|Kläger||1066 Housing Association Ltd.|
|Beklagter||Mr. D. Morgan|
|Entscheider||Harris, Matthew S.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
1066 Housing Association Ltd. v. Mr. D. Morgan
Case No. D2007-1461
1. The Parties
1.1 The Complainant is 1066 Housing Association Ltd., of East Sussex, United Kingdom of Great Britain and Northern Ireland, represented by Mr. Tim Crook, United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondent is Mr. D. Morgan, of East Sussex, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <1066ha.com> (the “Domain Name”) is registered with Tucows (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2007. On October 8, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On October 16, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
3.2 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 December 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2007. A Response was filed electronically with the Center on December 21, 2007 but as at the date of this decision a signed copy of that Response has not been received by the Center. On December 28, 2007, the Complainant filed an additional document with the Center in purported reply to the Response.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 4, 2008. 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
4.1 The Complainant is a housing association established in 1995 to take over the entire housing stock of Hastings Borough Council. The Complainant owns just over 4,000 properties situated in the Hastings area and is registered with the Housing Corporation which governs and regulates Housing Associations operating in England and Wales. The Complainant is part of the AmicusHorizon Group which owns approximately 28,000 homes in the United Kingdom.
4.2 1066 is a famous date that will be known to almost everyone in the United Kingdom who has some familiarity with English history. It is the date of the battle of Hastings and the beginning of the Norman Conquest, which is often characterized as the last successful foreign conquest of England. As such it is a date which is intimately associated in the public mind with Hastings and the surrounding area.
4.3 It was because of the date’s association with the Hastings area that the Complainant adopted the name the “1066 Housing Association” and this name is a brand associated with the provision of social housing in that area.
4.4 The Complainant is the registrant of the domain name <1066ha.org.uk> which was registered on January 12, 2000, and from which it runs its own website and which it also uses for its email addresses.
4.5 The Respondent is an individual who registered the Domain Name <1066ha.com> on March 29, 2007. He has also registered the domain name <1066housingassociation.co.uk>, which is the subject of separate proceedings under the Nominet DRS procedure.
4.6 It is not clear exactly who the Respondent is although he appears to be a resident in an area for which the Complainant has some responsibility. What is clear is that the Respondent and/or those who are associated with him act together under the name “Churchill United”. Churchill United has been involved in a long running dispute with the Complainant. The Domain Name has been used by “Churchill United” for a website to publicise their side of that dispute. It contains copies of correspondence between “Churchill United” and the Complainant and commentary on the same. At times the criticism of the Complainant on the website is robust and the Complainant takes exception to this (particularly those aspects of the website which question the honesty of the Complainant). The website also contains a number of small commercial advertisements but they are merely incidental to what is clearly the main purpose of the website.
4.7 The home page of the website has since on or about June 2007 contained a statement that “Churchill United” has chosen to close down and that the “1066 domain names that [it] owns will be auctioned off to our Japanese friends to the lowest bidder”.
5. Parties’ Contentions
The Complainant’s Trademark
5.1 The Complainant contends that “1066 Housing Association” is an easy and readily identifiable local brand. The Complainant holds that it has acquired unregistered trademark and common law rights in the service mark “1066 Housing Association” through its usage and registration with appropriate administration and registration authorities within the United Kingdom.
5.2 In support of its position, the Complainant relies on the decisions in the following cases: MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058, and Imperial College v. Cristophe Dessimoz WIPO Case No. D2004-0322.
5.3 The Complainant contends that the Domain Name <1066ha.com> is identical or confusingly similar to the Complainant’s service mark, namely “1066 Housing Association”. The Complainant in this respect argues that “Housing Association” is commonly abbreviated to “HA” or “ha”, and that this is a ready identifier and known abbreviated term for any Housing Association. The Complainant also refers to the fact that it uses the domain name <1066ha.org.uk> and the Complainant’s email addresses end in “1066ha.org.uk”.
5.4 The Complainant submits that terms of abbreviation, where in common use, do not enable a respondent to assert that a domain name is not ‘confusingly similar’ to a trademark, relying on the decisions in the cases of Express Messenger Systems, Inc v Golden State Overnight, WIPO Case No. D2001-0063 and Dow Jones & Company, Inc & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381.
No Rights or Legitimate Interests
5.5 Under this heading the Complainant describes how the Respondent has operated a website using the Domain Name. It contends that the website is being used to air the Respondent’s grievances. It is said that this does not constitute a bona fide offering of goods or services and the Complainant contends that the Respondent has never been commonly known by the Domain Name.
5.6 The Complainant refers to the fact that the Complainant is characterised as “liars and cheats” on the website and that the website displays various documents and correspondence between the parties. This is said not to be legitimate or fair use of the Domain Name, but why this might be the case is not explained in any further detail.
5.7 Under the heading of bad faith the Complainant provides further background to the ongoing dispute between the Complainant and the Respondent and refers back to its allegations that the Domain Name is being used for a website in which the Respondent airs his grievances against the Complainant.
5.8 In support of its allegations of bad faith the Complainant refers to the decisions in Computer Associates International, Inc. v. TvTaxi.com, Inc., WIPO Case No. D2003-0023 and R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201.
5.9 The substance of the Respondent’s Response is to be found in just three paragraphs. In the circumstances, it is easiest simply to repeat those paragraphs in full, and this also has the advantage of giving some flavour of the nature of the underlying dispute between the parties.
5.10 The Respondent first contends that the Panel should deny the remedies requested by the Complainant:
“Because of the extremely poor record of the complainant company and of the other companies owned by it or associated with it the complainant has been placed under government supervision. The complainants motives in hijacking our domain name is to hide the evidence of their continuing criminal behaviour as local residents and in most cases tenants of the complainant we do have a right to highlight their dishonesty and we do have legitimate rights to the ownership of the disputed domain name.”
