WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asset Loan Co. Pty Ltd v. Gregory Rogers

Case No. D2006-0300

1. The Parties

The Complainant is Asset Loan Co. Pty Ltd, Queensland, Australia, represented by Mallesons Stephen Jacques, Australia.

The Respondent is Gregory Rogers, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <assetloanco.net> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2006. On March 9, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On March 9, 2006 Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April4,2006. The Response was filed with the Center March 28, 2006.

The Center appointed The Honourable Neil Anthony Brown QC, Dawn Osborne and Michael J. Spence as panelists in this matter on April 18, 2006. The Panel finds that it was properly constituted. Each member of 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

The Complainant is an Australian company engaged in the finance industry. It was incorporated on January 27, 2004. It is the subsidiary of Asset Loans Ltd which was incorporated on August 1, 2000, and listed on the Australian Stock Exchange on November 11, 2004.

On January 20, 2003, the Complainant registered the domain name <assetloanco.com>. It has a website at “www.assetloanco.com” (‘the Complainant’s website’).

On July 6, 2004, the Complainant became the registered owner of Australian Trade Mark Number 1009478 which is described in the registration as:

‘Word:

ASSET LOAN CO. DISCRETION ASSURED ALTERNATIVE FINANCING

Image:

TRIANGLE, CURVED CUTS RING’.

The mark also includes a logo depicting the image described above.

The Respondent registered the contentious domain name on May 22, 2005. The domain name resolves to the website at “www.assetloanco.net” (‘the Respondent’s website’).

The Respondent is also resident in Australia and was previously a customer of Asset Loan Company Pty Ltd, a different but related company to the Complainant.

Without reaching any conclusions about or expressing any views on the merits of the litigation, it is apparent from the filings of both sides that there has been something of a falling out and a history of litigation between the Respondent and interests associated with him on the one hand and the Complainant and interests associated with it on the other.

The Respondent is an undischarged bankrupt, having been made so on a hearing that occurred on November 24, 2004, a certificate to that effect having been issued by the Insolvency and Trustee Service Australia and constituting Annex 4 to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name <assetloanco.net> should no longer be registered with the Respondent but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph4 the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant maintains that the domain name <assetloanco.net> is identical to the Australian trademark set out above and that the only difference between the two is the addition of the suffix ‘.net.’ The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because he has never had any intention of using the domain name in connection with a bona fide offering of goods or services, his sole intention has been to trick and confuse internet users into thinking that the domain name and the website to which it resolves belong to the Complainant and that he cannot properly claim that the domain name is being used for a legitimate criticism site.

Finally, the Complainant alleges that the domain name was registered and is being used in bad faith. It contends that this is so because, although the Respondent’s conduct ‘does not fall strictly within the four criteria listed in Paragraph 4 (b) of the Policy’, these tests are not exclusive and his conduct nevertheless with respect to both the registration and use of the domain name amount to bad faith. This is so, the Complainant contends, because the Respondent registered the domain name to confuse internet users, he has posted on the website material illegally taken from the Complainant’s own site, he deliberately uses metatags to direct users to his site and the site itself is being used as a bargaining tool with the Complainant and for disseminating baseless and defamatory accusations against the Complainant and its directors which have severely damaged their reputations. This conduct in its totality, it is said, constitutes bad faith.

B. Respondent

The Respondent denies each and every one of the Complainant’s contentions. He says, first, that the Complainant’s trademark does not consist of the combined word ‘assetloanco’ that appears in the domain name, but rather the eight (sic) specific words “ASSET LOAN CO. DISCRETION ASSURED ALTERNATIVE FINANCING” together with an image. Accordingly, he contends, the domain name is neither identical to or confusingly similar to the trademark and in any event he, the Respondent, does not use the actual trademark on his website.

Secondly, he says that the owner of the Complainant’s domain name <assetloanco.com> is ‘Asset Loan Company’, not the Complainant and that the Complainant accordingly has no rights in <assetloanco.com> and hence no ground for complaint about the registration of <assetloanco.net>.

