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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jules I. Kendall v. Donald Mayer Re skipkendall.com
Case No. D2000-0868
1. The Parties
The Complainant, Jules I. Kendall, is a professional golfer known as Skip Kendall.
The Respondent is Donald Mayer, an individual located in Palos Verdes Estates, California, USA.
2. The Domain Name and Registrar.
The disputed domain name is "skipkendall.com".
The registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").
The Complaint was submitted to the WIPO Arbitration and Mediation Center by email on July 25, 2000. The Response was submitted by email on September 7, 2000. Supplemental filings were submitted by the parties on September 13 and 19, 2000.
Respondent elected to have the case decided by a three-member panel. Mr. Clark W. Lackert was appointed as the Complainant’s nominee. Mr. Milton L. Mueller was selected as the Respondent’s nominee. Mr. Mark V.B. Partridge was appointed as presiding panelist.
It appears that all requirements of the Policy and the Rules have been satisfied by the parties, WIPO and the Panelists.
4. Factual Background
Complainant is a professional golfer, better known as Skip Kendall. He turned professional in 1987, and has since achieved moderate success and attracted endorsement contracts. His name has not been registered as a trademark.
Respondent’s wife is Complainant’s sister. The underlying conflict between the parties appears to arise from a dispute over a loan. Respondent registered the disputed domain name on January 25, 2000, and now operates a web site about the loan dispute under the headline "Skip Kendall – PGA Golf Pro and Deadbeat(?) – You Be The Judge." The site contains no advertising and does not promote or offer the sale of any goods or services. The text of the site is limited to the Respondent’s statements about the loan dispute between Complainant and his sister.
5. Parties’ Contentions
Complaint contends that the disputed domain name is identical to his personal name and common law trademark SKIP KENDALL. He further contends that Respondent has no legitimate interest or rights in the domain name. Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith with the intent to "interfere with and diminish" the value of his business and professional activities.
Respondent denies that Complainant has any trademark rights in the name SKIP KENDALL. Respondent also asserts that he has a legitimate First Amendment right to use Complainant’s name to make non-commercial comments about a public figure. For that reason, Respondent also contends that it did not register or use the domain name in bad faith.
6. Discussion and Findings
To prevail under the Policy, Complainant must demonstrate each of the following elements: (a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the domain name; and (c) the domain name has been registered and used in bad faith.
Complainant’s fundamental contention, as stated in his complaint, is that "Respondent is using the Domain Name in bad faith to defame Complainant." That contention, however, is outside the scope of the issues this Panel is empowered to address under the Policy. Rather, it is an issue that may be addressed by a competent court. We regret that the parties, WIPO and the Panelists have been put to substantial time and expense on a matter that seems clearly outside the scope of the intended Policy. Although the Policy is relatively new and parties understandably continue to test its limits, we urge future complainants to limit their complaints to matters within the scope and intent of the Policy.
A. Similarity of the Disputed Domain Name and Complainant’s Mark
Although the disputed domain is identical to the professional name used by Complainant, Respondent contends that the Policy does not apply because Complainant does not have any trademark or service mark rights in his name. Respondent recognizes that such rights may arise from use without registration, but denies that Complainant’s use has been sufficient to create such rights. Complainant asserts that his use is sufficient to create prior common law rights. Moreover, he notes that other Panels have applied the Policy to protect personal names without requiring a showing of trademark or service mark rights. See, for example, Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000); Monty and Pat Roberts, Inc. v. J. Bartell, D2000-0300 (WIPO June 13, 2000); Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000); and Steven Rattner v. BuyThisDomainName, D2000-0402 (WIPO July 3, 2000).
Whether the Policy applies to protection of personal names in the absence of a showing of common law trademark or service mark rights is an issue that has indeed been disputed. Some contend that the Policy should be limited to its strict language. Others would interpret the Policy broadly to encompass rights of personality. We note the conflicting views, but for the purposes of this case, we do not need to reach a decision on the issue. We also do not need to reach a decision on the factual question of whether Complainant has established common law trademark rights in his name as a result of over a decade of providing service as a professional golfer.
B. Lack of Rights or Legitimate Interests In The Domain Name
Respondent’s claim of a legitimate interest in the use of the domain name arises sole from its desire to criticize Complainant in a public forum. Complainant acknowledges that Respondent has the right to freely express opinions and criticism about Complainant, but asserts that that interest does not extend to "unbridled defamation" or to the use of his name to generate a larger audience for such defamation.
Under Paragraph 4(c)(iii) of the Policy, the question faced by the Panel is whether Respondent is "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."
Here, the use of the domain name appears to be noncommercial since the site is not operated for profit or for the purpose of selling or promoting any goods or services. Although Respondent seeks to collect on a personal debt, we do not view that as a commercial activity under the Policy. Nevertheless, there may still be a dispute as to whether or not the domain name is a fair use necessary to exercise a First Amendment right.
Some would contend that Respondent does not need to use Complainant’s name as a domain name to present the intended message because other alternatives are available. For example, Respondent might select a domain name that contains Complainant’s name combined with other terms to avoid any initial confusion about the nature of the site. Others would find this view an unwarranted restriction on free speech over the Internet, and would allow domain names to make a direct nominative reference to the subject of the message, just as the title of a biography may make direct reference to its subject.
This is an important and critical issue that may turn on the nature of the speech involved, so that the result could be different depending on whether the underlying use were commercial or noncommercial speech. See, for example, Cliff’s Notes Inc. v. Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d 490 (2d Cir. 1989,)(discussing the nexus between First Amendment principles and trademark protection); Northland Insurance Companies v. Blaylock, 2000 U.S. Dist. LEXIS 14333 (D. Minn. September 25, 2000,)(denying preliminary injunction where customer used plaintiff’s trademark as domain name for web site criticizing plaintiff). For the reasons discussed below, we do not need to resolve this difficult issue here.
C. Bad Faith Registration and Use
Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use of a domain name includes a variety of circumstances. None seem applicable here. There is no evidence that Respondent has registered and used the domain name for the purpose of selling it for profit. Respondent is not engaged in a pattern of conduct that prevents the owners of trademarks from reflecting the mark as a domain name. Only one domain name was registered; there was no attempt to register multiple variations of the Complainant’s personal name or to occupy all versions of the name in multiple top level domains. Respondent did not register the domain name to disrupt the business of a competitor. Finally, there is no indication that the Respondent has intentionally attempted to attract Internet users to its site for commercial gain based on confusion with Complainant. As stated above, the element of commercial gain, in our view, is not satisfied by a public attempt to recover on a personal debt.
We recognize that Paragraph 4(b) of the Policy permits other circumstances to be considered in determining bad faith, but we find that Complainant has not shown other circumstances that would warrant relief under the Policy. As noted above, this case involves alleged defamation, not cybersquatting. As such, it turns on issues that are outside the mandate of the Policy.
Under Paragraph 4 of the Policy, we find in favor of the Respondent and conclude that the disputed domain name "skipkendall.com" should not be transferred to the Complainant.
Mark V.B. Partridge
Clark W. Lackert Milton L. Mueller
Dated: October 26, 2000