Now that the Olympic Games in Beijing came to a close, the Olympic Committee is focusing their attention to upcoming Olympiads. Still to be awarded are the 2016 Olympic Games to one of the cities that have expressed interest in hosting the event. Chicago is amongst those cities and even though no final decision has been made, the city name and the year 2016 is in the midst of a legal dispute already between a domain name owner and the Olympic Bid Committee. We bring you all the facts and the response that was sud by the defendant to the UDRP board.
The Facts
The Chicago 2016 Olympic Bid Committee has taken legal action against the owner of a web site.
On July 20, 2008 the Chicago bid committee filed international arbitration in an attempt to force the web site --- Chicago2016.com --- from its rightful owner, Frayne. Frayne has long shown an interest in civic government including an unsuccessful attempt for placement on the city council in Mountain View, CA. Frayne currently attends Northwestern University's Kellogg School of Management and gave up the opportunity for a lucrative internship to further the Chicago2016 project this summer.
His commitment to the Olympic debate runs so deep that he is self-funding the legal battle with the committee, which has suspended the progress of the web site. Frayne's vision was to build an open forum, accessible by anyone with an internet connection, where citizens and professional economists alike could openly voice their opinions about hosting the games. "It is clear to me that ordinary citizens will have their lives considerably impacted by the bid and the games. My plan for the site is a moderated forum for citizens to express reasoned opinions, in an open way that includes professional economists to discuss the issues." To lead the discussion Frayne engaged with University of Chicago sports economist Allen Sanderson who agreed to aid in the development of the site.
Sanderson has written editorials on the subject for the Chicago Tribune and said, "Economists who study the impact of Super Bowls, World Cups, NCAA basketball tournaments and Olympic Games come to the same conclusion: Neither the immediate revenue nor the long-term spillover benefits ever come close to meeting expectations. These one-time big-ticket events constitute very poor public investments." Visitors to the Chicago2016.com site today will find only a two-line placeholder, which is a direct result of legal proceedings halting site development.
The Chicago 2016 Bid Committee now owns and operates Chicago2016.org, which Frayne says he intentionally left available. The city's site does not have a forum that considers citizens' opinions about hosting the games. Instead it prominently features a section titled --- Voice Your Support --- and tallies those numbers in the upper right corner of the site. Frayne says he will continue to fight for the right to build the site into a neutral, centralized venue for the public to discuss hosting the Olympics. The International Olympic Committee determines the host city on October 2, 2009.
In response to this UDRP lawsuit, Steve Frayne provided the following document to the WIPO UDRP board:
WORLD INTELLECTUAL PROPERTY ORGANIZATION ARBITRATION AND MEDIATION CENTER UNITED STATES OLYMPIC COMMITTEE, and CHICAGO 2016 (Complainants) Disputed Domain Name(s): -v- STEVE FRAYNE chicago2016.com (Respondent) RESPONSE (Rules, para. 5(b))
I. Introduction 1. On July 24, 2008, the Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center (the Center) by e-mail informing the Respondent that an administrative proceeding had been commenced by the Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Center set August 13, 2008 as the last day for the submission of a Response by the Respondent.