Thirdly, he says that the words ‘asset loan co’ are generic in nature and by inference that another party cannot complain when those words are used in a domain name as the Respondent has used them.

For all of these reasons the Respondent maintains that the domain name is not identical to or confusingly similar to any trademark in which the Complainant has rights.

With respect to the second issue, the Respondent maintains that since the domain name was registered, he has had legitimate rights and interests in it, as he has used it to attract internet traffic to his website to ‘alert the public to the criminal and unlawful corporate conduct of the company Asset Loan Co Pty Ltd…’ and that ‘…(w)arning the public about dishonest businesses and people is a legitimate use of a domain name.’

He also contends that his website ‘came first’, that it was registered before the Complainant registered its trademark and that he does not use it to sell products or services of a similar nature to the Complainant but merely to criticize the Complainant and warn people about it.

Finally, the Respondent denies that he registered or used the domain name in bad faith, for his objective was to warn the public, he has never asked the Complainant for money, his website carries a warning that it is not “www.assetloanco.com”, he has not engaged in trickery or pretence that his website is the Complainant’s and the Complainant cannot complain about his domain name when it, the Complainant, does not own a domain name itself.

The Respondent maintains, therefore, that the Complaint should be dismissed and that there has been such an abuse of the process that the Panel should make a finding of Reverse Domain Name Hijacking against the Complainant.

Supplementary Filings

The Respondent has submitted several emails which the Panel will regard as supplementary filings and the question thus arises whether the Panel should have regard to them in the course of its deliberations.

The supplementary filings consist of:

(a) an email from the Respondent dated April 11, 2006, which appears to copy an email from him to Mallesons, the solicitors for the Complainant asking it to publish a deed which relates to “www.assetloanco.net”;

(b) an email dated April 12, 2006, to the Center to the effect that he had not received an email from Mallesons informing him that a copy of a deed that relates to the contentious domain name had been sent to the Center; and

(c) an email from the Respondent to the Center dated April 17, 2006, which says that Mallesons, have not sent to the Center a copy of a deed that relates to the transfer of the contentious domain, alleges that the Complainant was not honest in that it had not honoured the deed and attaching two photo images.

Supplementary filings may be admitted under paragraph 12 of the Rules and under the power conferred on the Panel by paragraph 10 of the Rules to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. A number of UDRP panels have held that additional submissions are inappropriate except in exceptional circumstances, such as the existence of new, pertinent facts that did not arise until after the submission of the Complaint or Response or arguments by the Respondent that the other party could not reasonably have anticipated, see e.g. Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972, Radan Corp. v. Rabazzini Winery, WIPO Case No. D2003-0353.

The reason for a restrictive application of paragraph 12 of the Rules is that additional submissions may delay the administrative proceeding and thereby undermine the Policy’s intention of providing a rapid and cost effective domain name dispute resolution.

The Panel accepts and agrees with the general propositions just set out. Having considered those principles, the Panel has decided to consider the supplementary filings and take them into account. In reaching this decision the Panel has been influenced by the following factors which it believes constitute exceptional circumstances. First, the supplementary filings reached the members of the Panel virtually at the same time that they received the papers as a whole and before it had commenced its deliberations and there will therefore be no delay occasioned by considering the additional submissions. Secondly, the supplementary filings do to some extent complete the picture and it is wise to have all of the facts before the Panel. Thirdly, although the Complainant is represented, the Respondent is not and the Panel would not want the Respondent or any observer to think that he was at a disadvantage.

The Panel would like to assure the Respondent on this and all other issues that it is taking into account everything that he puts before it.

The Panel will therefore take the additional material into account.

6. Discussion and Findings

Paragraph15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The Complainant must therefore establish all three of the elements specified in paragraph4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph4(a) of the Policy.

