Board of County Commissioners of Johnson County v William Pope, Free
WIPO Case No. D2025-1420
•03-06-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Board of County Commissioners of Johnson County v. William Pope, Free
State Kansas LLC
Case No. D2025-1420
1. The Parties
Complainant is Board of County Commissioners of Johnson County, United States of America (“United
States” and “US”), represented by Hovey Williams LLP, United States.
Respondent is William Pope, Free State Kansas LLC, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <jocokansas.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2025. On
April 8, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 9, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Unknown Respondent/Registrant, Withheld for Privacy ehf,
NameCheap, Inc.) and contact information in the Complaint. The Center sent an email communication to
Complainant on April 11, 2025, providing the registrant and contact information disclosed by the Registrar,
and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended
Complaint on April 17, 2025.
The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint,
and the proceedings commenced on April 17, 2025. In accordance with the Rules, paragraph 5, the due
date for Response was May 7, 2025. The Response was filed with the Center on May 7, 2025.
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The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 20, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a governmental body, composed of a seven-member Board, which exercises legislative powers for Johnson County, Kansas, United States, to ensure the general health, safety and welfare of the public. The board has been given exclusive powers to enact, amend and repeal local legislation, to levy taxes and to make appropriations, to adopt budgets, and to make appointments to certain offices, boards and commissions. Complainant is the primary policy-determining body of Johnson County, Kansas, United States.
Complainant maintains its principal website at domain name <jocogov.org>. The website uses the prominent meetings, with agendas. Tabs at the Johnson County Kansas website include “For Residents, For Businesses, County Services, Newsroom and Contact Us. There is a specific link to the Board of County Commissioners, at a sub-page under the main domain name, at “ Johnson County publishes a local magazine using the name “JOCO Magazine”, which includes a JOCO word and design (i.e., sunflower for the second “O”) logo. That magazine can be found on the main Johnson County website, and it has been in publication at least since March 2014. The “Johnson County, KS Government”, uses a “JOCO Kansas” word and design (with sunflower) logo on its Facebook page that has 28,000 followers. Complainant also uses the “JOCO Kansas” word and design logo in association with postings on X, and on a YouTube channel, referring to itself as “Johnson County, Kan.” and “Johnson County, KS Government”, respectively. A Google search for “JOCO Kansas” returns results primarily identifying the Johnson County principal webpage at ”jocogov.org” , as well as identifying other public resources associated with Johnson County, Kansas. The Johnson County Kansas Government has used the term “JoCo” to refer to Johnson County and activities taking place there at its main website since at least August 2003. The County’s identification usage appears to have transitioned to “JOCO” (all caps) in about 2018.
header “Johnson County Kansas”. The homepage provides connections to various county services,
including services regarding vehicle ownership, aging, health and severe weather. There are also links to
Complainant does not assert ownership of registration as a trademark for the term “JOCO” in the United it refers to using as a “distinctive, unique nickname” since at least 2003 to refer to Johnson County, Kansas. Complainant refers to having begun using the trademark JOCO KANSAS in or around 2014. Complainant refers collectively to JOCO and JOCO KANSAS as the JOCO Marks.
According to the Registrar’s verification, Respondent (an individual and a limited liability corporation) is registrant of the disputed domain name. According to the WhoIs report, the disputed domain name was registered on December 15, 2020. There is no evidence on the record of this proceeding that any party other than Respondent has owned or controlled the disputed domain name since its initial creation date.
Complainant has submitted evidence that as of March 21, 2025, the disputed domain name was directed to a standard form parking page “generated by the domain owner using ‘Sedo Domain Parking’”, including text indicating that “this domain has recently been registered with Namecheap”. The parking page identified by Complainant includes links to various public resources, such as “District Court Records” and “To Public Library.” Respondent has asserted that the Registrar included a free domain privacy service with registration of the disputed domain name, and that the Registrar automatically created a parking page.
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As of April 17, 2025, the disputed domain name was directed by Respondent to a single static webpage
displaying a stylized “K”, and stating “Welcome to JOCOKANSAS.com”, “Your source for local news!”
Respondent established a limited liability company named “Free State Kansas LLC, in the State of Kansas,
United States, on July 8, 2017.[1] The aforesaid LLC is the Respondent corporate entity in this proceeding.
