Open Society Institute v. Gil Citro
Claim Number: FA1007001333304
PARTIES
Complainant is Open Society Institute (“Complainant”),
represented by Barry Werbin, of Herrick Feinstein LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <opensociety.org>, registered
with Enom, Inc.
PANEL
The undersigned certify that they have acted
independently and impartially and to the best of their knowledge have no known
conflict in serving as Panelists in this proceeding.
Hon. Neil Brown, QC, David
A. Einhorn, and Mark McCormick as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on July 1, 2010.
On July 2, 2010, Enom, Inc. confirmed by
e-mail to the National Arbitration Forum that the <opensociety.org> domain name is registered with Enom, Inc.
and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 7, 2010, the Forum served the
Complaint and all Annexes, including a Written Notice of the Complaint, setting
a deadline of July 27, 2010 by which Respondent could file a Response to the
Complaint, via e-mail to all entities and persons listed on Respondent’s registration
as technical, administrative, and billing contacts, and to postmaster@opensociety.org
by e-mail. Also on July 7, 2010, the
Written Notice of the Complaint, notifying Respondent of the email addresses
served and the deadline for a Response, was transmitted
to Respondent via post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined
to be complete on July 27, 2010.
Complainant filed an Additional Submission
that was received on August 2, 2010.
Respondent filed an Additional Submission
that was received on August 9, 2010.
Both Additional Submissions complied with
Supplemental Rule 7.
On August 4, 2010,
pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Neil Brown,
QC, David A. Einhorn, and Mark McCormick as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that its OPEN SOCIETY INSTITUTE mark with the United States Trademark and Patent Office (“USPTO”) is sufficient to establish its rights in the mark. It also contends that its consistent global usage of the mark has established common law secondary meaning. Complainant asserts that Respondent’s <opensociety.org> domain name is confusingly similar to Complainant’s mark. Complainant also asserts that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and used the domain name in bad faith.
B. Respondent
Respondent contends that complainant’s
trademark registration does not establish rights in the OPEN SOCIETY term,
which Respondent contends is generic. He
contends that a survey he took at an outdoor plaza in
C. Additional Submissions
In its Additional Submission, Complainant
contends that its USPTO and European trademark registrations eliminated any
need to prove secondary meaning and refutes Respondent’s contention that the
term OPEN SOCIETY is generic, particularly when considering its use relating to
the specific goods and services offered by Complainant. Complainant contends laches is not a defense
and that Respondent’s survey evidence is flawed. Complainant contends that Respondent’s bad
faith registration and use has been shown because Respondent has authorized the
registrar to make commercial use of the domain name, and the registrar has
linked the name to sites that mislead Internet users into believing the links
are affiliated with Complainant.
In his Additional Submission, Respondent
reiterates his initial contention that the OPEN SOCIETY term is generic and states
he was unaware of his registrar’s linking of the domain name to sites that
Complainant alleges consumers might believe were affiliated with Complainant. He contends bad faith cannot be established
through his innocent use of the registrar’s parking services or his willingness
to consider a sale of the disputed domain name to Complainant when contacted by
Complainant. He repeats his allegation
of reverse domain name highjacking.
FINDINGS
Complainant has established rights in its OPEN SOCIETY INSTITUTE mark through its trademark registrations. Respondent’s <opensociety.org> domain name is confusingly similar to Complainant’s mark. Respondent has not demonstrated rights or legitimate interests in the disputed domain name. Complainant has not proven that Respondent registered and used the domain name in bad faith. Respondent has not established that Complainant has engaged in reverse domain name highjacking.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs
this Panel to “decide a complaint on the basis of the statements and documents
submitted in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that
the Complainant must prove each of the following three elements to obtain an
order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant’s trademark registrations of its mark OPEN SOCIETY INSTITUTE are sufficient to establish its rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006). Moreover, removal of the spaces separating the terms of the mark and adding the top-level domain “.org” does not adequately distinguish Respondent’s disputed domain name <opensociety.org> from Complainant’s OPEN SOCIETY INSTITUTE mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (elimination of the space and addition of a gTLD do not avoid similarity). Moreover, removal of the word “Institute” from Complainant’s mark does not adequately distinguish the disputed domain name <opensociety.org> from Complainant’s mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001).
