WIPO Domain Name Decision D2002-1019 for legal-and-general.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Legal & General Group Plc v. Image Plus

Case No. D2002-1019

 

1. The Parties

The Complainant is Legal & General Group Plc, Kingswood, Tadworth, Surrey KT20 6EU, United Kingdom.

The Respondent is Image Plus, C/O Zeev Golan of Rockville, Maryland, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is registered with Network Solutions, Inc. Registrar.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 1, 2002. A hardcopy of the Complaint was received on November 5, 2002. On November 4, 2002, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue which it received. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint on November 7, 2002. The Response was filed with the Center electronically on November 22, 2002, and a hardcopy was received on November 26, 2002.

The Complainant elected to have the dispute decided by a three-member Panel. On December 16, 2002, the parties were notified that the Center had appointed Dawn Osborne, Dana Haviland and John Swinson as Panelists (with John Swinson as Presiding Panelist). The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the registrant of a number of ".com" domain names including , and . The Complainant is the owner of registered trademarks dating back to 1980 which incorporate the words "legal and general" in a number of countries, including in the United Kingdom (with eight registered trademarks), Benelux, France, Portugal and Spain. Some of the registered trademarks owned by the Complainant are as follows ("Marks"):

• "Legal & General" (registered trademark no. 1303797) in the United Kingdom registered on September 28, 1990;

• "Legal & General" with umbrella device (no. N1291330) in France, applied for on October 24, 1984, and expiring on October 23, 2004;

• "Legal & General" with umbrella device (no. 230217) in Portugal registered in October 1988; and

• "Legal & General" with umbrella device (no. 929794 M4) in Spain, registered on December 2, 1980.

Mr. Zeev Golan (the administrative contact for the disputed domain name) is a former employee of Legal & General America Inc, the American branch of the Complainant. ("L&G USA")

The Respondent registered the disputed domain name on August 27, 1999. The website operating at the disputed domain name is a Complaints site, allowing and encouraging Internet users to post messages about the Complainant. As at December 20, 2002, the introductory words to the website are as follows:

"Welcome to L & G Companies Complaints Club.

A one of a kind website. Have you been bothered by one of L & G Companies lately? Are you mad? Are you pissed off? Well, here's your chance to yell about it. Let it out! Scream at us! Complain about it! It's not true that nobody wants to hear you complain, because we do! Publicize your experience and let others know. We'll add your complaints to our website. More importantly, you get whatever's bothering you off your chest!. Just click on "". Complain !Complain ! and fill out the form!"

The website includes Complaints which are dated from March 7, 2002, to December 12, 2002. There are approximately 19 entries on the website. An extract of some of the entries are as follows:

1. "Looks like L&G doesn't like this site. They are trying to shut it down by starting a WIPO domain dispute case. See for yourself here: Case: D2002-1019 (click). It is a sad day in the world when corporations like L&G use entities like WIPO to shut down free speech instead of improving their faults causing these complaints in the first place. I advise ALL L&G customers to terminate business with L&G and their subsidiaries because obviously this company DOES NOT support free speech."

2. I have just read 26/10/ 02 that Legal & General intend to cut bonus rates for policy holders on 28/10/02, my endowment policy will mature in January 2003, nice timing Legal & General, I will not be investing in your company in the future."

3. "I am amazed at the inefficiency of L&G. I am worried that they could be another Equitable Life waiting to happen � I question L&Gs record keeping, their systems and their hidden rules. L&G seem weight everything on the side of their company to the detriment of their clients � I THINK THEY ARE TRYING TO COVER SOMETHING UP or reduce my fund to their advantage."

4. "I spoke to a man on your Help Desk (08700 104080) with a query about my Capital Preservation Plan [number] back in June, and although he could not answer my query he assured me that a reply would be sent out that week. I heard nothing, so I wrote on 26 June to your office at 2 Montefiori Road, Hove � What do I have to do to get assistance from your widely-advertised Help service? Please e-mail me using [email address], or my postal address which you should have on your computer system."

5. "You really must be annoyed with L and G to obtain this website name, I was looking for information on their products. My only criticism is that their UK website doesn't seem to work. Legal-and-G."