The organizer of the LLC is “William Pope”, the individual named Respondent in this proceeding.
[1] The Panel notes that according to Wikipedia the unofficial nickname of the State of Kansas is “The Free State” based on the fact that it
Individual Respondent William Pope enrolled in the Master’s Degree program in the School of Journalism and Mass Communication at the University of Iowa in the Fall of 2017, and he successfully completed that program in 2019. In 2019, he began the Leadership Communication doctoral program at Kansas State
University. In the course of that program he provided written plans to his advisor concerning research on community journalism and the history of journalism in Kansas. Individual Respondent William Pope has provided evidence that the purchase of the disputed domain name took place at or about the same time he was meeting with his doctoral advisor on the subject, inter alia, of community journalism. Individual Respondent William Pope also has provided evidence that he purchased other “Kansas-formative” domain names at or about that same date. Individual Respondent William Pope has provided evidence of the purchase of various website development design tools, and evidence that he began developing a website under the header “Free State Kansas” using the domain name <topekakansas.com> as of December 2020.
In order to explain an interruption of his journalism-related business development plans, individual
Respondent William Pope has referred to his arrest in connection with the events of January 6, 2021, at the
Capitol Building in Washington, DC. This includes postings from his Free State Kansas website leading up to
the events of January 6. Such postings are incorporated in his responsive pleadings to the federal
prosecution for his activities, where he notes that he is “intending to resume normal publication after I win
this case and the chilling effect of the government’s frivolous prosecution is behind me.” In that same
pleading he stated:
“During the time I was building my website, I earned a master’s degree from the University of Iowa’s School
of Journalism. I then enrolled in the Leadership Communication Ph.D. program at Kansas State University
and was planning a dissertation on community journalism just days before January 6. The federal
government has also recognized me as a ‘representative of the news media’ when they have evaluated and
granted my FOIA applications (See Annex 18).” U.S. v. William Pope, 1:21-cr-00128-RC, (D.D.C.),
Response to the Government’s Opposition to ECF No. 139, filed Sept. 14, 2023.
There are numerous businesses operating in or around Johnson County, Kansas that use the term “joco” as
part of their advertised business name, including but not limited to “ Joco Auto Repair”, <jocoauto.com>,
“JOCO Lawn & Turf”, <jocoturf.com>, “JOCO Legal”, “ Joco Painting”,
“ and “JoCo Siding & Window Co., “ Local real estate agents
in Johnson County, Kansas, refer to property in and around “JOCO KS”. See, e.g., “View today's listings of
maintenance-free homes for sale in JoCo KS”, “ Respondent has provided a listing of
more than 25 businesses registered in Kansas as early as 1965 using the term “JOCO” in their registered
business names.[3]
The Johnson County Democratic Party website is located at the domain name <jocodems.org>, including stating prominently on their website “Thank you for investing in the future of JoCo”. And, referring to Kansas as “Forever the Free State”. “ Several members of the Board of Johnson County Commissioners (i.e., Complainant in this proceeding), were promoted on this Democratic Party website in their 2022 and 2024 election campaigns.
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Following receipt of the Complaint in this proceeding, Respondent commenced a series of email exchanges with Complainant in which Respondent proposed that he would be prepared to entertain a reasonable offer for purchase of the disputed domain name by Complainant and cessation of this proceeding. Respondent rejected Complainant’s email offer to purchase the disputed domain name for USD1,520. Respondent
stated that Complainant’s offer was too low taking account of his plans to use the disputed domain name in
the development of his business. He noted that if Complainant elected to continue pursuing this matter, it
would lose and thereby suffer financial (referring to legal expense) and reputational injury.
