WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc.
Case No. D2009-0062
1. The Parties
The Complainant is Grupo Costamex, SA de C.V., of Mexico, represented by Olivares & Cia, Mexico.
The Respondents are Stephen Smith of Washington, United States of America, and Oneandone Private Registration / 1 & 1 Internet Inc., of Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <royalholiday.info> (the “Domain Name”) is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2009. On January 19, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On January 20, 2009, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 28, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 30, 2009. The Center verified that amended 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 February 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on March 9, 2009. 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.
In the absence of a Response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondents in accordance with the Rules, paragraph 2(a). The Panel is satisfied that the Center has done so.
By procedural direction made on March 23, 2009, the time for the Panel to give its decision in this case was extended to March 25, 2009.
4. Factual Background
The following uncontested facts are taken from the Complaint.
The Complainant is a Mexican company which provides timeshare, travel agency and club, and vacation and tourist services, worldwide.
The Complainant is the registered proprietor, in Mexico, of two device marks which prominently incorporate the words “Royal Holiday”, with the word “Royal” in large font with a stylized “O”. The first such mark covers business and advertising services, and specialty discount card services in international class 35. This registration was granted on February 28, 2000. The second such registration, granted on July 9, 2003, covers hotel and restaurant services, tour camping services, and bar and night center services, in international class 43.
The Respondents and the Domain Name
The Domain Name was registered on June 5, 2007.
The Complainant says that, until December 2008, the Domain Name resolved to a website (“the Respondents' website”) at which “false and defaming” information was published about the services provided by the Complainant under its ROYAL HOLIDAY marks. The Complainant produced printouts from the Respondents' website printed on June 12, 2008. These pages were headed: “Royal Holiday Rip-Off Home”, and contained a prominent heading “Warning traveling to Mexico can be hazardous to your wallet”. At the foot of the home page, there was a statement: “Created by travelers for travelers”.
There was a “short audio” link on the home page of the Respondents' website, but the Complainant did not produce a transcript or provide a description of its contents. There were also several click-on links to other pages, and again, copies of those other pages were not produced. The links to the other pages were entitled “Ebay Sales”, “How They Sell You”, and “How to Defend Yourself”. The text on the home page invited the site visitor to “review the Ebay auction page to learn about the [allegedly very low] ‘resale' value of these packages”.
In general terms, the Respondents' website warned site visitors of the dissatisfaction allegedly experienced by purchasers of Mexican vacation timeshares. The Respondents' website specifically alleged that “Royal Holiday” had attracted a high number of complaints, and referred to the author's personal dissatisfaction with the Complainant's timeshare products. The Respondents' website alleged fraud on the part of the Complainant.
On June 26, 2008, the Complainant sent, via email, a cease and desist letter to 1&1 Internet Inc. The email referred to the Complainant's ROYAL HOTEL marks, and requested the transfer of the Domain Name to the Complainant. The Complainant did not receive any reply to this email.
The Complainant says that since January 2009 the Domain Name has simply been parked. A printout of the Respondents' website as at January 15, 2009, showed a Sedo Parking site, with sponsored links to third party websites which appear to have been focused primarily on hotels and travel. One such link was “Timeshare for Sale”. At the top of the page, there was a statement “This site is currently under construction”.
The Panel visited the Respondent's website on March 17, 2009, and on that date the Respondents' website appeared to be in similar format (i.e., a parking page, with links to third party websites), although on this occasion the site appeared to be hosted by 1&1 Internet Inc.
The Complainant asserts that the Respondents are not affiliated with the Complainant in any way, and that the Respondents have not been authorized by the Complainant to register any domain name incorporating the Complainant's trademarks.
On January 14, 2009 and January 30, 2009, the Complainant conducted trademark searches in Mexico to see whether 1&1 Internet Inc. or Stephen Smith had applied for any trademarks in Mexico. The Complainant produced the results of these searches, and although they were in the Spanish language, they appeared to show no mark registered to either of the Respondents.
5. Parties' Contentions
The Complainant contends:
1. The Domain Name is identical or confusingly similar to the Complainant's “Royal Holiday” marks.
2. The Respondents have no rights or legitimate interests in respect of the Domain Name, having regard to the following factors:
(i) There is no evidence that, before they received notice of the dispute, the Respondents had used (or made 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.