 

5. Parties� Contentions

A. Complainant

The Complainant is a financial services company, offering a wide range of savings and protection products, both on an individual and corporate basis. The product range includes term assurance, mortgage protection, household insurance, private medical insurance, saving for retirement, annuities, unit trusts and ISAs.

The Complainant is one of Britain�s top 50 companies, as measured by the FTSE, with over 3.6 million customers and employing approximately 7,800 staff. As at June 30, 2002, total funds under management exceeded �120 billion world-wide.

Although the business of the Complainant focuses primarily on the UK, the Complainant has established operations in the Netherlands, France, Germany and the USA. In the USA, the Complainant has a strong market position in the area of term assurance, with L&G USA being one of the top ten largest life assurers in the USA (measured by sums assured).

The Complainant is the registrant of a number of ".com" domain names containing the words "legal and general" (or similar) including , and . The Complainant owns other domain names including as . L&G USA owns the domain name .

The Complainant alleges that Zeev Golan (the admin contact for the disputed domain name) is a former employee of L&G USA, and that there was a dispute regarding the termination of Zeev Golan�s employment with L&G USA.

The Complainant acknowledges the general right of the Respondent to comment and enable others to comment on the services and products offered by the Complainant and the importance of freedom of speech. The Complainant submits however that it does not automatically follow that use of the disputed domain name to do so is either a legitimate or fair use of the Domain Name. As in DFO, Inc. v Christian William, WIPO Case No. D2000-0181, the Complainant submits that in using and selecting a domain name which is so closely identical to the Complainant�s trademark, the Respondent has not chosen a domain name which makes fair use of the Complainant�s trademark. The disputed domain name does not contain words which makes it clear that the website is not an official website of the Complainant. Also, nowhere on the website does it state that the website is not an official "Complaints" site owned or operated by the Complainant.

In summary, the Complainant makes the following submissions:

(a) The disputed domain name is identical, or at the very least confusingly similar to the Complainant�s trademark because the only difference between the Complainant�s trademark and the disputed domain name is the use of "and" rather than "&" and the additional hyphens in the domain name. The Complainant cites MBS Computers Ltd v Richard Workman aka Portable World Computers, NAF Case No.FA0096632 as an example of a case where the addition of a hyphen was held not to be a distinguishing factor.

(b) The Respondent has no rights or legitimate interests in the disputed domain name because:

(i) the domain name is not being used in connection with the bona fide offering of goods or services;

(ii) the Respondent is not commonly known by the domain name;

(iii) the Respondent is not making a legitimate non-commercial or fair use of the domain name; and

(iv) the manner in which the domain name is being used tarnishes the Complainant�s trademark.

(c) The disputed domain name is being used as a site where users can lodge Complaints about the services provided by various sections of the Complainant�s business in the United Kingdom and United States. This use of the disputed domain name is not "legitimate" or "fair".

(d) There is evidence that at least one customer may have confused the website as a bona fide Complaints site provided by the Complainant. The Complainant is concerned that as a result of any misconception that the website is that of the Complainant�s, that its customers are posting confidential information about the financial products they have purchased from the Complainant, (including the customer�s own personal data).

(e) The Respondent has used a domain name nearly identical to the Complainant�s trademark in order to attract customers of the Complainant away from official sites in order to expose them to material critical of the Complainant, thereby tarnishing the Complainant�s trademark.

(f) Further evidence that the disputed domain name is diverting consumers away from the Complainant is the position in which the site appears following a variety of search engine searches the Complainant has carried out. For example, the result of a search on for "Legal and General" and "Complaints" (carried out on October 10, 2002) placed the Respondent�s site first in the results.

(g) The Respondent registered and is using the disputed domain name in bad faith, based on the following factors:

(i) because the Respondent is a former employee of the Complainant�s American counterpart (Legal & General America, Inc.), the Registrant must have known of the existence of the Complainant�s trademark and deliberately registered a domain name which is almost identical to the Complainant�s trademark and other domain names registered by the Complainant; and

(ii) given that the Respondent knew about the existence of the Complainant; the Respondent must have registered the disputed domain name primarily with the intention of disrupting the business of the Complainant.

The Complainant cited a number of prior UDRP decisions in support of its claim, including The Stanley Works v Phil O�Neil, NAF Case No. FA0094233, Lloyds TSB Bank Plc v Paul Brittain, WIPO Case No. D2000-0231, OAG Worldwide, Inc. v Mark Nelson, NAF Case No. FA00105183, Mission KwaSizabantu v Benjamin Rost, WIPO Case No. D2000-0279 and The Royal Bank of Scotland Group plc v and Umang Malhotra, WIPO Case No. D2001-0212.