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II. Respondent's Contact Details (Rules, para. 5(b)(ii) and (iii)) 2. The Respondent's contact details are: Name: Stephen Frayne Address: 1630 Chicago Avenue #2302, Evanston, IL, 60201 Telephone: Withheld Fax: N/A E-mail: steve.frayne@gmail.com 3. The Respondent's authorized representative(s) in this administrative proceeding is (are): Name: Jefferson F. Scher Address: Carr & Ferrell LLP, 2200 Geng Rd, Palo Alto, CA 94303 USA Telephone: 650-812-3400 Fax: 650-812-3444 E-mail: jscher@carrferrell.com 4. The Respondent's preferred method of communications directed to the Respondent in this administrative proceeding is: Electronic-only material Method: e-mail Address: jscher@carrferrell.com Contact: Jefferson F. Scher Material including hardcopy Method: overnight delivery Address: Carr & Ferrell LLP, 2200 Geng Rd, Palo Alto, CA 94303 USA Contact: Jefferson F. Scher
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III. Response to Statements and Allegations Made in Complaint (Policy, paras. 4(a), (b), (c); Rules, para. 5) 5. The Respondent hereby responds to the statements and allegations in the Complaint and respectfully requests the Administrative Panel to deny the remedies requested by the Complainant. Overview The timing of this proceeding is no accident: the eyes of the world have been transfixed by the record-breaking performances of athletes from 205 countries at the Olympic Summer Games in Beijing. Through unprecedented television coverage, the International Olympic Committee is making every effort to saturate the media with images from the games. And of course it is operating the official web site at beijing2008.cn - under the top level domain of the host country, China. While it is difficult to set aside the grandeur and glamour of the games to focus on mundane legal questions, it is essential to recognize that the claims made in this proceeding are as unprecedented as the 2008 games. A critical analysis of the twists and contortions of Complainants' arguments quickly reveals that they fall far short of their burden of proof under the UDRP. The Complainants in this proceeding press the novel legal theory that their trademark rights, acquired well after registration of a domain name, nevertheless should be applied retroactively to find that registration to have been made in bad faith. The rationale for this position is that Mr. Frayne knew or should have known that Complainants, many years later, would wish to own the domain name because Complainant USOC often wishes to own domain names consisting of the name of a major city and an even-numbered year - if that city turns out to be a "contender" to host the Olympic games. While creative, this theory fails to comport with U.S. or international principles of trademark law, and far exceeds the intended scope of the UDRP. Anticipating that in the future others might possibly be interested in using a phrase as a trademark does not constitute any of the forms of infringement or unfair competition the UDRP was developed to address. Accordingly, the Complaint should be dismissed.
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Argument To prevail, the UDRP places on Complainants the burden of proving all of the following: (a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (b) The Respondent has no rights or legitimate interests in respect of the domain name; and (c) The domain name was registered and is being used in bad faith. Complainants' case fails on all three grounds. Trademark Rights It is undisputed that the domain name was registered on August 8, 2004. Complainants allege that the Chicago 2016 Exploratory Committee was incorporated almost two years later, on July 19, 2006. At some time between that date and April 9, 2007, it is alleged that the committee used CHICAGO 2016 on t-shirts, mugs, advertisements and posters promoting Chicago's bid to host the Olympic games. Even assuming that Complainants have enforceable common law trademark rights in CHICAGO 2016 by virtue of such activities, they arise two years after the relevant date. In their efforts to cobble together a case for retroactive application of their trademark rights, Complainants rely on a scattershot assortment of laws and UDRP decisions: the Stevens Act; WIPO arbitration decisions regarding madrid2012.com and torino2006.com; and NAF arbitration decisions regarding athens2004.org and beijing2008.org. For the reasons that follow, none of these furnishes a persuasive basis for a radically new interpretation of trademark law, or a reading of the UDRP that applies trademark rights retroactively.
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The Stevens Act. Contrary to the impression given in the Complaint, the Stevens Act supplements the Lanham Act in a very limited manner which is wholly inapplicable to this UDRP proceeding. First, the Stevens Act explicitly protects only a small set of words and symbols listed in 36 U.S.C. §220506(a): (1) the name "United States Olympic Committee"; (2) the symbol of the International Olympic Committee, consisting of 5 interlocking rings, the symbol of the International Paralympic Committee, consisting of 3 TaiGeuks, or the symbol of the Pan-American Sports Organization, consisting of a torch surrounded by concentric rings; (3) the emblem of the corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief; and (4) the words "Olympic", "Olympiad", "Citius Altius Fortius", "Paralympic", "Paralympiad", "Pan-American", "America Espirito Sport Fraternite", or any combination of those words. The disputed domain name contains none of those words, and the web site displays none of those symbols. The Stevens Act does not even mention, much less create an exclusive right in, City+Year combinations. Complainants argue, however, that the Stevens Act creates a broad trademark right in any combinations of words and symbols that have been or might later become associated with the U.S. Olympic Committee. This argument is founded on Section 220506(c)(4), which provides a civil cause of action for "falsely representing association with, or authorization by," the U.S. Olympic Committee or other entities named in the Act. Such a cause of action is not unique to the Stevens Act, and can be found in the Lanham Act in Section 43(a). Such an action for "falsely suggesting an association" is a distinct theory of trademark law independent of traditional trademark rights. However, such a theory does not retroactively create the type of trademark rights expressly required by the UDRP. Therefore, the existence of such a cause of action - which supplements traditional trademark infringement liability -cannot prove the element required by the explicit terms of the UDRP: the existence of "a
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trademark or service mark in which the complainant has rights." The UDRP was not meant to be a complete replacement for national unfair competition laws, but only a remedy for a specific class of conduct. Its express requirements should not be read out of the Policy in favor of a broader concept of "false suggestion of an association." Furthermore, by its own terms, the Stevens Act is limited to very particular types of uses: "uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition." Neither registering a domain name, nor "parking" the domain with a registrar, nor displaying a bare "coming soon" page falls within the terms of the Stevens Act. By its own terms, then, the Stevens Act would not supply a cause of action in this case. Accordingly, the Stevens Act is a red herring, and the Complainants' reliance thereon disingenuous. The question of whether Complainants have rights in "Chicago 2016," when such rights were acquired, and the priority date from which such rights run, must be determined by ordinary principles of trademark law. The WIPO decision on madrid2012.com. Complainants' selective quotation from the panel's ruling creates the misleading impression that the panel adopted a theory of retroactive application of trademark rights. In fact, quite the opposite is the case. The panel relied heavily on the fact that the domain name was registered after the City of Madrid announced its bid, and that the City had developed common law ("de facto") trademark rights from the time of this announcement. Here, by contrast, the domain name was registered well in advance of any announcement by the City of Chicago of its bid or intention to bid on the 2016 games. The WIPO decision on torino2006.com. This decision is similarly unavailing. In that case, the complainant had secured trademark registrations for TURIN 2006 predating the registration of the domain name, and the panel ruled that Turin and Torino were legally equivalent. Here, by contrast, the trademark applications were filed long after the domain name was registered.
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The NAF decision on athens2004.com. According to this ruling, no argument was submitted on behalf of the registrant, a resident of Australia. Applying local law, the panel ruled that "the law of Australia makes it clear that the IOC, its NOCs, and its Olympic Organizing Committees have preempted the field on use of the ATHENS 2004 mark." For the reasons described above, the law cited by Complainants as applicable in this proceeding has no such provisions. The NAF decision on beijing2008.org. According to this ruling, no argument was submitted on behalf of the registrant. The panel found "overwhelming evidence that Beijing was recognized internationally as the front-runner to host the 2008 Olympic Games at the time of Respondent's registration, and that Respondent had actual knowledge of Complainant's strong connection to the BEIJING 2008 mark when it registered the disputed domain name." The circumstances found compelling by that panel are entirely absent in this case. Thus, the authorities cited by Complainants fail to support its blanket claim to all City+Year domains. Rather, past panels have assessed whether the complainant had established prior rights through registration and, if not, whether it owned statutory or common law rights established prior to registration. In no case, contested or not, did the panel simply accept the argument that later-established rights sufficed to obtain transfer or cancellation of a domain name under the UDRP. Nor would it be logical to reach such a conclusion. The UDRP was designed to efficiently resolve straightforward cases, not to pursue the creation of heretofore unknown theories of trademark law. Respondent is unaware of any jurisdiction in the world in which trademark rights can be retroactively applied to conduct pre-dating any actual use of the mark or application thereof. Phantom Elements. The Complainants' theory also should be rejected on the basis of United States law. The United States Patent and Trademark Office will not register marks that contain a replaceable or wildcard element, often referred to as "phantom" element. The Office's Trademark Manual of Examining Procedure §1214 expressly identifies marks with years or geographic locations that are subject to change
