The domain ObamaPresidentialCenter.com, along with six others, were lost in a UDRP that utilized the fame of the OBAMA mark to usurp the aged domains.
The Complainant is The Barack Obama Foundation, filing the UDRP at the National Arbitration Forum. The domains involved in this UDRP are obamapresidentialcenter.com, thebarackobamapresidentiallibrary.com, thebarackhobamapresidentialcenter.com, barackhobamapresidentialcenter.com, barackhobamapresidentialcenter.org, thebarackhobamapresidentialcenter.org, and thebarackhobamapresidentiallibrary.com.
All of these domains were registered between 2008 and 2009 by the Respondent in this UDRP, who claimed that they were part of a “free speech forum” to discuss the legacy of the former US President, Barack Obama. Other statements, such as no monetization of the domain names, are contradicted by the following active listing, where the Respondent seeks $50,000 dollars via a GoDaddy auction:
The UDRP placed the fame of a twice US President with an active foundation against someone who, despite claims of developing a free speech forum, did nothing to demonstrate that since 2008 or 2009.
Final decision: Transfer the seven Obama domains to the Complainant.
The Barack Obama Foundation v. michael board / Championshipblackjack, Inc
Claim Number: FA2107001954598
PARTIES
Complainant is The Barack Obama Foundation (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Michael Board / Championshipblackjack, Inc (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <obamapresidentialcenter.com>, <thebarackobamapresidentiallibrary.com>, <thebarackhobamapresidentialcenter.com>, <barackhobamapresidentialcenter.com>, <barackhobamapresidentialcenter.org>, <thebarackhobamapresidentialcenter.org>, and <thebarackhobamapresidentiallibrary.com>, (the “Domain Names”) registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Mr Clive L Elliott Q.C. as Chair, and Mr Ho-Hyun Nahm, Esq., and Professor David Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 10, 2021; the Forum received payment on July 10, 2021.
On July 13, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@obamapresidentialcenter.com, postmaster@thebarackobamapresidentiallibrary.com, postmaster@thebarackhobamapresidentialcenter.com, postmaster@barackhobamapresidentialcenter.com, postmaster@barackhobamapresidentialcenter.org, postmaster@thebarackhobamapresidentialcenter.org, postmaster@thebarackhobamapresidentiallibrary.com.
Also on July 20, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
No formal response was received by the deadline of August 9, 2021. However, on August 16, 2021, Respondent filed a response out of time. Although the Forum does not consider the Response to be in compliance with ICANN Rule #5(a) the Panel has elected that it be considered.
On August 16, 2021, Complainant submitted a reply to Respondent’s contentions.
On August 18, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed:
Mr Clive L Elliott Q.C. as Chair, Mr Ho-Hyun Nahm, Esq., and Professor David Sorkin as Panelists.
On August 24, 2021, the Forum served the parties with an order for Complainant to produce evidence of its asserted licensed use of the common-law OBAMA marks within five days; extended to seven days.
On August 27, 2021 Complainant submitted an additional submission being a copy of the executed Obama Foundation Trademark License Agreement.
On August 27, 2021 Respondent responded requesting five business days to respond to Complainant’s submission.
On August 27, 2021 the Forum advised Respondent that it was entitled to file a response provided it was limited to addressing the material submitted in Complainant’s additional submission.
On August 27, 2021 Respondent submitted a response to Complainant’s licensing agreement submission.
On August 28, 2021, Respondent submitted additional documents in support of its response to Complainant’s licensing agreement submission.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
FACTUAL BACKGROUND
According to the publicly available WhoIs, the Domain Names were registered as follows:
<obamapresidentialcenter.com> registered February 20, 2008;
<thebarackobamapresidentiallibrary.com> registered February 20, 2008;
<thebarackhobamapresidentialcenter.com> registered January 21, 2009;
<barackhobamapresidentialcenter.com> registered January 21, 2009;
<barackhobamapresidentialcenter.org> registered January 22, 2009;
<thebarackhobamapresidentialcenter.org> registered January 22, 2009;
<thebarackhobamapresidentiallibrary.com> registered January 21, 2009.
