Kathleen Kennedy Townsend v. B. G. Birt

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kathleen Kennedy Townsend v. B. G. Birt

Case No. D2002-0030

1. The Parties

1.1 The Complainant is Kathleen Kennedy Townsend, an individual resident

of the State of Maryland, United States of America, giving an address c/o Friends

of Kathleen Kennedy Townsend, at P.O. Box 1735, Annapolis, Maryland, United

States of America.

1.2 The Respondent is B. G. Birt, an individual with an address at 4715

Forest Park Avenue, Baltimore, Maryland, United States of America.

2. The Domain Name and Registrar

The domain names at issue are <kennedytownsend.com>, <kennedytownsend.org>,

<kennedytownsend.net>, <kathleenkennedytownsend.org>, and <kathleenkennedytownsend.com>,

the first two of which domain names are registered with Network Solutions, Inc.

and the last three of which are registered with Melbourne IT, Ltd. (the "Registrars").

3. Procedural History

3.1 A Complaint was submitted to the WIPO Center on January 15, 2002.

An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant,

dated January 17, 2002.

3.2 On January 18, 2002, the Registrars confirmed by e-mail that the domain

names at issue are registered with the Registrars, are currently in active status,

and that the Respondent is the current registrant of the names. The Registrars

also forwarded the requested Whois details, and confirmed that the Policy is

in effect.

3.3 The WIPO Center determined that the Complaint satisfies the formal requirements

of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the

"Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy (the "Supplemental Rules"). The Panel has independently determined

and agrees with the assessment of the WIPO Center that the Complaint is in formal

compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental

Rules. The required fees for a three-member Panel were paid on time and in the

required amount by the Complainant.

3.4 No formal deficiencies having been recorded, on January 23, 2002,

a Notification of Complaint and Commencement of Administrative Proceeding (the

"Commencement Notification") was transmitted to the Respondent (with

copies to the Complainant, the Registrars, and ICANN), setting a deadline of

February 12, 2002, by which the Respondent could file a Response to

the Complaint. The Commencement Notification was transmitted to the Respondent

by courier and by e-mail to the e-mail addresses indicated. In any event, evidence

of proper notice is provided by the evidence in the record of the Respondent’s

participation in these proceedings.

3.5 A Response and Request for Reverse Domain Name Hijacking (the "Response")

was received electronically on February 14, 2002. An Amended Response

was received by the WIPO Center on February 20, 2002.

3.6 On March 1, 2002, the WIPO Center Sent a Notification of Panel Appointment,

appointing Sandra A. Sellers and G. Gervaise Davis III, as Panelists, and M. Scott Donahey

as Presiding Panelist. All of the Panelists appointed had previously submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

The date on which the decision was to be forwarded to the WIPO Center was March 15, 2002.

3.7 On March 1, 2002, the WIPO Center received a Request for Recusal or

Disqualification of Panelist Sandra A. Sellers from Respondent. On the same

date the WIPO Center forwarded the Request for Recusal to the Presiding Panelist.

3.8 On March 1, 2002, the Presiding Panelist issued his Order of Presiding

Panelist, a copy of which is attached to this Decision. The Order stated that

"[n]othing in the [Rules or Supplemental Rules cited by the Respondent] empowers

the Presiding Panelist, or indeed a majority of the Panel, to rule on a Request

for Recusal of a fellow Panelist. The presiding Panelist therefore has no jurisdiction

to deal with this request. Moreover, even if the Presiding Panelist had such

jurisdiction, he would decline to exercise it, because such exercise would be

inappropriate and unseemly. Accordingly, the Presiding Panelist declines to

rule on the Request for Recusal or to consider it for any purpose."

3.9 On March 4, 2002, Respondent forwarded to the WIPO Center his request

to submit a Supplemental Filing, attaching a copy of the decision in the matter

of Marvin Lundy LLP v. Scott E. Idamond (Scott E. Diamond), WIPO

Case No. D2001-1327. On March 12, 2002, the Panel issued its determination

to accept Respondent's Supplemental Filing. The Panel granted complainant until

March 20, 2002 in which to file a reply. The Panel's time in which

to decide the case was extended until April 3, 2002.

3.10 On March 19, 2002, the Panel received a copy of Complainant's Response

to the Respondent’s Supplemental Filing.

3.11 On April 2, 2002, the time in which the Panel could issue its decision

was extended to April 12, 2002, due to the medical condition of one

of the Panelists.

4. Factual Background

4.1 Complainant is currently the Lieutenant Governor of the State of Maryland,

serving in the eighth year and second term in that elected position. Complainant

is a potential candidate for Governor of the State of Maryland in the election

to be held in the fall of 2002.

4.2 Complainant is the eldest daughter of the late Attorney General of the

United States Robert F. Kennedy, is the niece of the late John F. Kennedy, former

President of the United States, and is the niece of Senator Edward M. Kennedy

of Massachusetts.

4.3 Complainant and her possible candidacy for Governor of Maryland is the

subject of a number of newspaper articles. Attachments to Complainant's Reply.

