Tea Party Patriots, Inc. v. Hoyt Enterprises, LLC c/o Jason Hoyt
Claim Number: FA1005001326333
Complainant is Tea Party Patriots, Inc, represented by Kevin
W. Grierson, of FSB Legal Counsel, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <teapartypatriots.com> and <teapartypatriotslive.com>, registered with 1&1 Internet AG.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2010.
On May 27, 2010, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <teapartypatriots.com> and <teapartypatriotslive.com> domain names are registered with 1&1 Internet AG and that the Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 June 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2010 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 firstname.lastname@example.org and email@example.com by e-mail. Also on June 1, 2010, 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.
A timely Response was received and deemed to be deficient on June 21, 2010 because it was received in a file type not accepted by the Forum and with a file size over the 10mb limit.
On June 28, 2010, an Additional Submission was received from Complainant. The Submission complies with Supplemental Rule 7. On July 5, 2010, an Additional Submission was received from Respondent. This Submission also complies with Supplemental Rule 7.
On June 25, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends it owns the mark TEA PARTY PATRIOTS which it first used in commerce in March 2009. Complainant asserts that Respondent’s <teapartypatriots.com> and <teapartypatriotslive.com> domain names are confusingly similar to Complainant’s mark. Complainant contends that Respondent has no rights in the domain names and that Respondent did not make its websites operational until several months after Complainant began using its mark in commerce and had established its rights in the mark. Complainant accuses Respondent of using the domain names to divert Internet users to Respondent’s website and alleges that Respondent registered and is using the domain names in bad faith.
Respondent contends that Jason Hoyt of Respondent owned the <teapartypatriots.com> domain name first, began using the TEA PARTY PATRIOTS mark first and established a radio show using the “Tea Party Patriots” and “Tea Party Patriots Live” names. Respondent contends that both parties promoted Respondent’s radio show. Respondent contends that it has rights and legitimate interests in the domain names and that it did not register or use the disputed domain names in bad faith.
C. Additional Submissions
In its Additional Submission, Complainant acknowledges that it did not initially complain about Respondent’s use of the <teapartypatriots.com> and <teapartypatriotslive.com> domain names because Complainant was claiming Respondent’s radio show as its own. Complainant acknowledges that Respondent registered the <teapartypatriots.com> domain name before Complainant’s use of its mark but contends Respondent did not independently use the mark in commerce until well after Complainant had used it in commerce and on two websites.
In its Additional Submission, Respondent points to Complainant’s e-mail exchanges with Respondent in which Complainant recognized the radio show was Respondent’s and promoted it as such.
Jason Hoyt of Respondent purchased the <teapartypatriots.com> domain
name on March 3, 2009. He and Phil Russo
created a radio show which they called Tea Party Patriots Live. Hoyt purchased the <teapartypatriotslive.com>
domain name on April 14, 2009, and he and Phil Russo first broadcast
the program on April 18, 2009. Hoyt
organized Tea Party Patriots, LLC, which was registered in
An individual named Amy Kremer
started an online community website using the domain name <teapartypatriotsning.com>
on March 6,
2009. She purchased the domain name <teapartypatriots.org> on
March 10, 2009. She and others
subsequently worked to establish a national organization which they called Tea
Party Patriots. They created
Complainant’s present corporate structure and registered it in
The present dispute ensued.
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.”
Respondent filed its response in file type that exceeded the Forum’s 10mb limit. The Panel has determined that this technical deficiency should be overlooked in the interest of deciding the case on its merits. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007).
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.
Respondent clearly has rights and legitimate interests in the disputed domain names.
Respondent created its Tea Party Patriots Live radio show in April 2009 and has conducted radio shows and continuously used the disputed domain names since then. Respondent has become commonly known by the disputed domain names and has used them to promote its own business to the public. Complainant has failed to make a prima facie case that Respondent is not commonly known by the disputed domain names. See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003).
Moreover, Respondent has plainly used the disputed domain names to operate and promote its radio show and sell merchandise and advertising on the show. No credible evidence exists that Respondent wrongfully appropriated Complainant’s mark. The credible evidence shows that Complainant and Respondent organized and promoted their businesses concurrently. Indeed they recognized and supported each other. They worked cooperatively, each promoting the other, until Complainant established its own radio show and sought to obtain exclusive control over use of the TEA PARTY PATRIOTS mark. Because Respondent has used the disputed domain names for a bona fide offering of goods and services, Complainant has not met its burden to prove that Respondent lacks rights and legitimate interests in the disputed domain names. See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006). Complainant has failed to satisfy Policy ¶4(c)(ii).
Because Respondent has rights and legitimate interests in the <teapartypatriots.com> and <teapartypatriotslive.com> domain names, the Panel finds that Respondent did not register and use the domain names in bad faith within the meaning of Policy ¶4(a)(iii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007).
Because Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Mark McCormick, Panelist
Dated: July 9, 2010
National Arbitration Forum