Politicians Battle Cybersquatters

The midterm elections, now just two days away, have been marked by explosive growth in the use of Web 2.0 tools such as online social networking and blogging in an effort to garner support and electrify voters.

The sophisticated nature of today’s political campaigns makes the results of a recent survey by the Coalition Against Domain Name Abuse, Inc. (CADNA) all the more surprising: Members of Congress have a terrible record when it comes to registering domain names corresponding to their own names.

In particular, CADNA surveyed registrations of domain names in the popular dot.com and dot.org top-level domains, consisting of each U. S. representative’s first and last name or last name followed by the words “ForSenate” or “ForCongress.”  According to CADNA, only one quarter of the domain names were registered by the representative whose name it incorporated.  Moreover, fewer than half of the members of the House and the Senate were the registrants of the domain name version of their full names in dot.com.[1]

This may have important implications for this year’s contests. Consider, for example, the Web sites BradEllsworth.org, StepheneMoore.com, and RalphHall.org. These three sites have at least two things in common. First, the names are all present or prospective members of Congress (respectively, a Democratic congressman from Indiana running for Senate; a Democratic candidate for a House seat from Kansas; and a Republican member of the House from Texas who is seeking re-election). Second, none of these sites belong to the individuals named in the website address. The first links to an anti-Ellsworth website sponsored by the Indiana Republican Party;[2] the second is an anti-Moore site paid for by her opponent’s campaign committee[3]; and the third jumps to the site of Mr. Hall’s Libertarian opponent.

In addition to overtly antagonistic political purposes, politicians may be troubled by domain name registrations that are merely “coincidental” or “opportunistic. For instance, BobLatta.com is not the site for Congressman Bob Latta (R-Ohio), but for a vacation home rental business owner with the same name in San Miguel, Mexico. Similarly, back in 2004, KerryEdwards.com was not the site for the 2004 Democratic presidential ticket, but rather was a site owned by Kerry Edwards, an Indianapolis bail bondsman.[4]  Domain name speculators also may register domain names that include the name of a “rising star” or even an established politico.  Whether through resale of the registration or increased “click through” traffic, the speculator hopes the registration will return increased profit in the future.   

Internet and First Amendment law may make it difficult, if not impossible, for politicians to recover domain names in any of these circumstances. The best course of action, therefore, is for them to register at least their own names and the most common variations as domain names before anyone else does. Interestingly, CADNA points out that only one member of Congress,  Montana Senator Jon Tester, has done so.[5]

One federal district court decision on point is  Ficker v. Tuohy,[6] which concerned Robin K.A. Ficker, a Maryland attorney was who seeking the Republican nomination for a House seat. According to the plaintiff, John Tuohy registered the domain name robinficker.com, which provided summaries of allegedly disparaging news stories related to the plaintiff.

The plaintiff brought suit against Mr. Tuohy and assorted John Doe defendants asserting cybersquatting claims under the Anticybersquatting Consumer Protection Act (“ACPA”);[7] false designation claims under the federal Lanham Act;[8] common law misappropriation of the right of publicity; and common law misappropriation, infringement, and unfair competition. The plaintiff’s request for a temporary restraining order preventing the defendants from using the disputed domain name was denied.

The court ruled that the plaintiff had failed to demonstrate that he would suffer irreparable harm if the court denied the requested relief. It noted that robinficker.com contained a disclaimer that stated, “This is an unofficial cite. It is not Robin Ficker for U.S. Congress. Robin Ficker for Congress can be found here,” and provided a link to the candidate’s official site.

Accordingly, the court found, visitors were not misled into believing they had accessed the plaintiff’s campaign website.[9] As such, the plaintiff could only be harmed by the disparaging information presented on the website, which, the court ruled, implicated the defendants’ First Amendment rights to free speech.

Furthermore, the court stated, by entering the public arena as a candidate for political office, the plaintiff had “invited comments and critique which operates in the spirit of healthy democracy in this country.” The court concluded by rejecting the plaintiff’s contention that the website had a commercial purpose and had affected his law practice, as the court found that the  website’s  “sole purpose” was to address concerns regarding the plaintiff’s Congressional campaign,

An alternative to litigation, Uniform Dispute Resolution Proceedings (UDRP), is incorporated into all registration agreements concerning dot.com and dot.org domain names. It provides for administrative proceedings before certain third-party neutrals to resolve domain name disputes.[10]

Two of the most popular alternative dispute resolution providers, the World Intellectual Property Organization (WIPO) and National Arbitration Forum (NAF), have often, but not always,  rejected claims brought by U.S. politicians, as politicians, with respect to the use of their names by others

Two WIPO decisions concerning registration of several domain names that incorporated variations of the name “Kathleen Kennedy Townsend” are illustrative of the WIPO position.