There is no evidence on the record of this proceeding of any relationship or affiliation, commercial or otherwise, between Complainant and Respondent.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, Complainant contends that it has common-law rights in the trademarks JOCO and JOCO KANSAS (which it refers to collectively as the “JOCO Marks”) based on use “in connection with local media and community information goods and services”, including (but not limited to) on the “JOCO Website”. Complainant argues that use of the JOCO mark commenced in or around 2003, and use of the JOCO KANSAS mark commenced in connection with “JOCO magazine” in or around 2014. Complainant further contends that the disputed domain name is “identical to, nearly identical to, confusingly similar with, and/or a near exact reproduction of the JOCO Marks, especially the JOCO KANSAS mark. Complainant states that the term JOCO is “an inherently distinctive and made-up name, associated with Complainant.”
| because: (1) Respondent registered the disputed domain name approximately 17 years after Complainant | Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name made out its prima facie case. | |
| Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant registered its < jocogov.org > domain name in 2002 and began using it in connection with its services at least as early as 2003; (2) Complainant has invested significant resources in | ||
| registering various JOCO-formative domain names to protect the county and its residents; (3) Complainant has extensive common-law rights in the JOCO Marks; (4) Respondent had knowledge of Complainant and its JOCO Marks before the registration date of the disputed domain name, and acquired the disputed domain | ||
|
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creating confusion as to association with Complainant; (7) Respondent declined a monetary offer at double the appraised value of the disputed domain name, and; (8) Respondent has indicated that he believes the disputed domain name has incredible business potential and that he is fully prepared to vindicate his legal rights, which he states will financially and reputationally damage Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
Respondent contends that Complainant has not satisfied any of the three elements required under the Policy for a transfer of the disputed domain name.
Respondent argues that the term “joco” is a commonly used abbreviation to identify a geographic region and by many other Kansas businesses and organizations long before the Johnson County government first began using the “joco” term. Respondent cites provisions of the US Trademark Manual of Examining Procedure (“TMEP”) in support of his argument that a trademark may not be registered at the US Patent and Trademark Office if it is primarily geographic. Respondent notes that the domain name <kansas.com> is used by a commercial newspaper based in Wichita, Kansas.
culture, and it cannot be limited only to refer to the County government. Respondent argues that JOCO in
Respondent contends that the combination term “jocokansas” is geographically descriptive.
Respondent identifies more than 25 business entities registered in the State of Kansas with the term “joco” as the first part of their name, with the earliest identified by Respondent dating to 1965.[5]
Respondent identifies seven organizations in Johnson County, Kansas, that use the term “joco” in their
domain names, including the Johnson County Democratic Party and the Lutheran Church in Johnson
County.
Respondent states that it is hypocritical for Complainant to claim ownership of JOCO while six of the seven
members of the Board of Johnson County Commissioners were endorsed by the Johnson County
Democratic Party on the “jocodems.org” website.
Respondent argues that he has a constitutional right to freedom of the press, to protection from deprivation
of his property without due process of law, to equal protection, and to protection against prohibition of his
news organization from publishing information. He argues that Complainant’s attempt to “seize” the disputed
domain name is an attack on freedom of the press, just as would seizing of the <kansas.com> domain name
deprive the newspaper Wichita Eagle of its most valuable publication asset.
Respondent alleges that the term “joco” is commonly used as an abbreviation for other Johnson or Johnston counties located throughout the United States, referring to various JOCO-formative domain names used by public entities located in counties in Missouri, Georgia, Indiana, Iowa, Tennessee and Texas, and by a local news publication in North Carolina. Respondent asserts that because the JOCO mark is widely used throughout the United States, Complainant’s arguments concerning consumer confusion are misplaced, as JOCO is a common geographic abbreviation.
Respondent contends Complainant intentionally omitted the dates on which its < jocokansas > formative domain names were registered, which dates run from August 30, 2024, to March 27, 2025. Respondent argues that Complainant has used the domain name < jocogov.org > since 2002, for more than 20 years. It
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recently attempted to switch to a domain name with the term “jocokansas”, probably having been
encouraged by guidance from the federal government recommending that local governments switch to “.gov”
domains.
Respondent argues that the US TMEP indicates that use of a “.com” suffix is sufficient to signify association with a commercial entity (TMEP §1209.03(m)).
Respondent notes that the domain name <joco.com> is owned by a third party and that to the best of his knowledge Complainant is not trying to seize that domain name which was registered in 1996.
Respondent states that Complainant’s current “jocogov.org” website shows an image that says “Johnson
County Kansas” and includes a sunflower, and that there is no branding that says “jocokansas” or “JOCO,
Kansas”.