5.11 In response to the specific contentions in the Complaint it contends as follows:
“The disputed domain name was available for registration for many years at a cost of 6.99 the complainant failed to show any interest in this domain name or any of the other similar domain names that they have already successfully hijacked. The complainant showed no interest whatsoever in this domain name until all of their companies were placed under supervision and they have taken this route because it gives them a cheaper solution. We purchased this domain name legally. We do not allow any less than 100 per cent truth and accuracy to be published on the site it links to and the domain name is far more appropriate to our company/group than it is to the complainants.
1066 refers to a historical date and an area of east Sussex that we as a group represent. The complainant does not represent residents in this area neither do they have any connection with the historical date. When the complainant purchased their own domain name they would have automatically been offered the disputed domain name as well and they chose not to register it because it was not suitable for their company. Because it is perfect for our group the complainant needs to hijack it from us because they need to be released from the supervision order that has been forcibly imposed upon them because of their own actions. Websites such as ours help prevent fraud-deception-mis management and descrimination by the complainant who have consistently shown that they do require supervision especially from their own tenants and other local residents.”
5.12 A signed copy of the Response has not been received by the Center as at the date of this decision. In some cases this would not be a trivial omission. It is something that will be taken into account by a panel when considering the evidential value of any factual statement contained in such a response. However, in the current case this is not really an issue of significance. Whilst there are clearly issues of fact relating to the underlying and ongoing dispute between the parties which are vigorously contested, so far as the facts which are relevant to these proceedings are concerned, there is no real disagreement.
C. Complainant’s Response
5.13 As stated above, on December 28, 2007, the Complainant filed a Reply to the Response. It is not necessary to refer to the substance of that Reply in any detail since it does not address anything which is relevant to the issues that the Panel needs to address in this dispute. Nevertheless, given the allegations made in the Response it is appropriate to record the fact that the Respondent’s submissions regarding “supervision” are disputed. No doubt the Complainant also objects to and denies the Respondent’s allegations of “criminal” conduct.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy states that the Complainant must prove the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith.
6.2 Having reviewed the documents and annexes filed by the parties, the Panel sets out its findings in respect of each of these issues below.
A. Identical or Confusingly Similar
6.3 The Panel accepts the Complainant’s contention that as a result of its activities it has common law rights in the name “1066 Housing Association” that are sufficient to constitute trademark rights for the purposes of the Policy. The Complainant cites three UDRP decisions in support of that proposition and there are many more to which reference could have been made. Other examples include Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Bill Withers v. Robert Dominico et al., WIPO Case No. D2000-1621 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, and the decisions of this Panel in Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180 and Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969.
6.4 In the Antonio de Felipe case this Panel noted as follows:
“Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name is capable of qualifying as an unregistered trademark recognised by the Policy, but in determining whether it does in a particular case, a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.”
6.5 However, in this case it is clear that the relevant jurisdiction, in respect of which rights are claimed, is England and Wales. As a number of the cases cited above also make clear, the existence of goodwill in a name that would allow an entity to bring proceedings under the English law of passing off is sufficient to constitute rights for the purposes of the Policy.
6.6 In this case the Complainant asserts the “1066 Housing Association” name to be a “local brand” and does not claim any particular fame outside of its “local community”. However, this does not matter. As is stated at paragraph 8.29 of the Third Edition of The Law of Passing Off by Christopher Wadlow:
“It is possible for a sign such as a name, mark or get-up to be distinctive of a particular person only in a limited geographical area. Some businesses, such as car dealerships, or dentists, and all but the most famous shops and restaurants, are likely to draw their customers only from their immediate surrounding area and it is only in that area that their name will be distinctive of them. Though the claimant’s business may be confined to a particular locality, there is still passing-off if another business adopts the same name, mark or get-up in or near that locality. The claimant does not have to prove nationwide distinctiveness”.
6.7 For the avoidance of doubt, the Panel is not saying that the Respondent’s actions in this case amount to passing off. Merely that the Complainant is able to establish the threshold of “trademark rights” that are necessary for proceedings under the Policy.
6.8 Having established “trademark rights” for the purposes of the Policy, the next question is whether the Complainant has shown that the Domain Name is identical or “confusingly similar” to that trademark.
6.9 The Complainant contends that the words “Housing Association” are frequently abbreviated to “HA” and that it uses the term “1066ha” to refer to itself in the <1066ha.org.uk> domain name. None of this is really disputed by the Respondent. Indeed, he seems to accept that the term “1066ha” would be understood to be an abbreviation for “1066 Housing Association” and a reference to the Complainant. No other reason than this is offered by the Respondent as to why this combination of numbers and letters would be “perfect for [his] group”.
6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
6.11 There is no real dispute that in this case the Respondent registered and is using the Domain Name as a genuine protest site. Therefore, this case essentially turns upon the question of whether it is legitimate to choose the name of the entity or organization that is being criticised without further embellishment (other than the addition of the necessary “.com” top level domain or “TLD”) as the domain name for such a site and, in particular, whether that choice and use provides a Respondent with a right or legitimate interest for the purposes of the Policy.
6.12 In assessing these issues the Panel takes little notice of the robust manner in which the Respondent has voiced his criticisms of the Complainant. No doubt the allegations in this particular case are serious ones and perhaps these allegations are both untrue and unjustified. However, this makes no difference. The Panel is in no position to form a judgment on such issues and UDRP proceedings are not the appropriate forum to try and resolve such disputes.
The WIPO Overview
6.13 The issue of whether there can be a right or legitimate interest in a domain name that is used for a criticism site is one that is addressed in some detail at paragraph 2.4 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The WIPO Overview first notes that the overview it provides is limited to cases where the sites in question involve genuine, non-commercial criticism and that there have been many UDRP decisions where the respondent argued that the domain name was being used for a free speech purpose, but the panel found that, in fact, the domain name was being used for commercial gain.
6.14 The WIPO Overview then states that in those cases where a domain name that is confusingly similar to a trademark was being used for a genuine non-commercial free speech website, two main views have emerged.