The
issue under Policy ¶ 4(a)(i) is solely whether
Complainant has rights in the OPEN SOCIETY INSTITUTE mark and whether the
disputed domain name is confusingly similar to the mark. See
David Hall Rare Coins v.
The panel concludes that Complainant’s
trademark registration was sufficient to establish its rights in the mark and
that Respondent’s disputed domain name is confusingly similar to Complainant’s
mark within the meaning of Policy ¶ 4(a)(i).
The domain name registrant is Respondent Gil
Citro. His name is not similar to the <opensociety.org> domain
name. The record shows that Respondent
is not commonly known by the disputed domain name, nor is he authorized by
Complainant to use the OPEN SOCIETY INSTITUTE mark. Respondent thus bears the burden to establish
his right or legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The record also shows that
Respondent’s <opensociety.org> domain name resolves to a parked website
containing a list of third-party hyperlinks.
The links lead to third-party websites unrelated to Complainant. Respondent alleges that he has not received
any click-through fees from the hyperlinks and that his registrar controls the
parked website. Respondent gave the
registrar permission to use the disputed domain name in order to avoid parking
fees. For purposes of ¶ 4(a)(ii),
Respondent nevertheless is responsible for how his domain name is used. See St. Farm
Mutual Auto. Insr.
Respondent’s
main contention is that the terms of the <opensociety.org> domain name are common and generic and
therefore that Respondent has a right to use them in his domain name. Respondent asserts that the term OPEN SOCIETY
has a common dictionary meaning as “a society that allows its members
considerable freedom (as in a democracy).”
The fact that the term may have a generic meaning is not controlling. The words are not generic in the context of
the goods and services offered by Complainant.
This distinction is recognized in Visual
Systems, Inc. v. Development Services Telepathy, Inc., FA1318632 (Nat’l. Arb. Forum June 25, 2010).
When a respondent does not use an alleged generic word or phrase to
describe his own products or business but takes advantage of a complainant’s
trademark rights in a phrase, the respondent’s use is not legitimate.
Because Respondent has not shown that he has rights or legitimate interests in the disputed domain name, Complainant has established that Respondent lacks rights and legitimate interests in the domain name within the meaning of Policy ¶ 4(a)(ii).
Respondent contends that he was unaware of Complainant’s registration of its mark at the time he registered the disputed domain name. In addition, Respondent contends that he was unaware that the registrar had posted links on the website that might lead to confusion of Internet users regarding an affiliation of the links with Complainant.
When Respondent parked the domain name with his registrar, Enom, Inc., he signed an agreement which permitted him to park the domain name without charge in consideration of the registrar’s right to use the domain name for commercial purposes. The registrar has, in fact, used the domain name as a site through which Internet users are linked to commercial offerings for which the registrar receives click-through fees. The record shows that Internet users may be confused into believing that some of the links are affiliated with Complainant. The record does not show that Respondent knew that the registrar was going to use the domain name in that manner or that he intended such use would be made.
Respondent denies that he had actual knowledge of Complainant’s mark at the time he registered the disputed domain name. He alleges that he registered a number of domain names that he believed reflected openness and social progress and did not know of the Open Society Institute or its mark when he registered the <opensociety.org> name. He says he registered the name because he liked the OPEN SOCIETY term and hoped that he would later find a use for it. The record shows that Respondent separately used the word “open” in registering such domain names as <openeconomy.org> <openpolitics.org>, and <openpolicy.org>. This pattern leads credence to Respondent’s assertion that he was unaware of Complainant’s mark at the time of his registration of the <opensociety.org> name.
The record does not show that Respondent himself registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant. Nor does the record show that Respondent registered the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Furthermore, the record does not show that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business or that Respondent himself intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.
Complainant initiated contact with Respondent and inquired whether Respondent was willing to sell the <opensociety.org> domain name to Complainant. The parties’ negotiations ended when Respondent informed Complainant that it would take an amount in six figures to purchase the domain name from him. Because Complainant initiated the exchange regarding purchase of the domain name, the Panel believes that the negotiations are not themselves probative on the issue of whether Respondent registered and used the domain name in bad faith. See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000).
Considering all of the circumstances, the Panel determines that the evidence is insufficient to show that Respondent engaged in any conduct that would constitute bad faith registration and use. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001). The Panel finds that the Complainant has not established that Respondent registered and used the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). The Panel also finds that the record does not support Respondent’s allegation that the Complainant has engaged in reverse domain name highjacking.