Respondent argues that Complainant is not trying to seize the domain names <JohnsonCountyKansas.com> or <JohnsonCountyKS.com> even though both more accurately reflect the legal name of the county and are currently listed for sale.
Respondent alleges that he never attempted to use the disputed domain name to pretend to represent the government of Johnson County, Kansas. He registered the disputed domain name to advance his business in a specific geographic region. He contends that this constitutes use of the geographic term “jocokansas” in good faith and is fair use.
Respondent refers to several UDRP decisions involving geographic names that rejected requests for transfer.
Respondent alleges that he has rights or legitimate interest in the disputed domain name because he began developing his concept for a company serving Kansas by facilitating local news distribution through local outlets, and he registered the Respondent LLC in July 2017. He supports his claim by reference to his pursuit of educational credentials from Fall 2017 to December 2020. He refers to the coincidence of timing between his educational activities and registration of the disputed domain name in 2020, as well as to registration of other “kansas”-formative domain names. He refers to his purchase of website development related software products. Respondent refers to evidence of his localized website at <topekansas.com> in December 2020, incorporating his Free State Kansas branding.
Respondent refers to the interruption of his business development plans following events of January 6, 2021 in Washington DC, and to his participation in those events as a journalist, including various postings evidencing that participation. Respondent indicates that he has returned to planning his business and does not intend to abandon the disputed domain name.
Based on his ongoing legitimate interest in the disputed domain name he requests that Complainant’s
Complaint be denied.
Respondent asserts that he did not register or use the disputed domain name in bad faith because JOCO is a common geographic acronym that cannot be trademarked.
Respondent claims that he could not have known in December 2020 that Complainant would register the domain name < jocokansas.gov > in August 2024.
Respondent contends that Complainant’s registration of “jocokansas”-formative domain names in 2024 and
2025 is evidence of reverse hijacking.
Respondent alleges that Complainant’s contention that he has engaged in “cybersquatting” is categorically false, as evidenced by his educational activities.
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Respondent argues that his rejection of an offer to purchase the disputed domain name reflects his understanding of the value of his business, and that it does not constitute evidence of bad faith. He notes that he paid USD1,288 to acquire the domain name <topekekansas.com> on the same day he registered the disputed domain name in 2020.
Respondent alleges that the Registrar established the PPC parking page referred to by Complainant, and that he received no revenue from that. He states that he would have modified the site earlier but for the impediments created by court proceedings following January 6, 2021, which otherwise occupied his attention.
Respondent argues that Complainant initiated this dispute and that he has every right to fight back, which is not an act of bad faith.
Respondent has requested the Panel to reject Complainant’s claim of abusive domain name registration and use, and to deny transfer of the disputed domain name.
Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”) against Complainant since Complainant should have known its Complaint was unlikely to succeed on any of the three elements. His Response this should have led Complainant to cease this proceeding. He argues that
Complainant’s counsel should have held themselves to a higher standard.
6. Discussion and Findings
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier and email delivery to the addresses provided by Respondent in its record of registration was successful. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a
finding that a respondent has engaged in abusive domain name registration and use and to obtain relief.
These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
complainant has rights;
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. As a general matter, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
This proceeding requires the Panel to assess Complainant’s assertion of unregistered or common law rights in trademarks consisting of geographic terms, and their relationship to the disputed domain name incorporating one or both of those terms.
It is well understood as a matter of United States trademark law, and as a matter of UDRP precedent, that a party may not secure exclusive rights in a geographic term “as such”. See WIPO Overview 3.0, sec. 1.7. As
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a long-standing principle of US trademark law it is articulated in Supreme Court decision,[6] codified in the so as to enable them to exclude others from using those terms in a geographic sense. The Supreme Court has equated geographic terms with generic terms. A geographic term may not be reserved such that parties are prevented from using that term to refer to or describe the geographic area.