6.15 The first view is said to be that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark. Cases that are said to support that proposition are Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Triodos Bank NV v. Ashley Dobbs WIPO Case No. D2002-0776; The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166 and Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136.
6.16 The second view is said to be that, irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial. Cases cited here are Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536, and Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.
6.17 The Overview notes that the second view appears to have been primarily adopted by US panelists in proceedings involving US parties and that few non-US panelists have adopted this second view.
6.18 Lastly, the overview refers to the decision of Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, which is said to impose “further conditions” as to domain name usage in such a case.
UDRP Cases mentioned in the Overview
6.19 Given the diverging views that are said to exist it is worthwhile considering the cases cited in greater detail.
6.20 In Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, the complainant was the Norwegian state Directorate of Taxes and the domain name registered was <skatteetaten.com>. The three member panel held that the term “skatteetaten” was one that was exclusively associated with the complainant. In coming to the conclusion that the respondent had no rights or legitimate in the domain name, the panel stated as follows:
“The Respondent claims that he intended to use the domain name in issue to satirize the Complainant. The Panel accepts that it is, in principle, legitimate to operate a domain name for the purposes of lawful criticism of a trademark owner. The Panel does not, however, believe that this right extends to occupying a domain name identical to a sign identifying a trademark owner. In particular, the Panel believes that anyone wishing to contact a trademark owner, has the right to contact the owner by addressing himself to the owner’s exact identifier, followed by the top level suffix, in this case .com, and to thereby reach the trademark owner, and not a third party, which itself does not have rights in that mark.”
6.21 In Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763, the respondent registered <myeronline.com>. The respondent claimed that he had registered the domain name “in order to inform the public, potential and current stock holders of the parent company of the Complainant”, that the domain name was not being used for any commercial purpose and made reference to a number of disclaimers on the website operating from the domain name in which the respondent made it clear that there was no connection between the respondent and the complainant.
6.22 The panelist rejected the respondent’s contention that this provided the respondent with a right or legitimate interest for the purposes of the Policy. He made reference to the decision in Monty & Pat Roberts Inc. v. J.Bartell, WIPO Case No. D2000-0300, in which the panel had stated:
“The right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine”.
The panelist in Myer Stores Limited, then went on to assert:
“Here the Respondent is using a domain name which falsely conveys an association with the Complainant to lead Internet users to his website. He is thus illegitimately identifying himself as the Complainant and attracting visitors to his site by trading off the Complainant’s goodwill in its MYER trademark. By the time users reach the disclaimers on the website they have already been exposed to the misrepresentation inherent in the disputed domain name”.
6.23 In Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, the respondent registered <triodos-bank.com>. The respondent was a director of a company which had borrowed money from the complainant and the complainant had appointed a receiver over that company’s assets. The respondent used the domain name for a website to inform customers of the actions taken by applicant which in the respondent’s view had destroyed “a highly successful, award winning environmental company”.
6.24 The panel accepted for the purposes of that dispute that the respondent had a genuine grievance against the complainant and genuinely believed that the complainant has behaved reprehensibly. It also accepted that the respondent’s rights of free speech entitled him fairly to express his views on the matter. However, in the words of the panel:
“none of that entitles the Respondent to represent that he is the Complainant. In taking the Complainant’s name in the way that he has, without adornment apart from the hyphen, the Respondent has misrepresented to a substantial number of visitors that he is the Complainant. The Respondent cannot sensibly deny that proposition. How else are the Complainant’s customers likely to end up, as the Respondent hopes and anticipates, at the Respondent’s website? While the Panel is prepared to accept that some of them may be speculative visitors, not certain where they are going, clearly a not insubstantial proportion of them will be would-be visitors to the Complainant’s website.
The fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done. It does not lie in the mouth of the Respondent to deny that damage will be done to the Complainant, because that is precisely what he is setting out to achieve. He admits that he is seeking to warn off customers and/or would-be customers of the Complainant before they have any dealings or further dealings with the Complainant. The fact that that damage might in the Respondent’s view represent the Complainant’s just desserts is of no consequence.
The Panel is conscious that among panellists there are differing lines of thought on this topic, but the above represents the Panel’s view as previously expressed in a number of previous cases including in particular D2001-0376 […]. In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive Internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.”
6.25 In The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166 the respondent had registered <natwestbanksucks.com>, although this was the latest in a line of registrations incorporating the “Nat West” name and those previous registrations had not used the “sucks” suffix. The website purported to provide information to those who had “suffered and had their lives destroyed as a result of the reprehensible behaviour of Natwest.”
6.26 The panel noted that:
“in order to fully exercise free speech rights, is not indispensable to use someone else’s identical or confusingly similar trademark. The same reasoning was followed i.e. in Westminster Savings Credit Union v. Hart Industries Inc. And Gregory Hart, WIPO Case No. D2002-0637 (August 30, 2002) and in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018 (October 22, 2001) holding: ‘For these reasons, whilst the Panel accepts that the Respondent may be free publicly to comment on the Complainant’s workmanship on the Internet, the Panel does not consider that such freedom confers a right or legitimate interest in the use of a domain name which is identical to the Complainant’s trade-mark.’“.
6.27 From this the panel went on to conclude that the respondent did not have any rights or legitimate interests in respect of the domain name.
6.28 With all due respect to the panelist in the NatWest case, the reasoning adopted in this case is difficult to follow. The panelist seems to make the logical jump from the cases that held that the use of a domain name that is identical to a trademark does not provide a right or legitimate interest to the conclusion that this is also true of any domain name that is confusingly similar (regardless of whether or not that domain name involves a representation by the respondent that he is the complainant), without explaining why this is so. The statement that “in order to fully exercise free speech rights, is not indispensable to use someone else’s identical or confusingly similar trademark” does not really provide that explanation.
6.29 Nevertheless, it is not necessary to explore this aspect of the decision any further in the case now before the Panel. Suffice it to say that the NatWest case provides limited further authority for the proposition that use of a domain name that is identical to a trademark for the purposes of a criticism site does not provide a right or legitimate interest.
