A one person UDRP panel just rejected the complaint of the national fast food company Chick-fil-A, on the domain name chickfilafoundation.com.
Jason Selvig and Davram Stiefler, two Brooklyn-based comedians and social commentators, owned the domain and operated it as a parody website against the fast food company, that was thrust in the national spotlight this year for its stance against gay marriage.
The complaint was filed by Chick-fil-A’s parent company, CFA Properties, Inc. CFA Properties, Inc. which owns and operates Chick-fil-A, the Atlanta-based fast-food chain.
The complaint was filed in September with the World Intellectual Property Organization (“WIPO”) against the owners of the website ChickfilaFoundation.com, claiming that the website’s domain name was confusingly similar to the Chick-fil-A trademark, and was registered and used in bad faith.
The Brooklyn based law firm of Lewis & Lin defended the domain holders.
“ChickfilaFoundation.com is a website featuring satirical videos, parodies and written content intended to critique the controversy surrounding Chick-fil-A president Dan Cathy’s stated opposition to gay marriage. ”
“The website contained a “coupon” for a free chicken sandwich to customers renouncing their homosexuality:
“Trade your Homosexuality for a FREE Original Chicken Sandwich!”
The site also included “messages” from former Arkansas governor Mike Huckabee and Chick-fil-A’s President and CEO, Dan T. Cathy.
According to David Lin, lead attorney for the website owners, the domain name is perfectly legitimate parody. “The whole point of parody websites is to lead readers to briefly think that the website is perhaps coming from the company, and then realize that the message is a larger criticism and social commentary,” says Lin. “Chick-fil-A’s trademark doesn’t mean they have a right to silence legitimate commentary about their brand.”
“While trademark law protects corporations from infringement, corporations can’t use trademark law to squelch free speech made through parody and satire, which is what is occurred in this case,” says Lin. The World Intellectual Property Organization agreed: “The Panel is not persuaded here that Respondent’s registration and use of the disputed domain name has been shown to be for purposes of capitalizing on Complainant’s trademark.”
Lin continues, “This case is a prime example of a huge corporation trying to bully those who speak out against its business practices. The website owners engaged in legitimate, protected free speech about Chick-fil-A’s stance on gay marriage. Chick-fil-A should be ashamed of their efforts to silence lawful criticism.”
The decision give a detailed analysis of what qualifies as a parody site.
Here are the relevant facts and findings:
Complainant is the registrant of the stylized and well-known CHICK-FIL-A mark. The earliest of the numerous registrations with the United States Patent and Trademark Office (“USPTO”) issued on October 15, 1974.
The CHICK-FIL-A mark has been in continuous use in connection with restaurants and the products served in those restaurants since 1964. The products and restaurants have been promoted on the “www.chick-fil-a.com” web site operated by Complainant since October 25, 1995.
Respondent registered the domain name at issue on November 30, 2011.
The WhoIs lookup listed Domains By Proxy, LLC, a well-known privacy service as the registrant, but the Registrar informed the Center that the actual registrant was one John Selvig, which resulted in an amendment to the Complaint, adding John Selvig as a Respondent. Respondents are referred to herein, jointly and severally, as “Respondent.”
The disputed domain name resolves to a web site which prominently features the famous stylized CHICK- FIL-A trademark, in white on a red background, as used by Complainant at its restaurants and in print and television advertising, followed by the word “FOUNDATION” in white on the same red background. The heading on the home page is followed by a welcome which reads “Welcome to the Chick-fil-A Foundation website! If you would like to have John, Robert and Harvey the Cow perform their Family Values Show at your church, school or birthday party please email us at @chickfilafoundation .com or call…
Below on the home page is a picture of Mike Huckabee. Mr. Huckabee is a former governor of Arkansas, a Christian minister, a television personality, an author, a political commentator and an outspoken supporter of the views espoused by Chick-fil-A’s President and CEO, Dan T. Cathy. Mr. Cathy is a devout Christian who closes all Chick-fil-A restaurants on Sunday, supports traditional marriage and the traditional family, and who openly expresses the view that homosexuality is a sin and is adopted as a life style by choice. When gay, bisexual, lesbian, and transgender individuals called for a boycott of Chick-fil-A restaurants to counter.
Mr. Cathy’s openly anti-gay marriage views, Mr. Huckabee and other like-minded individuals called for supporters of Mr. Cathy’s views to eat a meal at the Chick-fil-A restaurants in support of Mr. Cathy. There is a link below Mr. Huckabee’s picture to a letter purportedly written by Mr. Huckabee in support of Chick-fil-A Appreciation Day.