Those three elements, all of which must be proved, are that:

A. the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. the Respondent has no rights or legitimate interests in respect of the domain name; and

C. the domain name has been registered and is being used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Complainant contends that the domain name is identical to the trademark. The Panel does not accept that submission. The word ‘identical’ means ‘the same’ or ‘exactly alike’. The domain name is not the same as or exactly like the trademark, for as well as the words ‘ASSET LOAN CO’ that constitute the domain name, the trademark includes the additional words ‘DISCRETION ASSURED ALTERNATIVE FINANCING’ and a logo. The additional words and the logo have not been incorporated into the domain name. The two concepts are therefore not identical or exactly the same.

The Panel concludes, however, that the domain name is similar to the trademark and confusingly so. That is so for the following reasons. First, the test to be used is to assess how a reasonable bystander would construe the wording of the domain name compared with the trademark. In the opinion of the Panel, the dominant thrust of the trademark is to convey to the reader the name Asset Loan Co and it is this concept that makes up the entirety of the domain name. The fact that the trademark adds that the Asset Loan Co provides alternative financing with discretion is clearly secondary and subsidiary to the name itself and simply qualifies it.

In any event, as the unchallenged evidence is that ‘the Complainant has established a well known reputation’, it clearly has an unregistered trademark in that name and the domain name incorporates its entire name.

As the Panel is concerned to show that it has carefully considered all of the Respondent’s submissions, it should add here that it cannot accept the Respondent’s contention that it is permissible to look at his website to see that he is not selling the same goods and services as the Complainant or using its logo and that accordingly there can be no confusion and ‘no breach of any trademarks of the complainant’. The Panel is unable to accept this submission as it has been held many times that, when comparing a domain name and a trademark for the present purposes, the exercise must involve only a straight comparison of the two names without regard to the contents of the website to which the contentious domain name resolves. This view, the reason for it and the UDRP cases in support of it, are set out in the useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions1 where it is said:

“1.2 Is the content of a web site relevant in determining confusing similarity?

Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.

Relevant decisions:

Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic D2000-1698 <guiness.com>, Transfer;

Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd. D2001-0110 <ansellcondoms.com>, Transfer;

Dixons Group Plc v. Mr. Abu Abdullaah D2001-0843 <dixons-online.net>, Transfer;

AT&T Corp. v. Amjad Kausar D2003-0327 <attinternet.com>, <attuniversal.com>, Transfer.”

The Panel accepts and will apply those principles.

But in any event and quite apart from those decisions, the Panel is required to apply the Policy, which in the plain words of paragraph 4(a)(i) invites a comparison solely between the contentious domain name and the trademark or service mark in question and admits of no other material. The Panel will therefore confine itself to a comparison between the domain name and the registered trademark without having regard for this purpose to the website.

However, it has also been decided in other UDRP proceedings that the website may be looked at for the purpose of determining the other two questions arising in such proceedings as these, namely whether the respondent has rights or a legitimate interest in the domain name and whether he registered and has used it in bad faith. In this regard it will be seen later in this decision that the Panel has in fact looked at the website and made use of its contents in answering those questions.

The other feature involved in making the comparison that the Panel is obliged to make is that the domain name must be compared with the entirety of the trademark. In this regard, as the Respondent points out, it must be noted that the mark is a composite one, featuring not only the words set out above, but a logo as well. The question, then, is whether the domain name is identical or confusingly similar to this composite mark.

That type of question is not always easy to resolve, for the figurative or graphic part of a trademark cannot be translated into a domain name and a true comparison is therefore difficult to make.

