The Liberty Alliance; The Reverend Dr. Jerry Falwell v. Gary Cohn; GOD.info

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net,

and God.info

Case No. D2002-0184

1. The Parties

1.1 The titular Complainants are Dr. Jerry Falwell, an individual resident

of the Commonwealth of Virginia, United States of America, having a position

at Liberty University, 1971 University Boulevard, Lynchburg Virginia,

United States of America, and The Liberty Alliance, a corporation organized

under the laws of the District of Columbia, United States of America, with its

principal place of business at 3906-B Wards Road, Lynchburg, Virginia,

United States of America. Complainants petition this Panel to consolidate their

disputes pursuant to paragraph 4(f) of the Uniform Domain Name Dispute Resolution

Policy (the "Policy").

1.2 The Respondents are Gary Cohn, an individual resident of the State of Illinois,

with an address at 1954 First Street, Highland Park, Illinois, United

States of America, God.info, and Prolife.info, who are listed as the respective

registrants of the domain names at issue and who list the same address as that

of Mr. Cohn. Complainants petition this Panel to consolidate their disputes

pursuant to paragraph 4(f) of the Policy. Hereinafter Respondents will be jointly

and severally referred to as "Respondent."

2. The Domain Names and Registrars

The domain names at issue are <jerryfalwell.com> and <jerryfallwell.com>,

which domain names are registered with eNom, Inc., of Redmond, Washington, and

Bulkregister.com, Inc., of Baltimore Maryland, respectively, both in the

United States of America (the "Registrars").

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property

Organization Arbitration and Mediation Center ("the Center") on February 22, 2002,

and the signed original together with four copies forwarded by express courier

was received on February 26, 2002. An Acknowledgment of Receipt was

sent by the Center to the Complainant, dated March 1, 2002.

3.2 On March 4, 2002, Network Solutions, Inc., the registrar named in the Complaint,

advised the Center that it was not the registrar for the domain names at issue

and advised the Center of the identities of the Registrars.

3.3 On March 5, 2002, the Center advised Complainants of the need to amend

the Complaint to reflect the true identities of the Registrars. On March 6, 2002,

by electronic means and on March 11, 2002, in hardcopy, the Center

received an amended Complaint (hereinafter the "Complaint") setting forth the

true identities of the Registrars.

3.4 On March 7, 2002, the Center received confirmation from the Registrars

that the domain names at issue were registered with the respective Registrars.

3.5 The Center determined that the Complaint satisfies 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"). The Panel has independently determined and

agrees with the assessment of the Center that the Complaint is in formal compliance

with the requirements of the Policy, the 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.

3.6 No further formal deficiencies having been recorded, on March 12, 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

April 1, 2002, by which the Respondents 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 the Complaint. In

any event, evidence of proper notice is provided by the evidence in the record

of the Respondent’s participation in these proceedings.

3.7 A Response was received electronically on March 29, 2002, and

in hardcopy on April 3, 2002. An Acknowledgment of Receipt (Response)

was sent by the Center on April 2, 2002.

3.8 On April 3, 2002, Complainant submitted a "Reply to Response." On April 5, 2002,

Complainant submitted a "Supplement to Complaint on the Issue of Tarnishment

and Request for Leave to File". On April 9, 2002, Respondent

submitted a "Response to Supplemental Filing." It is within the discretion of

the Panel whether to accept and consider these supplemental filings. Rules,

paragraph 12.

3.9 On April 26, 2002, the Center sent a Notification of Appointment of Administrative

Panel, appointing Diane Cabell, Tony Willoughby, and M. Scott Donahey,

each of whom had previously submitted a Statement of Acceptance and Declaration

of Impartiality and Independence. M. Scott Donahey was designated Presiding

Panelist.

4. Factual Background

4.1 Complainants are Dr. Jerry Falwell a religious minister and educator and

The Liberty Alliance, a corporation of which Complainant Falwell is principal

spokesperson and which corporation is the registrant of <falwell.com>.

For purposes of factual background, the Panel will treat Dr. Falwell as the

sole Complainant.

4.2 Complainant is the pastor of Thomas Road Baptist Church, a 20,000 member

congregation of the Christian religious persuasion. Complainant appears weekly

on a televised program entitled "Old Time Gospel Hour." Complainant is the founder

and chancellor of Liberty University, a Christian oriented institution of higher

education in Lynchburg, Virginia, United States of America.