B. Respondent

The Respondent provides no information about his previous employment with the Complainant.

The Respondent makes no comment as to whether the disputed domain name is identical or confusingly similar to the Complainant�s trademark.

The Respondent makes the following submissions:

(a) The Complainant referred to cases in misleading ways using quotes that have been taken out of context and which are not accurate.

(b) The Respondent has rights and a legitimate interest in using the disputed domain name to establish a website for publicising Complaints about the Complainant.

(c) The Complainant has failed to provide any evidence of bad faith.

(d) It is clear from reviewing the comments on the website that users of the website are not confused about any association with the Complainant, as many comments are written in the third person, referring to the Complainant as "they" and "their". This indicates that users understand that they are not actually communicating with the Complainant (otherwise they would use terms such as "you" and "your"). There is only one single entry that appears to have confused the website with an official site of the Complainant where it refers to "your".

(e) Quoted directly from the Response, the Respondent states "it is hard to believe that a prudent Internet user would be confused as to the source or sponsorship of the website when the home page reads �Are you mad? Are you pissed off?��".

(f) The Complainant never requested that the Respondent make changes to the website content. As a show of good will the Respondent has removed all references on the website to any trademarks of the Complainant and the Complainant was notified of this on October 3, 2002.

(g) Using a domain name solely consisting of a complainant�s trademark does not constitute bad faith. Bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy. The Complainant must prove registration and use in bad faith.

(h) The website for the disputed domain name does not contain any of the Respondent�s views - only those made by customers of the Complainant.

The Respondent contends that the cases cited by the Complainant do not help the Complainant in proving its case. Each case contained specific facts which were critical to the decision reached by the Panel to transfer the domain name in dispute and which are not present on the current facts. For example:

• In The Stanley Works v Phil O�Neil, NAF Case No. FA0094233, the Respondent said "that the only way of making me go away is to purchase this site from me".

• In OAG Worldwide, Inc v Mark Nelson, NAF Case No. FA00105183, the Respondent clearly tried to sell the domain name to the Complainant for a sum well in excess of out of pocket expenses.

• In Mission KwaSizabantu v Benjamin Rost, WIPO Case No. D2000-0279, it was held the disputed domain name "caused the persons seeking information on the Complainant�s activities to be drawn into the Respondent�s website and thereby to be exposed to contrary and critical views". It is important to note that the Google search conducted by the Complainant used the words "legal and general and Complaints". A Google search conducted without the word "Complaints" will not locate the disputed domain name. (The Panel performed such a search to confirm that this is in fact correct).

• In Compagnie de Saint Gobain v Com-Union Corp, WIPO Case No. D2000-0020, the deciding factor seemed to be that the Respondent�s real current goal was to prevent the Complainant from reflecting its trademark in the domain name.

• In The Royal Bank of Scotland Group plc v and Umang Malhotra, WIPO Case No. D2001-0212, the Panel denied transfer of the domain name. In that case, the Respondent demanded payment of US$2 million as a condition of transferring the domain name. This resulted in the Panel stating that:

"If the Respondent were acting merely as an altruistic collector of complaints from persons dissatisfied with [the Complainant], he would possibly not be seen as using the website commercially. But he has combined the complaint-gathering role with a possible method of recovering money which [he thinks is due]. In doing so, � he has rendered the use of the site commercial and has transcended any free speech leeway".

(In this case, transfer was denied on the basis that the disputed domain name was not confusingly similar to the Complainant�s marks). This case actually supports the argument that the Respondent�s use of the disputed domain name as an altruistic collector of Complaints without commercial gain is permitted under the Policy.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, ("ICANN Policy"), namely:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

A. Identical or Confusingly Similar

The Complainant owns the registered trademark "Legal & General" in the United Kingdom, as well as "Legal & General" together with the umbrella device in the United Kingdom, France, Portugal and Spain. The Panel finds that the disputed domain name is confusingly similar to the Complainant�s "Legal & General" trademark. The use of hyphens and the word "and" instead of "&" does not change this.

