Dem’s Win As Jack Abramoff Loses Bid To Get JackAbramoff.com Through UDRP

A three member UDRP panel refused to award the domain name JackAbramoff.com to Jack Abramoff.

The domain is owned by the Democratic Congressional Campaign Committee (DCCC) who has been using it for less than flattering  purposes but what the panel found to be protected political speech.

Its clear the panel didn’t buy any of Mr. Abramoff’s arguement including that he had trademark rights to his name

Here are some of the findings of the panel:

The panel found that “Complainant did not met his burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a trademark in which Complainant has rights”.

“Complainant failed to met his burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.”

“Complainant has not met his burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.”

“Complainant has provided no evidence of actual use of JACK ABRAMOFF as a trademark in connection with particular goods or services prior to the time Respondent registered the disputed domain name.  Complainant claims to be “famous,” yet the record reflects he is, in fact, “infamous”.  In any event, “fame” of an individual name does not equal trademark rights in and to that name.  Complainant would have to prove secondary meaning therein to establish trademark rights.

“Complainant has not done so.”

“The Panel finds that Complainant does not have rights in the JACK ABRAMOFF mark pursuant to Policy

“Trademark rights in the U.S. are based upon use.

“One cannot claim or enforce trademark rights in a mark that it has not used, and one cannot secure a U.S. Federal Trademark Registration absent “use in commerce.”

“That ‘use in commerce,’ however, must be lawful and legal use of the mark in commerce. 

“This theory is identified today as the “unlawful use defense” and is essentially an extension of the age-old ‘unclean hands’ defense, wherein:

“Unclean hands really just means that in equity as in law the plaintiff’s fault, like the defendant’s, is relevant to the question of what if any remedy the plaintiff is entitled to.  An obviously sensible application of this principle is to withhold an equitable remedy that would encourage or reward illegal activity.”

“It is well settled that if a person wishes his trade-mark property to be protected by a court of equity, he must come into court with clean hands, and if it appears that the trade-mark for which he seeks protection is itself a misrepresentation to the public, and has acquired a value with the public by fraudulent misrepresentations in advertisements, all relief will be denied to him.”

“Any trademark rights which Complainant purports to have established prior to the Respondent’s registration and use of the disputed domain name appear to have been as the result of substantial illegal activity.  ”

“Thus, he can have no trademark rights therein. ”

“Without trademark rights, Complainant cannot sustain his burden of proof on this first requirement. ”

“Respondent argues that its use of the domain name provides it with rights or legitimate interests in the disputed domain name. Respondent argues that it uses the domain name exclusively in connection with political speech. Respondent asserts that it has concerns with Complainant’s attempt to re-characterize himself as being reformed and that corruption needs not to be forgotten. Respondent asserts that it therefore uses the domain name to display information regarding Complainant’s association with a political scandal.

“Respondent contends that the few goods it sells on the site accessed by disputed domain name are de minimis, for fundraising purposes, and generate no commercial gain for Respondent.”

“The Panel finds that Respondent has rights or legitimate interests in the domain name because it has made a legitimate noncommercial or fair use pursuant to Policy ”

“Such use is classic political speech, protected by the First Amendment, and, for trademark purposes constitutes nominative fair use. ”

“The Panel also finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy”

“The Panel finds that Respondent did not register and is not using the domain name in bad faith since Respondent is making only noncommercial use of the disputed domain name without any likelihood of confusion

“Respondent argues that, at the time of the registration of the domain name, Complainant was not using the JACK ABRAMOFF name in connection with any goods or services and was simply known for the legal scandal surrounding him. Respondent asserts that Complainant’s book was not published until November 2011 and all of Complainant’s speaking engagements post-date the book publication. Therefore, Respondent argues that the domain name’s registration predates any rights that Complainant may now have in the JACK ABRAMOFF mark.”

“The Panel finds that Respondent could not have registered the <jackabramoff.com> domain name in bad faith because the registration predated Complainant’s possible acquisition of any trademark rights in the JACK ABRAMOFF mark pursuant to Policy”

“Complainant having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

“Accordingly, it is Ordered that the <jackabramoff.com> domain name REMAIN WITH Respondent.”