4.4 Complainant asserts a common law trademark in her name.

4.5 Complainant has a fund raising committee, the Friends of Kathleen Kennedy

Townsend. The committee maintains a web site that is managed by Carol/Trevelyan

Strategy Group. ("CTSG"). Response, Annex 4. CTSG has registered the following

domain names during the period April 24, 2001, through November 7, 2001:

<friendsofkennedytownsed.com>, <friendsofkennedytownsd.net>, <friendsofkennedytownsed.org>,

<townsend2002.net>, <friendsofkathleenkennedytownsed.com>, <friendsofkathllenkennedytownsed.net>,

<friendsofkathleenkennedytownsed.org>, <friendsofkathleen.com>,

<friendsofkathleen.net>, <friendsofkathleen.org>, <kathleentownsend2002.com>,

<kathleentownsend2002.net>, <kathleentownsend2002.org>, <kennedytownsendforgovernor.com>,

<kennedytownsendforgovernor.net>, <kennedytownsendforgovernor.org>,

<kathleenkennedytownsendforgovernor.com>, <kathleenkennedytownsendforgovernor.net>,

and <kathleenkennedytownsendforgovernor.org>.

4.6 Respondent registered the five domain names at issue during the period

November 15, 1999, through April 23, 2001.

4.7 Respondent has also registered the domain names<kathleenkennedy.net>,

<votekathleenkennedytownsend.com>, <votekennedytownsend.com>, <electkennedytownsend.com>,

<electkathleenkennedytownsend.com>, and <kennedytownsendvote.com>.

None of these names are at issue. None of these names are currently used to

resolve to a web site.

4.8 Sometime in the summer of 2001, representatives of Complainant discovered

that the above referenced domain names had been registered by Respondent. Complainant

alleges that attempts were made during that period to contact Respondent and

purchase the names, which Respondent indicated would require great deals of

money. Respondent does not apparently deny these contacts, but disputes their

substance. Response, Annex 5.

4.9 On November 21, 2001, the Treasurer of Friends of Kathleen Kennedy Townsend

sent a letter to Respondent, identifying the 11 domain names related to Complainant

that Respondent had registered, laying claim to the names under the Anticybersquatting

Consumer Protection Act (the "ACPA") and the Policy. Complaint, Annex 3.

4.10 On November 26, 2001, Respondent sent a letter in response, requesting

the purpose of the previous inquiry. On December 19, 2001, the Treasurer

sent Complainant another letter, requesting transfer of the eleven identified

domain names to CTSG, the web site manager for the committee. By letter dated

December 26, 2001, Respondent refused to consent to the transfer of

the domain names. Response, Annex 5.

5. Parties’ Contentions

5.1 Complainant contends that Complaint has a common law trademark right

in her name. Complainant alleges that Respondent has registered domain names,

which are identical and/or confusingly similar to the Complainant's common law

trademark. Complainant contends that Respondent has no rights or legitimate

interests in respect of the domain names at issue. The domain names at issue

do not invoke free speech rights since they can be used only for identification

purposes. Finally, Complainant alleges that Respondent has registered and is

using the domain names at issue in bad faith, because Complainant registered

the domain names at issue for the purpose of selling the names to Respondent,

that Complainant has not made any use of the domain names in all the time since

they were registered, and that Respondent is engaged in a pattern of conduct

intended to prevent Complainant from reflecting her common law trademark in

a domain name.

5.2 Respondent contends that the complaint is not in compliance with Uniform

Rules, Rule 3(b)(viii), in that it fails to "describe the goods or services

[if any] with which the mark is used." Respondent further argues that the domain

name involves personality rights and falls outside the scope of the Policy,

citing the First and Second Final Reports of the WIPO Internet Domain Name Process.

Respondent contends that Complainant's statements regarding offers to sell the

domain name at issue were not attested to under oath and were lacking specificity

as to time, content, and participants, and therefore must fail as proper evidence.

Respondent contends that Complainant's name has not acquired common law trademark

status. Respondent alleges that since Complainant is a political figure, Respondent

has a protected Free Speech interest in the names. Respondent contends that

the fact that Respondent has yet to use the domain names to resolve to a web

site is immaterial, because Complainant has yet to declare her candidacy for

office. Respondent further argues that Complainant already is in possession

of more than sufficient domain names to accomplish her political objectives,

and that Respondent is not attempting to prevent her from reflecting her personal

name in a domain name. Finally, Respondent argues that the ACPA bars her claim

under the UDRP.

Respondent requests that the Panel make a finding of reverse domain name hijacking.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel

is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States,

and since United States’ courts have recent experience with similar disputes,

to the extent that it would assist the Panel in determining whether the Complainant

has met its burden as established by Paragraph 4(a) of the Policy, the Panel

shall look to rules and principles of law set out in decisions of the courts

of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

(1) that the domain names registered by the Respondent are identical or

confusingly similar to a trademark or service mark in which the Complainant

has rights; and,

(2) that the Respondent has no rights or legitimate interests in respect

of the domain names; and,

(3) that the domain names have been registered and are being used in bad

faith.