The Respondent does not make assertions to the contrary.

B. Rights or Legitimate Interests

The Respondent asserts a legitimate interest, relying on paragraph 4(c)(iii) of the Policy, which states:

"you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue"

Paragraph 4(c) of the Policy places the onus on the Respondent to rebut the Complainant�s assertion of lack of rights or legitimate interest in the domain name. As set out in Mission KwaSizabantu v Benjamin Rost, WIPO Case No. D2000-0279, to succeed under paragraph 4(c)(iii), the Respondent must establish:

1. the Respondent�s use is legitimate noncommercial or fair use of the domain name;

2. this use is without intent for commercial gain;

3. this use is without intent to misleadingly divert consumers; and

4. this use is without intent to tarnish the trademark of the Complainant.

The situation here can be summarised as follows:

1. The disputed domain name is virtually identical to the Complainant�s trademark.

2. The Respondent�s website does not include an express disclaimer that the Respondent�s website is not associated with the Complainant.

3. The Respondent�s website has wording critical of the Complainant, and the majority of the Panel finds that it would be clear to most users that the Respondent�s website was not controlled or authorised by the Complainant.

4. However, it appears that at least one user of the Respondent�s website believed that the Respondent�s website was the Complainant�s website.

5. The Respondent has not taken any express steps after this occurred to avoid further confusion.

6. The Respondent is not making a commercial gain from the website. There are no advertisements or links to other websites on the Respondent�s website.

The difficult issue to be decided here is where the disputed domain name is virtually identical to the Complainant�s trademark, can the Respondent still rely on paragraph 4(c)(iii) of the Policy? There are two conflicting approaches taken by prior Panels.

The "Domain Name itself is misleading" approach

One line of cases states that the wholesale appropriation of the Complainant�s trademark in a domain name, without any distinguishing material in the domain name, creates confusion with the Complainant�s business and is not fair use merely for the purpose of criticism. If no criticism is apparent from the domain name itself, then the Respondent cannot rely on paragraph 4(c)(iii). It is not sufficient that the criticism may be apparent from the content of the site.

On this approach, it is irrelevant whether the website has disclaimers. The focus is on the domain name, not the website.

However, some cases applying this rationale go further, and state that any criticism of the Complainant on the Respondent�s website proves that the Respondent�s intent is to tarnish the Complainant�s trademark, and so paragraph 4(c)(iii) cannot apply. See, e.g., Mission KwaSizabantu v Benjamin Rost, WIPO Case No. D2000-0279.

Accordingly, under this approach, a domain name in the form will never satisfy paragraph 4(c)(iii), except perhaps if the trademark is a generic word or phrase. However, a domain name in the form or may satisfy paragraph 4(c)(iii), depending on all the other circumstances.

This general approach has been applied in many prior decisions, including the following:

• Annette A. Antoun d/b/a The Paxton Herald v. Stephen Millard, NAF Case No. FA00114770

• Lloyds TSB Bank Plc v Paul Brittain, WIPO Case No. D2000-0231

• Spence-Chapin Services to Families and Children v. Spence-Chapin, LLC a/k/a Stanley Wynman, NAF Case No. FA00105945

• Estée Lauder Inc. v. , and Jeff Hanna, WIPO Case No. D2000-0869

• Valero Energy Corporation v. American Distribution Systems, Inc., D/B/A Default Data.Com And Brian Wick, WIPO Case No. D2001-0581

• Compagnie Générale des Matières Nucléaires v Greenpeace International WIPO Case No. D2001-0376

The "Complaints Site" Approach

This line of decisions focus on the content located at the website accessible via the disputed domain name.

If the website is a genuine "Complaints" website, then paragraph 4(c)(iii) may be satisfied. However, under this approach, all the circumstances are carefully considered, and paragraph 4(c)(iii) will not be satisfied, for example, if the website is merely a sham website created after the Respondent unsuccessfully attempted to sell the domain name, or if the website mostly includes links to competitors websites.

Some of the decisions discuss "free speech" or "First Amendment rights", and are influenced by U.S. constitutional law.