There are some obvious similarities between the two expressions, for they both contain the words ‘Asset Loan Co.’ But the question then is whether the logo so dominates the trademark and distracts attention from the words that a reasonable bystander would no longer regard the domain name as confusingly similar to the trademark because of the presence of the logo in the trademark. A recent illustration of how this can happen is Deutsche Post AG v. NJ Domains, WIPO Case No. D2006-001 where the logo so dominated and put its stamp on the mark that it became its principle feature. That is not so however in the present case, where the logo is small, clearly subsidiary and more of a decoration than anything. When the trademark is looked at as a whole, it is therefore clear that it is a trademark consisting of the words ‘Asset Loan Co.’ and that the logo does not detract from that concept at all. In other words, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name, an approach that was taken in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091.Applying that test, the overall impression of the trademark in the present case is that it is a reference to the trademark of the Complainant’. As the domain name uses all of those words, it is similar to the trademark. It is also confusingly so, because the question immediately arises whether the Asset Loan Co of the domain name is the Asset Loan Co of the trademark.

There is also another of the Respondent’s arguments that must be addressed here. On many occasions in the course of his submissions, the Respondent contended that the Complainant does not own a domain name itself and that in particular it does not own the domain name <assetloanco.com>. The basis for this contention is that the domain name is registered not in the name of the Complainant, but in the name of Asset Loan Co, that that entity is not a registered company or business name, that accordingly it does not exist and that hence it cannot own a domain name. The Respondent uses this argument, amongst other purposes, to contend that it is not the Complainant that owns <assetloanco.com>, but rather the fictitious and unregistered Asset Loan Co and that the Complainant therefore cannot complain about another party’s registering the similar <assetloanco.net>.

It is appropriate to say here that, although this is an interesting argument, it really cannot assist the Respondent. That is so for several reasons. First, it does not matter in these proceedings whether the Complainant owns a domain name or not. The question is whether it has rights in a trademark which the Respondent has transgressed by registering and using its own domain name. Secondly, it may be true that the domain name <assetloanco.com> is registered in the name of an unincorporated or unregistered body, Asset Loan Co. But even if it is, it is clear that the Complainant itself is incorporated, that it trades under that name and that it is the registered owner of the trademark in question. Accordingly, whatever may be said about the body described as ‘Asset Loan Co’ it is clear that the Complainant itself can and does complain about the registration of the domain name and can therefore bring these proceedings.

But in any event, the Respondent’s many submissions that stem from this issue are really misconceived. That is so because the sole issue here is whether the domain name at issue, i.e. the domain name <assetloanco.net>, the domain name registered by the Respondent, has been properly registered and used and not whether some other domain name, either <assetloanco.com> or any other domain name, has been invalidly registered and used.

The other submission of the Respondent is that the words ‘Asset Loan Co’ are generic and presumably that they may be used in a domain name with impunity. That is not so, for although the words are generic, in their present combination that take on the cachet of the Complainant and have come to be associated with the Complainant as its trademark. There is no evidence that they have come to be associated with any other person or company. The Complainant is therefore entitled to argue that the domain name is identical or confusingly similar to its trademark in that name.

Finally, it is now well established that the use of suffixes like ‘.net’ cannot defeat a conclusion of confusing similarity for they are part of every domain name.

For all of these reasons the Panel concludes that the domain name is confusingly similar to the trademark. As the Complainant has rights in the trademark by virtue of being its registered owner, it has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Thus, if the Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

In the present case, the Respondent does not seek to bring himself within either paragraph 4(c)(i) or (ii). Rather, he says that he is covered by paragraph 4(c) (iii) because he is making a legitimate noncommercial and fair use of the contentious domain name.

The legitimate noncommercial and fair use he relies on is the use of the domain name for a website, as he puts it, ‘…to alert the public to the criminal and unlawful corporate conduct of the company.’ The Respondent adds that ‘(w)arning the public about dishonest businesses and people is a legitimate use of a domain name.’ In other words, the Respondent maintains that he is operating what is often referred to as a criticism or protest site.

However, in one sense he goes beyond that, for he adds:

‘I have not set up the site to merely criticize the Complainant. It is to warn the public to deal with them only after they obtain independent legal advice and good financial advice.’

Accordingly, it is probably fair to say that the Respondent is contending that his objective is to criticize, but also to warn.