(ii) The Respondents have not been making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's ROYAL HOLIDAY marks. The Respondents' website displays information which is defamatory of the Complainant's business, services, and registered trademarks.
(iii) The Respondents have no license or authorization from the Complainant to register any domain name incorporating the Complainant's marks.
(iv) Since the Domain Name is virtually identical to the Complainant's marks, the Respondents cannot reasonably pretend that they were intending to develop a legitimate activity with the Domain Name, because it is clear that the Respondents knew of the Complainant's business conducted under the ROYAL HOLIDAY mark (the Respondents' website displays tarnishing information about the Complainant's trademarks).
3. The Domain Name was registered and is being used in bad faith. Grounds:
(i) The Domain Name was registered primarily for the purpose of disrupting the business of a competitor.
(ii) The Respondents registered and are using the Domain Name only to display false, defaming, misleading, and tarnishing information that tends to disrupt the Complainant's businesses.
(iii) It is clear that the Respondents knew of the Complainant's services, businesses, and trademarks. Knowledge coupled with the publication of tarnishing information, is sufficient evidence of bad faith (citing Sociedad General de Aguas de Barcelona, S.A. v. Luis Toribio Troyano, WIPO Case No. D2003-0438, and NBC Universal Inc. v. Szk.com/Michele Dinoia, WIPO Case No. D2007-0077).
(iv) The Respondents' use of a domain name which is identical to the Complainant's marks, makes it self-evident that consumers will believe that they will find information regarding the Complainant's services at the Respondents' website. In reality, they would find only disparaging information about the Complainant.
(v) The Respondents could have registered a domain name which described in a better way the nature of the criticism activities they intended to carry out. The fact that the Domain Name is identical to the Complainant's marks, means that it was clearly registered and is being used in bad faith, and freedom of speech or expression does not provide an answer to the Complaint (citing Compagnie de Saint Gobain v. Com-Union Corp¸ WIPO Case No. D2000-0020).
(vi) The Respondents' failure to respond to the Complainant's cease and desist letter is indicative of bad faith. Likewise, the Respondents' use of a proxy registration service is indicative of bad faith.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It has proved that it is the registered proprietor of two marks registered in Mexico which prominently incorporate the words “Royal Holiday”, and those words are incorporated in their entirety in the Domain Name. Although the Complainant's registered marks are not word marks, the dominant part of the marks is the expression “Royal Holiday”, and numerous panels have found that the incorporation of a complainant's trademark in a disputed domain name can be a sufficient basis for a finding of confusing similarity (see for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to by this Panel in The Ritz Hotel v. Damir Kruzicevic, WIPO Case No. D2005-1137 and Quintessentially UK Limited v. Mark Schnorrenberg and Quintessentially Concierge, WIPO Case No. D2006-1643).
The “.info” is generic, and is not included in the comparison.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has not authorized the Respondents to use the Complainant's mark (or any mark confusingly similar thereto), whether in a domain name or otherwise. There is nothing to suggest that the Respondents, or any business operated by them, might be commonly known by the Domain Name, so there is no basis in the evidence for the kind of right or legitimate interest which is described at paragraph 4(c)(ii) of the Policy. Nor is there any evidence of the Respondents having used the Domain Name in connection with any bona fide offering of goods or services, so there does not appear to be any possible basis for the Respondent to claim a right or legitimate interest under paragraph 4(c)(i) of the Policy.
The combination of those circumstances would normally be sufficient prima facie proof of the Complainant's case under this part of the Policy. But even in the absence of any Response, if there is material which suggests that the Respondents might have some legitimate interest or right in the Domain Name, the Panel must consider that evidence and decide whether, looking at the evidence as a whole, the Complainant has discharged its overall burden of proof under paragraph 4(a)(ii) of the Policy (for a fairly recent illustration of a complaint failing, when no response had been filed, because the complainant did not satisfy the panel that the respondent had no paragraph 4(a)(iii) right or legitimate interest, see Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
In this case, there is evidence which squarely raises the question of whether the Respondents might have a right or legitimate interest under paragraph 4(c)(iii) of the Policy. In particular, the evidence shows that between June 2008 and December 2008, the Respondents were using the Respondents' website as an apparently non-commercial criticism site. A number of panel decisions have held that, at least where the respondent is an American (or the website at the disputed domain name is based in the United States of America), First Amendment freedom of speech and fair use considerations under American law permit the registration of “[Trademark].com” - type domain names which are used, fairly, to establish non-commercial websites containing material which is critical of the named trademark or its owner. Such use has been regarded by those panels as a “legitimate non-commercial or fair use” ... “without intent for commercial gain”…., under paragraph 4(c)(iii) of the Policy. (See in that regard, paragraph 2.4 of the Center's “Overview” document, and the cases listed under the introductory statement: “View 2: Irrespective of whether the domain name as such promotes 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”. In one of the listed cases, Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, the panel concluded that the weight of authority is that “[Trademark].tld”-type domain names, when used for US-based criticism sites, can constitute a legitimate interest, especially if there are no other indicia of bad faith. With some modifications, the same panel adhered to that view in his more recent decision in Sermo, Inc v. CatalystMD, LLC case (supra).)
The Panel notes that a number of other panels have taken a different view, holding that the right to criticise 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 (see “View 1” at paragraph 2.4 of the Center's “Overview” document, and the cases there referred to). See also the more recent Panel decisions in Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379, Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947, and 1066 Housing Association Ltd. v. Mr. D Morgan, WIPO Case No. D2007-1461).
In short, there is a sharp and continuing divergence in the views which have been expressed by UDRP panels on the issue of whether the registrant of a domain name which is identical to a complainant's mark, has a right or legitimate interest in that domain name for the purpose of the Policy if the registrant has registered and is using the domain name for the purpose of criticising the complainant, and without any intention of deriving commercial gain.
In this case, the June 12, 2008 printout clearly shows that the Respondents' website was non-commercial in nature. Nothing was offered for sale on it, and there were no advertisements or sponsored links to third party websites. The Respondents' website at that time appears to have been devoted solely to criticism of the Complainant and others involved in the Mexican timeshares business, and the Respondents both appear to reside or carry on business in the United States of America. It seems likely that the target audience for the Respondents' website (in June 2008) was largely an American audience. In those circumstances, the possibility of the Respondents having a right or legitimate interest under paragraph 4(c)(iii) of the Policy is obvious.
But there is a distinguishing feature in this case, which makes it unnecessary for the Panel to decide whether or not the Complaint must fail for want of proof that the Respondents' website as it stood in 2008 did not constitute a use of the Domain Name falling within paragraph 4(c)(iii) of the Policy. The distinguishing feature is that the Respondents are no longer using the Respondents' website as a criticism site. Since January 2009, the Respondents' website has been parked, serving only as a platform for sponsored links to third party websites (a number of which would appear to be operated by businesses offering products in competition with those offered by the Complainant). That use of the Domain Name, such as it is, is clearly commercial, and would not come within the safe harbor of paragraph 4(c)(iii) of the Policy. The question therefore arises whether a respondent who might previously have enjoyed a right or legitimate interest in respect of a disputed domain name (whether or not that is the Respondents' position in this case), can subsequently lose that right or legitimate interest, whether by termination of the right or interest, abandonment, or otherwise.
In the Panel's view, the answer to that question is “yes”. A respondent's right or legitimate interest in respect of a disputed domain name must subsist at the date of the commencement of the administrative proceeding; a previously held right or legitimate interest which has been lost by that date will not avail the respondent (see the use of the present tense in paragraph 4(c)(iii) of the Policy – “you are making a legitimate non-commercial or fair use….”, the decision of this Panel in Lonely Planet Publications Pty Limited v. Mike Tyler, WIPO Case No. D2004-0670, and the panel decisions in Jerome Stevens Pharmaceuticals Inc v. Watson Pharmaceuticals, WIPO Case No. D2003-1029, Omnigraphics Capital Pty Limited v. Fleximount, Guy Langevin, WIPO Case No. D2004-0471, and UVA Solar Gmbtl & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373, which are referred to in the Lonely Planet Publications Pty Limited case).
