Clinton Decision (L0348567.

DOC;1) 6/5/09 11:35 AM

NATIONAL ARBITRATION FORUM

DECISION

William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception
Claim Number: FA0904001256123

PARTIES
Complainant is William J. Clinton and The William J. Clinton Presidential Foundation
(“Complainant”), represented by Michael Maoz, of Kramer Levin Naftalis & Frankel LLP, New
York, USA. Respondent is Web of Deception (“Respondent”), represented by Joseph Culligan, of
Post Office Box 52-1636, Florida, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <williamclinton.com>, <williamjclinton.com> and
<presidentbillclinton.com>, registered with The Name It Corporation d/b/a Nameservices.net.

PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of
his or her knowledge has no known conflict in serving as Panelist in this proceeding.

R. Glen Ayers served as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6,
2009; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2009.

On April 13, 2009, Tthe Name It Corporation d/b/a Nameservices.net confirmed by e-mail to the
National Arbitration Forum that the <williamclinton.com>, <williamjclinton.com> and
<presidentbillclinton.com> domain names are registered with the Name It Corporation d/b/a
Nameservices.net and that the Respondent is the current registrant of the names. The Name It
Corporation d/b/a Nameservices.net has verified that Respondent is bound by the The Name It
Corporation d/b/a Nameservices.net registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name
Dispute Resolution Policy (the “Policy”).

On April 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding

(the “Commencement Notification”), setting a deadline of May 12, 2009 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical, administrative and billing
contacts, and to

postmaster@williamclinton.com, postmaster@williamjclinton.com and

postmaster@presidentbillclinton.com by e-mail.

A timely Response was received and determined to be complete on May 11, 2009.

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An Additional Submission for Complainant was timely received on May 18, 2009.

Respondent timely files its Additional Submission in Response on May 22, 2009.

On May 18, 2009, pursuant to Complainant’s request to have the dispute decided by a single-
member Panel, the National Arbitration Forum appointed R. Glen Ayers served as Panelist.

RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS
A. Complainant
Complainant, the former President of the United States, William J. Clinton, through counsel, asserts
that the three referenced domain names, <williamclinton.com>, <williamjclinton.com>, and
<presidentbillclinton.com> are identical to or confusingly similar to the Complainant’s name. The
Complainant asserts that he has established a common law trademark in his name, William Clinton
and its variations. The Complainant offers the following facts to establish the existence of a
common law trademark.

 His election and service as the 42nd President of the United States

 His election and service as the Governor of the State of Arkansas for two separate terms

 His authorship of a series of best-selling books, including Putting People First (1992);
Between Hope and History (1996); and My Life (2004)

 His recognitions of Time’s Magazine’s Man of the Year in 1992

 His selection as the 17th Most Admired Person of the 20th Century according to a Gallop poll

 The philanthropic foundations founded by him which bear his name (several of these entities
hold registered as federal trademarks)

Complainant asserts that this common law trademark was well-established at least by 1992 and in
use since that period.

As Complainant points out, the Respondent has registered three domain names which are identical to
the alleged common law trademark. Complainant, in its introductory materials, goes on to assert that
Respondent is known to deliberately register domain names of politicians for various nefarious
reasons.

Complainant also argues that the Respondent has no rights or legitimate interest in the domain names
and has not made any demonstrable preparation to use the domain names in the context of any
“bona fide offering of goods or services.”

Respondent asserts that Complainant does not own any trademark registrations reflecting the names
and Respondent is not commonly known by the names. Respondent is also, Complainant asserts, not
commonly known by the names. Complainant also takes the opportunity to rebut any alleged use by
Respondent which is non-commercial or fair use.

Complainant follows by alleging a number of factors which could show bad faith. The first evidence
is the identity of the domain name to the alleged common law mark. Complainant also argues that

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is the identity of the domain name to the alleged common law mark. Complainant also argues that
bad faith is shown because the domains provide direct links to a website for the Republican National
Committee.

Finally, Complainant asserts that Respondent’s conduct in registering famous names, particularly the
names of politicians such as President Obama and Senator John McCain shows “a pattern of
registering famous names to prevent the rightful owners the ability to register their names as domain
names.”

B. Respondent
In Response, Respondent goes to the trouble of admitting and denying each and every allegation
contained in the Complaint. Respondent first asserts that there is no evidence that there is a common
law mark. While Respondent is willing to admit that the Complainant is famous, Respondent denies
the facts alleged to support the existence of a common law mark.

As to rights in the name, Respondent makes little attempt to assert rights in the name and goes
almost directly to the issues of bad faith. However, Respondent does assert that he has used “the site
in connection with a bona fide offering of goods or services.” Respondent asserts that the link to the
Republican National Committee website constitutes such an offering.