The Respondent has therefore squarely raised an issue that has been the subject of extensive debate in UDRP proceedings. It has been held in some proceedings that subject to the specific circumstances of the case, a website may be regarded as a legitimate criticism site and hence that the respondent may be regarded as having a right or legitimate interest in the domain name that leads to that site. As it was put in Bonneterie Cevenole S.A.R.L. -v- Sanyouhuagong WIPO Case No. D2001-1309:

‘The Panel is well aware that a number of distinguished Panelists take the view that a bona fide non-commercial criticism site connected to a domain name featuring the trade mark of a subject of the criticism is fair use of the domain name for the purposes of the Policy’.

That view has been applied in such cases as Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.

Other panelists, however, including the panelist in the Bonneterie Case (supra) have taken a contrary view; see also Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300. Other panelists are not prepared to say that it can never be the case that criticism sites will generate rights and legitimate interests in the domain name holder, but that whether they do or not will depend on the individual facts of each case.

The history of this argument and some of the tests that have been applied in determining such issues are examined in Howard Jarvis Taxpayers Association v. Paul McCauley, (supra) and Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. It is also clear that opinions are still divided on the issue even today.

What is clear, however, from all of the discussion on this issue is that a respondent must not be seen to be using the criticism site for commercial gain. If that is really what the respondent is doing, the conduct is contrary to the plain words of paragraph 4(c)(iii) of the Policy and hence it cannot give rise to a legitimate interest.

The test to be used to apply that principle to the facts of a given case is whether the panel is satisfied that the respondent has brought itself within the wording of the part of paragraph 4 that it relies on. It is true that the overall onus of proving its case in the present proceedings remains on the Complainant, but the Respondent has squarely put his reliance on the notion of the criticism site in issue and it is up to the Respondent to make out that part of his case.

Having considered all of the evidence, the Panel in the present case is not satisfied that the Respondent has brought itself within the exemption in paragraph 4(c)(iii) and, indeed, the conclusion reached by the Panel is that on the balance of probabilities the Respondent is in fact using the domain name for a commercial purpose and has done so since he registered the domain name. That puts the Respondent outside the terms of paragraph 4(c)(iii). The commercial purpose is to use the domain name and the website as a form of leverage to bring to an end the litigation in which he is involved with the Complainant and its associates.

It might be said that it is too broad to describe the intention of the Respondent as being to achieve a commercial purpose. However, a study of the claims at issue in the litigation, without in any way making a judgment on their veracity, shows that they concern such a number of properties and such a large sum of money and that they arise from such an essentially business and commercial relationship between parties who were engaged in commerce, that there is no way that the dispute can be described in any way other than commercial. The use being made of the domain name by the Respondent is therefore commercial.

Further support for that view is to be found in Annex 6 to the Complaint which is an extract from an email sent by the Respondent to the solicitors for the Complainant on March 6, 2006. The email said:

‘Clearly the site is having an effect as fewer people seem to want to invest in a company as shareholder and my web site receives considerably more & more traffic.

It is ironic that my site is found in searches made on Yahoo & MSN & second on Google.’

This email suggests that the Respondent was interested in whether his site effected investment in the Complainant and noted that it had apparently achieved its purpose. Further, the Respondent in this email promised to shut down the website if his other disputes were settled, suggesting that its purpose was more to gain leverage in these negotiations than as a non-commercial site.

All of this being so, no matter what criticism or protest is being engendered by the web site and no matter what the merits or otherwise of the issues canvassed, the criticism and protest are not ‘a legitimate noncommercial …use of the domain name…’ within the meaning of paragraph 4(c)(iii) of the Policy.

Nor can such a use be described as ‘fair’ when the real purpose of operating the website is concealed behind the veneer of criticism and protest.