DECISION
Because Complainant failed to establish all
three elements required under the ICANN Policy, the Panel concludes that relief
shall be DENIED.
David A. Einhorn and Mark McCormick,
Panelists
Separate Decision by Panelist Hon. Neil Brown
Dated: August 24, 2010
SEPARATE DECISION BY THE HONOURABLE NEIL
ANTHONY BROWN QC ON THE ISSUES OF IDENTICAL OR CONFUSINGLY SIMILAR AND RIGHT OR
LEGITIMATE INTEREST
Introduction
I agree with the majority that the Complaint fails because it has not
been shown that the domain name was registered in bad faith.
However, I am also of the view that the domain name is not confusingly
similar to either of the two trademarks relied on by the Complainant and that
the Respondent has shown a right or legitimate interest in the domain name.
Accordingly, the Complaint should also fail on those additional two
grounds.
Identical or confusingly
similar
In its Complaint, the Complainant relied on only one trademark, a
registered USPTO trademark for OPEN SOCIETY INSTITUTE. It stated that it also
had three other trademarks, being a USPTO trademark for OPEN SOCIETY POLICY
CENTER and two EU trademarks for OPEN SOCIETY INSTITUTE and OPEN SOCIETY
FOUNDATION, although it did not rely on these three trademarks for the purposes
of the first element to be established under the Policy. Nor did the
Complainant argue at any time, at least expressly, that it had a common law
trademark in OPEN SOCIETY.
Its argument was solely that the disputed domain name was confusingly
similar to its first USPTO trademark, OPEN SOCIETY INSTITUTE.
The sole question, therefore, is whether the domain name <opensociety.org> is confusingly
similar to the trademark OPEN SOCIETY INSTITUTE. The Complainant argues that it
is, although it is difficult to see where in its submissions it explains why
this is so or what test should be applied to answer the question.
The test to be applied has two parts. The first part is to ask if the
domain name is similar to the trademark. In this case it is similar, for the
domain name is made up of two of the three words of the trademark. The second
part of the test is whether the similarity is confusingly so. This part of the
test is satisfied by asking the further question if the Panel can conclude that
an objective bystander, comparing the domain name and the trademark, would
reasonably conclude that the “open society” of the domain name was referring to
the OPEN SOCIETY INSTITUTE of the trademark and by that means giving rise to
confusion between the two.
The real obstacle in the way of finding that an objective bystander
would reach that conclusion is that the domain name is referring to a concept
or a notion, whereas the trademark is referring to an entity or, more
precisely, an institute and one institute in particular. An objective bystander
is therefore unlikely to think that the domain name was referring to the
Complainant’s institute or to any institute at all and unlikely to be confused
into thinking that the one necessarily referred to the other.
Moreover, the concept or notion invoked by the domain name has a
generally understood meaning, namely the idea of a society that is not closed
or secretive, but open and committed to imparting information, in part by means
of freedom of information legislation. The meaning of the domain name is
therefore very clear and does not admit of any doubt. The objective bystander would
conclude that the domain name was intended to deal with the whole of that broad
subject and its theory and practice and not necessarily with the activities of
the institute invoked by the trademark.
It should
not therefore be surprising to find that panels have on occasions found that
domain names invoking a general concept should not necessarily be taken to be
referring to a specific entity invoked by a trademark. Thus, in the decision
cited by the Respondent and used very effectively in his submission, SportSoft Golf, Inc. v. Sites to Behold Ltd.,
FA 94976, (Nat. Arb. Forum July 27, 2000) it was held that the domain name
<golfsociety.com>, consisting as it did of two generic words, was not
confusingly similar to a trademark that invoked the same two generic words and
a geographic entity, GOLF SOCIETY OF THE US. The latter clearly referred to an
entity or organisation, whereas the former clearly referred to the generic
nature of a society interested in golf or the general body or community of
golfers.
It should be said in fairness to the Complainant and its legal advisers
that it mounted an argument to the effect that its trademark is incontestable.