In denying bad faith, Respondent sets forth at length his activities in registering the names of
politicians and his use of the registration process in this arena. He specifically denies that any of the
elements of bad faith set forth at UDRP 4(b) exist, for he has not registered the domain name for the
purpose of selling it, or to prevent the owner of the mark from using the name in a corresponding
domain name or in order to disrupt business, or in order to attract Internet users for commercial
gain. Certainly, he says, there is no such evidence presented.

Respondent throughout asserts that his registration and use of the domain names constitutes fair use
and should be considered constitutionally protected speech under the First Amendment the United
States Constitution.

C. Additional Submissions

Complainant’s Additional Submission

The Complainant filed a timely Additional Submission. In its Additional Submission, Complainant
focuses upon its argument that there is a common law mark citing a number of cases, but not adding
any particular facts.

As to rights in the name, Complainant focuses in its Response on the issue of fair use of the domain
name in an attempt to show that, irrespective of the political context of this dispute, that Respondent
still has shown no rights in the name.

Finally, there is a long discussion of events that allegedly show Respondent’s bad faith. Those
include articles about Respondent reprinted from newspapers. Finally, the Additional Submission
concludes by arguing that when a web user attempting to reach a website related to the Complainant
winds up on a website sponsored by the Republican National Committee, such a result is evidence of
bad faith. In fact, Complainant suggests in its Additional Submission that an Internet user might be
confused and think that former President Clinton had become a Republican. After all, says
Complainant, Senator Arlen Spector recently left the Republican Party and became a Democrat.

Respondent’s Additional Submission

Respondents timely Additional Submission first focuses on the issue of common law marks, arguing
that most of the famous person common law mark opinions are defaults. As to bad faith,
Respondent notes that he has never acted in bad faith. When requested, for example, he surrendered
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Respondent notes that he has never acted in bad faith. When requested, for example, he surrendered
domain names to the United States Government. Respondent also states that he registered domain
names of famous persons in part to make a point concerning the ease of registration of such domain
names. He further notes that he has never sold a politician’s domain name. He also states that he
has worked with Senator Hatch and others to promote the idea that some domain names deserve
protection under the federal statutes, including the names of famous places and politicians.

FINDINGS
Reluctantly, the Panelist concludes that President Clinton has established a common law mark in his
name. A mark is a secondary identifier of the source of goods and services. President Clinton’s
best-selling books are probably enough to qualify his personal name as a common law mark. [This
Panelist is partially responsible for the problems created by allowing common law marks in personal
names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat.
Arb. Forum Sept. 11, 2000).]

A finding that a common law mark exist means, because of the near identity of domain names and
mark, that the marks are identical to or confusingly similar to the domain names. Therefore, the
Panelist finds that this personal name is a common law mark and that the first element of the UDRP
has been established.

As to rights in the name, the Panelist finds that the facts are persuasive. Respondent has no rights in
the name. The non-commercial preparation for use of redirecting traffic addressed to these domain
names to the Republic National Committee site just is not enough. Respondent meets none of the
other elements of rights in the name. In fact, Respondent is not even making fair use of the name by
establishing an anti-President Clinton or parody or other use.

This leaves bad faith. The Panelist simply cannot find bad faith in this case. None of the elements
of bad faith are met. The Respondent’s conduct in registering, acquiring and utilizing these domain
names is simply not within the UDRP definition of bad faith. The facts alleged by Complainant are
simply unpersuasive. Evidence of bad faith (i) requires a showing that the names were registered or
acquired for the purpose of selling or transferring the name to the mark holder; (ii) in order to
prevent the mark holder from registering the domain; (iii) to disrupt a competitor’s business; or (iv)
to attract Internet users by confusing them. The only one of these that could possibly apply is (ii),
which requires a showing of a pattern of conduct. While Respondent’s conduct in registering the
names of politicians does reflect a pattern, Respondent has adequately rebutted any inference of bad
faith.

DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
instructs this Panel 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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2) the 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

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A trademark registration is uneccessary where Complainant can prove common law rights by
establishing that its mark has acquired secondary meaning. See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority or agency for such
rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb.
Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a
complainant can establish common law rights in its mark).

Additionally, Complainant asserts common law rights in the WILLIAM CLINTON mark pursuant to
Policy ¶ 4(a)(i) through its history of use. Complainant provides evidence that it has used the
WILLIAM CLINTON mark in connection with service as the 42nd President of the United States
from 1993 to 2001, the Governor of Arkansas from 1979 to 1981 and 1983 to 1992, a longstanding
career in public service, and various philanthropic devotions. In addition, Complainant is one of the
most famous and recognized people in the world evidenced by Time Magazine’s selection of Man of
the Year in 1992 and various books written in his honor. Complainant has established common law
rights that predate Respondent’s registration date of the disputed domain names by acquiring
sufficient secondary meaning in the WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). See
James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark
has become distinct through Complainant’s use and exposure of the mark in the marketplace and
through use of the mark in connection with Complainant’s television show, clothing line, and tattoo
shop for over seventeen years.”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000)
(finding that ICANN Policy does not require that the complainant have rights in a registered
trademark and that it is sufficient to show common law rights in holding that the complainant has
common law rights to her name).

