Barack Obama’s “Organizing For Action” fails to win complaint for OrganizingForAction.net at NAF

Barack Obama’s “Organizing For Action” failed to win a UDRP complaint for the domain name OrganizingForAction.net at the National Arbitration Forum.

Panelist Hon. Karl V. Fink (Ret.) denied the complaint because the Complainant didn’t have any common law rights. Complainant did not present any evidence that it owns trademark registrations with any national trademark agency for the ORGANIZE FOR ACTION mark. Complainant did claim it has established common law rights in the ORGANIZE FOR ACTION mark pursuant to Policy ¶ 4(a)(i).

Respondent argued that Complainant was not in legal existence prior to Respondent registering the <organizingforaction.net> domain name. Respondent claimed that it registered the domain name on January 18^th at 5:46am and Complainant’s organization did not legally become a group until 2:25pm that same day. Respondent also claimed that it checked the trademark electronic Search System to see if there were existing trademarks by that name, and found none.

Complainant claimed it  showed that the ORGANIZE FOR ACTION mark is a distinctive identifier associated with the Complainant and its goods and services. Complainant argued that the publicity it received from its January 18, 2013 business launch established common law trademark rights that were effective immediately. In Complainant’s Additional Submission, Complainant contended that its principals were taking action on behalf of the business on January 17, 2013, which is before the date in which Respondent registered the disputed domain name. But the Consensus view from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition says that: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.

The Panel found that Complainant did not provided such relevant evidence to meet the standard and therefore has not established rights in the ORGANIZING FOR ACTION mark under Policy ¶ 4(a)(i). Complainant did not prove the first element of the UDRP: Identical and/or Confusingly Similar. Complainant having not established all three elements required under the ICANN Policy, the Panel concluded that relief shall be DENIED and ORDERED that the <organizingforaction.net> domain name REMAIN WITH Respondent.

Barack Obama’s “Organizing For Action” filed the UDRP complaint at the National Arbitration Forum against the domain name OrganizingForAction.net that is owned by Derek Bovard and was redirecting to the National Rifle Association (NRA). The domain now redirects to a youtube.com video.

The domain name was registered on the 18th of January 2013 by Derek Bovard, a 40-year-old computer technician in Castle Rock, Colorado. It should be noted the owners of the domain have filed for a trademark at the U.S. Patent and Trademark Office. Then Barack Obama’s “Organizing For Action” also filed for a trademark at USPTO.

The owners of the domain name OrganizingForAction.net made the following statement after they won the UDRP complaint at NAF:

“The President of the United States and his self proclaimed “tech savvy” group who uses the domain and website BarackObama.com has lost a decision to take our domain OrganizingForAction.net. This is a victory for the U.S. Constitution and free market capitalism. It is also an example of how political opposition should not be forced to be silenced on the internet by any person or group.“

I also wrote about how Barack Obama’s “Organizing for Action” failed to secure any of the corresponding domain names. The non profit organization failed to purchase any of it’s domain names before the news about the group were announced on January 18th. The result is that most of the domains were registered by other individuals and companies on the same date. On the 6th of February 2013 Barack Obama’s “Organizing For Action” also filed a cybersquatting complaint at the National Arbitration Forum for the domain names OrganizingForAction.com and OrganizingForAction.org.

I was wondering how the “Organizing For Action” organization would prove the first element of the UDRP in both these complaints and indeed it failed on the first complaint. The first element requires the complainant to have a registered trademark or a common law trademark. The organization hasn’t even applied for a trademark yet and most importantly it didn’t exist prior to the 18th of January.