[6] See Delaware & Hudson Canal Co. v. Clark, 80 US 311 (1871), stating: “And it is obvious that the same reasons which forbid the
Complainant asserts that the term “joco” is a coined or “made-up” term that is inherently distinctive. This assertion is central to Complainant’s position in this proceeding, but the Panel rejects this assertion. Respondent has provided substantial evidence that the term “joco” is commonly used as an acronym for “Johnson County”, a geographic location in the State of Kansas, United States, as well as a geographic location in some other States of the United States. The usage among business entities registered in Kansas traces back at least as early as 1965, includes a range of businesses in different commercial sectors registered before Complainant’s claim of initiating use of the term in 2003, and is used today by a substantial number of commercial enterprises and public service organizations in and around the Johnson County area. Local news reports and real estate brokers refer to the subject geographic area as “JOCO” or “JoCo”. Individual members of Complainant, a government body, used the term “joco” in a domain name <jocodems.com> during their recent political campaigns to identify the geographic area in which they are situated. JOCO describes a geographic area in Kansas. Complainant clearly did not “invent” that geographic identifier. It is not “coined”, and it is not inherently distinctive in a trademark sense.
As expressly confirmed by the US TMEP, a geographic nickname or abbreviation “is treated the same as the actual name of the geographic location, if it is likely to be perceived as such by the purchasing public.”[9]
[9] TMEP 1210.02(a)
This does not mean that a person may not acquire trademark rights in a geographic term to the extent that term is used to identify particular goods or services and where it has come to be recognized by the relevant public in relation to those goods or services. (See, e.g., Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525; Intermountain
Health Care, Inc., IHC Health Services, Inc. v. Randy Delcore, WIPO Case No. D2017-0265). Complainant has notably referred to “JOCO magazine” as a news and information service incorporating its common law trademark. Yet, Complainant has not relied on “JOCO magazine” as the trademark term which it opposes to
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the disputed domain name. It has fixed its claim to common-law trademark rights on the terms “joco” and
“joko kansas”, stating:
“During the past several decades, Complainant has referred to the Johnson County community at large
as JOCO, utilizing the JOCO mark as a coined phrase in connection with multiple facets of local business
and management affairs, including without limitation as a designation for current events and community
programming.” [Italics added]
“[T]he JOCO Marks [JOCO and JOCO KANSAS] are used in connection with local media and community
information goods and services, including but not limited to, on the JOCO Website, in the provision of
magazines and newsletters providing local news and community updates, job opportunities, the sharing of
town history and culture, and public service updates (including transit, infrastructure, and weather reports), in
connection with health and nutrition information to support resident well-being, and in reporting local
emergency and crime alerts.”
Complainant effectively contends that any party in Johnson County, Kansas, other than the County government, that provides local news and weather reports, posts job listings, shares information about county history, health services or otherwise engages in providing information about these activities of day-to- day life is precluded from including JOCO as an identifier of its goods or services. Consistent with the reasoning of decisions of the US Supreme Court dating back 150 years, the geographic term “joco” is analogous to a generic term. It cannot be reserved such as to prevent third parties from using it to identify the geographic location to describe their own goods and services. It cannot be reserved to the County government to constitute it as the sole source of information about activities and events taking place in the County.
A local television station cannot be precluded from broadcasting news under the heading of “JOCO weather” because Board of County Commissioners has exclusive rights to provide weather services in the local area. While Complainant might be able to establish particularized common law trademark rights in “JOCO
magazine” and thereby prevent a third party from advertising and selling a magazine with the same name, this does not give Complainant the right to prevent any publisher from marketing a magazine or newsletter, or discussing county history, in Johnson County using the term JOCO as an identifier.
The Panel also notes that Complainant supported its claim of exclusive rights to the JOCO Marks by reference to the results of a Google search for the term “JOCO Kansas”. Complainant did not, however, provide results of a Google search for the term “joco”, which returns are rather different from those returned from those provided by Complainant.[10] There are multiple commercial enterprises listed prior to any references to Johnson County, Kansas, including a news service reporting on Johnston County, North Carolina, “The Johnston County Report”, at the domain name <jocoreport.com>. To reinforce that parties in and around Johnson County, Kansas use the term “joco” in a geographically descriptive sense, there is a May 29, 2025, YouTube video from the nearby Kansas City Fox News affiliate captioned “JoCo remembers veterans who paid for our freedom at Memorial Day ceremony” referring to a ceremony at the “Funeral Chapel and Memorial Gardens in Johnson County, Kansas.”[11]
Common law or unregistered trademark rights in the United States are not presumptively entitled to nationwide effect. While it is possible for a trademark to be recognized as exclusive in a particular geographical area, Complainant has not made an argument in favor of localized common law trademark
rights in JOCO or JOCO KANSAS. Even if it had, it would not succeed on such a claim here.
