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Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Anti-Defamation League v. Boris Pribich

WIPO Case No. D2005-0751 (WIPO, Sept. 22, 2005)

In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP") the Panel directs the operator of a web site at the domain ADL USA.com which is critical of Complainant, commonly known as the "ADL", to transfer the disputed domain to Complainant.  The Panel found that any right Respondent has to operate a web site critical of Complainant does not extend to doing so at a domain which incorporated Complainant's "ADL" trademark, and hence created confusion as to its source.  As Respondent was found to have acted in bad faith because, inter alia, he only registered the domain after receipt of a cease and desist letter from Complainant, the Panel directed the transfer of the domain name to Complainant, the Anti-Defamation League.

Complainant is a not-for-profit corporation organized to oppose anti-semitism and discrimination.  Complainant is commonly known by the acronym "ADL," and operates a web site at ADL.org.

Respondent Boris Pribich is a critic of Complainant who registered the domain in dispute, ADL USA.com.  At this domain, Pribich operates a web site critical of Complainant and numerous other organizations.  The site is replete with allegations of treason, robbery, corruption and harassment.  The site also allegedly contained advertisements for engineering services. 

Complainant commenced this domain name dispute to compel Respondent to transfer the ADL USA.com domain name.  Finding Complainant had made the three part showing necessary to obtain such relief, the Panel directed the transfer of the disputed domain.

The Panel held that Respondent's domain name ADL USA.com is confusingly similar to Complainant's ADL trademark, the first part of the showing required for relief under the UDRP.  The Panel held that Complainant had sufficiently demonstrated that it had common law trademark rights in the ADL mark for the purposes of political criticism, by showing that the mark had acquired secondary meaning via the public's association of the mark with Complainant.  Complainant made such a showing through newspaper articles that referred to Complainant as the "ADL," as well as through its operation of a web site at the domain ADL.org.  Respondent's domain ADL USA.com was held confusingly similar because country names and other geographic identifies are routinely ignored in the comparisons conducted for this purpose.  Notably, the Panel concluded that Respondent's domain name was confusingly similar to Complainant's trademark notwithstanding the fact that Complainant's mark was an acronym widely used in other areas, and that Respondent's domain was not identical thereto.

The Panel also found that Respondent had no legitimate interest in the domain, despite the fact he was using it to operate a website critical of Complainant.  In reaching this result, the Panel accepted Complainant's argument that:

Respondent may be free to make political commentary, but must do so using a Domain Name which is not confusingly similar to the ADL Mark.

Finally, the Panel held that Respondent had acted in bad faith because he had only registered the disputed domain after the receipt of a cease and desist letter from Complainant and thus had done so with knowledge of the mark and Complainant's rights therein.  The Panel also rested this conclusion on the fact that Respondent criticized a number of organizations at this domain in addition to the ADL, and thus was using Complainant's mark to draw those looking for Complainant to Respondent's criticisms of unrelated entities.

The Panel accordingly resolved this domain name dispute by directing that Respondent transfer the disputed domain - ADL USA.com - to Complainant, the Anti-Defamation League.

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