6.30 Lastly, in Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc. WIPO Case No. D2004-0136, a case involving both a US complainant and US respondent, the respondent registered <kirklandandellis.com>. The panel concluded from the content of the website operating from the domain name that the respondent’s purpose was “to tarnish the legal profession as a whole, and specifically tarnish Complainant’s firm, it being a prominent member of the legal profession”.
6.31 In concluding that the respondent had no rights or legitimate interests in the domain name, the panel stated:
“Thus, while Respondent may express its views about the quality, or lack thereof, of the U.S. legal profession, in general, or any firm offering legal services, in particular, Respondent does not have the right to identify itself as that particular firm. And, there is nothing in the domain name to indicate that the site is devoted to criticism, even though that fact is apparent when visiting the site. By using Complainant’s service mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users. These views are just as applicable in this case as when first expressed in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299”.
6.32 The competing line of cases from which the second view can be discerned commences with Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190. In this case the respondent had registered <bridgestone-firestone.net>. He was a former employee and current pensioner of the Firestone Tire and Rubber Company, an affiliate of the complainants. The respondent had been engaged in a dispute with the complainants over pension payments since 1990 and used the domain name for a “complaint” website.
6.33 The panel cited US case law on the issue of fair use and free speech defences in the context of US trademark law. It noted that it was aware of the line of trademark infringement cases holding that <trademarksucks.com> domain names may be protected as free speech because of their “communicative content” while <trademark.com> domain names served merely as “source identifiers”. However, the panel declined to apply that distinction, citing another US court decision that had rejected this as too simplistic and which suggested that a decision on a particular domain name could only be reached after factual enquiry. The panel then went on to state the following:
“Such fact-intensive analyses on issues of trademark infringement and dilution are beyond the scope of this administrative proceeding and are better carried out by arbitrators or courts.
The question presented in this case is whether fair use and free speech are defences to a claim for transfer of a domain name under the Policy. Under Paragraph 4 (c)(iii) of the Policy, non-commercial fair use is expressly made a defense, as noted above. Although free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, the list is not exclusive, and the Panel concludes that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii). The Internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law.”
6.34 In TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536, the domain names in dispute were <tmpworldwide.net> and <tmpworldwide.org> and were being used by the respondent to criticise the complainant. The panel concluded that the respondent was using her “First Amendment right to criticize Complainant and comment on her experiences in dealing with Complainant”. The panel went on to state that:
“As the legislative history surrounding passage of the “Anticybersquatting Consumer Protection Act” indicates, use of a mark in a domain name where the Internet site involves commentary, comparative advertising, criticism, parody, or news reporting is beyond the scope of the law. In the Panel’s view, it is also beyond the scope of the Policy.”
6.35 In the circumstances, the panel concluded that the complainant had failed to establish that the respondent had no rights or legitimate interests in respect of the domain name, a finding that it considered to be consistent with the Bridgestone case already described above.
6.36 Lastly, in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, the domain name was <hjta.com> and again it was being used to criticise the complainant. The decision is notable for its tour de force of citation of previous UDRP decisions in this area, including, significantly, many of the cases on both sides of the debate including Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 and Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190. The panelist also cites a significant amount of US case law on the issue.
6.37 Having conducted this review the panelist stated as follows:
“In sum, although there has been a split even in the United States, in this Panel’s view, the weight of authority suggests that a consensus is emerging that trademark.TLD domain names, when used for U.S.-based criticism sites, can constitute a legitimate interest, especially if there are not other indicia of bad faith. Given that this appears to be the emerging view in federal courts as well, aligning the decisions under the Policy with decisions emerging from the courts will prevent forum shopping.”
6.38 After various comments on the significance of commercial use of a domain name (which for reasons that are explained later in this decision are not relevant in the case now before the Panel), he significantly goes on to conclude as follows:
“The Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites. Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.”
6.39 The last case cited by the WIPO Overview is Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, which involved the domain name <covancecampaign.com>. The case is not cited in the WIPO Overview as belonging to any particular view but it is clear that the panelist in that case in large part followed the first line of cases detailed above. The decision is notable in contrast with a number of cases in this area for the detailed reasoning it gives in order to justify its conclusions. In the circumstances, it is worth reproducing a large part of this aspect of this case. The panelist stated as follows:
“;Previous Panels have in similar factual circumstances taken divergent views as to whether a Respondent could ever be making a legitimate non-commercial or fair use of a domain name which is identical or confusingly similar to the complainant’s trademark. The apparent trend in these cases is conveniently set out in a very recent decision by sole panelist David H. Bernstein in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.
The consensus approach in cases where a criticism site is based outside the United States appears to be that a Respondent has no right to use a domain name which is identical or confusingly similar to a Complainant’s trademark for the purposes of lawful criticism of the Complainant. However where a criticism site is based in the United States, or where a case is decided by US-based Panels, a number of Panels have held that the Respondents use of an identical or confusingly similar trademark as its domain name may give rise to a legitimate interest provided that there are no indicia of bad faith. Mr. Bernstein suggests that the discrepancy in approach between Panels arises from US legal principles and the robust approach to free speech derived from the First Amendment to the US Constitution and that this approach is mirrored by recent decisions of the US Federal Courts.
As a matter of principle, this Panel would not have thought that it was appropriate to import unique national legal principles into the interpretation of paragraph 4(c) of the Policy. This is so even if the effect of doing so is desirable in aligning decisions under the Policy with those emerging from the relevant courts and thus avoiding instances of forum shopping.
The overriding purpose of the Policy is to prevent cybersquatting in favour of legitimate trademark owners but in doing so paragraph 4(c)(iii) of the policy clearly seeks to balance the trademark owner’s right against the rights of a domain name owner in circumstances where use of the trademark as part of the domain name is truly for the purposes of criticism and the domain name owner in no way seeks to make a commercial use of the trademark or to tarnish it. Nowhere is it expressly anticipated by the Policy that this paragraph may not operate if the domain name at issue is found to be identical or confusingly similar to the Complainant’s trademark.