The Panel determines that Complainant has not established common law trademark rights in the geographic term “joco” standing alone.
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The combination specifically claimed for common law rights by Complainant is JOCO KANSAS which term stands on a very similar footing to its claim regarding JOCO alone. KANSAS is a geographic term identifying a State in the United States. The term is commonly used in connection with sub-State entities within KANSAS, such as “Wichita, KANSAS” and “Topeka, KANSAS”, identifying cities within the State.
Social media website postings by Complainant include a JOCO KANSAS logo, and also identify the Johnson County, Kansas County government. For the same reasons that Complainant has not established common law trademark rights in JOCO, it cannot establish common law trademark rights in the commonly used geographical name of the County, adding the name of the State in which it is situated. Adding KANSAS to JOCO does not differentiate it in terms of its availability for common law trademark protection as the combination JOCO KANSAS refers to a geographic location (although recognizing there are other Johnson (and Johnston) Counties in the United States, it does narrow the range of geographic possibilities). The term is essentially generic, and it must remain available for use by third parties in social media posts and otherwise. Complainant cannot exclusively reserve to itself the right to provide information about events taking place in Johnson County, Kansas, including by other parties posting information on social media. This does not mean that Complainant may not secure trademark rights in a design feature, such as the sunflower substituting for the final “O” in JOCO, relating to a particular good or service. But that is not a matter at issue here.
To establish exclusive rights as the provider of information Complainant would need to demonstrate that the
public in and around Johnson County identifies JOCO KANSAS as the exclusive provider of information
concerning the geographic area. Complainant has not done that, and for reasons of policy it cannot do
that.[12] The County government cannot hold itself out as the sole provider of news within the County.
The Panel determines that Complainant has not established common law or unregistered trademark rights in
JOCO KANSAS.
Complainant has not relied on “JOCO magazine” for its assertion of unregistered trademark rights in relation to the disputed domain name. Thus, to the extent that Complainant might have been able to identify common law or unregistered rights in some other combination mark incorporating JOCO or JOCO KANSAS, such as “JOCO magazine”, the Panel refrains from recognizing such rights here. Nonetheless, the recognition of such rights would not alter the outcome of a confusing similarity analysis. Assuming solely for the sake of argument that Complainant had established common law or unregistered trademark rights in JOCO MAGAZINE, that term is not incorporated or recognizable within the disputed domain name, <jocokansas.com>. It might be suggested that because the term “joco” is incorporated in the disputed domain name that this is sufficient to establish confusing similarity with the JOCO MAGAZINE trademark. This, however, would require the Panel to reduce the common law trademark to the term “joco” that is not otherwise protected, and thus to allow the term without trademark protection to be considered in relation to the disputed domain name. (See Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525.) This would effectively circumvent the limitation on Complainant’s common law or unregistered trademark rights, and the Panel will not do that.
As the Panel has determined that Complainant has not established unregistered or common law trademark rights in JOCO KANSAS, there are no grounds to assess confusing similarity with the disputed domain name.
The Panel finds the first element of the Policy has not been established.
Although the Panel as a matter of administrative efficiency could refrain from addressing the second and third elements, it will nonetheless proceed to do so. Even if the Panel were to have determined that Complainant had established common law or unregistered trademark rights, Complainant would not succeed on the second or third elements. Respondent succeeds on all three elements.
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B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name, and Respondent has contested Complainant’s arguments. The burden of proof is on Complainant to establish lack of rights or legitimate interests.