It should therefore be said that this argument is misconceived, as there is no
challenge being made to the trademark at all. In UDRP proceedings the duty of
the panel is to apply the Policy and the question always remains whether the
domain name in issue, whether it is generic or not, is identical or confusingly
similar to the trademark relied on. In that task, the Panel is obliged to take
into account the true nature and meaning of the words used in the domain name
and to do otherwise would be an abrogation of the whole history of applying the
Policy as well as ignoring its plain words. For the reasons given above, the
conclusion in the present case should be that the domain name is neither
identical nor confusingly similar to the trademark relied on.
Right or legitimate interest
Under this element, the essential question is whether the domain name
is a generic and/or descriptive expression and, if so, whether the Respondent
can rely on that character of the domain name to show that he has a right or
legitimate interest in it.
I had the
opportunity to express my views on this subject in general in Vanguard Trademark Holdings USA LLC v. Nett Corp., FA 1262162 (Nat.
Arb. Forum July 26, 2009) and it is convenient to state here what I said on
that occasion.
My view is essentially that Respondent has a legitimate interest in the
domain name as it consists entirely of descriptive words and there is no
evidence to suggest that it was registered with Complainant’s trademark in mind
or that since registration Complainant has been targeted. Indeed, the only
evidence on this issue is the evidence of Roy Messer, the President of
Respondent, who has declared that he did not register the disputed domain name
with Respondent’s trademark in mind. That being so, on the balance of probabilities,
the conclusion must be that Respondent has shown a legitimate interest in the
domain name. At the very least, in the face of Mr. Messer’s declaration it
would be unsafe to conclude that there was no right or legitimate interest in
the domain name. These views are consistent with the decisions cited by
Respondent, Canadadrugs.com et al. v. ASM Bioventure, FA 568743 (Nat. Ar[b].
Forum Nov. 29, 2005)(“disputed domain name is comprised of common terms and
geographic identifiers, “Canada,” and “drug(s)” which are descriptive.”) and Baccus
Gate Corp. et al v. CKV et al, D2008-0321 (WIPO May 20, 2008) (Legitimate
interest established where domain is registered based on “generic value of the
word.”) and the three person panel in the defended matter of Kaleidoscope
Imaging, Inc. v. V Entertainment a/k/a Slavik Viner, FA 203207(Nat. Arb.
Forum Jan 5, 2004) where the following statement on the relevant principles was
made:
Based on the
evidence before us, Complainant has failed to establish that Respondent does not
have rights or legitimate interests in the Disputed Domain Name. The word
KALEIDOSCOPE is a generic English language word with the meaning demonstrated
by the dictionary definition cited by Respondent in its submissions. As such,
the first to register the word in a domain name can assert rights to that
domain. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May
12, 2000) (stating, "[c]ommon words and descriptive terms are legitimately
subject to registration as domain names on a 'first-come, first-served'
basis"); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat.
Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with
just one source that only that source could claim a legitimate use of the mark
in connection with a website”). See also with respect to the generic
nature of the term: Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682
(Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and
legitimate interests in the domain name where Complainant submitted
insufficient evidence to establish either fame or strong secondary meaning in
the mark such that consumers are likely to associate <cartoys.net> with
the CAR TOYS mark); see also Energy Source Inc. v. Your
Energy Source, FA 96364 (Nat. Arb.
Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate
interests in the domain name where “Respondent has persuasively shown that the
domain name is comprised of generic and/or descriptive terms, and, in any
event, is not exclusively associated with Complainant’s business”); see also
FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding
that Complainant failed to establish that Respondent did not have rights or
legitimate interests in the <filmnet.com> domain name where the disputed
domain name was wholly comprised of generic words, even though Complainant is
the owner of the FILMNET mark); see also Sweeps Vacuum & Repair Ctr.,
Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use
of a generic domain name, <sweeps.com>, where Respondent used a
legitimate locator service (goto.com) in connection with the domain name).
Applying those
principles to the present case, it is apparent that the words in the domain
name here are both generic and that in combination they are a generic
description of a well known concept described above.