Respondent’s <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com> domain

names are identical or confusingly similar to Complainant’s WILLIAM CLINTON mark pursuant to
Policy ¶ 4(a)(i). Respondent’s <williamclinton.com> domain name contains Complainant’s mark in
its entirety, omits a space, and adds the generic top-level domain (“gTLD”) “.com.” The omission
of a space and the addition of a gTLD fail to distinguish the <williamclinton.com> domain name
from the WILLIAM CLINTON mark, and are therefore identical pursuant to Policy ¶ 4(a)(i). See
Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the
<redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere
addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see
also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not
establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).

Respondent’s <williamjclinton.com> domain name contains Complainant’s mark, adds a “j,” and
adds the gTLD “.com.” Lastly, Respondent’s <presidentbillclinton.com> domain name contains an
abbreviated form of Complainant’s WILLIAM CLINTON mark, adds the term “president,” and adds
the gTLD “.com.” The addition of the term “president,” or the use of an abbreviated version of
Complainant’s mark in a disputed domain name creates a confusing similarity between the disputed
domain name and Complainant’s mark. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa.
1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating
the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”);
see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition
of a single letter to the complainant’s mark does not remove the respondent’s domain names from
the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”);
see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18,
2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not
sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶
4(a)(i)). The addition of a gTLD is irrelevant in distinguishing a disputed domain name from a
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4(a)(i)). The addition of a gTLD is irrelevant in distinguishing a disputed domain name from a
mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere
addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain
name from a mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat.
Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly similar under the
Policy.”). Respondent’s disputed domain names are confusingly similar to Complainant’s
WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii). The burden shifted to Respondent to show he does
have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA
741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the disputed domain name under
UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum
Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have
rights or legitimate interest in the subject domain names, which burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does have rights or
legitimate interests in the subject domain names.”).

Complainant has shown that Respondent is not commonly known by the disputed domain names.
Complainant states that Respondent is known as “web of deception,” which is also how Respondent
is identified in the WHOIS information. Complainant also claims that Respondent is not affiliated in
any way with Complainant. Respondent is not commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the
<coppertown.com> domain name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed domain name);
see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007)
(concluding a respondent has no rights or legitimate interests in a disputed domain name where there
is no evidence in the record indicating that the respondent is commonly known by the disputed
domain name).

Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy
¶ 4(a)(ii). Respondent’s rebuttal fails. Respondent’s disputed domain names resolve to an official
website related to the Republican Party, which is the party in direct opposition to the political party
Complainant endorses. Such use of the disputed domain names does not equate to a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide offering of goods
and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a
bona fide offering of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with Complainant are advertised.”).

Registration and Use in Bad Faith

However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed
domain names to resolve to a website in direct competition with Complainant constitutes a disruption
of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶
4(b)(iii). Compare S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
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4(b)(iii). Compare S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a website that competes with
the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12,
2000) (finding that the respondent has diverted business from the complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii)); and EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec.
15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad
faith where the respondent has used the domain name to promote competing auction sites).

Respondent is allegedly using the disputed domain names in order to intentionally attract Internet
users to an opposing website by creating confusion among Internet users who are seeking
Complainant’s WILLIAM CLINTON mark. Allegedly, the disputed domain names resolve to the
official Republican party website in direct competition with Complainant, giving the impression
Complainant is affiliated with its political competitor. The Panelist declines to find that this is a
violation of Policy ¶ 4(b)(iv) and is not bad faith registration and use. Compare Luck's Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant); and State Fair of Tex. v. Granbury.com, FA 95288
(Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain
name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website). Links to the Republican National Committee website are simply not within
the scope of this Policy.

Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶
4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat.
Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent
registered and used the disputed domain name in bad faith because mere assertions of bad faith are
insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen
Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of
bad faith without supporting facts or specific examples do not supply a sufficient basis upon which
the panel may conclude that the respondent acted in bad faith).

Respondent has not registered or used the disputed domain names in bad faith; Respondent has not
violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would
constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits
Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the
respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of
conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is
not a competitor of the complainant seeking to disrupt the complainant's business, and is not using
the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is
insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo
CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to
establish that respondent registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

DECISION
Having established all three elements required under the ICANN Policy, the Panelist concludes that
relief shall be DENIED.

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R. Glen Ayers, Panelist

Dated: June 1, 2009

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