4.3 Complainant has used the domain name <falwell.com> to resolve to

a web site, on which he answers questions posed regarding biblical issues. The

web site receives thousands of "hits" every week.

4.4 Complainant claims a common law trademark in his name. Complainant alleges

that he has appeared on the cover of Time magazine, and in 1987 Complainant

finished second only to former United States President Ronald Reagan in a poll

conducted by Good Housekeeping magazine to determine America's Most Admired

Men.

4.5 Complainant has not granted Respondent permission to use Complainant's

name. Indeed, on October 26, 2001, Complainant sent Respondent a cease

and desist letter, by email and by overnight courier.

4.6 Respondent is an individual. He has used the domain names at issue to resolve

to a web site at which he offers parody, satire, and implied and direct criticism

of Complainant and Complainant's views. The web site is non-commercial in nature,

but does link to a discussion forum which service is hosted by a commercial

third party, Delphi Forums. Delphi Forums does not appear to be connected to

Respondent nor do any advertisements for Delphi appear on the Respondent's pages.

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered domain names that are

identical and/or confusingly similar to Complainant’s common law trademark.

Complainant further contends that Respondent has no rights or legitimate interests

in respect of the domain names at issue, in that Respondent is using Complainant's

common law trademark, or a variation thereof, in the domain name itself, and

that this is unnecessary to accomplish Respondent's purported objective of satirizing

or parodying Complainant. Finally, Complainant contends that Respondent's web

site does not fall within the definition of parody, and therefore is a bad faith

use.

5.2 Respondent apparently admits that the domain names at issue are identical

or similar to Complainant's name, but denies that Complainant’s name is protectable

under the Policy. Respondent further contends that it has legitimate interests

in respect of the domain names at issue, since it 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 . . .at issue. Policy, paragraph

4(c)(iii). Finally, Respondent contends it did not register, nor is it using,

the mark in bad faith, because of the above assertions, and because there is

no possibility of confusion with Complainant. Respondent requests that the Panel

find that Complainant is guilty of "cyberbullying," which the Panel interprets

as a request for a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

Paragraph 4(f) of the Policy permits the Panel, in its sole discretion, "to

consolidate . . . any or all disputes" pending between the parties. The majority

notes that there are no disputes pending between The Liberty Alliance and any

of the named Respondents. The Liberty Alliance is essentially included as a

party-complainant as a matter of convenience to Dr. Falwell. "The Liberty Alliance

is the registrant of Dr. Falwell's own domain name, FALWELL.COM, and it is to

The Liberty Alliance that Dr. Falwell herein asks that the disputed domain names

be transferred." Complaint, Section II,A, at paragraph 2. Accordingly, the majority

finds that The Liberty Alliance is not a proper party to the present proceeding,

and it is hereby dismissed as a Complainant. The sole legitimate Complainant

to this dispute is Dr. Jerry Falwell.

The dissenting panelist would not have dismissed The Liberty Alliance as a

complainant. In the view of the dissenting panelist, if the name of the First

Complainant had been a trade mark or service mark, The Liberty Alliance might

well have had rights to it in the same way that the trademark rights to the

name of the English designer, Elizabeth Emanuel, are owned by the company for

which she worked and not by her. The dissenting panelist would have dismissed

the complaint of The Liberty Alliance on the ground that it had failed to prove

that the name of the First Complainant is a trademark or service mark.

Respondent admits that he is effectively the registrant of the domain names

at issue, and admits using the pseudonyms God.info and Prolife.net in the registration

of the domain names at issue to emphasize the satiric nature of the use of the

domain names at issue. Therefore, Complainant's disputes are not only with the

named registrants, but with Mr. Cohn, as well. Therefore, the Panel exercises

its discretion to consolidate the disputes against the three named Respondents.

Paragraph 12 of the Rules provides that "[i]n addition to the complaint and

response, the Panel may request, in its sole discretion, further statements

or documents from either of the parties." The Panel made no such request. The

Panel affirmatively wishes to discourage the litigation tactic of always trying

to secure the last word on any subject of dispute. Accordingly, the panel refuses

to accept or to consider for any purpose the supplemental pleadings submitted

in this matter.

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,

since both registrars have their principal places of business 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.