However where the relevant criticism site is not based in the United States, the effect, as noted by Mr. Bernstein, of following the consensus Panel view is that once a Panel has found a domain name to be identical or confusingly similar to the Complainant’s trademark the domain name necessarily cannot qualify as being used for “legitimate” or “fair use” purposes. No matter that the Respondent’s website may be truly a criticism site which in no way uses the trademark in a trademark sense, or seeks to divert custom from, or tarnish the Complainant. The Respondent will not succeed under paragraph 4(c)(iii).
The rationale for this approach appears to be that the Policy does not countenance any type of ‘initial confusion’ of the sort which occurs when a member of the public sees the disputed domain name and thinks that it may lead to a website associated with the Complainant. Even where there is a very clear disclaimer on the website which disabuses any notion that the website is endorsed by the Complainant, the consensus view is that the requirement of the Policy that the Respondent makes a “legitimate non-commercial or fair use of the domain name” prohibits any type of initial confusion from being created. On this view the Respondent could just as easily have exercised its right to freedom of expression by choosing a domain name which was not identical or confusingly similar to the Complainant’s trademark [see for example Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823.
There is in this Panel’s opinion merit in the view that a domain name which is identical to the Complainant’s trademark should necessarily not qualify as a “legitimate non-commercial or fair use” under paragraph 4(c)(iii) regardless of website content. This is because there is an immediate potential for false association with the trademark owner and a degree of initial confusion which is at the top end of the spectrum. To hold otherwise may also prevent a trademark owner from validly acquiring an identical domain name which it would otherwise be entitled to in accordance with the Policy’s aim of preventing cybersquatting, minimising confusion with established trademarks and helping to assure bona fide trademark owners’ rights. It is worth mentioning that the vast majority of cases decided to date by panels under the “initial confusion” type rationale appear to concern domain names falling into this identical ‘trademark.com’ category.
Where however a domain name is not “identical” but is “confusingly similar” to a Complainant’s trademark in the ‘trademark + modifier.com’ or ‘modifier + trademark.com’ format then the degree of initial confusion may differ markedly in the particular factual circumstances of the case. In this Panel’s view this spectrum of confusion is not susceptible of some kind of brightline analysis or automatic rule for legitimacy. The potential degree of initial confusion needs to be considered in the particular factual circumstances of the case while keeping in mind the Policy’s aims.”
6.40 The panel then goes on to consider in what circumstances the addition of a “modifier” may result in the respondent being able to claim a right or legitimate interest. However, in the case now before the Panel there is no “modifier”. The Domain Name essentially reproduces the entirety of the Complainant’s “1066 Housing Association” name, albeit in an abbreviated form. Accordingly, it is not necessary to consider that part of the decision.
More Recent UDRP Cases
6.41 The last of the cases cited in the WIPO Overview is over three years old. However, it would appear that the debate represented by the two views still continues to this day. For example, in the recent case of Asset Loan co. Pty Ltd member v. Gregory Rogers, WIPO Case No. D2006-0300, a three member panel citing some of the cases already mentioned stated that “opinions are still divided on this issue even today”. This case involved an Australian complainant and respondent and the domain name in issue was <assetloanco.net>. The panel were able to decide the case of legitimate interests having concluded 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.” However, it seems clear that even absent this conclusion the panel would still have come down in favour of the complainant on this issue, at least a majority of the three member panel appearing to come down firmly on the “first view” side of the debate. In particular it stated as follows:
“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.”
6.42 The decision then goes on to quote a number of cases in support of that proposition including the Triodos Bank case already mentioned above.
One View or Two?
6.43 From these decisions it is clear that, at least so far as the use of a domain name that is essentially identical to a trademark and does not contain any distinguishing “modifier” is concerned, there are two lines of thought. One that appears to have taken root among some US panelists where both parties are US entities is that if the website to which the domain name resolves is used for non-commercial free speech purposes, the respondent can have a legitimate interest in the domain name. The other view which seems to predominate outside of the United States is that it does not.
6.44 It would therefore be possible at this stage simply to say that since the parties in this case are not based in the United States, the non-US cases apply and the Respondent has no right or legitimate interest in the Domain Name. Whilst that would be the easiest route for this Panel to follow, it does not think this would be the right thing to do. The Panel believes that the Respondent is entitled to an answer to the question why one view is followed in his case rather than another that is more fulsome than “it’s because of where you are located”. Further, for the reasons that the Panel will go on to describe, it suspects that the difference in approach based upon the geographical location of the parties is ill founded. Therefore, for what it is worth this Panel will give its own view as to whether two separate views are justified, and if not, which approach is to be preferred. In doing so it realises that it may be accused of incidentally trespassing into issues of US law upon which it has heard no argument and on which this Panel, not being a US trained lawyer, is ill-equipped to judge. The Panel begs the indulgence of those who are better placed to comment on such matters in the hope that what follows may in some small way add to useful debate on this controversial question.
6.45 It is clear that at least initially there was some disagreement as to whether the US freedom of speech law means that it is legitimate to register a domain name that is identical to a trademark for the purposes of criticism. The Bridgestone /Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190, has sometimes been said to be authority for the proposition that US law and therefore the Policy permits such registration. However, if one carefully analyses the reasoning in this case this is not quite right. As has already been explained above, the panelist stated that at that time such registration might or might not be legitimate under US law. It all depended on the facts and she then goes on to opine that the necessary enquiry under US law as to whether or not it was legitimate was not practical in a UDRP context.
6.46 In other words, the Bridgestone case is not authority for the proposition that US law necessarily requires that these types of registration be permitted. At most it seeks to set down some form of presumption (perhaps irrebuttable) that a complainant cannot show a lack of right or legitimate interest if a respondent might be able to run a US free speech argument.