In this case, the Respondents appear to have abandoned the criticism use to which the Respondents' website was put in 2008, and the Respondents have not filed any Response indicating, for example, that their criticism activities are only being held in abeyance temporarily. In those circumstances, the Panel is satisfied that the Complainant has established a prima facie case of no rights or legitimate interests in respect of the Domain Name. The Respondents having failed to submit any Response, that prima facie proof is sufficient, and the Complainant has made out its case under paragraph 4(a)(ii) of the Policy. The Panel notes, however, that that is not the end of the case. The Complainant must still prove that the Respondents registered the Domain Name in bad faith, and consideration of that issue will inevitably involve consideration of whether or not the Respondents registered the Domain Name with the intention of exercising what might have been a right or legitimate interest in respect of the Domain Name (non-commercial criticism of the Complainant) under paragraph 4(c)(iii) of the Policy. That issue is addressed in the next section of this decision.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 respondent's] website or location.
A complainant must prove not only that the disputed domain name has been used in bad faith, but also that it was registered in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this case, that means that the Complainant must prove that the Respondents acted in bad faith when they registered the Domain Name on June 5, 2007.
It appears that the Complainant may not have become aware of the Respondents' registration of the Domain Name, until June 2008. In any event, the earliest evidence of the Respondents' use of the Domain Name is the printout from the Respondents' website dated June 12, 2008. In the absence of any other evidence, the Panel will assume that the Respondents' website immediately after registration of the Domain Name was in substantially the same form as it appeared on June 12, 2008 – namely a non-commercial site devoted to (trenchant) criticism of Mexican timeshares, including those operated by the Complainant.
The Panel has considered whether it would be appropriate on the evidence to find that the Respondents registered the Domain Name with the intention of posting a criticism website for some period of time, and then using the Domain Name as a source of revenue, by establishing a portal website at which revenue-generating sponsored links to third party websites would be posted – i.e., the position which exists now. That might have been what the Respondents intended, but the onus of proof in this part of the Complaint is on the Complainant, and the circumstances seem to the Panel to be equally consistent with the Respondents, having registered the Domain Name solely for the purpose of establishing the criticism site, deciding some time after they received the cease and desist letter to use the Domain Name for a different purpose. The relevant bad faith intention must exist at the time of registration.
In the absence of any contrary evidence, the Panel will assume (in the Respondents' favor) that the Respondents registered the Domain Name for the purpose which is apparent from the earliest available evidence of the Respondents' use of the Domain Name, namely the purpose of creating a non-commercial criticism website.
Making those assumptions, the following questions arise:
(i) Was the Respondents' intention therefore an intention to exercise a right or legitimate interest in the Domain Name under paragraph 4(c)(iii) of the Policy?); and
(ii) If so, does that necessarily mean that the Domain Name cannot have been registered in bad faith?
Addressing the second of those questions first, it seems to the Panel that it must follow that, if the Respondents genuinely intended to use the Domain Name solely for the purpose of exercising a right or exploiting a legitimate interest under paragraph 4(c)(iii) of the Policy, they could not have registered the Domain Name in bad faith. Certainly, none of the examples of bad faith registration and use set out at paragraph 4(b) of the Policy would appear to apply to that situation: the Respondents' intention would not have been to sell, rent, or otherwise transfer the Domain Name to the Complainant or to a competitor of the Complainant (so that paragraph 4(b)(i) of the Policy could not apply), and there is no evidence of the Respondents having engaged in any relevant pattern of conduct of the kind referred to at paragraph 4(b)(ii) of the Policy. The Respondents are not competitors of the Complainant, so paragraph 4(b)(iii) could not apply. And the absence of any intent for commercial gain would rule out paragraph 4(b)(iv) of the Policy.
The circumstances described at paragraph 4(b) of the Policy are only examples, and the paragraph does not purport to set out an exhaustive list of circumstances which can constitute bad faith registration and use. However, the exercise of a “right”, or the exploitation of a “legitimate interest”, seems to the Panel to be antithetical to the notion of acting in bad faith, and the Panel is of the view that, if the Respondents did genuinely register the Domain Name with the sole intention of using it for the purpose set out at paragraph 4(c)(iii) of the Policy, they could not have registered the Domain Name in bad faith.
So we return to the issue: “did the Respondents' website, as the evidence showed it to be on June 12, 2008, constitute a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark?”
The interpretation of paragraph 4(c)(iii) of the Policy, insofar as it relates to “gripe” websites, has caused UDRP panels a great deal of difficulty. That difficulty is reflected in the divergent views described at paragraph 2.4 of the Center's Overview document. On one view of it, a registrant registering a Domain Name which consists solely of a complainant's trademark followed by a gtld suffix, will be perceived by the public as being in some manner authorized by the complainant trademark owner. On this view, by adopting the disputed domain name, the registrant is making a false representation to the world as to who he is, and that could never be described as “fair” or “legitimate”. The registrant is effectively impersonating the trademark owner, and should not be able to claim the safe harbor protection of paragraph 4(c)(iii) (for examples of that view, see Triodos Bank NB v. Ashley Dobbs, WIPO Case No. D2002-0776, followed more recently in 1066 Housing Association Limited v. Mr. D Morgan, WIPO Case No. D2007-1461).
As noted in section 6C above, there is another line of cases which holds that use of a “[Trademark].tld” - type domain name for a non-commercial criticism website can constitute a legitimate interest in that domain name, at least if the Respondent and/or the Respondent's website is based in the United States of America, and there are no other indicia of bad faith (see Bridgestone Firestone Inc, Bridge/Firestone Research, Inc and Bridgestone Corporation v Jack Myers, WIPO Case No. D2000-0190, and Howard Jarvis Taxpayers Association v Paul McCauley, (supra)).
In his 2008 decision in the Sermo Inc case, the Howard Jarvis Taxpayers Association panel acknowledged that applying different national laws to the interpretation of paragraph 4(c)(iii) of the Policy can create difficulties, especially when the parties are resident in different countries which have different laws. The Panel in Sermo suggested that if both parties are resident in the same jurisdiction, it is wholly appropriate to consider the national laws of that jurisdiction since, presumably, those laws govern the parties' conduct, legal rights, and potential liabilities. However, where there is some question about the laws that may apply, it is appropriate to consider the location of the mutual jurisdiction (as stipulated in the complaint), and the conflict of laws principles that would be applied by courts in that jurisdiction, “since that is the jurisdiction in which the courts may be asked to consider the parties' respective rights if a challenge is filed under paragraph 4(k) of the rules” (Sermo, Inc., supra).
It will be apparent from that passage that there is a preliminary question as to whether panels should apply the law of some particular country to the interpretation of paragraph 4(c)(iii) of the Policy (with the consequence that different panels applying the laws of different countries might come up with different interpretations of the paragraph), or whether some “universal”, or “supra-national” interpretation should be adopted.
A number of panels addressing this question after the Howard Jarvis Taxpayers Association case have rejected any “national law” approach, in favour of a single interpretation of paragraph 4(c)(iii) which will apply regardless of the country in which the parties, the registrar, or the relevant domain name server happen to be located. The panels in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Webman, Fundación Calvin Ayre Foundation v. Erik Deutsch, and 1066 Housing Association Limited v. Mr. D. Morgan, have all rejected the “national law” approach. So does this Panel.
In the view of this Panel, the Policy, including paragraph 4(c), was intended to be given a consistent interpretation, regardless of the location of the parties, registrar, or respondent's website. On this point, the Panel gratefully adopts the analysis of the Panel in the Chelsea and Westminster Hospital NHS Foundation Trust, and Fundación Calvin Ayre Foundation cases. First, the Policy operates contractually, in the sense that it is deemed to be included in the contract which each registrant of a domain name makes with the registrar. It would be a strange and unsatisfactory result if contractual terms specifically designed to operate in a cross-border environment were to receive different interpretations depending on the country of the Court or panel undertaking the interpretation exercise. As stated by the panel in the Chelsea and Westminster Hospital NHS Foundation Trust and Fundación Calvin Ayre Foundation cases, the primary basis for determining the application of the Policy must be the terms of the Policy itself. There is no need to consider a particular country's national law where the applicable provision of the Policy does not require consideration of national law. (Such consideration is necessary where, for example, the issue is whether a complainant does or does not have a right in a trademark or service mark which meets the requirements of paragraph 4(a)(i) of the Policy. In that case, the Policy contemplates that a Panel must look outside the four corners of the Policy itself to answer the question, because trademarks are by their very nature territorial. They do not exist apart from the laws of the particular jurisdictions in which they are recognised.)
More directly, paragraph 4(c) of the Policy affirmatively requires that a complaint be rejected in circumstances falling within that paragraph. The panel's obligation to dismiss the complaint where one or more of the circumstances falling within paragraph 4(c) are found to exist is unequivocal, and applies even if the relevant national law of the location of the parties, registrar, or relevant website does not recognise an entitlement to use a domain name (which consists of a complainant's trademark) in the particular circumstances which the panel has found exist.
Accordingly, the Panel is not disposed to apply either the law of the United States of America (the country of domicile of the Respondents and the registrar) or the law of Mexico (the Complainant's country of domicile), in deciding whether the Respondents' website as it stood on June 12, 2008, constituted a use of the Domain Name falling within paragraph 4(c)(iii) of the Policy. Nor is the Panel attracted to the idea, proposed in the Sermo,Inc. case, that conflicts of laws provisions should be applied to assist in the selection of some particular national law by which to judge the concepts of “fair” and “legitimate” in paragraph 4(c)(iii) of the Policy. The interpretation of a standard-form contract (i.e., that between a domain name registrant and the domain name registrar), the relevant terms of which are mandated by the Policy and have been designed to operate in a cross-border environment, should not differ in accordance with the location or nationalities of the parties, the registrar, or the panel, and nor should it depend on the location of the relevant website.
The above position effectively leaves the Panel to choose between the two alternative views described at paragraph 2.4 of the Center's Overview document, perhaps with some modifications (the course followed by the panel in the Covance case), or perhaps subject to some or all of the conditions which were considered appropriate in the Chelsea and Westminster Hospital NHS Foundation Trust, and Fundacion Calvin Ayre Foundation cases.
This Panel has considerable sympathy with the “impersonation”, or “making a misrepresentation to the world”, analysis which appears to have underpinned a number of the decisions of the panels who have followed “View 1” as described in the Center's Overview document. If one regards a domain name as being the cyberspace equivalent of a physical address in the real world, it seems intuitively wrong that someone should be able to operate from an address which is (deliberately) described by reference to someone else's trademark, for the express purpose of criticising the owner of that trademark1.
But the problem this Panel's sees with the “impersonation” analysis, at least to the extent that it says that paragraph 4(c)(iii) can never apply to a non-commercial criticism website operating at a domain name which is identical to the complainant's trademark, is that it seems to be foreclosed by the provisions of the Policy itself. At paragraph 4(c), the Policy expressly contemplates the existence of some active domain names which will be identical to trademarks owned by unrelated third parties. Some degree of initial interest confusion will be inevitable in those cases. Notwithstanding that initial interest confusion, the Panel must give full effect to paragraph 4(c) of the Policy, including paragraph 4(c)(iii), and there is nothing in the Policy which limits the operation of paragraph 4(c)(iii) to situations of (non-identical) confusing similarity between the complainant's mark and the disputed domain name. Any such limitation, had it been intended, could easily have been stated in the Policy, but it was not. Nor would a limitation so defined have met the “impersonation” argument in the present case, where the Domain Name is not identical to the Complainant's marks (because of the figurative elements in the marks), but would be read as identical by Internet users who were familiar with the Complainant (such users appreciating that it is not possible to incorporate figurative elements of a trademark in a domain name). For all practical purposes, paragraph 4(c)(iii) needs to be applied in this case as if the Domain Name was identical to the Complainant's marks.
So, for essentially the same reasons as were stated by the panel in the Chelsea and Fundacion Calvin Ayre cases, the Panel finds that the fact that the Domain Name is identical to the word elements of the Complainant's marks does not of itself preclude a finding that the Domain Name was registered with the (good faith) intention to use it for the purpose described at paragraph 4(c)(iii) of the Policy.
But the non-commercial use which is permitted by paragraph 4(c)(iii) must still be “fair” or “legitimate”, and those requirements reasonably suggest that there may be some conditions attaching to the use, for it to be so characterised. While each case must be considered on its own facts, and any list of conditions for a non-commercial criticism site to qualify as “fair”, or “legitimate” must be read subject to that proviso, UDRP panels have endeavored to list the essential features in a number of cases. Prime among the considerations, is that the criticism website itself must not mislead site visitors into thinking that it is the site of the trademark owner, or that it is somehow authorised or endorsed by the trademark owner. As the panel put it in the Chelsea case, citing the earlier case of Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505:
“It is therefore an essential condition of legitimate use of such a domain name for the purpose of this provision that the respondent makes it very clear, whether by disclaimer or other content or both, in the first field of vision of a person visiting his/her/its website, that it is independent of the complainant.”
Other conditions noted in the Chelsea case, were that the disputed domain name must have been registered and used genuinely for the purpose of criticism of the complainant, without any (possibly disguised) intent for commercial gain, and that the registrant must not have registered all or most of the obvious domain names suitable for the owner of the mark (this latter condition apparently premised on the basis that the registrant must not unnecessarily obstruct Internet users wanting to access the complainant's website). Where the domain name is one of the obvious domain names suitable for the owner of the trademark, the panel in the Chelsea case considered (again citing the Britannia Building Society case) that an obstruction of access might also occur if the registrant failed to provide a convenient link to the complainant's website, “so that a bemused Internet user who has realised that he/she has come to the wrong site, but does not understand why, can readily correct his/her mistake.” (The Chelsea panel considered that the registrant should also comply with any reasonable request the trademark owner might make relating to such a link, including the removal of the link if the trademark owner so desires.)
The Chelsea panel also noted that the registrant of a non-commercial criticism website might also have a responsibility to provide for the prompt redirection of mis-directed emails, and that the registrant must genuinely believe that his/her criticisms are true.
Analysis of Respondents' Website (June 12, 2008 version) in this case
It is apparent that the Respondents' website did not meet a number of the conditions proposed in the Chelsea case. First, there was no clearly visible disclaimer advising site visitors that the Respondents' website was not that of the Complainant. Did the content of the website clearly show that the site was not connected with the Complainant (“in the first field of vision” of the site visitor)? That is a more difficult question, but in the Panel's view it did not. Certainly the words “Royal Holiday Rip-Off” were prominent near the top of the Respondents' website, as was the heading “Warning travelling to Mexico can be hazardous to your wallet”, but those headings might have been taken as an alert issued by the Complainant, warning (for example) of some fraudulent party masquerading as the Complainant and attempting to sell non-existent timeshares in Mexico. One needed to read further into the text on the page before the real nature of the website became clear beyond doubt. In the Panel's judgment, there was not sufficiently prominent and immediate notice on the Respondents' website, of the absence of a connection between the Respondents and the Complainant.
In the Panel's view, the Domain Name was one which was obviously suitable for the Complainant, but there was no link posted on the Respondents' website to a website of the Complainant. Nor was there any apparent provision made to prevent emails arriving at a mailbox at the Domain Name which were intended for the Complainant (eg. no email address for the Complainant appears to have been provided on the Respondents' website).
On the other side of the ledger, this is not a case where the Respondents have registered numerous domain names which would have been suitable for the Complainant, and nor is there evidence on which the Panel could hold that the Respondents did not genuinely believe in the truth of what they were saying on the Respondents' website. (Contrary to the Complainant's submission, it is not appropriate in an administrative proceeding such as this for the Panel to embark on an enquiry as to whether or not the statements on the Respondents' website were legally defamatory of the Complainant. If they were, that is something the Complainant should pursue in appropriate court proceedings.)
Nor, on the authorities, is this a case which could be describing as “tarnishing” the Complainant's marks. The concept of “tarnishing” a complainant's trademark, as used in paragraph 4(c)(iii), has been read in a number of cases as limited to associating the disputed domain name with unwholesome concepts such as drugs, violence, or sexual activity (see the Sermo case at page 5, and the cases there referred to). There is nothing of that nature in the criticisms which were expressed on the Respondents' website.
Weighing these factors up, the Panel finds that the Respondents' website as it stood at June 12, 2008 (and how it is presumed to have stood immediately following registration of the Domain Name), was not a “fair” or “legitimate” use of the Domain Name under paragraph 4(c)(iii). The points which particularly weigh with the Panel are the absence of a prominent and immediately visible disclaimer, and the fact that the Respondents, having knowingly registered a domain name which many Internet users would have assumed to be that of the Complainant (indeed, intending to attract such people to the Respondents' website), failed to provide any convenient link to the Complainant's website for visitors who had mistakenly arrived at the Respondents' website looking for the Complainant.
The Panel therefore concludes that the Respondents did not register the Domain Name with the intention of making a “fair”, or “legitimate” non-commercial use under paragraph 4(c)(iii) of the Policy.