While the registrant organization Championshipblackjack, Inc. does not appear in the Whois records for all seven Domain Names, the registrant name Michael Board and the same telephone number, mailing and email address is used for all the Domain Names. It is therefore clear that all the Domain Names were registered and are being used by a single person and are under common control and ownership.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a Chicago-based 501(c)(3) non-profit organization that, among other things, oversees the creation of the Barack Obama Presidential Center.
Former United States President Barack H. Obama owns common law rights to the marks BARACK OBAMA and OBAMA (“Complainant’s Marks” or the “OBAMA Marks”) and has licensed use of Complainant’s Marks to the Obama Foundation.
There is a long precedent of UDRP decisions recognizing that politicians and celebrities can create and own trademark rights in their names, and that a registered trademark is not a prerequisite for prevailing in a UDRP. See, e.g. Hillary Rodham Clinton v. Michele Dinoia a/k/a/ SZK.com, FA0502000414641(Forum March 18, 2005).
Complainant asserts that the Domain Names are nearly identical and confusingly similar to Complainant’s Marks as they combine Complainant’s Marks together with the generic terms “Presidential Center” and “Presidential Library”, thereby creating the false impression that the content and services promoted at websites associated with the Domain Names are provided by, or affiliated with, former President Obama and Complainant.
Complainant notes that the Domain Names <obamapresidentialcenter.com> and <thebarackobamapresidentiallibrary.com> were registered shortly after President Obama became a front runner for the Democratic Party in the 2008 presidential election, and the other five Domain Names were registered immediately after President Obama was inaugurated as the 44th President of the United States.
Complainant submits that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Names, and to the contrary Respondent is offering to sell two of the Domain Names for US$50,000 each and is using all the Domain Names with commercial pay-per-click websites.
Complainant asserts that Respondent has registered and is using the Domain Names in bad faith, purposely to attract Internet users seeking Complainant’s website to operate pay-per-click websites. Complainant further asserts that Respondent’s registration of multiple domain names is intended to infringe Complainant’s Marks and is not a legitimate use of the Domain Names.
Further, Complainant contends that Respondent’s registration of the Domain Names in anticipation of events pertaining to Complainant, together with the offer to sell two of the Domain Names is evidence of Respondent’s opportunistic bad faith use of the Domain Names.
B. Respondent
Respondent failed to submit a formal response by due date, however he did send a series of emails on August 10, 2021 requesting an extension of time for response. On August 16, 2021 he filed his response out of time requesting that it be accepted after the deadline due to extenuating circumstances. Respondent advises that he had been unable to file a response as he had been suffering from a medical condition as well as moving out of town moving during a pandemic for a period of 24 days beginning July 17, 2021.
Respondent points out that he is not an attorney with deep knowledge of any legal nuances of the Internet space, but rather is just a hard-working father who is representing himself. The Panel is prepared to consider Respondent’s responses, as if they had been filed in time, notwithstanding any late filing.
Respondent asserts that Complainant is not an active organization in Illinois, but rather it is “Not in Good Standing”. Respondent asserts that when the foundation was incepted on July 9, 2014, it had been “not in good standing” for some time before, during and since the filing of this claim. Further, Respondent asserts that Complainant has failed to abide by the rules and regulations of the State of Illinois required to properly conduct business, which was verified by the Secretary of State’s business office.
Respondent believes Complainant lacks the status to file the claim as it did not exist until July 9, 2014, 5 years after Respondent’s purchase of the Domain Names. Therefore, Respondent submits he could not have registered the Domain Names in bad faith to prevent a non-existent organization from doing business, or for them to have any rights which pre-date registration of the Domain Names. Respondent claims that this is a frivolous filing in an apparent attempt to reverse highjack the Domain Names.