The first complaint was brought by Ms. Townsend, the eldest daughter of Robert F. Kennedy, when she was Maryland’s lieutenant governor.[11]   She asserted a common law trademark in her name and asked that the disputed domain names be transferred to her because they were identical or confusingly similar to her common law trademark.

In rejecting her request, the panel noted WIPO’s established position limiting application of the UDRP to personal names that had been commercially exploited.[12] It stated that, “Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations.”

Accordingly, in the absence of commercial, rather than political, exploitation of her name, Townsend could not meet the first element of a UDRP claim.[13]

The panel, however, stated that its result might have been different had the claim been brought by Townsend’s fundraising committee, rather than by her personally.

Accordingly, virtually identical claims were next asserted by “Friends of Kathleen Kennedy Townsend,” but to no avail.[14] Instead, the panel concluded that Friends of Kathleen Kennedy Townsend had failed to meet the first element of the UDRP claim – a superior right in the domain names that pre-existed the contested registrations – and, therefore, denied transfer.

Clinton Cases

NAF decisions, in contrast, do not generally turn on the ability of the complainant to establish the first UDRP element.

Two cases brought by ex-President Bill Clinton and then New York Senator, Hillary Clinton, are emblematic. In both cases, the panels agreed that the claimants’ personal names were famous marks, in which they had superior interests, thereby satisfying the first element. 

The panels did not discuss whether there was commercial, rather than political use of the famous marks, although there were certainly adequate indicia of commercial use as to both. Instead, the decisions focused on the third element of the UDRP claim – whether the respondent acted in bad faith.

Mr. Clinton and the William J. Clinton Presidential Foundation brought a UDRP complaint in connection with the domain names williamclinton.com, williamjclinton.com, and presidentbillclinton.com.[15]  The complaint asserted, inter alia, that the respondent acted in bad faith, as the respondent was “known to deliberately register domain names of politicians for various nefarious reasons,” had no rights or legitimate interest in the domain names, had not made any demonstrable preparation to use the domain names in the context of any “bona fide offering of goods or services,” and was “not commonly known by the names.”

The panel found that Mr. Clinton had established the first two elements of the UDRP claim: a common law trademark in his name, and that the respondent had “no rights” in the name. However, the panel concluded that it “could not find” that the respondent had engaged in bad faith registration, the essential third element, and thus transfer was denied.

The panel declared that the respondent’s registration and subsequent use of the disputed domain names to redirect to the official site of the Republican Party did not establish bad faith registration under any of the enumerated criteria set forth in the UDRP.  The panel did not disagree with Mr. Clinton’s arguments that the disputed domain name’s link to a Republican Party website was in direct competition with Mr. Clinton, intended to attract users to an opposing site by creating confusion among Internet users who were seeking Mr. Clinton’s mark, or falsely gave the impression that Mr. Clinton was affiliated with his political competitor.  

The panel, however, declined to find that such a link evidenced a violation of the UDRP and ruled it was “not bad faith registration and use.” In the panel’s view, links to the Republican National Committee website were “simply not within the scope of this Policy.”

Interestingly, a different panel had reached the opposite conclusion in a case brought several years earlier by Mr. Clinton regarding the domain name hillaryclinton.com.  

The respondent in that case failed to submit a response, and the panel resolved the dispute on the basis of the complaint’s “undisputed representations.”[16]

First, the panel found that Ms. Clinton had a common law mark in her name, eschewing any analysis of the political versus commercial purpose to which the domain name was to be used.

The panel focused on the respondent and found that he was using the domain name and the goodwill associated with Ms. Clinton’s mark to direct users to a site that provided links to commercial websites, displayed pop-up advertisements and offered a generic search engine.  Those uses were not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, the panel ruled. 

Moreover, it concluded, the respondent’s “attempts to divert Internet users for commercial gain” by attracting these users to the respondent’s site through a likelihood of confusion with the Clinton mark was “evidence of bad faith registration and use.” Accordingly, it granted the relief requested and transferred the domain name at issue to Ms. Clinton.[17]

Conclusion

New York statutes do not seem to be of much help here.  For example, Section 148 of Article 9-C of the General Business Law prohibits the registration of a domain name “that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s or entity’s consent,” provided, however, that it is “with the specific intent to profit from such name by selling the domain name for financial gain.”