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as examples of the types of marks that should be refused registration. A true and correct copy of this section is attached as Annex 13. The panel should reject any notion that Complainants own trademark rights in [City]2016 or Chicago[Year]. Inasmuch as the UDRP requires Complainants to prove bad faith conduct in relation to their trademark at the time the domain was registered, the absence of any rights at that point in time is, in itself, sufficient reason to dismiss the Complaint. Respondent's Legitimate Interests Section 4(c) of the UDRP describes three sets of circumstances under which the Respondent shall be deemed to have rights or legitimate interests in a domain name. This list is non-exclusive and, as exemplified by the first subsection, it is not necessary that the intended use have been implemented so long as preparations for use can be shown: "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services." Mr. Frayne first received notice that Complainants viewed his ownership of the domain as being in bad faith or infringing their rights on July 20, 2008 when he received email notification from WIPO. See Declaration of Stephen Frayne ¶23 (hereinafter {Frayne Decl.}). His preparations to use the domain long preceded that date. Since before the domain was registered on August 8, 2004, Mr. Frayne has been developing plans for his use of the domain. Recognizing that trademark law had some bearing on his plans, he retained Carr & Ferrell LLP in June 2004 (after initial consultations), long before his first registration of any domain name. Mr. Frayne refined his initial plans to focus on a public forum for even-handed discussion of the costs and benefits for local citizens of a city and country hosting or seeking to host the Olympic games. {Frayne Decl. ¶¶9, 15} Such a site would provide an important service which easily meets the UDRP's requirement of a "bona fide" offering. The Intended Services. Mr. Frayne plans to use the domain name to operate a public forum featuring input by citizens, professional sports economists, and
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others. He believes, as do others, that it is in the public interest for the citizens of Chicago to have a serious public debate about whether the best use of City officials' time and taxpayers' money to court and host the Olympics, considering the huge demands on public resources during the two weeks of the games and in the run up to the games themselves. {Frayne Decl. ¶¶9, 13} Due to the breadth of the issues presented, including out-of-pocket costs, dislocation of residents, environmental issues, and security, among others, a domain name that refers to just one issue would be inadequate for the task. The moniker best suited to the planned service, the one which identifies the locus of the issues, is the domain name at issue. {Frayne Decl. ¶¶14-17} Preparations for Launch. Many years have elapsed since the domain name was registered. However, the UDRP does not impose a timetable on the launch of domain. Rather, the Policy recognizes that it would be unfair to deprive a registrant of the opportunity to proceed with its plans to use a domain name if that registrant has made preparations to use the domain. Those preparations cannot be merely a thought experiment, but must be real. Such preparations have been pursued throughout the time since the domain was registered. Recognizing the difficulties of launching a successful web property, Mr. Frayne sought to enhance his business experience before proceeding. His formal education was in engineering, and he chose to work in Silicon Valley to pursue his plans. He concentrated on building his career at Intel, including investment and management assignments, taking business courses while pursuing his Masters Degree, and applying to business school after which he could give the business more appropriate attention. {Frayne Decl. ¶10} Although full-time education and employment slowed progress toward the launch of the site, Mr. Frayne also recognized that an immediate launch of the site would be premature. Finally, in April 2007, co-complainant USOC announced that Chicago would be put forth as the one United States city seeking to host the Summer games in 2016. This focused Mr. Frayne's efforts, and he chose to attend Kellogg School of Management at Northwestern University in Evanston, just outside of Chicago.
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{Frayne Decl. ¶10} Thereafter, he was contacted by co-complainant Chicago 2016, which wished to acquire the domain name. After a cordial meeting in which Mr. Frayne made clear to Mr. Stiers that he had his own plans for the domain and did not intend to sell, discussions ended. {Frayne Decl. ¶18} During the course of the school year, Mr. Frayne kept up with local news on various issues related to the forthcoming bid. While most business school students spend the Summer between their first and second years pursuing a once-in-a-lifetime internship in a field of career interest, Mr. Frayne demonstrated his serious pursuit of his plans by passing on that opportunity to work on the bid discussion website he had planned back in 2004. {Frayne Decl. ¶11} Prior to learning of this dispute, he marketed his site by communicating with reporters on June 20, 2008, who were interested in a story concerning charges about the Olympic bid committee, and sought out Professor Allen Sanderson, a sports economist from the renowned University of Chicago Department of Economics. Because of a trip to his hometown in Texas, the first face to face discussion between Mr. Sanderson and Mr. Frayne did not take place until late July, by which time Mr. Frayne had been notified of the dispute. {Frayne Decl. ¶12} Without the distraction of this proceeding, Mr. Frayne would be well on the way to launching his site. With about fourteen months left before the International Olympic Committee chooses the host city for 2016, and the City of Chicago beginning to make critical decisions about the use of public funds, land use, construction investments, and so on, the time is nearly ripe for a robust public discussion about these decisions, a discussion which will continue throughout the years leading up to the games should Chicago's bid be successful. Other UDRP panels have recognized that timing the launch of a site correctly is an important consideration. In Union des associations européennes de football (UEFA) v. Chris Hallam, D2001-0717 (WIPO July 10, 2001) (a true and correct copy of this decision is attached as Annex 12), the panel concluded that failure to use <uefa2004.com> was understandable because the event that was the subject of the intended site was not to be held for another three years. Even in the madrid2012.com
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case cited by Complainants, the panel concluded that registrant's decision to defer the launch of his intended site was understandable and justifiable under the circumstances. What the panel in that case could not accept was that in the interim, the registrant was using the domain to redirect web users to a completely different site. Such redirection is not an issue in this case: Mr. Frayne did not post a site meant to capitalize on the domain name. Instead, he simply allowed the registrar, Register.com, to display its generic content for site-less domain names. Register.com did not compensate Mr. Frayne in any manner for its usage of the domain. {Frayne Decl. ¶8} It is notable that the beijing2008.org site current displays exactly such a page supplied by Network Solutions, Inc. A true and correct printout of that page is attached hereto as Annex 2. Through his detailed Declaration and related Annexes, Respondent has demonstrated his preparations to use the domain name for a legitimate purpose. Therefore, the UDRP complaint must be dismissed. Registration and Use in Bad Faith Complainants urge the panel to accept a number of different theories of bad faith in this case, none of which is persuasive. The first theory is that the domain violates the Stevens Act. As discussed previously, the Stevens Act does not create a new class of rights in City+Year domain names, but instead provides a civil cause of action for falsely creating an association. Nothing in the Stevens Act supports an argument that the domain name was registered in bad faith and, as Complainants emphasized in their arguments, the domain is not currently being used. Accordingly, this first ground is entirely baseless. The second theory is that Complainants have established complete ownership rights to all City+Year domains by virtue of their past usage. As discussed previously in detail, none of the decisions cited by Complainants establish such a preemptive right. On the contrary: in each case, there were common law (or "de facto") trademark rights based on use, and/or personal knowledge of the upcoming bid,
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and/or express statutory terms creating such a right. None of those circumstances are present here. Complainants base their provocative theory, in part, on the argument that the winning city will be required to create a logo comprising the name of the city and the year of the games. This information was not known to Mr. Frayne {Frayne Decl. ¶23}, and is unlikely to be known to the public at large as it appears in a technical appendix. It does not follow that the Complainants therefore have a legal right to seize a corresponding domain name from a prior registrant. As with any other logo used as a trademark, the potential for future rights is not enforceable prior to use or registration. In their effort to satisfy the personal knowledge criterion, Complainants reference three Chicago Tribune articles (Complainants' Annexes 9 through 11) and one Springfield, Illinois State Journal-Register article (Complainants' Annex 12). Complainants assert that these articles prove Mr. Frayne "knew" that "Chicago could very well bid for the 2016 Games." Of course, "could very well bid" falls far below the bar established in earlier cases. Nor are these articles directly relevant: they reference the 2012 games, not the 2016 games. Furthermore, they were published in Illinois on April 4, 1997, April 11, 1997, April 15, 1998, and February 25, 2002, when Mr. Frayne lived in Houston, Texas and San Jose, California. Mr. Frayne never saw these articles prior to receiving the Complaint, and did not know whether or not Chicago planned to bid for the 2016 Olympic games at the time the domain was registered. {Frayne Decl. ¶24} While Mr. Frayne is familiar with the general schedule for the Olympic games, this, alone, does not satisfy any test set forth in the cited UDRP decisions. On the contrary, other panels, such as the panelist in Union des associations européennes de football (UEFA) v. Chris Hallam, D2001-0717 (WIPO July 10, 2001), have definitively rejected this theory of "anticipated" future trademark rights. Such foresight on the part of the registrant of <uefa2004.com> failed to establish bad faith registration in the absence of recognizable trademark rights: "Even if it is conceivable that Respondent did know about Complainant's plans concerning the event planned for 2004 when it
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registered the domain name, the fact is that the trademark in question was obviously not registered or otherwise protected at that time." Complainants invite the panel to radically reshape trademark law in this proceeding. The panel should decline that invitation. The third theory presented in the Complaint corresponds to UDRP Section 4(b)(ii): "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct." For example, Complainants allege: "That Respondent knew these facts [about Chicago's intention to bid for the 2016 games] and registered the <chicago2016.com> domain demonstrates his intent to hijack the domain so that it would not be available to Chicago in connection with a bid for the 2016 Games." As evidenced above, the factual premise for this argument is incorrect. However, the legal premise also is incorrect. Section 4(b)(ii) presupposes both the existence of trademark rights at the time of registration and an intention to prevent the owner of that trademark from being able to adopt a "corresponding" domain name "reflecting" the mark. It also requires a pattern of such blocking registrations. Complainant cannot satisfy any of the requirements of Section 4(b)(ii). Accordingly, it does not apply in this case. First, Complainants did not own the requisite trademark rights at the time the domain was registered, either by virtue of use or by virtue of registration. The UDRP is crystal clear in this section: there is no room for complainant's expansive theories of anticipation of possible future usage. Second, Complainants cannot show that Mr. Frayne intended to "prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name." To the contrary, Mr. Frayne did not so intend. {Frayne Decl. ¶24} It goes without saying that by registering a domain name, the registrant necessarily excludes all others from using that domain name. In Section 4(b)(ii), the framers of the UDRP did not create a regime that would find bad faith merely in the act of registering one domain corresponding to an established trademark. Instead, their concern was the
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systematic registration of numerous matching domains with the express intention of making domain names matching the trademark unavailable on the internet. That clearly has not happened here. Mr. Frayne registered Chicago2016.com. He has not prevented others from registering Chicago2016 under other top level domains - Complainants' Chicago2016.org domain was registered within days after Respondent's domain. Nor did he seek to register numerous combinations of Chicago2016 with descriptive terms, such as "games," or with different punctuation. He was very selective in his registrations, in accordance with his plans to use the domain. In any event, Mr. Frayne makes clear in his declaration that the required subjective intention to prevent others from obtaining a domain name containing the same phrase is entirely absent in this case. Third, although Complainants show that Mr. Frayne has registered other City+Year domains, consistent with his vision for his sites, those do not demonstrate a pattern of trademark blocking domain registrations. In each case, Mr. Frayne has been extremely selective and has left open almost the entire universe of top level domain names for use by those cities. Complainants have failed to satisfy any of the requirements for application of Section 4(b)(ii) in this case. Not only were their potential future rights unknown and unestablished at the time of registration, Complainants have failed to carry their burden of proof to establish the necessary intention to block use of Chicago2016 as a domain name. The fourth theory presented in the Complaint arises from discussions between Complainants and Mr. Frayne. Shortly after he moved to the Chicago suburb of Evanston, Illinois, to attend Northwestern University, Mr. Frayne was contacted by co-complainant Chicago 2016 and solicited to transfer the domain. Mr. Frayne, having his own plans for the domain, demurred. Complainants admit that Mr. Frayne did not offer to sell the domain, and in fact declined to do so. Thus, by its own terms, UDRP Section 4(b)(i) should be deemed inapplicable here. However, Complainants assert that Mr. Frayne's deferral of further consideration of a possible transfer was worded in a
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suspicious manner that implied a possible interest in selling the domain for a profit in the future. Of course, Complainants omitted to mention Mr. Frayne's plans for using the domain, and that information casts the comment in a completely new light. Waiting to see how the bid would progress was logical in light of the scope of his plans and the demands of his education. In any event, there was no untoward suggestion that Mr. Frayne was seeking to sell the domain. Complainants also point to a more recent communication, an email message from Mr. Frayne to Mr. Stiers on June 4, 2008. The content of this message was extremely straightforward, and reflected what Mr. Frayne felt was his cordial, nonconfrontational relationship with Mr. Stiers: "Jeff, congratulations on Chicago making the IOC shortlist. This must be very exciting for you! The buzz around the city is palpable today." Complainants darkly grouse that the message is evidence of "continued bad faith." However, this spontaneous expression of feelings fails to meet any known definition of bad faith. The panel should reject the notion that mere congratulations constitute a solicitation to sell a domain name - at any price. As their fifth and final theory, Complainants point out that Mr. Frayne did not list a valid telephone number in the whois information for the domain. As he explains in his declaration, Mr. Frayne did not have a "land line" at the time and did not want to list his mobile phone number in a public database. {Frayne Decl. ¶7} As any domain owner can attest, the information in the whois database is used for marketing, so Mr. Frayne's desire for privacy is understandable. In any event, the purpose of this policy is to enable a trademark owner to contact the domain registrant, and Complainants had no difficulty doing so in this case. Accordingly, it would make a mockery of the UDRP process to order a transfer of a domain name for this reason. Complainants have failed to demonstrate bad faith registration and use of the domain name. Therefore, the UDRP complaint must be dismissed.