Respondent has provided substantial evidence of good faith preparations to use the disputed domain name in connection with a bona fide service.[13] Respondent furnished evidence of his education and training in the field of journalism, and of his interest in localized community journalism. He registered a limited liability
company in Kansas in 2017 (also Respondent), which registration he has maintained. Following securing a development) in December 2020. He has provided evidence of these efforts. He also provided substantiated evidence of the reason his business development plans were interrupted beginning as of January 2021, namely because of his involvement in the events of January 6 in Washington DC (with his significantly viewed news postings) and his prosecution by the US federal government in connection with that. His postings included using the name of the “Free State Kansas” LLC.
journalism-relevant Master’s degree, he began a PhD program that, among other things, focused on creating
a network of local news organizations. In 2020, in addition to registering the disputed domain name, he
registered domain names incorporating the names of other geographic areas, including <hayskansas.com>,
with “Hays” referring to a city and county in Kansas, and <topekakansas.com>, referring to the capital city of
Respondent’s evidence regarding the registration of multiple domain names referring to geographic locations in the State of Kansas, including Joco, Kansas; his written evidence of plans for studying a localized network of news outlets, and; his actual reporting under the name of his LLC, support his contention that he
registered the disputed domain name for purposes of establishing a network of localized news outlets, and
made tangible preparations to further that objective. It was reasonable for him to include <jocokansas.com>
in order to provide Internet users with a URL connection for local news relating to Johnson County, Kansas.
There is little to support a view at Respondent had notice of this dispute involving Complainant when he registered the disputed domain name in 2020 (i.e., his registration was prior to notice of this dispute). Complainant did not and does not have registered trademark rights in either of the claimed JOCO Marks, Respondent did not have a trademark register to search. Respondent would have had difficulty foreseeing that Complainant would conclude that it had common-law trademark rights in the JOCO Marks when pursuing his local news network business planning.
In addition, Respondent’s registration of the disputed domain name was undertaken for purposes of establishing a network of local news outlets. Using the disputed domain name which incorporates a geographic location is directly related to providing Internet users with a source for local news. Although
Respondent initially focused on a nearby geographic locality, <topekakansas.com>, there is nothing on the record to suggest that Respondent did not plan to do what he said he planned to do, which was to use the disputed domain name to resolve to a website providing information regarding Johnson County, Kansas.
And, while paragraph 4(c)(iii) the Policy specifically refers to “making a legitimate noncommercial or fair use of the domain name” this Panel has previously explained that this does not require a domain name registrant to commence fair use immediately (see Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399). There are various contexts in which maintaining a domain name prior to the initiation of fair use conduct may be justified. In the present proceeding, the delay in initiation has been explained in connection with the context of an arrest and subsequent judicial proceedings. Decisions under the Policy are “context specific”. As in Pfizer Inc. v. Van Robichaux, supra, Respondent in this proceeding has provided sufficient reason to believe
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that he plans to carry out his business plan, that is to engage in fair use reporting in connection with the
disputed domain name.
The fact that Respondent was willing to entertain a reasonable offer for purchase of the disputed domain name does not distinguish him from many other domain name registrants. Domain names are often business assets, and regardless of personal attachments or business plans, assets are usually (though not always) available for sale at the “right price”. Willingness to entertain an offer to settle a case – as here -- is not evidence of bad faith or lack of rights or legitimate interests.
Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has not been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
It is a basic principle of the Policy, subject to limited exception not relevant here, that a domain name registrant does not register in bad faith if the complaining party has not established trademark rights at the time of registration. WIPO Overview 3.0, Sec. 1.1.3. In the present proceeding, the Panel has determined that Complainant has not established unregistered or common law trademark rights and did not have such rights when Respondent registered the disputed domain name. In that regard, the Panel can dismiss Complainant’s argument that Respondent registered and used the disputed domain name in bad faith because Complainant did not have rights in a trademark at the time of Respondent’s registration.
But assuming for the sake of argument that Respondent had established unregistered trademark rights prior to December 2020, it remains difficult for the Panel to see how Respondent might have been aware of those trademark rights since there was no register in which they were identified. Moreover, because the disputed domain name refers to a geographic area, Respondent might well have assumed that he could use the name
of the geographic area in the disputed domain name because, as a general matter, the names of geographic
areas are not subject to trademark protection “as such”.
The Panel concludes that Respondent did not register the disputed domain name in bad faith because part of Complainant at the time he registered the disputed domain name.
