Office of Medical & Scientific Justice, Inc. represented by Matthew H. Swyers of The Trademark Company, LLC, Virginia, USA. was just found guilty of Reverse Domain Name Hijacking (RDNH) in attempted theft of the domain names hivinnocencegrouptruth.com and hivinnocenceprojecttruth.com by a one member National Arbitration Forum UDRP decision.
The one member panel in finding RDNH said:
“The Panel finds Complainant has engaged in reverse domain name hijacking because it was clear Respondent was legitimately using Complainant’s mark to make a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant clearly knew this before it began this proceeding. Complainant did not disclose this obvious fact in its Complaint.”
Here are the rest of the findings of the Panel:
(1) the domain name registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant has rights; and<
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is not being used in bad faith.
Complainant claims rights in the HIV INNOCENCE GROUP mark based on its registration of the mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 4,164,161 filed October 25, 2011, registered June 26, 2012).
Complainant’s registration confers rights in the mark under Policy ¶4(a)(i) dating back to October 25, 2011, the date on which Complainant filed its trademark application.
The rights conferred pursuant to Complainant’s USPTO registration do not predate Respondent’s July 2011 registration of the disputed domain names.
Complainant claims it has used the service mark HIV INNOCENCE GROUP throughout the United States to identify its private investigation services since at least 2009. Complainant’s business consists of providing detective and background investigation services to criminal defendants to assist in proving their innocence, detective and background investigation services in criminal and civil cases to assist a party in proving its case, and expert witness services in legal matters in the field of HIV cases.
Complainant registered the domain name to launch its Internet presence on October 9, 2009 in connection with the promotion of its services. Complainant launched its web site located at as early as January 10, 2010. Complainant’s trademark registration lists 0-0-2009 as the first use in commerce for the HIV INNOCENCE GROUP mark, meaning the mark was first used some time prior to 2009.
While this claim is made in Complainant’s trademark application, Respondent rebutted it.
Respondent provided evidence to support its claim Complainant was still operating under the alternate “HIV Innocence Project” name after Complainant’s claimed first use of the HIV INNOCENCE GROUP mark in commerce through a news report from a Kansas news organization, purporting to show Complainant was known as “HIV Innocence Project” at least as late as April 2011; an email from the office of Dr. Robert Gallo (the American scientist who is credited with the discovery of HIV), purporting to state Dr. Gallo’s office will alert the legitimate Innocence Project organization of Complainant’s use of their name; a screen shot from Complainant’s own <omsj.org> website dated August 10, 2010, purporting to show Complainant was going by the name “HIV Innocence Project” at that time; and a current screen shot from Complainant’s own <omsj.org> website, purporting to show Complainant’s website still displays the “HIV Innocence Project” name. Complainant submitted no additional evidence in support of its claim once these issues were raised (although Complainant filed a reply). Based upon this lack of specific proof, the Panel does not find Complainant had common law rights at the time Respondent acquired the disputed domain names.
Respondent claims its <hivinnocencegrouptruth.com> and <hivinnocenceprojecttruth.com> domain names are not identical to Complainant’s HIV INNOCENCE GROUP mark because the word “truth” differentiates the domain names.
The Panel finds Respondent’s addition of the term “truth” to Complainant’s mark in each of the disputed domains distinguishes the domains from the mark under Policy¶4(a)(i), similar to adding the less polite word “sucks.”
The <hivinnocenceprojecttruth.com> domain name also replaces the term “group” in Complainant’s mark with the term “project.”
The Panel finds Policy ¶4(a)(i) not satisfied.
Rights or Legitimate Interests
Complainant has not established a prima facie case in support of its argument that Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii).
Respondent claims its websites housed at the disputed domain names are strictly a public service, offering only “documented facts” to support Respondent’s allegations Complainant is not truthful about its services or its successful track record in court cases. Using court documents, news reports, and attorney emails to support its assertions, Respondent claims it has proven Complainant has not been involved in several of the cases Complainant lists on its site and Complainant has not successfully used the controversial tactics Complainant claims to have used to win these judgments. Respondent urges its site represents a “fair use” because it allows people who are charged with HIV-related crimes and are facing the potential of spending decades in prison to adequately assess how to proceed with their defense (in part by determining whether or not to hire Complainant).
Respondent claims the similarity between its domain names and Complainant’s mark is necessary because it allows Internet users searching for information about Complainant’s services to also find the related critical information provided by Respondent.
Through exposure to both sites, Respondent believes users will have access to the information they need in deciding how to proceed with their defense. Respondent claims its use of the domains is also strictly noncommercial because Respondent has never asked for monies nor advertised on the sites housed at the disputed domain names.
Moreover, Respondent contends its websites do not offer services competing with (or are even similar to) the services offer by Complainant. Complainant offers investigation and background services, while Respondent only provides information about Complainant’s services. In view of the foregoing, the Panel concludes Respondent is making a legitimate noncommercial use of the domain namesunder Policy ¶4(c)(iii) (regardless of who is correct), indicating Respondent has a legitimate interest in the domains pursuant to Policy ¶4(a)(ii).
Respondent claims its use of the domain names are also protected under its right to free speech and Complainant’s initiation of this proceeding represents an improper attempt to stifle that right.
The Panel finds Respondent’s use of the domain names to operate a site which criticizes Complainant’s practices falls within the protection of free speech and Policy ¶4(a)(ii).
Respondent has rights or legitimate interests in the domain names pursuant to Policy ¶4(a)(ii) and the Panel finds Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶4(a)(iii).
Finally, Respondent’s registration of the hivinnocencegrouptruth.com and hivinnocenceprojecttruth.com domain names predates the rights in the HIV INNOCENCE GROUP mark established by Complainant through its registration of the mark with the USPTO.
Complainant did not establish common law rights which predate both Complainant’s USPTO filing and Respondent’s registration of the disputed domain names, so Respondent could not have registered or used the disputed domain names in bad faith.
The Panel finds Policy ¶4(a)(iii) not satisfied.