Respondent denies the allegations that he registered the Domain Names in bad faith, as they were registered in 2008 and 2009, whereas Complainant did not exist until 2014.
Respondent claims he registered the Domain Names to use as bipartisan speech forums where he and others can exercise free speech around President Obama’s legacy.
Respondent denies the allegations that he has tried to sell the names to Complainant and advises that he had been approached several times years ago by an individual who wanted to buy them, but he was not interested in selling them.
Respondent also advises that as well as the Domain Names, he owns many other domains that he has yet to develop around finance, running and politics, three areas he has specialty interests in, for free speech forums.
Respondent denies the allegations that the Domain Names cause confusion with Complainant and asserts that he makes no money from the Domain Names. Respondent also states that it is his intention to actively develop free speech political forums regarding politics and the presidential legacy and although the sites are not currently developed, he is working to develop them.
C. Additional Submissions
Complainant
Complainant, in its reply brief, denies Respondent’s allegations that Complainant is not an active entity in good standing, and points out that to the contrary Complainant is a valid Washington D.C. non-profit corporation in good standing, producing a Certificate of Good Standing issued on August 16, 2021, and an excerpt from the DC Department of Consumer and Regulatory Affairs website taken on August 16, 2021.
Complainant denies Respondent’s allegations that Complainant had longstanding knowledge of Respondent’s bad faith registration and use of the Domain Names. Nonetheless, Complainant argues that it is well established that the equitable defenses of laches and acquiescence do not apply.
Complainant asserts that it has standing to file this UDRP because it was founded by President Barack Obama and is a licensee of Complainant’s Marks. Complainant also cites a long precedent of UDRP decisions holding that registration of domain names in anticipation of a future event (e.g., the foreseeable opening of a presidential library following President Obama’s successful democratic primary and presidential campaigns in 2008 and 2009) is evidence of “opportunistic bad faith registration”.
Complainant denies Respondent’s claim that he registered the Domain Names to “eventually use as bipartisan speech forums”. It argues that this is unsubstantiated and is contradicted by Respondent’s attempt to sell several of the Domain Names for $50,000 each. Further, it is suggested that had Respondent registered the Domain Names for a free speech forum, he would not have needed to register so many domain names, and the domain names would not refer to President Obama’s presidential library.
Finally, Complainant contended that the trademark license does not need to be in writing to be enforceable.
Respondent
Respondent claims, in his response submission, that Complainant has filed a frivolous and bad faith claim misrepresenting facts. Respondent alleged that Complainant was “not in good standing” in the State of Illinois to conduct business. Respondent notes that Complainant denied this allegation and provided a certificate showing it to be active in DC. Notwithstanding this, Respondent believes Complainant has misrepresented his claim.
Respondent asserts that Complainant has filed no evidence to back up its claim that it has licensed Complainant’s Marks and asks that the licensing agreement between Mr Obama and Complainant be produced.
Respondent further responded to Complainant’s licensing agreement submission and asserts that the licensing agreement filed by Complainant appears to be newly created and altered, raising flags regarding authenticity and ethics
FINDINGS
For the reasons set out below the Panel finds that Complainant has successfully established each of the three elements under paragraph 4(a) of the Policy. Accordingly, the Panel orders that the Domain Names should be transferred to Complainant. Further, the Panel finds that Complainant has not engaged in reverse domain name hijacking.
A Preliminary Procedural Issue
As noted above, Complainant was asked to provide evidence of the existence of any license agreement in its favor. In an email to the Forum on August 28, 2021, Complainant submitted a copy of a license agreement that had just been executed by former President Obama. It submitted the original license agreement in word, the full DocuSign document executed by Complainant, and the document signed by former President Obama. Complainant explained that a metadata scrubber had altered some of agreement’s numbering but confirmed that the document had been reviewed and signed on August 25, 2021.
