United States: Ron Paul v. DN Capital Inc. / Martha Roberts And Ron Paul v. Whois Privacy Servs. Pty Ltd / JNR Corp
2013 WL 2390828 (WIPO May 11, 2013) and 2013 WL 2390820 (WIPO May 8, 2013)

CASE SUMMARY

FACTS

Ron Paul is a former U.S. Congressman and three-time candidate for President of the United States. Respondent is a Ron Paul supporter who bought the domain names "RonPaul.com" and "RonPaul.org" (collectively "the Domain Names") to spread awareness for Ron Paul's campaign and political ideas. Respondent offered to sell "RonPaul.com" for $250,000 and, alternatively, offered to give Paul "RonPaul.org" for free. Paul rejected the offer and brought complaints under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP") before a World Intellectual Property Organization ("WIPO") arbitration panel ("the Panel"), alleging that Respondent had no legitimate rights in Ron Paul's name and had registered and used the Domain Names in bad faith.

ANALYSIS

To prevail under the UDRP, a complainant must demonstrate that (1) a domain name registered by a respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the respondent has no rights to or legitimate interests in respect of the domain name; and (3) the respondent has registered and is using the domain name in bad faith.

First, Ron Paul argued that he had obtained common-law trademark rights in his name and that the Domain Names were identical to his trademarks. The Panel held that in order to establish common-law trademark or service-mark rights in his personal name, Paul had to show that his name identified goods or services in commerce and that the public associated his name with those goods or services. The Panel acknowledged that merely "being famous" is not necessarily sufficient to demonstrate common-law trademark rights, but held that Paul had written several books and had recently signed with an agency for public speaking engagements. Ultimately, the Panel did not rule on this issue, having found that Paul did not meet the other required elements of his UDRP claims.

Next, the Panel held that Respondent had legitimate rights in the Domain Names because it operated an independent fan site where it made a legitimate and noncommercial use of the Domain Names. Paul argued that Respondent registered the Domain Names primarily for selling merchandise. The Panel disagreed, holding that Respondent offered updated news, commentary, and discussions about Ron Paul, while serving as a forum for his followers. Respondent, the Panel held, had a strong legitimate interest in the Domain Names because its website primarily provided a noncommercial service and served as a place for political speech, which is "at the heart of what the United States Constitution's First Amendment is designed to protect." Moreover, the Panel held that Respondent's use met the criteria for a nominative fair use because the site "sold only goods that promote[d] Ron Paul." Furthermore, it provided clear disclaimers throughout the website that it was not associated with or endorsed by Paul.

Turning to evidence of bad faith, the Panel held Respondent did not register the Domain Names for the purpose of selling them to Ron Paul for an amount far in excess of Respondent's out-of-pocket expenses. The Panel found that while Respondent did offer to sell the "RonPaul.com" domain name and a mailing list of 170,000 names to Paul for $250,000, Respondent also offered, alternatively, to provide Paul with the "RonPaul.org" domain name for free. Respondent, the Panel held, had never attempted to sell the Domain Names to any third party, but "instead . . . invested a good deal of time and energy to develop the website linked to the Domain Name[s]."

Finally, the Panel found that Ron Paul had engaged in Reverse Domain Name Hijacking of the "RonPaul.org" domain name. Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." "[A] finding of Reverse Domain Name Hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy." Respondent offered to give the "RonPaul.org" Domain Name to Paul for no charge with "no strings attached," but instead of accepting the Domain Name, Paul brought the UDRP proceedings. The Panel held that "[a] finding of Reverse Domain Name Hijacking seems . . . appropriate in the circumstances."

CONCLUSION

This decision is of interest because it is a rare case featuring a high-profile political candidate accused of abusing the UDRP system in an attempt to gain control over a domain name. It is also one of only a few UDRP decisions where a respondent successfully proved that a complainant engaged in Reverse Domain Name Hijacking.

This article previously appeared in Incontestable Trademark Newsletter - June 2013.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.