As someone who is steeped in domain names every day I’ve undoubtedly developed a skewed view of the world in which knowledge of cybersquatting has reached even the most remote corners of the globe and everyone and their cousins are at least aware that this sort of thing exists. As a result, I’m often surprised when I hear of a public figure who doesn’t own a domain which consists of their own personal name – at least in the .COM space.
And so it was this week when I read about a musician and businessman named Loney Hutchins who plays a lesser-known role in the mega-famous enterprise that is Johnny Cash. After growing up in poverty in the Appalachia hills of Tennessee during the 1940’s, Mr. Hutchins had a chance encounter with June Carter Cash, the famous wife of the famous “Man In Black”, which eventually lead to his managing publishing operations for the House of Cash. He also had some of his own songs cut by Johnny during this time and has since released at least one album of his own.
For a man who had come so far and gained so much since his childhood, two of the only things he didn’t have were a trademark registration and the domain LoneyHutchins.com. He filled the trademark gap and obtained a US registration for the LONEY HUTCHINS mark in January of this year covering audio recordings featuring a variety of music styles. The registration claims that the mark has been used since at least 1974. As for the domain name, it was registered in late 2012 by an individual in Seattle, Washington. The odd part about this is that the domain owner may never have heard of Mr. Hutchins or his music.
The website at LoneyHutchins.com consists of a series of rambling and sometimes disjointed stories, pleas, and mostly claims that the author was abused for a number of months while a patient at a rehab center for traumatic brain injuries. And the owner of that rehab center? A man named Loney Fred Hutchins.
Considering the Three Elements of the UDRP
In considering the three elements of the UDRP, the Panel in this dispute first looked at the disputed domain name in relation to the Complainant’s trademark and found that there is confusing similarity. However, this is merely a threshold matter in domain disputes and the tougher issues are usually found in the second and third elements:
- whether the domain owner has any rights or legitimate interest in the domain, and
- whether it acted in bad faith when registering and using the domain.
As to the second element, the Panel found that the Respondent had made a “legitimate non-commercial or fair use of the domain name, without intent for commercial gain” by exercising his freedom of speech under the First Amendment to the United States Constitution. The assertion of trademark rights typically cannot prevent someone from freely expressing their opinions. The case here is made even more defensible by the fact that the “Respondent’s criticisms through the website to which the disputed domain name resolves to, are not even related with Complainant’s trademark LONEY HUTCHINS, which is registered under goods related to audio music recordings.”
In the end, the Panel held that the Respondent is making a fair use of the domain by posting only his complaints against a rehab center unrelated to the Complainant musician.
Then, on the element of bad faith, the Complainant asserted that the LoneyHutchins.com website is “selling illegal advertisements” and “portraying pornography” such that the Respondent is seeking to profit from Complainant’s trademark. Unfortunately, it seems there were some shortcomings in Complainant’s evidence submitted in the case, since the Panel found that Complainant was not able to prove his alleged common law rights prior to his trademark registration. And, regarding the the commercial or pornographic website content “none of those claims were supported by evidence of any kind either in the Complaint or the Additional Submission.” For these reasons and those mentioned above under the second UDRP element, the Panel denied the claim.
A Case of Reverse Domain Name Hijacking
Finally, the Panel found that the Complainant had engaged in an attempt at reverse domain hijacking because its pleadings tried to confuse the Panel: the Complainant knew that it lacked prior trademark rights and that the accused website was aimed at another person by the same name.
All of the poor conduct and misuse of the UDRP aside, this whole mess could have been avoided had the Complainant simply registered the domain himself, to promote his career, to memorialize his close relationship to the Johnny Cash dynasty, or at least to prevent cybersquatting. So my advice to all those reading this post, whether you’re truly world-famous or even just locally famous amongst your family, friends, and colleagues, is to grab that one domain you wouldn’t want anyone else to use. It’ll cost a lot less than having to try and win it back later!
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