A Deeper Look in to Ron Paul vs. RonPaul.comSubmitted by phantasm on Sun, 02/10/2013 - 22:29
Ok, I’m no lawyer but I figured that I would pick this Ron Paul vs. Ron Paul.com issue apart just a little bit. If you are going to take a strong position on this matter, you should know the facts first.
Here is an overview according to my limited understanding:
First, a little background information will help us out. Look at the WHOIS listing for RonPaul.com:
According to the listing above, RonPaul.com is currently for sale. We can also see the date first registered: “Record created on: 2000-11-22 18:05:56 UTC.” We know for a fact that the current owner of RonPaul.com first acquired the domain on or after that date (I’m not sure if they were the first owner).
A registrar may only offer domain name registration if their customers agree to abide by the “Uniform Domain Name Dispute Resolution Policy” as set forth by ICANN. The current policy, and the policy under which the owners of RonPaul.com consented upon registration is available here:
Looking at section 4a, you agree to submit to a mandatory administrative proceeding if subsections i, ii, AND iii are violated. Once again, a complaint must contain disputes of all types to commence a “Mandatory Administrative Proceeding.” The ICANN policy is in place to determine if gross violations of trademark laws have occurred. If all 3 subsections are not violated then only a court order of appropriate jurisdiction will result in a transfer without consent.
First, let’s look at subsection i, “your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and”
JohnPhillipSousa was correct in pointing out that a “MARK” is not the subject of the concern, but only trademarks and service marks are protected under the policy. Two questions we need to answer: can a “MARK” legally be considered a “TRADEMARK”, and does the ICANN policy apply to an unregistered Trademark.
The complaint claims that the RON PAUL MARK is a Trademark owned by Ron Paul by virtue of using the name commercially in authoring books since 1982 and that the “Ron Paul” mark has achieved a secondary meaning in the public’s view that distinguishes Ron Paul’s goods and services from those of others. The first decision cited is Boris Johnson v. Belize Domain WHOIS Service Lt.
The crux of the decision rests on the following:
“… the relevant inquiry is whether Complainant has used his or her personal name as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.”
It seems this decision applies, and Dr. Paul has a very strong claim of a common law ownership on the Trademark “Ron Paul.”
The decision cited to address the second issue of unregistered trademarks is Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com:
‘The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.’
The second decision determines that a common law (unregistered) trademark “will suffice.” Based on precedence, subsection i is applicable.
Subsection ii states, “you have no rights or legitimate interests in respect of the domain name; and”
The complaint goes far into eliminating possible legitimate claims, both for-profit and non-profit, to RonPaul.com by the current owners. Apart from the work of Dr. Paul, does the website offer any other independent substantial value or topic of conversation? As a side note, if a 14 year old kid by the name of “Ronnie Paul” registered RonPaul.com and used it as his personal website, he would have a legitimate claim to the site and an Administrative Proceeding would not be appropriate. If a bunch of right-wingers started an organization called “Ragged Old Neocons Placing America under Lawless (R.O.N.P.A.U.L)”, and used the domain for that purpose, they too would have a legitimate claim.
Subsection iii, “your domain name has been registered and is being used in bad faith.”
The complaint cites many decisions to back this claim including Casio Keisanki Kabushiki Kaisha v. Kobayashi
In that decision a person owning “casio.bz”, used the website exclusively to sell Casio watches. The owner benefited from the reputation of the trademark and leveraged that reputation into web traffic in order to sell Casio merchandise. In the complaint we are looking at RonPaul.com benefits from the Ron Paul MARK, prominently displays Dr. Paul’s photographs and videos, and profits from the sale of merchandise containing the Ron Paul Mark. According to prior decisions, it appears the bad faith dispute of this complaint is valid.
Now the remaining question is, “Has the domain name been registered in bad faith?” I believe this part of subsection iii would have been a bit more difficult to prove without the offer to sell from RonPaul. In that offer, take note of the following:
- "… our team acquired several Ron Paul related domain names that were either passed up or allowed to expire by your staff … "
- "If you do insist on obtaining RonPaul.com (it is the best Ron Paul related domain name), we could relocate our grassroots site elsewhere and sell you the domain name at its current market price of $250,000.”