Below this portion of the home page is a coupon offering to provide anyone who abandons his or her homosexual life style a free Chick-fil-A sandwich.
The next item is a link to “Chick-fil-A Foundation visits a Christian Talk Show!”
The next link is one entitled “Spreading Joy and Family Values in NYC! The gang makes a trip to New York City to recruit new members and spread joy!”
At the bottom of the page in very small print, especially in comparison to the size of the print used on the rest of the home page, is the following statement: “Content Copyright 2012 CHICKFILAFOUNDATION.COM. All rights reserved. This site is not affiliated with Chick-fil-A.”
On another web page, under a picture of Mr. Cathy, there is the following letter: “Greetings!
I feel truly blessed to have spent 11 years as COO of Chick-fil-A. As I’m sure you know, Chick- fil-A has been a family restaurant for the past 45 years and as long as I am in charge, our priority will continue to be family.
That’s a great place to begin! What is a family?
Well, as far as I’m concerned it starts with the parents. A man and a woman. A husband and a wife. Starting a family any other way is unnatural and in opposition to God’s will. So, if a man married to a man or a woman married to a woman is your definition of a family and you looking for a place to grab a quick bite to eat I would encourage you to look elsewhere because that is not Chick-fil-A;s definition. I know remarks like these have received a lot of attention from the liberal media lately and there are a lot of things being said about my family and our beliefs. To all the critics out there, I would like to say this; if you don’t agree with me, then don’t give my company business. To take that a step further, if you don’t agree me [sic] I don’t want your business. To everyone that agrees with our stance, thank you for your continued support. God bless you.
Dan Cathy President and Chief Operating Officer of Chick-fil-A”
The site also contains pictures of the president of the National Organization for Marriage, and a message supporting traditional marriage; a clinical therapist and Christian who runs a clinic to cure homosexuality in Minnesota, and Rick Santorum, a former Senator from Pennsylvania and candidate for the Republican
Respondent lives in Brooklyn, New York. Area code 404 is the area code for Atlanta, Georgia, where Complainant has its headquarters. When the Panel called, a man with a Southern accent thanks the caller for calling the Chick-fil-A foundation and asks the caller to leave a message.
The Panel finds that the disputed domain name, consisting of Complainant’s distinctive trademark and service mark minus the hyphens and the additional word “foundation,” descriptive of a private philanthropic organization, is confusingly similar to Complainant’s CHICK-FIL-A trademark and service mark.”
B. Rights or Legitimate Interests
In the present case, the rights or legitimate interests question is secondary to the issue of registration and use in bad faith.
If Respondent has acted in bad faith, Respondent cannot be said to have rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
1. Parody as a UDRP Defense
Respondent has claimed to be using the disputed domain name as a parody.
Parody is a curious migrant from the law of copyright to the law of trademarks.
Parody has existed in literature from time immemorial. One author, songwriter, artist, etc. has chosen to copy certain elements of the work of another in order to make fun of the style or content of the other’s expression. In the context of the law of copyright which protects the originator of a work from another’s reproduction, the Supreme Court of the United States has defined “parody” as the “use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 560 (1994). In that case, the rap group 2 Live Crew wrote a parody of the song, “Oh, Pretty Woman,” co- authored and sung by the late Roy Orbison. Section 107 of the United States Copyright Act sets out four non-exclusive factors that a court must weight in determining whether a given use of a copyrighted work (such as parody) constitutes a “fair use.”
Those factors are:
1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4. The effect of the use upon the potential market for or value of the copyrighted work.
In the Campbell case, the United States Supreme Court held that “transformative works” such as parodies “lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.”
It is a defense to a claim of trademark infringement “that the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.” 15 U.S.C. 1115(b)(4). This is known in United States trademark law as the “fair use” defense. It is not obvious how parody would fit within this definition, but United States federal cases have held that it does. See, e.g., People for the Ethical Treatment of Animals (PETA) v. Doughney, 263 F.3d 359 (4th Cir. 2001).More importantly for our purposes, previous UDRP panels have held that the concept of parody as a defense applies in UDRP decisions.
One of the early decisions involved the domain name <abercrombieandfilth.com>, a domain name which resolved to a web site at which pornography aimed at the homosexual market was depicted. A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgenson, WIPO Case No. D2001-0900.
Among the arguments for bad faith made by the complainants in the Abercrombie case was that the use of the confusingly similar domain name to resolve to a pornographic web site served to tarnish Complainant’s famous mark.
The panel itself found that the web site to which the domain name resolved “promotes gay-oriented pornographic goods and/or services.” Believing the case to be one of first impression under the Policy, the panel applied a two-step test to a defense based on parody.
