Rights to Free Speech and the use of TomPapania.Com therein were Upheld in this WIPO decision:
Tom Papania [Complaintent Tom Papania] filed a complaint with the WIPO [world court for domain names] against Fraud Expose [Respondent EZnewsTV.Com] for using the name Tom Papania in its Expose of Allegations of Fraud against Tom Papania and God's Saving Grace Ministries.
Complainant's [Complaintent Tom Papania] fundamental objection appears to be his claim that Respondent [Respondent EZnewsTV.Com] is using Complainant's name for a web site that provides allegedly false and defamatory material regarding Complainant. If this is so, an action for libel may be available to Complainant in the United States Courts. Our inquiry here, however, is limited to questions of cybersquatting and focuses on three issues:
(1) is the domain name confusingly similar to a trademark or service mark in which complainant has rights; (2) does the domain name registrant have a legitimate interest in the domain name; and (3) has the domain name been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
A.
Confusing Similarity A threshold question here is whether Complainant has a protectable trademark interest in the name Tom Papania. On this point, Complainant merely alleges: "Tom Papania markets himself by way of name recognition to conduct speaking engagements throughout the country and in the sale of various media." Complainant provides no other information or evidence to establish protectable rights in Complainant's name. Respondent asserts that Complainant lacks rights because his name is not used for a business or commercial enterprise. Instead, Complainant "seeks all income through God's Saving Grace, a nonprofit religious corporation and never charges fees for speaking engagements". Respondent is in error to the extent it contends that nonprofit activities are incapable of creating trademark rights. In the United States where both parties reside, the "use in commerce" requirement for trademark protection can be satisfied by nonprofit activities that occur in the public sphere of commerce regulated by Congress. Here, however, Complainant has failed to submit any evidence to show that Complainant has established rights in his name for the purpose of protection under the Policy. Complainant's bald allegation quoted above is insufficient to meet that burden. The only material in the record is provided by Respondent and consists of a newsletter captioned God's Saving Grace Ministries with the byline "Tom Papania, Evangelist". I find that single use of the name to be insufficient evidence on which to find rights protectable under the Policy. B.
Legitimate Interest Even if Complainant were able to establish protectable rights in his name, I am not persuaded that he has or can meet his burden on the second necessary element of his claim. Complainant asserts that Respondent has no legal claim in the name, is not otherwise known by the name and has not used the name in connection with any bona fide offering of goods or services. Respondent asserts it has a legitimate interest in the name because it is a nonprofit news organization reporting on Complainant's public activities. In that news reporting context, the domain name serves as Respondent's headline. The use of personal names in the title of an artistic work about the person has been given First Amendment protection. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Similar reasoning applies to the use of personal names in the titles or headlines for news reports. Nevertheless, the difficulty of applying this principle to domain names has been noted in other cases under the Policy. As stated in Jules I. Kendall v. Donald Mayer Re skipkendall.com, WIPO Case No. D2000-0868, even if the content of the site is protected, "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". Further, the result may differ depending on the commercial or noncommercial nature of the content. Here, the content involved is non-commercial speech in the form of news reporting by a news reporting organization. As such, it falls within the principles of Rogers v. Grimaldi in which the title is viewed as protected speech. As stated by the Court in that case: In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of [trademark law] unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work. Applying that principle here, it is undisputed that Respondent provides news commentary about Complainant. Thus, the domain name has direct relevance to the underlying work. Further, the Domain Name does not seem to explicitly mislead Internet users about the content of the site. Finally, Complainant has not shown that the domain name explicitly misleads as to the source of site. Therefore, I find that Complainant has failed to show that Respondent lacks a legitimate interest in the domain name. C.
Bad Faith Given the findings on the first two necessary elements of Complainant's claim, it is unnecessary here to evaluate whether publication of allegedly false and defamatory news content could constitute bad faith under the Policy. 7.
Conclusion Complainant has failed to present sufficient evidence of protectable rights in the name Tom Papania and has failed to show that Respondent lacks a legitimate interest in the Domain Name <tompapania.com> when used for a site providing news commentary about Complainant. Therefore, Complainant's request for relief is denied. Mark PARTRIDGE Pattishall, McAuliffe, Newbury, Hilliard & Geraldson Chicago, IL |