The Respondent has
made a detailed submission to explain his acquisition and use of the domain
name in question and why he was attracted to the name, which was mainly that it
reflected an intellectual interest and to rebut the adverse inference the
Complainant drew from links that were attached to the parking site to which the
domain name resolved. The Respondent advanced an argument based on the criteria
set out in the recent decision in Pantaloon Retail India Limited v. RareNames, WIPO D2010-0587 and he argued as
follows:
For example, in
the recently decided Pantaloon Retail India Limited v. RareNames, WIPO
D2010-0587, the panel found that “There is a substantial consensus among
panelists that the acquisition and offering for sale of domain names and/or
using them to provide links to other sites may well (provided it is not
directed at trademark misuse in breach of the Policy) be a legitimate business,
a business engaged in not only by Respondent but by other operators who acquire
and “warehouse” domain names which they think others might consider
valuable.” In this case the Respondent
was a company which had registered over 80,000 domains for the specific purpose
of selling them. The panel applied a
five point test in concluding that the Respondent had a legitimate interest in
the domain pantaloons.com. The points
were: (i) the respondent regularly engages in the business of registering and
reselling domain names and/or using
them to display advertising links; (ii) the respondent makes good faith efforts
to avoid registering and using domain names that are identical or confusingly
similar to marks held by others; (iii) the domain name in question is a
“dictionary word” or a generic or descriptive phrase; (iv) the domain name is
not identical or confusingly similar to a famous or distinctive trademark; and
(v) there is no evidence that the respondent had actual knowledge of the
complainant’s mark. The panel concluded that it was not necessary for the
Respondent to satisfy all of these criteria to establish a legitimate
interest. They specifically found that
item (ii) had not been satisfied, given that the Respondent had been involved
in numerous UDRP disputes and had been found to have acted in bad faith in some
of them. Nonetheless, on the balance of
the evidence, given the highly generic nature of the domain, the panel found
that the Respondent had established a legitimate interest.
In this case, all the elements are satisfied except (i). I do not claim to be in the business of
reselling domains or using them to display advertising. However, to the best of my knowledge (ii) I
have not registered domains which are trademarks unless those trademarks are
descriptive or generic, and I have never been involved in a UDRP dispute,
despite having registered hundreds of domains over a period of 12 years, (iii)
the domain name is a dictionary term, (iv) the domain is not identical or
confusingly similar to any mark, as discussed in the preceding section, and (v)
I had no knowledge whatsoever of the Complainant’s mark at the time I
registered the domain nor did the Complainant ever disclose it to me at any
time prior to filing his UDRP complaint.
Clearly, if it is permissible for a large company to register tens of
thousands of generic domain names for the purpose of selling them, even when
found to have acted in bad faith at times, then it is equally permissible for
an individual who registers a much smaller number of domains and who might from
time to time sell one to do so with at least an equal claim of legitimate
interest.
Elsewhere in his
submission the Respondent states that he has registered other generic domain
names to reflect his various intellectual interests and that they include, “… <socialenterprise.org>,
<civilliberty.org>, <openeconomy.org>, <openpolitics.org>,
and <openpolicy.org>, reflecting my interest in social progress and in
particular openness in society Almost 10% of the domains I own begin with the
word “open,” reflecting my strong interest in the term for its dictionary
meaning. At the time I registered opensociety.org I was unaware of the
Complainant or his mark…”
It is true that there were links on the website to which the domain name resolved that the Complainant has used to suggest that it was targeted by the Respondent. The Respondent has explained that this was the doing of his then registrar and that “I did, upon becoming aware of the Complainant’s objections to the content previously displayed, redirect the domain to a Google search on the term “open society,” which brings up the Complainant’s web site among others.”
Considering the totality and the substance of the evidence and submissions, I find that the Respondent’s version of events should be accepted, that it shows not only a plausible, but a logical and credible reason for registering the domain name, that he has shown a legitimate interest in the domain name because of the generic and descriptive nature of the expression used or that, at the very least, it would be unsafe to conclude that he has no right or legitimate interest in the domain name.
Finally it must be said that the Respondent’s legitimate interest in the domain name has been strengthened by several other issues that have arisen in the history of this matter. Those matters are: (a) the Complainant has waited 8 years from the registration of the domain name to bring the Complaint, an unsatisfactorily long time; (b) the Complainant offered to buy the domain name from the Respondent, implying that the Respondent had rights in the name he was being asked to sell; (c) it has allowed another domain name in the UK system,<open-society.co.uk>, to remain registered and unchallenged; and (d) it appears to have had limited interest in using an “open society” domain name, as its own domain name, <opensocietyinstitute.org> resolves to www.soros.com, after its distinguished founder.
For these reasons, I would find that the Respondent has a right or legitimate interest in the domain name.
The Hon. Neil Anthony
Brown QC
August 24, 2010
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