First, the domain name itself must convey two separate messages: that it is the original and at the same time that it is a parody of the original.
If so, then one proceeds to the second step.
In the Abercrombie case the Panel found that the first step had been satisfied.
In the second step, one examines the content of the web site to which the domain name resolves. The web site “must poke fun at the goods or services associated with Complainants’ marks.” The panel found that there was “no content conceivably poking fun at Complainant.” Moreover, the panel held, the confusingly similar domain name was used to intentionally attract users to the site for commercial gain by creating a likelihood of confusion. Thus, the parody defense was rejected.
In an even earlier case, the panel in Valero Energy Corporation v. American Distribution Systems, Inc., D/B/A Default Data.Com And Brian Wick, WIPO Case No. D2001-0581, the Panel found both “initial interest confusion” and that Respondent had used such confusion to intentionally attract Internet users to the web site for commercial gain. Again, the parody case failed.
More recently a parody defense was raised in the case of The California Milk Processor Board v. Ryan Archer, WIPO Case No. D2011-1812. In that case, the panel found that United States trademark parody defense depends on “where the allegedly infringing mark cleverly invokes a trademark but in a manner that consumers are unlikely to believe originated with the trademark owner.” However, the panel found that it was unnecessary to reach that issue. The panel found that “Respondent appears to operate this website and others simply as an outlet for his creative works and to support others who create webcomics and videos. The Domain Name is not used to generate advertising revenue, which would undermine the Respondent’s claim of noncommercial purpose.” Finding that the respondent had no commercial purpose in the use of a domain name that was confusingly similar to the complainant’s mark, the panel found no basis for a finding of bad faith under the Policy.
1. Parody In the Present Case?
In the present case, it is questionable whether Respondent’s web site would qualify as a parody. If it is an attempt at a joke, the Panel finds it falls flat.
The statements made on the web site, the individuals portrayed, the views expressed appear to the Panel to be consistent with Complainant’s views
The use of the stylized CHICK-FIL-A trademark in combination with the word “Foundation” on the web site must be weighed against the inclusion of a disclaimer that would likely escape the notice of many visitors to the site, which on overall impression gives few hints that this is anything other than a foundation sponsored by Complainant.
(One message appearing on the website apparently informs visitors about a “Trade Your Homosexuality for a Chicken Sandwich Day!”, which some consumers could conceivably believe originated with the Complainant, while others may have their doubts). In any event, while this Panel has his doubts regarding applicability of a parody defense to the facts of use of the present case, the Complaint fails for other reasons discussed immediately below.
2. Failure to Prove Bad Faith
In order to succeed where a domain name has been used intentionally to attract users to a web site by a likelihood of confusion as to the source or sponsorship of the web site, it must have been done for purposes of commercial gain.
Respondent has produced a declaration under oath that he did not intend to receive any commercial gain through his use of the domain name, and the Panel sees no evidence of such Respondent gain on the record before him. . Complainant has failed to produce even a scintilla of evidence to the contrary.
While Complainant is correct to point out that the circumstances indicative of bad faith under the Policy are not exclusive, it is still generally incumbent on the Complainant to show by a preponderance of the evidence that the Respondent registered and is using the domain name in bad faith.
In this regard, in so far as other typical exemplars of bad faith may be concerned, the Panel notes there appears to be no evidence of any offer by Respondent to sell the disputed domain name to the Complainant for an exorbitant sum, or of any pattern or history indicating Respondent is a serial cybersquatter.
Use of a privacy service may be a relevant consideration, but is not itself dispositive, and in this case Respondent has in any event submitted a response.
Although the Panel has his doubts as to whether Respondent’s current use of the domain name would satisfy the criteria for an affirmative safe-harbor defense based on parody, the Respondent’s registration of this domain name with an intent to parody Complainant and its views strikes the panel as plausible (see also CFA Properties, Inc. v. Domains by Proxy, LLC / John Selvig, WIPO Case No. D2012-1617). Furthermore, the present use of the domain name is not of a sort which suggests to this Panel any contrary intent.
The essence of bad faith under the Policy is using confusion with the owner’s trademark in order to profit from the goodwill created by the trademark owner in the owner’s mark.
Generally, this means showing both that Respondent knew or should have known about the Complainant and its mark, and that Respondent went ahead regardless to register and use the domain name to capitalize in some way on the reputation of Complainant’s mark.
While this Panel has few doubts in the circumstances regarding Respondent’s awareness of the Complainant, the Panel is not persuaded here that Respondent’s registration and use of the disputed domain name has been shown to be for purposes of capitalizing on Complainant’s trademark as such.
Thus, the Panel finds there is a failure of proof of bad faith registration and use.