6.47 However, it would appear that after the Bridgestone case in 2000 things moved on and that US law became clearer. This Panel notes that in 2004 the learned panelist in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 stated that the consensus view among certain US panelists “appears to be the emerging view in federal courts as well”. This Panel is happy to bow to the superior knowledge of this panelist on such issues and assumes for the purposes of this decision that this is so.
6.48 Even if this is correct, the Panel does not think it makes a difference. As the panelist stated in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206:
“As a matter of principle, this Panel would not have thought that it was appropriate to import unique national legal principles into the interpretation of paragraph 4(c) of the Policy. This is so even if the effect of doing so is desirable in aligning decisions under the Policy with those emerging from the relevant courts and thus avoiding instances of forum shopping”.
6.49 This Panel agrees. This Panel faced a similar issue in McMullam Bros Limited, Maxol Limited and Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct Limited v. Web Names Ltd, WIPO Case No. D2004-0078, where the question arose as to whether it was appropriate to import national law concepts of limitation periods and “without prejudice” correspondence into UDRP proceedings. It concluded that it was not, stating:
“The Policy provides an international procedure for international application by a panel comprising panelists who may come from a jurisdiction unconnected with either party. To import a national rule simply because both parties come from the same jurisdiction may result in similar cases being decided in a different manner dependant upon geographical accident. This is a conclusion that this Panel finds inherently unattractive. At times resort to national law may be unavoidable (for example when determining the existence of a trademark recognised by the Policy), but the Panel sees no reason for doing so in this case.”
6.50 In this Panel’s view, panelists should struggle to interpret the Policy in as uniform a manner as possible regardless of the location of the parties. As the panelist in Howard Jarvis stated:
“Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts.”
6.51 It might, of course, be said with some force that this quotation is taken out of context and the “fact” that two entities are in the same jurisdiction such as the United States is as much a relevant fact as any other. Perhaps this “fact” will justify different treatment. Therefore, maybe it is unfair to say that a case where two parties are in the United States and a case where two are, say, in France are “materially indistinguishable”. However, this Panel would suggest that those seeking to impose different rules dependent upon national location are at least required to provide a compelling justification as to why this is the case.
6.52 In Howard Jarvis, that justification is perhaps to be found in footnote 4 of the decision. This states:
“It is generally accepted that, when both parties in a UDRP proceeding are from the same country, it is appropriate to consider and apply that country’s legal principles in evaluating the parties’ rights and conduct. Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000) at n.2 (applying U.S. law); Grupo Picking Pack, S.A. v. Prospero Moran, Case No. D2000-1220 (WIPO December 18, 2000) (applying Spanish law). The Policy does create a set of basic standards for determining whether a respondent has been guilty of cybersquatting conduct that justifies transfer, but those standards do not replace local law. Rather, in the event of a conflict between the Policy and local law, the Policy makes it clear that local law, as interpreted by national courts, would ultimately govern any issues of domain name transfer. Policy 4(k).”
6.53 The cases cited do indeed suggest that local law should apply when parties are from the same jurisdiction1. There also are many other cases that the panelist could have cited in support of this proposition and such statements continue to be found in many UDRP cases to this day. A relatively recent example would be American Mensa, Ltd. v. Alan Heigl et al. WIPO Case No. D2005-0068.
6.54 However, as the Covance case demonstrates, there are cases that point the other way. More importantly, as far as this Panel has been able to discern, there is a notable lack of reasoning in the relevant cases as to why it is (outside the narrow question of the existence and extent of trademark rights) local law should apply either generally or in the current circumstances. Some cases, such as the Amercian Mensa case, make reference to paragraph 15(a) of the Rules, but this, at least to this Panel, is unconvincing. Paragraph 15(a) states:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.
6.55 The first thing to say about this paragraph is that it leaves the issue of whether to apply “rules or principles of law” to the relevant panelists. Whether or not they should actually do is, of course precisely the question that this decision is seeking to address. Second, the wording of this paragraph does not actually make reference to national laws at all. It instead refers to the “rules and principles of law”. This appears to be a somewhat more abstract notion. It brings to mind the concept of “general principles of law” that is well known in many legal systems and which is also to be found in the Statute of the International Court of Justice. Therefore, this Panel would suggest that this provision provides scant basis upon which to import a principle that local law should apply where both parties are in the same state.
6.56 The reference to paragraph 4(k) of the Policy is at first sight more promising. This Panel’s understanding is that there have been very few occasions on which this provision has been invoked, but paragraph 4(k) does contemplate proceedings ultimately being resolved by “a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name”. How, it might be said, can the local courts determine whether an entity has a “right to continue to use” the domain name unless it applies local law principles? If, therefore, local law prevails, why not (so the argument seems to go) incorporate this into your assessment of the Policy from the outset?
6.57 The problem is that the Policy and local laws as to cybersquatting and trademark infringement are different. They do not do, and are not intended to do, the same thing. They in large part overlap and frequently a complainant who might succeed in UDRP proceedings might well have succeeded under local trademark or anti-cybersquatting law. However, as the panel stated in Delta Sir Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza WIPO Case No. D2003-0372 (another “complaint” website case) “trademark infringement and abusive registration within the meaning of para 4(a) of the Policy are not the same thing” and “the fact that a particular set of facts may constitute trademark infringement has of itself no bearing on whether it is an abusive registration2”. Indeed, the panelist in Howard Jarvis appears to recognise this disconnect when he refers to potential conflict between the two.
6.58 Furthermore, if you are going to import local law concepts into cases where the parties are from the same jurisdiction, where do you stop? How do you pick and choose between those concepts that should be imported into the Policy and those that should not?
6.59 It is also hard to see why, if the argument that local law prevails in UDRP proceedings (as opposed to proceedings afterwards) is correct, it should be limited to cases where both parties are in the same jurisdiction. Many lawyers will be familiar with conflict of laws rules that determine whose laws prevail when parties are in a different jurisdictions. Why then not apply these conflict rules (presumably using the specific conflict rules that apply in the jurisdiction to which the complainant has submitted under paragraph 3(b)(xiii) of the Rules) to cases where the parties are in different jurisdictions to determine which is the law that applies and then let that local law inform the outcome of the UDRP proceedings? After all, in such a case the losing party in such a case is equally able to bring proceedings under paragraph 4(k).