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Conclusion Complainants seek an extraordinary expansion of the UDRP far beyond the boundaries of recognized trademark and unfair competition laws. It would be unthinkable for any trademark holder to be able to seize a domain name based on the argument that the potential future attractiveness of the trademark should have been known at the time of registration, and yet that is exactly the doctrine underlying this Complaint. This ambitious and wholly unprecedented doctrine of potential future trademark rights is articulated in the final paragraph of their argument: "An event such as the summer Games, known to occur every four years in a major city, allows cyber squatters to speculate as to which cities will attempt to host the event and hold the relevant domains hostage for very little cost. Once a host city actually becomes a contender, it has no choice but to buy the registered domain name for whatever price offered or forego the right to use a domain name incorporating a mark to which it has legitimate rights. Such a practice is clearly in bad faith and should not be rewarded." Complainants decry the ability of domain owners to "speculate" on City+Year domain names "for very little cost," while at the same time ignoring the implications of their theories for other domains that anticipate future trademarks. It is particularly specious to postulate that Complainants are helpless to protect their alleged rights by themselves registering and holding such domain names - as their registration of Chicago2016.org ably demonstrates. The drafters of the UDRP were sensitive to the interaction between the first-to-register domain name system and previously established trademark rights, and sought to provide a lower-cost remedy to judicial proceedings for clear cases. However, those same drafters explicitly recognized that not all such claims are entitled to relief, both in the specific terms of the UDRP and in the incorporation of deterrents to Reverse Domain Name Hijacking in its implementing rules.
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If Complainants are correct in their statement of the law, they are not without a remedy under the Lanham Act and the Stevens Act. The District Courts and the Congress are much better suited to making new law than the UDRP process. For all of these reasons the Complaint should be dismissed, and the Complainants denied their requested relief. IV. Administrative Panel (Rules, paras. 5(b)(iv) and (b)(v) and para. 6; Supplemental Rules, para. 7) 6. The Respondent agrees to have the dispute decided by a three-member Administrative Panel as specified by Complainants. Respondent nominates the following persons to serve on the panel: 1. Paul Michael DeCicco Law Offices of Paul Michael DeCicco 101 West Broadway, Suite 1950 San Diego, CA 92101 USA 2. David E. Sorkin Center for Information Technology and Privacy Law The John Marshall Law School 315 South Plymouth Court Chicago, IL 60604 USA 3. David H. Bernstein Debevoise & Plimpton LLP 919 Third Avenue New York, NY 10022
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V. Other Legal Proceedings (Rules, para. 5(b)(vi)) 7. Respondent is not aware of any other legal proceedings that have been commenced or terminated in connection with or relating to the domain name that is the subject of the Complaint. VI. Communications (Rules, paras. 2(b), 5(b)(vii); Supplemental Rules, para. 3) 8. A copy of this Response has been sent or transmitted to the Complainants on August 13, 2008 by e-mail to shakim@bellboyd.com. 9. This Response is submitted to the Center in electronic form, and in four (4) sets together with the original. VII. Payment (Rules, para. 5(c); Supplemental Rules, Annex D) 10. No payment is due from Respondent. VIII. Certification (Rules, para. 5(b)(viii), Supplemental Rules, para. 12) 11. The Respondent agrees that, except in respect of deliberate wrongdoing, an Administrative Panel, the World Intellectual Property Organization and the Center shall not be liable for any act or omission in connection with the administrative proceeding. 12. The Respondent certifies that the information contained in this Response is to the best of the Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under the Rules and under applicable
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law, as it now exists or as it may be extended by a good-faith and reasonable argument.
Respectfully submitted,
Jefferson F. Scher Date:
Media Contact:
Steve Frayne (408) 431-5654
Steve.Frayne@gmail.com
Source: Submission to DomainNews.com on August 25th, 2008 - Posted by Roland G. Buck - Chief Editor