In the first excerpt, the owners admit to monitoring the activities of the Ron Paul staff and sniping any new or expired domains related to the Ron Paul Mark. They truly may have had the best of intentions, but according to the policy, this action violates subsection iii. Take note of the following decision in Chanel Inc. vs. BuyChanel.com:
“CHANEL is an immediately recognizable and famous mark that exclusively identifies Complainant. Indeed, courts have already held this to be the case. Nor could there be any dispute that the Domain Name buychanel.com would be associated in consumers’ minds with Chanel. Given that Respondent has no connection with Complainant and has never been authorized by Complainant to use the CHANEL mark, the very fact that Respondent has registered buychanel.com establishes bad faith use and registration.”
In excerpt 2, which signified the official offer, the owners state they will sell the domain name at its current value of $250K. The market value of the “domain name” is tied almost exclusively to the recognition and type in traffic generated by the Mark owned by Dr. Paul and the price quoted is quite exorbitant. I have no idea if their actual website (including domain name) is work $250K, but stripped of the value inherent in the Ron Paul mark, a 7 letter .com TLD with no dictionary words would come nowhere close to the $50K figure proposed by Dr. Paul in the complaint. I think it was a mistake to quote the market value without clearly indicating why the domain is valuable.
Anyways, there is a great deal of hubbub about the UN being involved so I guess we should take a look at whether or not “Ron Paul Calls on the United Nations.” ICANN was formed in 1998 under the US Department of Commerce and held a relationship with the US Federal Government until 2009 under the Joint Point Agreement (JPA). That agreement was allowed to expire and ICANN no longer has any formal ties to the US Government.
Obviously the task of managing domain names on an international scale is going to entail balancing all kinds of legal incompatibilities between separate legal systems. The ICANN Domain Dispute Policy is a broad scope document that attempts to rectify gross trademark violations. If a trademark owner believes their rights have been violated, the first method of legal recourse it to file a complaint to ICANN. The complainant does not choose the venue for arbitration. ICANN is a non-profit corporation and has chosen WIPO to arbitrate “Mandatory Administrative Reviews.” The reality of the situation is that if you register a domain, you have subjected yourself to the authority of the ICANN policy and as a consequence to the authority of the UN and WIPO. You can host a website without using ICANN, but at that point a user must access your server by entering its IP address.
We should recognize that domain names are an uncharted territory for Libertarian thought. A domain name represents an actual international asset. If ICANN were under the control of a single government it could spell disaster and I find it incredible that ICANN survived US control for over 10 years. In general, I agree with the spirit of the ICANN policy. In Ron Paul vs. RonPaul.com, I think it is pretty obvious that I agree with Ron Paul’s stance that his rights have been violated and the domain should be transferred.
It is my opinion however, that WIPO decisions have been degrading the original intent of ICANN policy and that the arbitration process has become heavily slanted towards corporate trademark owners. It has never been acceptable to register a trademarked domain you don’t own, provide content about that trademark, and sell products containing that trademark. It used to be acceptable to register a domain containing a trademark for the purposes of supporting or opposing a trademark owner or its practices (ie: RonPaulisCool.com or RonPaulSucks.com). At one time ICANN policy allowed the owners of “WalmartCanadaSucks.com” to keep their domain. Current decisions by the WIPO no longer allow this, and have given some serious bull crap as to why “the domain name may be confusing.” Not all internet users speak English or understand the term “sucks”, so WIPO has ruled that sucks.com domains are violations of policy in that they are confusingly similar to the trademark. (ie: http://whyronpaulsucks.com/ is clearly a violation of ICANN policy as it is currently interpreted, although it is not identical to the “Ron Paul” Mark, and in my opinion the owners should be protected under law to spread their lies.)
The day Ron Paul attempts to have a pejorative domain reviewed I may start to worry. For Dr. Paul to protect the domain identical to the Mark under which he has been doing business for over 30 years seems not only to be acceptable, but a moral imperative if he cares about the integrity of his message.