In his response to the filing of the written license, Respondent questioned the authenticity and reliability of the license agreement. Complainant has explained how the apparent errors in the document arose. The Panel is satisfied, as best it can be under the circumstances, that the document can be relied upon.
The licence agreement is made nunc pro tunc and is said to be effective as of January 31, 2014 (the “Effective Date”). The effect of such a document is to have the same legal force and effect as if it had been executed on an earlier date. The licence is executed by Barack Obama and in favour of Complainant. While executed on August 26, 2021, the Licence Agreement has an Effective Date of 31 January 2014.
The licence shows that since January 31, 2014, Complainant has had a licence from Barack Obama to use the relevant trademark rights. That licence is availing insofar as it purports to take effect from January 31, 2014. In any event, the licence confirms the existence of an oral license since the said date and is as effective, in law, as a written license, provided the licence and its terms are reliably established. The Panel is satisfied that in the present situation the written licence establishes at least the existence of an oral non-exclusive license since January 31, 2014. More to the point, a non-exclusive licence explicitly authorizing the licensee to bring a UDRP claim is quite sufficient.
DISCUSSION
Pursuant to Paragraph 15(a) of the Rules the Panel is required to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant claims it holds common law rights in the OBAMA Marks and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant provides evidence of use of Complainant’s Marks. The Panel also adopts previous UDRP decisions recognizing that politicians and celebrities can create and own trademark rights in their names.
As noted above, Complainant contends that former United States President Barack Obama owns common law rights to Complainant’s Marks. This question raises the contentious issue of whether a personal name that has not been registered as a trademark can ever constitute a common law trademark. ‘Section 1.5.2 of WIPO Jurisprudential Overview 3.0’ summarizes the current jurisprudence on this issue as follows:
The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services. Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.
From this summary it may be deduced that the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce. A decision that illustrates this dichotomy is Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, File No. FA0502000414641, (Forum March 18, 2005) where it was held that Senator Clinton had common law trademark rights in her own name, not simply because she was famous, for that would not have got her over the hurdle, but because she was also, as the panelist said,“…a best-selling author (who) has written four novels including, It Takes a Village: and Other Lessons Children Teach Us, which was published in 1996 and has sold 622,000 copies, and “Living History,” which has sold 1.68 million hard copies and 525,000 paperbacks since its 2003 publication.” In other words, her name had been used to sell books written in her capacity as an author.
Another decision finding a personal name which is not registered as a trademark has taken on such a cachet that it has become a trademark is Chung, Mong Koo and Hyundai Motor Company v. Individual Case No.D2005-1068 (WIPO December 21, 2005) where it was held that Chung, Mong Koo had common law trademark rights in his own name because Mr. Chung is personally recognized as having restored the Group’s fortunes to the point where its present success is largely due to him, that he has given it a reputation for quality control because of his own personal pre-occupation with that objective and that there is a widely held view that the company’s fortunes would suffer if he were not in charge of them. The evidence and the public record show that Mr. Chung has put his personal imprimatur on the company and that the company is now virtually identified with him.
The Panel notes that former President Obama has authored several books, including two New York Times Best Sellers that were published before Respondent registered the Domain Names: Dreams from my Father: A Story of Race and Inheritance (1995) and The Audacity of Hope: Thoughts on Reclaiming the American Dream (2006). Those books have sold millions of copies and President Obama used the OBAMA Marks to promote and sell the books, including at book signings and televised question-and-answer gatherings. Long before Respondent registered the Domain Names, the OBAMA Marks had become distinctive and famous through President Obama’s extensive public promotion and use of the OBAMA Marks in U.S. commerce in connection with advertising and providing a wide range of services and activities, including running successful senatorial and presidential campaigns, authoring and promoting best-selling books, traveling throughout the United States giving speeches, and participating in various fundraisers and events. The Panel also notes that Complainant has submitted examples of former President Obama’s use of the OBAMA Marks to promote and provide various services, and to operate a website at www.BarackObama.com, which uses the mark BARACKOBAMA.COM. All the trademark uses shown in Complainant’s exhibits predate Respondent’s registration of the Domain Names, which occurred in 2008 and 2009.
