The Complaint for the domain name FredElsberry.com was filed by Fred Elsberry with the WIPO Arbitration and Mediation Center on June 25, 2012. Respondent was Mechanic’s Responds News Publication of Marietta, Georgia, United States.
Fred Elsberry is the President and CEO of the Better Business Bureau (BBB) Serving Metro Atlanta, Athens & Northeast Georgia. Fred Elsberry operates 2 websites at fredelsberry.org and fredelsberry.net with sligly different content, which includes information about himself and links to various Better Business Bureau websites. He registered these 2 domain names on February 2012. Fred Elsberry registered “FRED ELSBERRY” as a service mark with the Georgia Secretary of State on May 21, 2012.
Mechanic’s Responds News Publication is a limited liability company which appears to have been founded for the purpose of criticizing Complainant, the Atlanta BBB, and the BBB. Respondent operates its primary website at mechanicsresponds.com, which provides links to web pages containing commentary and news-related information alleging misconduct by the website’s targets. Respondent also operates a blog with similar content at blog-bbb.com. Mechanic’s Responds is affiliated with Mechanic’s Heating & Air Conditioning, an Atlanta-area company that appears to have an ongoing dispute with Complainant over the grading policies of the Atlanta BBB and the BBB.
The domain name FredElsberry.com was registered on March 12, 2009. At some point after that date, Respondent started using the Domain Name to resolve to a website highly critical of Complainant. The purpose of the website is to publicize allegations that Complainant discriminates between BBB-members and non-members when assigning letter grades. The website at the domain name FredElsberry.com contains the following content:
– Two “Mechanic’s Responds” logos identical to those used on Respondent’s primary website.
– An urgent call for Fred Elsberry to take action to protect the public from sexual offenders, suggesting that his is not taking such action.
– Accusations that Complainant discriminates against non-members, and that good grades can be purchased.
– A statement that Respondent is willing to assist others in dealing with the BBB.
– Several photographs purporting to be of Complainant.
– Links to Complainant’s public divorce records.
– Complainant’s home address and the names of his family members.
– A parody photograph depicting Complainant as a tortoise mating with another tortoise representing non-members.
– Links to MHAC’s website with testimonials of satisfied customers. At the linked MHAC website, customers can find MHAC’s business telephone number.
– A bold disclaimer stating that “THE INFORMATION CONTAINED IN THIS WEBSITE INVOLVES ISSUES OF PUBLIC INTEREST AND / OR CONCERN. WE UNDERSTAND THAT MEDIA OUTLETS AND PUBLIC OFFICIALS MAY EXPLORE THIS WEBSITE AND REQUEST ALL ADMINISTRATIVE, LOCAL, STATE, AND FEDERAL GOVERNMENT BODIES TO INVESTIGATE THE MATTERS CONTAINED HEREIN. The information contained herein is for informational purposes only, and expresses the opinions of the authors. We encourage all interested parties to verify the information contained herein on their own. The information contained herein was derived from public information sources, private sources, from our records, or from Reports or Complaints filed with us.”
The Complaint failed at the first element of the UDRP: Identical or Confusingly Similar.
The Panel said that under the first element of the UDRP, Complainant must prove that the Domain Name is identical or confusingly similar to a mark in which Complainant has rights. The Domain Name contains two elements: Complainant’s name “Fred Elsberry,” and the suffix “.com.” Since the suffix and the space between the words were not relevant, the Domain Name was identical to the FRED ELSBERRY mark. Therefore, the only issue was whether Complainant had service mark rights in his own name. Registration of a mark by a complainant is typically presumptive evidence that the complainant has trademark or service mark rights in the mark. Complainant failed to prove secondary meaning with the evidence offered in the Complaint. Notably, Complainant did not include any typical evidence of secondary meaning, such as consumer surveys on association, market data on sales, evidence of advertising, or media recognition of the mark.
Panelist explained that publicity and name recognition are not the same as secondary meaning. Therefore, Complainant does not prove secondary meaning. The Policy applies only in cases of cyber squatting, where the typical complainant’s trademark or service mark rights are well-established. To that end, the first element of the UDRP requires that Complainant prove trademark or service mark rights in a mark identical or confusingly similar to the Domain Name. Failing to satisfy the requirements of the Policy and the Rules does not preclude success in a court of competent jurisdiction, but did prevent redress by this Panel.
For all the foregoing reasons, the Panel denied Complainant’s request to transfer the Domain Name. The Panel declined Respondent’s request to declare that Complainant filed the Complaint in bad faith in an attempt at Reverse Domain Name Hijacking.
Mechanic’s Responds state on their website that they “will now file a warrant for the arrest of BBB President Fred Elsberry and have it set for a “show cause” hearing”. They will also “file a grievance against Attorney F. Richard Rimer of the law firm Troutman Sanders, LLP.”, the law firm that filed the Complaint on behalf of Fred Elsberry.