It is not clear how many of the “political name” site disputes of the kind discussed in this column would be governed by that statute. Section 133 of Article 9-B of the General Business Law, which bars the use of a name with “intent to deceive,” would seem as a practical matter to be of limited value, too.

Politicians, therefore, should take the same step that law firms and businesses take, which is to acquire their obvious domain names as quickly as possible.

[1] See, “Identity Squatting: An Examination of Its Impact on Members of U.S. Congress,” available at http://www.cadna.org/en/newsroom/press-release/identity-squatting-can-cost-members-congress-reputation%20.

[2]  Indeed, the domain name is also not registered by Mr. Ellsworth, but by someone in New York. It leads to a “parking page” containing “sponsored links,” the first of which links to Mr. Ellsworth’s official site. Mr. Ellsworth probably pays “click through” revenue to the registrant and/or the registrar, GoDaddy, for that link. 

[3]  also leads to the same type of GoDaddy “parking page” containing sponsored links as does .  However, Ms. Moore’s website is not linked and is nowhere to be found.

[4] See “KerryEdwards.com Domain Name To Be Auctioned,” available at http://www.prweb.com/releases/2004/07/prweb142903.htm.

[5] JonTester.com; JonTester.org, JonTesterForSenate.com, JonTesterForSenate.org, TesterForSenate.com, and TesterForSenate.org all link to JonTester.com. It is, of course, impossible to register every possible domain name variant that could incorporate one’s name.

[6] 305 F. Supp. 2d 569 (D. Md. 2004).

[7] 15 U.S.C. § 1125(d).

[8] 15 U.S.C. § 1125(a).

[9] The court did not address possible application of the “initial interest confusion” doctrine to this political case. Nevertheless, an argument can be made, analogous to the commercial cases, that a politician is harmed by voters’ accessing a domain name that they mistakenly believe is affiliated with the candidate, even if that belief is corrected once the voter lands on the website. See, e.g., Jacqueline D. Lipton, “Who Owns ‘Hillary.Com? Political Speech and the First Amendment in Cyberspace,” 49 B.C. L. Rev 55, 72. Jan. 2008.

[10] Generally speaking, a claimant must demonstrate that the registration of an identical or confusingly similar domain name to a trademark or common law mark owned by the claimant; the respondent has no protectable legal interest in the use of the domain name; and bad faith registration by the respondent.

[11] Townsend v. Birt, Case No. D2002-0030 (WIPO Arbitration and Mediation Center, April 11, 2002), available at http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0030.html.

[12] See, WIPO’s Final Report on the Second WIPO Domain Name Process available at http://www.wipo.int/amc/en/processes/process2/report/index.html.

[13] The panel suggested that Ms. Townsend was not without remedy under the ACPA. 

[14] Friends of Kathleen Kennedy Townsend v. Birt, Case No. D2002-0451 (WIPO Arbitration and Mediation Center July 31, 2002) (relief denied), available at http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0451.html.

[15] Clinton v. Web of Deception, Claim No. FA0904001256123 (Nat’l Arb. Forum, June 1, 2009), available at http://www.adrforum.com/domains/decisions/1256123.htm.

[16] Clinton v. Dinoia, Claim No. FA0502000414641 (Nat’l Arb. Forum March 18, 2005), available at http://www.adrforum.com/domains/decisions/414641.htm. Although the respondent did not submit a response, the panel was nevertheless required to make factual determinations as to each of the essential elements based upon “undisputed representation.”

 [17] See, also, Menin v. Gleason, Claim No: FA080201142614 (Nat’l Arb. Forum, Apr. 2, 2008) available at: http://www.adrforum.com/domains/decisions/1142614.htm  (registration of Manhattan Community Board 1 member’s name in bad faith and transfer ordered); Sizemore v. DIS, Inc., Claim No. FA0312000221173 (Nat’l Arb. Forum Feb. 26, 2004) (bad faith found and relief granted), available at http://www.adrforum.com/domains/decisions/221173.htm; and Warner 2001 v. Larson, Claim No. FA0009000095746 (Nat’l Arb. Forum Nov. 15, 2000) (relief denied), available at http://www.adrforum.com/domains/decisions/95746.htm.

Reprinted with permission from the October 19, 2010 issue of the New York Law Journal. Copyright ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited.