Barack Obama’s Organizing For Action fails to win complaint for OrganizingForAction.com and .org at NAF

Barack Obama’s “Organizing For Action” failed to win a UDRP complaint for the domain name OrganizingForAction.com and OrganizingForAction.org at the National Arbitration Forum (NAF) after failing last week to get OrganizingForAction.net at NAF again.

Pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Terry F. Peppard, G Gervaise Davis III and Debrett G. Lyons (chair) as panelists.

The Panel denied the complaint because the Complainant didn’t have any common law rights. The inherently non-distinctive nature of the expression, the very short period since adoption of the trademark, and the unsurprisingly limited evidence of use prevented the Panel from making a meaningful assessment of common law trademark entitlement at this time and so Panel cannot credit Complainant with trademark rights.

Complainant asserted trademark rights in the expression, ORGANIZING FOR ACTION, and alleged that the disputed domain names are identical or confusingly similar to its trademark. Of course all these claims were not accepted by the Panel. Respondent denied those allegations and, in particular, alleged that Complainant has no trademark rights and that, based on Respondent’s earlier conduct and within the “fair use” principle, it has a legitimate interest in the domain names and did not register them in bad faith.

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. Barack Obama’s “Organizing For Action” also 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 complaint was denied 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). 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.

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 both complaints. 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.

This is what the 3 member Panel said in its decision:

“proof of rights in the alleged trademark is a threshold requirement. In this case Panel observes that so little time has passed since adoption of the trademark by Complainant that it is not possible at this point to draw meaningful findings about whether or not Complainant can be said to have trademark rights.  It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of that right.”

“Complainant has no such registration.  Through its own enquiries Panel notes that an application for registration was filed with the United States Patent and Trademark Office (“USPTO”) soon after filing of the Complaint.  That application is pending and, it is generally agreed, cannot form the basis of trademark rights. “

“Complainant asserts that it has used the expression ORGANIZING FOR ACTION as a common law trademark since either January 17 or January 18, 2013.  The Complaint is not clear on that matter but nothing turns on the actual date for the purposes of this aspect of the Policy.  As noted above, the Complaint was filed with the Forum on February 1, 2013 and so the claim to reputation is premised on use for little more than a fortnight.

It would require extraordinary evidence in order to prove common law trademark rights in such a very short time and in this case the evidence consists of a copy of a broadcast email announcing the launch of the initiative under the ORGANIZING FOR ACTION name (said to have been sent to over one million recipients), together with some limited newspaper space given to the program on the launch day.  Otherwise, the use has been on YouTube.

The inherently non-distinctive nature of the expression, the very short period since adoption of the trademark, and the unsurprisingly limited evidence of use prevent Panel from making a meaningful assessment of common law trademark entitlement at this time and so Panel cannot credit Complainant with trademark rights.

Without prejudice to Complainant’s ability to lay claim to trademark rights at a future time, Panel finds that for the purposes of these administrative proceedings, Complainant has failed to fully satisfy the requirements of paragraph 4(a)(i) of the Policy. ”

“Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.

Accordingly, it is Ordered that the <organizingforaction.com> and <organizingforaction.org> domain names REMAIN WITH Respondent.”