Following Complainant’s initiation of this proceeding, Respondent proposed that Complainant make a reasonable offer to purchase the disputed domain name and bring an end to the proceeding. Respondent suggested that Complainant would thereby save litigation costs and reputational injury since Respondent was confident that he would succeed here. Given that the disputed domain name was registered by Respondent in 2020, and that Respondent did not approach Complainant prior to Complainant’s initiation of this proceeding, the Panel is not inclined to view Respondent’s proposal for settlement as evidence of an intention to sell the disputed domain name at the time of registration, particularly given the other factors surrounding Respondent’s intended use of the disputed domain name, supported by evidence. It is not uncommon for parties believing themselves “in the right” to be willing to entertain offers for settlement of litigation or other dispute settlement. And it is not out of line for a party proposing settlement to point out that continuing litigation may result in additional costs or reputational damage.
The fact that a Registrar automatically creates a PPC page (which is a factual question here involving Registrar practices in 2020) is not necessarily a defense to providing links to competing enterprises that may divert business from the trademark owner. WIPO Overview 3.0, Sec. 3.5. However, the Panel need not further explore this PPC-related issue because Complainant has not established unregistered or common
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law trademark rights preceding Respondent’s registration of the disputed domain name, which is a condition
precedent to a finding of bad faith registration and use.
The Panel determines that Complainant has failed to establish that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
The Panel rejects Complainant’s request to find against Respondent and rejects its request to direct the
Registrar to transfer the disputed domain name to Complainant.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad
faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.
Respondent’s argument in favor of a finding of RDNH is principally focused on Complainant’s decision not to withdraw its Complaint after having been made aware of the identity of Respondent (which preceded Respondent’s filing of his Response) and reviewing his factual assertions and legal arguments (which postdated his filing of the Response). While Respondent is correct that Complainant might have assessed the “balance of probabilities” differently in terms of outcome on its own accord particularly following receipt of the Response, Complainant already had expended much of the financial resources involved in researching and preparing its pleading. Complainant did not have access to details of Respondent’s Response until after it filed its amended Complaint.
A finding of RDNH is reserved for egregious conduct, such as circumstances in which a complaining party proceeds knowing it cannot succeed on its complaint, or when the complaining party is engaging in wrongful behavior such as by fabricating evidence. While the Panel agrees with Respondent to the extent that Complainant might have concluded that it could not succeed after receiving the Response, the weighting of the balance of probabilities is not so one-sided that Complainant might not reasonably have elected to await the Panel’s decision. Under the totality of the circumstances, it does not appear that Complainant acted for purposes of harassing Respondent as an individual or business. For this reason, the Panel declines to make a finding of RDNH.
7. Decision
For the foregoing reasons, the Complaint is denied.
/Frederick M. Abbott/
Frederick M. Abbott
Sole Panelist
Date: June 3, 2025
joined the federal union of the United States in 1861 as a “free state” (i.e., not a “slave state”).
lapsed. The Panel further notes that there are approximately 90 business registrations listed in the State of Kansas beginning with the
term“joco” . While a number of these registrations have lapsed for one reason or another, about 35 remain active. Panel visit to
< May 26, 2025.
exclusive appropriation of generic names or of those merely descriptive of the article manufactured and which can be employed with
truth by other manufacturers, apply with equal force to the appropriation of geographical names, designating districts of country.” 80 US
at 324. Columbia Mill Co v Alcorn, 150 US 460 (1893), stating: “These merely geographical names cannot be appropriated, and made
the subject of an exclusive property. They do not, in and of themselves, indicate anything in the nature of origin, manufacture, or
ownership […]” 150 US at 466.
7 15 USC §1052(e)(2). Service marks are treated in the same manner as goods. 15 USC §1053.
8See TMEP1210.02:
“Primarily Geographic Significance:
The significance of a mark is primarily geographic if it identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning”.
“Geographic Locations
A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street. …
Nicknames. A geographic nickname (e.g., “Big Apple” or “Motown”), or an abbreviation or other variant of the name of a geographic location, is treated the same as the actual name of the geographic location, if it is likely to be perceived as such by the purchasing public”. [Italics added]
August 30, 2024, at earliest, about four years following Respondent’s registration of the disputed domain name.
LLC, also Respondent. For purposes of its decision, the Panel treats the individual and corporate entity as a single entity under the control of the individual. The Panel will refer specifically to the LLC if and as the context requires.
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