Therefore, the Panel finds that former President Barack Obama owns common law rights in the OBAMA Marks.
Respondent argues that a non-exclusive licensee cannot find standing to bring a domain name complaint. The Panel observes the rationale ‘transferring a domain name to an entity other than the trademark owner (or an entity with equivalent rights, such as an exclusive licensee or a parent or subsidiary company), would, therefore, be inconsistent with the goals of the Policy’ as opined in the case NBA Props., Inc. v. Adirondack Software Corp., WIPO Case No. D2000-1211 (December 8, 2000) (refusing to transfer the domain name <knicks.com> to a licensing and merchandising agent for the National Basketball Association and its member teams, including the New York Knicks). However, the Panel is of the view that it is not a matter to be decided uniformly. The Panel also notes the finding of the panel in the case Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., WIPO Case No. D2003-0624 (October 16, 2003) which held that the complainant had sufficient standing to bring the proceeding because of the close relationship between the complainant and the trademark owner, although the complainant was a non-exclusive licensee.
In doing so, the Panel takes into account but rejects Respondent’s argument that a non-exclusive licensee can never have standing to bring a domain name complaint. In this case, there is a close relationship between Complainant and the trademark owner (as in Toyota Motor Sales U.S.A. Inc.), and more importantly, the trademark owner has expressly authorized Complainant to enforce rights in the marks by bringing a complaint under the UDRP. The Panel therefore finds that Complainant has standing to bring this complaint as a licensee of the OBAMA marks for the purposes of Policy ¶ 4(a)(i).
Complainant argues Complainant’s Marks are identical or confusingly similar to the Domain Names as they contain the marks in their entirety and merely add common and generic terms and the “.com” or “.org” gTLD. That argument has merit. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish the Domain Names from Complainant’s Marks per Policy ¶ 4(a)(i).
Therefore, the Panel finds that the Domain Names are confusingly similar to Complainant’s Marks per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
It is well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names for the burden to shift to Respondent to show it does have rights or legitimate interests.
Complainant contends that Respondent lacks rights or legitimate interests in the Domain Names since Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed to Respondent any rights in Complainant’s Marks. The WHOIS information for the Domain Names lists the registrant as “michael board”. There is no other evidence to suggest that Respondent was authorized to use Complainant’s Marks.
Complainant provides screenshots of the Domain Names resolving to pages displaying third party links. Therefore, the Panel infers that Respondent has not used the Domain Names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Further, Complainant contends Respondent lacks rights and legitimate interests in the <obamapresidentialcenter.com> and <thebarackhobamapresidentiallibrary.com> domain names given he attempted to sell these two domain names to Complainant for $50,000 each. Respondent’s general offer of sale of a disputed domain name can be evidence of a lack of rights or legitimate interests per Policy ¶(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima facie case and shown that it has a right or legitimate interest in the Domain Names.
Respondent argues that he is actively building a plan to develop free speech political forums regarding politics and the presidential legacy, while at the same time making it crystal clear that the sites are “not official” or endorsed by anyone. While the sites are not currently developed, now that his employment allows outside and political activity, he is working to develop them. There is no duty to use a name in connection with a website in order to establish legitimate use of a domain name.