Furthermore, it has been widely held that to constitute a website as a criticism or protest site for present purposes, the domain name itself must normally indicate that the site to which it leads is not an official site of the trademark owner, but a separate site that is given over to criticism of the company, person or organization concerned. In other words, internet users must normally be warned in advance that if they follow the domain name it will lead to such a site. If that is not done, some internet users will believe that the contentious domain name is in fact an official domain name of the company or person embodied in the domain name. In other words to be a true criticism or protest site, the domain name and the web address must normally say that it is and not masquerade as an official domain name and site. One of the panelists, Dr. Spence, believes that there may be circumstances in which the use of a domain name identical, or confusingly similar to, a trademark, is an appropriate way of identifying a criticism site. None of the panelists, however, believes the present case to be such a one.

In the present case, the Respondent has done nothing to make it clear that his is a domain name that will lead to a site that will criticize or protest against the Asset Loan Co and everything to suggest that his is a domain name that will lead to an official site of the Asset Loan Co.

The Respondent made a deliberate choice and took the domain name ‘<assetloanco.net>’, clearly intending to invoke the name of the company with which it had had a long and acrimonious dispute and, without any qualification, inviting the viewer to believe it would lead, not to a site protesting about or criticizing the Asset Loan Co, but to a legitimate site on behalf of the company itself. See in this regard: Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No.D2003-0372; Hollenbeck Youth Center, Inc. v. Stephen Rowland, WIPO Case No.D2004-0032; Banque Cantonale de Geneve v. Primatex Group S.A., WIPO Case No.D2001-0477; and Triodos Bank NV v. Ashley Dobbs, WIPO Case No.D2002-0776.

Moreover, the Panel can only infer that the Respondent knew that that is the way that viewers would interpret his choice of domain name and his decision not to qualify the name in any way.

Finally, the Panel notes that vigorous argument will undoubtedly continue in future proceedings on the question whether a criticism site can constitute a right or legitimate interest in the domain name and, if so, under what circumstances that situation will apply. One such circumstance that will be debated will be whether the contents of the site must be fair or proportionate to its legitimate purpose. Some commentators will continue to argue that the criticism itself should be fair and should be supported by evidence, before the use being made of the domain name can be said to be legitimate.

Others will argue that that is not the role of UDRP proceedings and that only the courts of competent jurisdiction can make such judgments if and when such questions are raised.

The Panel as presently constituted is content to say that although these questions will continue to be debated, the real question in this case as in others will remain and it is whether the facts bring the case within the words of paragraph 4(c) (iii). For the reasons given, the conclusion of the Panel in the present case is that they do not.

The disclaimer

To this, of course, the Respondent replies that he has posted a ‘warning’ or disclaimer on his site alerting visitors that the site ‘is not “www.AssetLoanCo.com”.’ This is not literally correct, for the disclaimer on the website is actually in the following words:

‘This site is NOT connected with Asset Loans Limited or Spot Loans. It is even better than that site. You can go to that site by clicking here “www.assetloanco.com”.’

But at least the site contains a form of disclaimer, albeit an equivocal one. The difficulty for the Respondent, however, is that the disclaimer comes after the viewer has been mislead and lured into the website, by which time the confusion has been generated and the damage done. As was said by the panelist in the Bonneterie Case (supra):

‘In the view of the Panel, the selection of a trade mark owner’s trade mark (without adornment) for a domain name and with the intent that that domain name should be connected to a website criticising the trade mark owner or its brand is manifestly not fair. Visitors to the site will not be expecting to visit a criticism site. They will be expecting to visit a site of the Complainant. The fact that when they reach the site there is a disclaimer is not enough. It is too late. By then, the damage has been done and/or the benefit to the Respondent has been achieved.’

To the same effect is the observation of the panelist in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279:

‘The Panel further holds that the Respondent has failed to establish that he has otherwise any rights or interests legitimate in terms of paragraph 4(c) since the effect of using each of the domain names in issue is to attract into any website to which the domain name resolves persons who believe and expect they will be accessing material from the Complainant; the Panel holds this is not legitimate use of the domain name in issue’.