We must first determine whether the domain name at issue is identical or confusingly

similar to a mark in which Complainant has rights. Complainant places its chief

reliance on the case of Anne McLellan v. smartcanuk.com, eResolution

Case No. AF-303a and AF-303b. In that well-reasoned decision, the Panel found

that "[t]he Policy does not require that the Complainant hold a registered trademark

or service mark. It is sufficient that the Complainant can demonstrate that

she has rights in a common law trademark or sufficient rights to ground an action

for passing off." "The Panel finds that the Complainant has established common

law trademark rights in her name sufficient to support a complaint under the

ICANN Policy. Anne McLellan is well known in Canada as the Member of Parliament

for the federal riding of Edmonton West, and also as the Minister of Justice

and Attorney General of Canada. She is the most senior Government of Canada

official in the province of Alberta, which [is] the province in which both Complainant

and Respondent reside."

That analysis would apply equally to the facts before us had not circumstances

changed from the date on which the case was decided, September 25, 2000.[1]

However, almost one year following the issuance of that opinion, the World Intellectual

Property Organization issued its Final Report on the Second WIPO Domain Name

Process, dated September 3, 2001 ("Second WIPO Report"). In that report,

WIPO carefully considered to what degree protection should be extended to personal

names. In its recommendations, WIPO clearly indicated that the Policy should

be limited to personal names that had been commercially exploited. "Persons

who have gained eminence and respect, but who have not profited from their reputation

in commerce, may not avail themselves of the UDRP to protect their personal

names against parasitic registrations. The UDRP is thus perceived by some as

implementing an excessively materialistic conception of contribution to society."

Second WIPO Report, 1999.

This, however, does not close our inquiry. Under the Patent and Trademark laws

of the United States, trademarks connected with political activities have enjoyed

trademark status. In the case of National Rural Electric Cooperative Association

v. National Agricultural Chemical Association, 26 U.S.P.Q. 2d 1294 (D.C.D.C.

1992), at issue was an alleged trademark for a political action committee. The

court found such a mark to be protectable. Likewise, in the case of United

We Stand America Inc. v. United We Stand, America New York Inc., 44 U.S.P.Q.

2d 1351 (2d Cir. 1997) the mark of a political organization that adopts a platform

and endorses candidates acts "in commerce" has trademark rights in the name

adopted.

Neither of these cases, however, involved individuals. Both of these cases

involved political organizations that adopted platforms, endorsed candidates,

and raised campaign funds. To similar effect is the case of CMG Worldwide,

Inc. v. Naughtya Page, NAF Case No. FA95641. In that case, the authorized

representative for The Diana, Princess of Wales Memorial Fund sought the domain

names <princessdi.com> and <princessdiana.com>. The names had been

registered while the late princess was still alive, but were not pursued until

after her death, and were pursued by the authorized entity for the purpose of

fundraising.

The Panel carefully considered whether it was appropriate to draw the distinction

concerning who – the individual or the political organization supporting that

individual – is engaged in the political fund-raising activities that may constitute

commercial activity sufficient to support rights in a mark protected under the

Policy. We were compelled to draw such a distinction. For many reasons, political

candidates authorize the formation of separate legal entities to raise funds

on the candidates' behalf. These reasons generally include the avoidance of

the appearance of impropriety, the protection of the individual from legal liability,

as well as sheltering the individual from the personal income tax consequences

of receipt of large sums of money. This legal separation of individual candidate

from fund-raising activity cannot be used as a protective cloak in certain circumstances,

but shed when beneficial to do so. Accordingly, we determined that the legal

fund-raising entity would have been the appropriate party to bring a complaint

based upon service mark rights grounded upon political fund-raising activities.

Here, the claim for the domain names is brought by the individual politician,

and not by the political action committee actively engaged in the raising of

funds and promotion of Complainant's possible campaign. Had the claim been brought

in the name of the Friends of Kathleen Kennedy Townsend, the result might well

have been different. But it was not. The Panel finds that the protection of

an individual politician's name, no matter how famous, is outside the scope

of the Policy since it is not connected with commercial exploitation as set

out in the Second WIPO Report.

This does not mean that Complainant is without remedy. The ACPA contains express

provisions protecting the rights in personal names. Complainant is free to pursue

her claims in that forum. And, as mentioned, the committee may have rights in

the marks that are sufficiently commercial as to entitle the committee to protection

under the Policy.

7. Decision

For all of the foregoing reasons, the Panel decides that the Complainant does

not have rights in a mark that is protectable under the Policy. The Panel does

not believe that this is an appropriate case for a finding of reverse domain

name hijacking.

M. Scott Donahey

Presiding Panelist

G. Gervaise Davis III

Panelist

Sandra A. Sellers

Panelist

Dated: April 11, 2002

1. Also, the Panel notes that the present

case is distinguishable from McLellan in several respects. In McLellan, the

individual was not running for election and thus political fund raising was

not at issue. Further the respondent in McLellan clearly had attempted to use

McLellan's name to channel traffic to the respondent's web site for the respondent's

commercial gain.

Other cases for this domain

• Friends of Kathleen Kennedy Townsend v. B. G. Birt — D2002-0451 · kathleenkennedytownsend.com, kathleenkennedytownsend.org, kennedytownsend.com · Complaint denied · 31 Jul 2002