Complainant rebuts that Respondent’s argument is unsubstantiated and is contradicted by Respondent’s attempt to sell several of the disputed domains for $50,000 each. Further, had Respondent registered the Domain Names for a free speech forum, he would not have needed to register so many domain names, and the domain names would not refer to President Obama’s presidential library. Panels have long held that unsubstantiated claims of future use do not confer any rights or legitimate interests upon respondents, and that non-use—or “warehousing”—of domain name does not prevent a finding of bad faith under the doctrine of passive holding. See Bulgari S.p.A. v. Zhi Wei Tan, D2019-2706 (WIPO Jan. 6, 2020) (held that, notwithstanding respondent’s alleged plans to use the disputed domain “for a personal blog sometime in the future . . . [respondent’s] unsubstantiated claims as to future use[] do not confer any rights or legitimate interests on the 3 153484041.1 [r]espondent”); Comcast Corporation v. John Brandon Hawkins, D2001-0953 (WIPO Sept. 6, 2001) (held respondent was “in bad faith for registering a well-known service mark and holding it with no demonstrable plans to use it, i.e., ‘warehousing’ the domain name”); Kevin Garnett v. Trap Block Technologies, FA0210000128073 (Forum November 21, 2002) (“Respondent has never associated the [] domain name with a website of any kind, including a fan site, and is not otherwise using the name in connection with any product or service. Because Respondent has never used the domain name, it cannot claim that it is using it in a noncommercial or fair manner.”)
As noted above, Complainant has submitted screenshots of the Domain Names resolving to pages displaying third party links instead of using the Domain Names for free speech political forums regarding politics and the presidential legacy. Therefore, the Panel finds that Respondent fails to use the Domain Names for legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the Domain Names.
Registration and Use in Bad Faith
Complainant contends Respondent registered and uses the <obamapresidentialcenter.com> and <thebarackhobamapresidentiallibrary.com> domain names in bad faith because Respondent offered them generally for sale. The Panel finds evidence of an offer to sell as an indication of bad faith registration and use per Policy. In addition, the Panel infers that Respondent primarily intended for such an offer when registering the above two domain names. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum January 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”)
In the present case, the above conduct leads the Panel to conclude that Respondent registered and uses the Domain Names in bad faith per Policy ¶ 4(b)(i).
In addition, Complainant contends Respondent registered and uses the Domain Names in bad faith because Respondent registered multiple domain names in this instant case. Here, there are no less than seven domain names incorporating the BARACK OBAMA or OBAMA marks. This leads to the inference that Respondent registered and uses the Domain Names in bad faith per Policy ¶ 4(b)(ii).
Finally, and importantly, Complainant submits that Respondent registered the Domain Names in bad faith because their registration was opportunistic, since the Domain Names were registered in anticipation of former President Barack Obama’s political career. Registration of a disputed domain name in anticipation of the disputed domain name having value can be evidence of opportunistic bad faith per Policy ¶ 4(a)(iii). See 3M Co. v. Jeong, FA 505494 (Forum August 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”). Complainant argues that Respondent deliberately registered the Domain Names to capitalize off the value related to the eventual Obama Presidential Center. The Panel sees merit in this argument and concludes the Domain Names were registered with opportunistic bad faith.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. He argues that the Barack Obama Foundation knew that it had neither existed nor possessed any rights at the time he purchased the Domain Names. The Foundation did not exist until July 2014, and further was and is in “not good standing” in the State of Illinois when it filed this complaint.
Under Paragraph 1 of the Rules, “Reverse Domain Name Hijacking” (RDNH) is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides that if “the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Since the Panel found that Complainant has satisfied all of the elements of Policy ¶ 4(a), it finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum December 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Securian Financial Group, Inc. v. me s / enom, FA1595614 (Forum January 16, 2015) (denying request for reverse domain name hijacking where Complainant satisfied all elements of Policy ¶ 4(a)).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <obamapresidentialcenter.com>, <thebarackobamapresidentiallibrary.com>, <thebarackhobamapresidentialcenter.com>, <barackhobamapresidentialcenter.com>, ,<barackhobamapresidentialcenter.org>, <thebarackhobamapresidentialcenter.org>, and <thebarackhobamapresidentiallibrary.com> domain names be TRANSFERRED from Respondent to Complainant.
Complainant has not engaged in Reverse Domain Name Hijacking.
Clive L Elliott Q.C. Chair of the Panel, and
Ho-Hyun Nahm, Esq., and Professor David Sorkin as Panelists
Dated: September 7, 2021