The Panel also concludes that the Respondents' registration of the Domain Name (for the purpose described above), was made in bad faith. In registering and using the Domain Name the Respondents intended to create initial interest confusion, and although that concept appears to have been effectively dismissed as inconsequential in some recent United States court decisions (at least where the freedom of expression interest has been implicated - see for example the decision of the Court of Appeals, Fourth Circuit, in Lamparello v Falwell 420 F. 3d 309 (2005)), it remains in the Panel's view a real enough thing, which can provide a proper basis for a finding of bad faith registration if a respondent's conduct is not otherwise justified under the Policy. (The fact that initial interest confusion can have negative real-life consequences in a commercial context, is conveniently illustrated by the following scenario described in the decision of the Court of Appeals, Ninth Circuit, in Brookfields Communications Inc. v West Coast Entertainment Corp 174 F.3d 1036 (1999), at 1064: videotape rental business West Coast has its store situated off the highway at Exit 8. West Coast's competitor, “Blockbuster”, has its premises off the same highway at Exit 7. Blockbuster puts up a billboard at Exit 7, advertising West Coast's store. [Picking up the scenario from the Brookfields judgment]: “Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing Blockbuster's store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble [to] continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial interest consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill.” (Brookfields, citing Blockbuster, 869 F Supp. at 513, and referring to Dr. Seuss, 109 F3d. at 1405 and Mobil Oil Corporation v Pegasus Petroleum Corporation, 818 F 2d. 254). In a non-commercial context, the Panel's “Whiteacre / Blackacre” scenario, as proposed in footnote 1 on page 12 above, was an attempt to show that similar issues can arise where the perpetrator of the initial interest confusion is seeking to attract “consumers” not for his goods or services, but for his political or religious message. No-one might ultimately be confused, but, through trickery, the perpetrator of the initial interest confusion has obtained access to an audience that he or she would not otherwise have reached.)
Notwithstanding those considerations, those making national or international laws, agreements, or standards relating to domain names, might reasonably decide that a consumer's interest in not being subjected to initial interest confusion should yield (either absolutely or subject to conditions) to interests which are considered more important. One such interest might be a domain name registrant's interest in being able to use his or her domain name to exercise a right of freedom of expression. It seems to the Panel that the framers of the Policy made precisely that decision when they included in the Policy the right or legitimate interest which is provided for at paragraph 4(c)(iii).
In the Panel's view therefore, the Policy has struck a balance between the interest of the trademark owner not to have consumers lured on a false basis to someone else's website, and the domain name registrant's interest in being able to use the domain name to express himself or herself on the Internet as he or she wishes. The registrant's interest in freedom of expression prevails, but on condition that the expression must be non-commercial in nature, and that the registrant must have acted in a “fair”, or “legitimate non-commercial” way.
Having regard to that balance, and to the negative consequences which can flow from the creation of initial interest confusion, the condition that the registrant's use of the domain name must be “fair”, or “legitimate”, should be firmly enforced. Accordingly, this Panel would hold that if a registrant of a domain name for a criticism website deliberately creates initial interest confusion, with the intention of attracting increased Internet traffic (or some particular category of Internet user) to his or her website, and does not comply with the requirements of fairness or legitimacy which UDRP panels have generally considered appropriate, that registrant, absent any countervailing considerations, should be regarded as having acted in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. (It does not matter that the particular facts might not fit within any of the subparagraphs of paragraph 4(b) of the Policy. That paragraph provides examples of bad faith only: it does not purport to provide an exhaustive list of situations which may constitute bad faith registration and use).
The Panel can see no countervailing considerations in this case, and accordingly finds that the Domain Name was registered in bad faith.
As for bad faith use, the position is not so difficult. Quite apart from the Respondents' unfair use of the Domain Name to host the criticism website in 2008, since January 2009 the Respondents' website has operated as a portal site at which there are (presumably sponsored) links to third party commercial websites. At least some of them appear to be operated by parties who might fairly be regarded as competitors of the Complainant.
Those circumstances fall squarely within paragraph 4(b)(iv) of the Policy. The Respondents have used the Domain Name intentionally to attract, for commercial gain, Internet users to the Respondents' website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' website.
Having regard to all of the foregoing factors, the Panel is satisfied that the Domain Name has been registered and used by the Respondents in bad faith.
The Complainant having succeeded on all three elements under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
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 <royalholiday.info> be transferred to the Complainant.
Dated: March 25, 2009