6.60 This Panel would suggest that there is no real justification for such a local laws approach either in the Policy or the Rules and that such approach should be avoided wherever possible. It risks the UDRP fragmenting into a series of different systems, where the outcome to each case would depend upon where exactly the parties happened to reside. That way chaos lies.
6.61 In short, the act of bringing local law into the assessment of the Policy when taken to its logical conclusion as a matter of practice undermines the very goal of commercial certainty identified in the Howard Jarvis case and with which this Panel whole heartedly agrees. There may be cases where it is inevitable, but in general it should be resisted. Certainly so far as the specific issue of rights and legitimate interest are concerned the Panel sees no reason to import national rules and good reason not to do so.3
6.62 There is one further point worth mentioning before leaving this issue. There is something rather curious in the fact that at the moment there appears to be a US approach and a non-US approach on this particular issue. Laws protecting and sensitivities surrounding freedom of speech are not unique to the United States. They exist in many countries and frequently form part of those countries basic constitutional rules, even if the exact way in which the laws operate may vary from state to state. If local US law is to influence the issue in the United States, then logically, local laws not only can, but should, do so elsewhere in the world. And yet for the most part, panelists in other jurisdictions have not considered it necessary to take into account their local laws in coming to their views on this particular issue.
Which is the Right Approach?
6.63 If then only one view should apply regardless of the location of the parties, which is the view that should prevail? In the opinion of this Panel it is that which is set out in the Triodos Bank NV case and explained in greater detail in Covance. The basic difficulty with using a domain name that is identical to a trademark is that in most cases the domain name because of its identical nature will be perceived by the public as being in some manner authorised by the trademark owner. Essentially, by adopting that domain name the registrant is making a false representation to the world as to who he is. Perhaps there will be cases where as a matter of fact a respondent will be able to show that the domain name is not perceived by the public in this way. Nevertheless, in the absence of such evidence, a panelist can reasonably assume that such a false representation is being made.
6.64 This conclusion involves no real curtailment of the principles of free speech. What is being curtailed is not free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorised by the trademark owner. It is also an approach that involves no judgment being made on the content of the criticism site. Of course, it may be that as a consequence of using a different domain name less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site.
6.65 It is one thing for a person to stand on a street corner and to voice his concerns about and criticism of a trademark owner. It is quite another to pretend to passers by that you represent the trademark owner and once you have caught their attention to reveal your true identity and real intentions. The same is so on the Internet. It is for this reason that it is no answer for a respondent to claim that once the Internet user arrives at the relevant website it then becomes apparent (whether that be as a result of the use disclaimers or otherwise), who is running that site.
6.66 This Panel also believes that this approach is justified to some degree by reference to the wording of the Policy itself. Paragraph 4(c)(iii) of the Policy refers to “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”. It is difficult to see how impersonating someone else is either “fair” or “legitimate”. This Panel also does not think that it is an answer to this to say that if the act is “lawful” as a matter of local law then it must be either “fair” or “legitimate”. The terms “lawful” or “legal” do not mean quite the same thing as “fair” or “legitimate”. Further if the framers of the Policy had intended that lawful use of a domain name automatically created a right or legitimate interest, then it is puzzling that they did not simply say so.
Application to this case
6.67 There is one thing that is worth mentioning before applying the reasoning set out in this decision to the facts of this case. The panel has paid no attention to the fact that the website operated by the Respondent appears to have contained a small number of small advertisements. First, the Complainant has brought forward no positive case to the effect that the existence of these advertisements suggests that the Domain Name was registered or is being used for commercial gain. As a consequence it would be wrong for the Panel to decide this aspect of the case on a factual ground that had not been put to it or the Respondent. Second, even if the Complainant had put forward such an argument, it is far from inevitable that it would have succeeded. The advertisements in question are very small and merely incidental to what clearly has always been the predominate purpose of the site, i.e. to air “Churchill United’s” grievances and complaints about the Complainant. Therefore, although the existence of such material does the Respondent no favours, the Panel declines to decide this case on this basis.
6.68 Once this issue is disregarded, the issue of rights and legitimate interests becomes relatively straight forward. The Respondent has in this case intentionally registered a Domain Name that is essentially identical to the mark in which the Complainant has rights and as a consequence use of that Domain Name even in connection with a genuine criticism site does not provide the Respondent with a right or legitimate interest for the purposes of the Policy.
6.69 The reason why the Panel states that the Domain Name is “essentially” identical is because this is a case where for the purposes of the paragraph 4(a)(i) of the Policy the Domain Name strictly is not “identical” to the mark relied upon, but “confusingly similar”. However, this is simply because the Respondent has used a common abbreviated form of the name in which the Complainant has claimed rights. The key point is that the Respondent has not added (to use the term used in the Covance case) any “modifier” to the trademark that might suggest that the Domain Name is not controlled by the Complainant. Accordingly, the Domain Name can therefore still be treated as “identical” to the trademark for the purposes of the rights and legitimate interests assessment.
6.70 Accordingly, the Complainant has successfully made out paragraph 4(a)(ii) of the Policy.
6.71 Given the findings of the Panel both as a matter of fact and as a matter of interpretation of the Policy as set out above, the issue of registration and use in bad faith can be dealt with in a somewhat more succinct manner.
6.72 There is no suggestion in this case that the Domain Name was registered for any purpose other than a genuine criticism site. In the circumstances, it is somewhat difficult to characterize the activities of the Respondent within any of the categories of circumstances evidencing bad faith set out at paragraph 4(b) of the Policy.
