Faith
Citing cases decided under the Policy, Respondent asserts that her use of the disputed
domain names for non-commercial criticism sites directed against Complainant and his
business practices is an exercise of her First Amendment Right of Freedom of Speech,
not an effort to commandeer the customers of complainants business. As such her
use is non-commercial and protected by paragraph 4(c)(iii) of the Policy, and not in bad
faith. Respondents sites include prominent disclaimers of any affiliation with
Complainant. As such her use of the disputed domain names has been legitimate, under
trademark law and the Policy; as bad faith under the Policy is not synonymous with
criticism. Nor is use of a proxy registration evidence of bad faith; such a registration,
not involving false information, is usually harmless and is here consistent with First
Amendment Right to remain anonymous in her criticism.
6. Discussion and Findings A. Identical or Confusingly Similar
Complaint must establish two things to meet the requirements of paragraph 4(a)(i) of
the Policy: whether he has rights in a mark, and, if so, whether the disputed domain
names are identical or confusingly similar to it.
Complainant has established rights in his name sufficient to invoke the Policy. A state
trademark registration usually suffices to establish such rights, see, e.g., Teresa
Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Webers Mackinac
Island Florist, WIPO Case No. D2001-0653, WIPO Overview of WIPO Panel Views on
Selected UDRP Questions (WIPO Overview), paragraph 1.1. Unlike some states of
the United States of America and contrary to Respondents assertion, Massachusetts
does not issue trademarks automatically upon filing; the Secretary of the
Commonwealth does give filings some scrutiny before authorizing a mark, 7 so the exception in the Overview does not apply.
6 Respondent has asked the court in the Third Action to order cancellation of the trademark, an application
that apparently remains pending. 7 About Trademarks and Service Marks, website of the Secretary of the Commonwealth of
Massachusetts, http://www.sec.state.ma.us/cor/corpweb/cortmsm/tmsminf.htm. page 6 In any event Respondent, who had done business with Complainant, was well aware of
Complainants use of his name as a commercial identifier when she registered the
disputed domain names; that was one reason she selected these names for her websites.
That fact alone is enough to satisfy the first element of paragraph 4(a)(i) here, even if as
Respondent argues there are technical defects in his state registration. 8 See, e.g., James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391; Teresa
Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Webers Mackinac
Island Florist, supra.
One of the disputed domain names is identical to Complainants mark and the other has
the mark as its dominant feature, so the second element is also satisfied. Addition of a
derogatory term does not obviate confusion under paragraph 4(a)(i). WIPO Overview,
paragraph 1.3 (Majority View); Joseph Dello Russo M.D. v. Michelle Guillaumin,
WIPO Case No. D2006-1627.
B. Rights or Legitimate Interests
As the parties respective pleadings and citations make clear, neither the courts in the
United States of America nor panels in Policy proceedings have reached a clear
consensus as to whether a critic may use her subjects trademark as a web address to
post critical commentary, even when (as in this proceeding) the gripe site is entirely
non-commercial. As to the Policy, see WIPO Overview, paragraph 2.4, and discussion
in InMed Diagnostic Services, LLC, InMed Diagnostic Services of S.C., LLC, InMed
Diagnostic Services of MA, LLC and InMed Diagnostic Services of IL, LLC v. James
Harrison, WIPO Case No. D2006-1230. 9 Panels remain divided over whether such use is 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 and so within the safe harbor of paragraph 4(c)(iii) of the Policy.
Compare majority opinion and D. Bernstein, dissenting, in Joseph Dello Russo M.D. v.
Michelle Guillaumi, supra.
For the reasons given in the majority opinion in the Dello Russo case, the Panel may
easily resolve this proceeding as to the domain name <paulmcmannsucks.com>. That
domain name is in and of itself an exercise of Respondents First Amendment rights
and therefore protected:
[I]n a proceeding involving parties resident in the United States of
America, the free speech guarantee of the First Amendment to the
Constitution confers a right or legitimate interest on the use of a
domain name that itself is an expression of opinion, at least in the
absence of other evidence that the registration of this domain name
was merely a pretext for cybersquatting. Circumstances particular to this proceeding, moreover, provide compelling reasons why
the Complaint should be denied as to the <paulmcmann.com> domain name as well.
Strictly speaking none of the judicial opinions in the three lawsuits brought by
Complainant is res judicata and thus binding upon the Panel. The court in the First
Action itself noted that it lacked subject matter jurisdiction, a prerequisite for 8 The Panel expresses no opinion on this issue, which as noted in the text is not relevant in the
circumstances of this proceeding. 9 A number of cases on this subject are collected and discussed in the recent decision in 1066 Housing
Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461. page 7 application of res judicata. The Court in the second action dismissed the action without
prejudice so its order, like the order denying the motion in the Third Action, is not a
final judgment of the court, a separate requirement for application of that doctrine. Nor
is the alternative opinion of the court in the First Action binding as collateral
estoppel, again because of the courts lack of subject matter jurisdiction and also
because the legal and factual determinations were made under different substantive law
standards.
Nevertheless in this, a subsequent administrative proceeding between the same parties
involving very similar and sometimes overlapping subject matter, the Panel, a private
individual operating within a very limited brief, owes great deference to all three
judges determinations, even if they be only advisory in nature or of interim effect. All
three judges received extensive briefing; two held a hearing with oral argument. Each
judge had a record far more elaborately developed than is possible in a Policy
proceeding in which testimony and oral argument are normally banned. Judge Tauros
opinion in the First Action is thoughtful, thoroughly researched, and well reasoned.
The Panel will not presume to depart from that opinion or the other courts findings and
holdings. In light of those findings Complainant has not proven that Respondent lacks
a right or legitimate interest in <paulmcmann.com>.
Prudential reasons and Policy precedent support this approach. It was Complainant
who chose to proceed first in court, and there to assert claims under state law rather
than federal law, the latter of which includes the Anti-Cybersquatting Consumer
Protection Act, 10 a statute that authorizes transfer of a disputed domain name on grounds very similar to those under the Policy. This omission, and his advancing
charges of intentional torts such as defamation, make it clear that Complainants
dispute with Respondent goes well beyond entitlement to the disputed domain name.
He sought (and in the Third Action currently seeks) money damages and equitable
relief and not the disputed domain name. As Complainant began this proceeding only
after commencing three lawsuits, the Panel finds it difficult not to conclude that
Complainant did so either for tactical advantage in court, as one part of a much broader
dispute between the parties, or hoping to find a friendlier audience than the three judges
who have ruled against him. When the broader dispute remains pending in court the
Panel ought not to assist either party, see Clover Gifts Inc. v. Airs Fragrance Products,
WIPO Case No. D2005-0776 (Respondents pending action against Complainant, in
Complainants home district, is the forum in which these matters should be
determined.); Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 (a plague o
both your houses). The Policy was not intended for this. Particularly the Panel ought
not to assist a party that first selected the courts by offering him a third or fourth bite at
the same cherry.
As to both disputed domain names the Complaint fails under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
As the Policys requirements are conjunctive the Panel need not address the issue of
bad faith.
10 Complainant cites to this statute in the Complaint here, so he or his counsel was aware that a court action allowed for recovery of the disputed domain names. page 8 7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon Sole Panelist Dated: February 9, 2008