It must however be said that the view just expressed has not been adopted universally by UDRP panelists in all fact situations. Thus, the panelist in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 was able to say:

‘That some internet users might initially be confused into thinking that, because of the use of the mark in the Domain Name, <britanniabuildingsociety.org> is Complainant’s official web site is of no moment. First, any such confusion would immediately be dispelled by Respondent’s prominent disclaimer and the link that is displayed to Complainant’s official site. Second, and in any event, such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the internet. A user who misleadingly stumbles upon Respondent’s site while looking for Complainant’s official site need only click the “back” button to return to her search, or the link helpfully provided by Respondent.’

But here again, the Panel believes that this matter can be resolved by remembering that the facts in every case are different and by addressing the particular facts of the case before it.

In the present case, the presence of the disclaimer, even when it is reached, is negated by the fact that the first words confronting the viewer on reaching the site are not the disclaimer, but the bold title ‘Asset Loan Co.net’ which appears at the top of the page. Contrary, therefore, to the situation in The Britannia Case, the initial confusion would not be immediately dispelled but, if anything, re-enforced.

Indeed, the evidence contained in Annex 5 to the Complaint shows that on February23,2006 the Home Page of “www.assetloanco.net” carried the words:

‘AssetLoanCo.net

Beware of Asset Loan Co

Home: About this site!

Thursday 23.Feb 2006

Welcome to Asset Loan Co.net! Are the boys going to the USA? More.’

No disclaimer or warning appeared on the website at that time. The same evidence shows that on March 8, 2006, the Home Page of “www.assetloanco.net” carried the words:

‘AssetLoanCo.net

Beware of Asset Loan Co

Home:

Wednesday 8.Mar 2006

Paul Hare & Russell Percival are thieves.

Hare & Percival do not use guns and knives….they use deception and fraud.

These men are is dishonest and completely devoid of integrity and or morals.’

There is however, no disclaimer or warning. The Respondent had the opportunity of rebutting this evidence which of course is to the effect that at least until the day before the Complaint was signed on March 9, 2006, he had no disclaimer or warning on his website at all. As the Panel reads the Response, he has not attempted to rebut that evidence.

The photographs

Further, the two most dominant features of the home page are photographs of two directors of the Complainant which have clearly been taken from the official website and which cannot help but re-enforce the notion, at least in the minds of those who look at photographs first, that the website is an official one.

The Respondent defends the use of these photographs by saying that it is not a breach of copyright to use them, for there is no claim of copyright in the photographs made on the Complainant’s website and in any event they are in the public domain.

It is not necessary for the Panel to debate or decide this issue, for the question is not whether there is a breach of copyright, but simply whether as a matter of fact the Respondent has added the photographs to give the impression that this is a site that has something to do with the Asset Loan Co and its associates. The Panel’s view is that it would stretch credulity to breaking point to think that the inclusion of the photographs was for any purpose other than to reinforce the initial notion that users had negotiated a safe passage to the official website of the Asset Loan Co., when in fact they had not and the Respondent knew that they had not.

Some users who are lured into the site as a result and who read part of what is displayed, would be actively mislead. Some would probably take one look at the ‘Police’ sign and go elsewhere for the business query they otherwise would have directed to the Complainant. Others might possibly do so. Still others will just be confused as to which site they are in and switch off.

Whatever the result may be, it is clear that it has been brought about by the Respondent’s use of the Complainant’s trademark and name without any qualification and by, for all practical purposes, not having an effective disclaimer on the site.

It is also clear that the Respondent has had the effect of disrupting the Complainant’s business by using the Complainant’s own trademark in this manner.

Applying the words of paragraph 4(c)(iii) it was neither legitimate nor fair for the Respondent to attempt to trap internet users into believing that by following his domain name, they would be led to the website of the Asset Loan Co.

The combination of all of these factors is such that there is nothing to justify a conclusion on the particular facts of the case that the Respondent is using the domain name to conduct a legitimate criticism or protest site or that he is making any other use of the internet that can reasonably be regarded as coming within paragraph 4(c) of the Policy or as constituting a legitimate use of the domain name.