6.73 Arguably the most relevant of these are the circumstances set out in paragraph 4(b)(iv) of the Policy. Here the Respondent has clearly attempted to attract Internet users to his website by creating a likelihood of confusion. The difficulty is that paragraph 4(b)(iv) of the Policy requires that this be done for commercial gain.
6.74 There is some suggestion in the material that was filed by the Complainant that the Respondent did have some form of financial gain in mind. In particular, there is a reference to a dispute about funding for a youth football team. Nevertheless, the Panel is not prepared to decide this case on this basis. First, the Complainant has not contended that this was the purpose of the website and it would be unfair to the Respondent to reach such a conclusion without giving him an opportunity to reply to the same. Further, to decide the case on this basis would be somewhat unreal since this is just one of a number of disputes that are aired on the website.
6.75 Further, even if this were the only or main dispute between the parties in this case, the Panel thinks that this would not be enough. First, it is difficult to see how in circumstances where an individual seeks to air a grievance about what he perceives to be a financial wrong (no doubt with the hope that that wrong may be righted) can sensibly be said to be activity for “commercial gain”. Second, it would seem very odd indeed for the question of whether a protest site was registered in bad faith to turn on the question as to whether the website in question seeks to right an alleged financial wrong done to the protester rather than some other form of wrong.
6.76 However, in the opinion of the Panel even though the Respondent’s activities cannot be said to fall within any of the specific categories identified in paragraph 4(b)(iv), the registration is still in bad faith.
6.77 A similar conclusion was reached by the panel in Triodos Bank NV v. Ashley Dobbs mentioned earlier on in this decision. After noting that the list of circumstances set out in paragraph 4(b) was not exclusive, it went on to quote with approval the following passage from the decision in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376:
“In assessing ‘bad faith’ for the purpose of the Policy, the motivation of the [Respondent] is all-important. In this case, the motivation is clear. As the Complainant claims in one part of the Complaint and as the Respondent expressly admits in the Response, the Domain Name “was registered for the purpose of criticizing the Complainant, its business and activities.” The Panel accepts that that was the Respondent’s intention. In so saying, it is also clearly the case that, as the Respondent stated in its letter of February 12, 2001, an important aim of the campaign in which the Domain Name was to be used was to stop nuclear processing. Necessarily, if successful, that would cause serious disruption and damage to the Complainant’s business.
In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trademark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website.
Had the Respondent been a competitor, there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iii) of the Policy. Had the Respondent been acting “for commercial gain”, there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iv) of the Policy.
In this Case, the Respondent is neither a “competitor” of the Complainant nor is it acting for “commercial gain” in the ordinary sense of those words. However, while the Panel recognizes the Respondent’s right to campaign and to conduct its campaigns by way of the Internet, the Domain Name is not necessary for that purpose. Moreover, registration of a domain name comprising the name and trademark of another and specifically with a view to causing damage and disruption to that other cannot be right, still less where the use of the Domain Name will trick Internet users intending to visit the trademark owner’s site into visiting the registrant’s site. The Panel therefore finds that the Domain Name was registered in bad faith”.
6.78 Similarly, in Banque Cantonale de Geneva v. Primatex Group S.A., WIPO Case No. D2001-0477, the panel stated in explaining its finding of bad faith registration:
“Although not specifically mentioned as an indication of bad faith, it is the Panel’s belief that the misleading domain name as well as the other elements mentioned above are indications of bad faith in the registration and use of the Domain Name By deliberately using Complainant’s trademark as a designation for its protest site without, at the same time, adding a component identifying the true nature of the website, Respondent created a likelihood of confusion with Complainant. In addition, by not designating its protest site as a “…sucks” site, or similarly reflecting the character of protest in the chosen domain name, a definite risk was created that Respondent’s website is attracting Internet users, in particular bank clients and other persons interested in bank’s services, who may not wish to be targeted by a protest site. These people would not knowingly follow a “…sucks” link on the Internet or any “…sucks” hits found through search engines”
6.79 In Delta Sir Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza, WIPO Case No. D2003-0372, another protest site case, the majority of the panel simply stated that given its finding that the respondent had deliberately registered the domain name to suggest to Internet users a link to the complainant that it was “compelled to find that the Domain Names were registered and are being used in bad faith”.
6.80 For similar reasons, the Panel finds4 that there was bad faith registration and use in this case and the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
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 <1066ha.com> be transferred to the Complainant.
Dated: January 18, 2008
1 In fact particular care needs to be taken with the case of Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (WIPO June 6, 2000). It does indeed apply US law but this was essentially on the issue of the existence of trademark rights. The Panel would agree that this was indeed the right approach to the question of trademark rights for all the reasons given in footnote 3 below. However, this the Panel would contend should be seen as an exception to the usual rule
2 These are in fact the words of a majority of the three person panel, but it is clear from a reading of the case that on this particular issue all three panelists were in agreement.
3 It might be said that there is a tension between the comments of this Panel on avoiding the reference to national law on the question of “legitimate interests” and the extensive references to local law that the Panel has made in this case on the question of trademark rights. However, there is a difference. Trademarks (with a few exceptions) are by their very nature national rights with national scope. It is difficult to see how the existence and extent of trademark rights can be assessed other than by reference to local law. Also the fact that trademark rights can only have a national foundation is something that has long been settled and is specifically commented upon in the context of unregistered rights in Chapter 5 of the Report of the Second WIPO Internet Domain Process. For a more detailed explanation of the history and the issues here see the decision in Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180.
4 In coming to its conclusions on bad faith the Panel has taken no notice of the fact that the Respondent’s website states that the “1066 domain names” will be sold somewhat bizarrely to the “lowest bidder”. The Panel is unclear as to whether this reference is in error and that the intention was instead to sell the domain names to the highest bidder or whether it was quite deliberate and that this is because the Respondent was concerned that the auctioning of the domain name might of itself have been evidence of bad faith. However, whichever is the case does not matter. There is no serious suggestion in this case that the domain name was registered with the intention of selling it to the Complainant or a competitor for valuable consideration in excess of the Respondent’s documented out-of-pocket costs.