Complainant claims a common law trademark in his personal name. The Complainant

has failed to show that his name, well known as it is, has been used in a trademark

sense as a label of particular goods or services. The dissent notes that this

failure is attributable not only to Dr. Falwell, but to The Liberty Alliance

as well. There are many well-known ministers, religious figures, and academics.

Are their sermons or lectures to be considered commercial goods? Complainant

failed to provide any marketing brochures, trade advertisements, or other evidence

of use as a trademark. On September 3, 2001, WIPO issued its Final

Report on the Second WIPO Domain Name Process (the "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, paragraph 199.

Complainant is careful to avoid any suggestion that he has exploited his name

for "materialistic" or "commercial" purposes. Complainant is an educator and

religious minister. He has used his name to advance his views as to morality

and religion. That Complainant has acquired a certain fame in the United States

is without question. However, this kind of fame is not cognizable under the

Policy. See, e.g., Kathleen Kennedy Townsend v. B. G. Birt, WIPO

Case No. D2002-0030 (April 11, 2002).

This does not mean that Complainant is without a remedy. He may have claims

under the Anticybersquatting Consumer Protection Act ("ACPA"), which expressly

provides for protection of personal names, or perhaps his actions lie in tort.

Complainant is free to pursue his claims in U.S. courts.

Moreover, while not necessary to our decision, the majority finds that 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[1]

the trademark . . . at issue." Policy, paragraph 4(c)(iii). The fact that the

trademark is used in the domain name does not in and of itself defeat the legitimate

noncommercial fair use of the trademark in question. Bruce Springsteen v.

Jeff Burgar and Bruce Springsteen Club, WIPO

Case No. D2000-1532 (January 25, 2001). Nor does initial interest

confusion affect the legitimate noncommercial fair use of the trademark. See,

e.g., Strick Corp. v. Strickland, 162 F. Supp. 2d 372, 377 (E.D. Pa. 2001).

The dissenting panelist takes the view that the intended impersonation of another

can rarely if ever be fair or legitimate and particularly in circumstances where

the Complainant’s name has been taken without adornment and where the purpose

behind the impersonation of the person in question is to damage him. In the

view of the dissenting panelist the fact that the unsuspecting visitor to the

Respondent's web site is immediately disabused is irrelevant. By then the damage

has been done. The visitor has been misleadingly diverted, and the Complainant

has been damaged.

Complainant argues that the use being made of the name does not fall within

the definition of "parody." However, whether regarded as parody, satire, or

critical commentary, the majority believes that legitimate noncommercial fair

use commentary is involved. Whether the commentary is in good taste, whether

it is funny, whether it is effective, all is beside the point. See, e.g.,

Wal-Mart Stores, Inc. v. Wal-Martcanadasucks.com and Kenneth J. Harvey,

WIPO Case No. D2000-1104 (November 23, 2000),

at 18-19.

Respondent effectively asks for a finding of reverse domain name hijacking.

The Panel declines to so find. There is a split of authority among panelists

as to whether the mere use of a trademark in a domain name defeats fair use.

Compare, Estée Lauder, Inc. v. Estelauder.com, Estelauder.net,

and Jeff Hanna, WIPO Case No. D2000-0869

(September 25, 2000), with The New York Times Company v. New York

Internet Services, WIPO Case No. D2000-1072

(December 5, 2000). Thus, Complainant could have well believed the

Panel might have found that any use of the trademark in a domain name precluded

fair use.

7. Decision

For all of the foregoing reasons, the Panel decides that the domain names registered

by Respondent are identical or confusingly similar to the mark in which the

Complainant claims rights, but that Complainant's rights in his personal name

are not protectable under the Policy. The majority also finds that Respondent

has rights to or legitimate interests in respect of the domain names at issue.

Accordingly, the relief requested in the Complaint is denied.

The Panel declines to find reverse domain name hijacking.

M. Scott Donahey

Presiding Panelist

Diane Cabell

Panelist

Tony Willoughby

Panelist , dissenting in part

Dated: June 3, 2002

1. "Tarnishment" is intended to be limited

to acts done with intent to commercially gain. Second Staff Report on Implementation

Documents for the Uniform Dispute Resolution Policy, submitted for the ICANN

Board meeting of October 24, 1999, paragraph 4.5,c. n. 2.