Former U.S. Congressman and presidential candidate Ron Paul, polarizing political figure and active member of the Libertarian Party, is no stranger to conflict, or taking full advantage of intellectual property rights to solve his problems. So it comes as no surprise that he has turned to the Uniform Domain Name Dispute Resolution Policy (UDRP) to wrest the domain names ronpaul.com and ronpaul.org from those who, he alleges, are using the domain names in bad faith, for commercial gain, by trading on the value of his famous RON PAUL trademark. What is somewhat surprising is that these bad-faith users purport to be independent grassroots supporters of Ron Paul, his politics, and his vision for America.
In a complaint widely misreported by the media to be initiating a copyright dispute, an international trademark dispute, and other colorful and incorrect labels for the popular ICANN-mandated domain name dispute process, Ron Paul argues to WIPO’s Arbitration and Media Center that ronpaul.com and ronpaul.org have satisfied the UDRP requirements for domain name transfer (it has not been lost on commentators that Ron Paul is perhaps unaware that WIPO is an agency of the United Nations, an entity he has publicly decried on numerous occasions).
The complaint addresses the three “prongs” of the UDRP in turn, arguing that:
- The domain names are identical or confusingly similar to Ron Paul’s RON PAUL trademark;
- The registrant does not have any rights or legitimate interests in the ronpaul.com or ronpaul.org domain names; and
- The registrant has registered and used the domain names in bad faith.
In support of the first UDRP prong, Ron Paul alleges trademark rights in the mark RON PAUL in connection with books and other writings, public speaking, counseling, and political commentary. While he may indeed have trademark rights in his name, he does not point to any federal registrations to support his claim. While federal registrations are not necessary to establish trademark rights and prevail in a UDRP proceeding, they can help considerably, quickly establishing the first prong and often helping to establish bad faith domain name registration. Trademark registrations are particularly helpful when filing UDRP complaints involving personal names, as even the names of famous people might not necessarily be considered to be trademarks without ample evidence of actual trademark use. Although the evidence submitted in support of Ron Paul’s claim to trademark rights has not been made public, he may well satisfy this prong. Other sections of the complaint refer to the RON PAUL mark itself as “famous,” which is a considerably steeper hurdle (a “famous” person does not necessarily equal a trademark, let alone a “famous” trademark).
The second and third prongs of the UDRP are where things get a bit tricky. In his arguments for the second prong, Ron Paul claims that the registrant (who is probably the same for both domains) has not used the domain names in connection with a bona fide offering of goods or services, is not commonly known by the names “RonPaul.com” or “RonPaul.org,” and has not used the domains in connection with legitimate, noncommercial or fair use. As for the third prong, Ron Paul argues that the websites corresponding to the domains are primarily commercial endeavors, used to sell RON PAUL-branded merchandise that competes Ron Paul’s own sale of RON PAUL goods, and that the domain names were registered and used for the express purpose of commercial gain. Also relevant to the second and third prongs, argues Ron Paul, is the fact that the registrant has offered to sell ronpaul.com to Ron Paul for an exorbitant amount of money — $848,000, later reduced to $250,000 with ronpaul.org thrown in as a “free gift.”
A closer look suggest that the facts may be somewhat less clear. It appears that, since 2008, www.ronpaul.com has indeed been holding itself out as “RonPaul.com.” Further, it may well have been used, in significant part, as an independent “fan” site providing news, information, and a rallying point for supporters of Ron Paul, his ideals, and his message (in addition, www.ronpaul.org appears to have forwarded users to www.ronpaul.com for some time). On the other hand, the website does indeed contain many links to products bearing the RON PAUL name, the sale of which likely directly or indirectly (via referral revenue) benefits the registrant. Further complicating the issue is that the actual registrant appears to be a Panamanian company which is either operating the www.ronpaul.com website or leasing it to the website operators (the latter scenario is alleged in the complaint). As for the offer to sell, the timing is somewhat unclear, but it appears that the registrant actually offered to transfer ronpaul.org domain to Ron Paul free of charge, and in the alternative “relocate” its website and sell ronpaul.com for $250,000, which price would also include access to a 170,000-supporter strong mailing list. This offer letter adopts, disingenuously or not, the tone of Ron Paul supporters simply seeking a way to work together toward a common goal.
It will be interesting to see whether the registrant responds to the complaint to provide its version of the facts. Unless the parties decide to suspend the UDRP process and settle the matter (perhaps along the lines of the registrant’s $250,000 offer), it seems likely that the registrant will indeed respond and attempt to prevent its valuable rallying point — and asset — from falling into the hands of the very man it purports to admire and support.
Photo courtesy of Gage Skidmore.