The Respondent has therefore failed to establish the right or legitimate interest in the domain name that he relies on and the Complainant has made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must also prove on the balance of probabilities that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. Thefour specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

The Complainant concedes that the conduct of the Respondent ‘does not fall strictly within the four criteria…’ That submission is understandable, because the facts do not fall precisely within the wording of paragraph 4(b)(i), (ii) or (iii) and it will probably have been assumed that it was drawing too long a bow to conclude, within the meaning of sub-paragraph (iv), that the Respondent was trying to attract users to his site for ‘commercial gain’.

But in view of the Panel’s finding that the Respondent’s purpose in trying to leverage a settlement of the litigation was a commercial purpose, the Panel has concluded that, by the same reasoning, the Respondent has been using the domain name to attract users to his site for commercial gain. The commercial gain in point is the benefit he would achieve if his campaign were successful and the Complainant were forced to withdraw or settle the proceedings.

When that element is accepted, it will be seen that the conduct also meets the description of creating confusion with the Complainant’s mark, for it must give rise to confusion whether the Asset Loan Co of the domain name is the Asset Loan Co of the trademark and the general name under which the Complainant operates.

The Respondent’s conduct therefore comes within paragraph 4(b)(iv) of the Policy and constitutes bad faith.

In any event, as the Complainant points out, the criteria set out in paragraph 4(b) are not exclusive and it has long been held that any conduct that can fairly be described as constituting bad faith is sufficient.

The conclusions already reached by the Panel on the issue of rights or legitimate interests largely determine that the Respondent’s conduct be described as bad faith both with respect to the registration and the use of the domain name.

The evidence shows a pattern of bad faith from the time of registration, for the Respondent has:

(i) taken the trademark and business name of the Complainant;

(ii) reflected the exact mark in the domain name without any qualification;

(iii) pretended by that adoption that its use will lead to an official website of Asset Loan Co or interests associated with it, when he clearly knew this was false;

(iv) until recently, carried no disclaimer or warning on his website and only recently started to carry an ineffective disclaimer; and

(v) posted photographs of the directors on his website to create a further illusion of authenticity in the website.

The Respondent must also be taken to know that continuing to allow this state of affairs to exist can only cause damage to the Complainant by using its name and trademark when he, the Respondent, could advance the same issues and concerns and make the same criticisms of the Complainant simply by using a different domain name or another form of medium of dissemination such as the court proceedings.

The Panel has already reached the conclusion that the motivation for the Respondent’s registration and use of the domain name has been to try to force a settlement of the ongoing dispute and litigation between them. An examination of those proceedings that have been reported illustrates the astringent nature of the Respondent’s conduct and the extensive and serious allegations he has made.2 Without making any judgment on those matters, the fact is that the Respondent has brought the user to those issues for the purpose of achieving his objective, namely leverage of a settlement of the litigation. In so far as this conduct involves the use of the domain name it is bad faith, for it is an abuse of the proper and responsible use that all registrants should make of the internet and of domain names they have been permitted to register.

Accordingly, the Complainant has made out the third of the elements that it must establish.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <assetloanco.net> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Presiding Panelist

Dawn Osborne
Panelist

Michael J. Spence
Panelist

Dated: May 2, 2006

1 https://www.wipo.int/amc/en/domains/search/overview/index.html

2 • Rogers Trading as Living Space Building v Dale & Meyers Timber Trade Centre Pty Ltd ACN 100 593 824, in the matter of Rogers [2005] FCA 862 (June 14, 2005)

• Rogers v Asset Loan Co Pty Ltd & Ors [2006] FCA 434 (April 20 2006)

• Rogers v Asset Loan Co Pty Ltd [2004] FCA 1735 (22 December 2004)

• Rogers v Asset Loan Co Pty Ltd ACN 107 746 798 [2005] FCA 223 (17 February 2005)

• Rogers v Dale & Meyers Timber Trade Centre Pty Ltd [2005] FCA 1891 (5 December 2005)