Examples of disputes where the Respondent was successful in proving a legitimate interest under paragraph 4(c)(iii) include:

• Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190

• Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, WIPO Case No. D2001-0467

• Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858

• TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536

• Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505

In a number of disputes where the Respondent was unsuccessful when trying to rely on paragraph 4(c)(iii), it was because of the specific facts involved. For example, in The Royal Bank of Scotland Group plc v and Umang Malhotra, WIPO Case No. D2001-0212, the Respondent demanded a large "compensation payment." It should be noted that the Panel in that case suggested that if the Respondent was "acting merely as an altruistic collector of Complaints from persons dissatisfied with" the Complainant, then the result may have been different.

The majority of this Panel prefers the "Complaints Site" Approach discussed above. The majority reached this decision not relying upon or applying U.S. First Amendment law, but by considering the words of paragraph 4(c)(iii).

There is no per se rule that use of an exact trademark of another as a domain name for a legitimate Complaints website is not legitimate use of the domain name. To decide otherwise, in the view of the majority of the Panel, would be to nullify paragraph 4(c)(iii). The Britannia Building Society decision listed above is carefully considered and is instructive as to the meaning of the various elements of paragraph 4(c)(iii).

Here, the Respondent�s website is non-commercial and the use of the disputed domain name is non-commercial. In the view of the majority of the Panel the website is not misleading, and the only content on the website relates directly to the Complainant. In the view of the majority of the Panel, it would be clear to most users that the Respondent�s website was not controlled or authorised by the Complainant, and that it was a third party criticism website. That one user may have been confused does not in the view of the majority of the Panel change the character of the website.

Moreover, that some Internet users might initially be confused into thinking that, because of the use of the mark in the disputed domain name, is the Complainant�s official website is, in the view of the majority of the Panel, of no moment. First, any such confusion would, in the view of the majority of the Panel immediately be dispelled by the content on the Respondent�s website. Second, and in any event, such a low level of confusion is, in the view of the majority of the Panel, a price worth paying to preserve the free exchange of ideas via the Internet. A user who stumbles upon the Respondent�s site while looking for the Complainant�s official site need only click the "back" button to return to his or her search. (In the view of the majority of the Panel, a user is unlikely to easily find the Respondent�s website. Its meta-tags relate to the sale of Jewish religious items, and do not mention the Complainant or its products. A search on "legal and general" on Google returned the Complainant�s websites in the top spots, and did not list the Respondent�s website in the first ten results.) Third, there is no evidence that the Respondent is promoting the disputed domain name, or using the disputed domain name other than on the associated website.

In conclusion, the website that the Respondent operates at the disputed domain name is maintained as a genuine criticism site. It is not relevant that the Respondent is a former employee. A Panel cannot and should not try to distinguish between a disgruntled former employee and a genuine whistle-blower. In the view of the majority of the Panel, the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.

Accordingly, the majority finds that the Respondent has a legitimate interest in respect of the disputed domain name.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

 

 

John Swinson
Presiding Panelist

Dana Haviland
Panelist

Dated: December 30, 2002

 

DISSENT

The Dissenting Panelist agrees with the majority of the Panel on the question of confusing similarity. However, the Dissenting Panelist cannot agree with the majority of the Panel on the questions of rights or legitimate interests in the Domain Name and bad faith. Generally, the Dissenting Panelist agrees with what is referred to by the majority as "the domain name is itself misleading approach" and the decisions listed above which support that approach. The Dissenting Panelist has, in particular, found the decision of Compagnie Générale des Matières Nucléaires v Greenpeace International, WIPO Case No. D2001-0376 most helpful.

Rights or Legitimate Interests

The Complainant�s trademark has a significant reputation in its field. The Respondent has, in the opinion of the Dissenting Panelist, no rights or legitimate interests in respect of the Domain Name which consists essentially of the Complainant�s principal trading name and its registered trademark. The Dissenting Panelist recognizes that the Respondent has a right to free speech and a legitimate right to host a Complaint site about the Complainant on the Internet. However, in the view of the Dissenting Panelist this is a completely different thing to and should not be confused with having a legitimate right to the Domain Name in question in this case.

Bad Faith

The Dissenting Panelist recognizes that the conduct of the Respondent in this case does not fall strictly within the four criteria listed in Paragraph 4 (b) of the Policy which are expressed to be evidence of registration and use in bad faith. However, these criteria are also expressed to be non exclusive and it is open to any panel to determine that the actions of a Respondent have in fact amounted to registration and use of the domain name in question in bad faith.

As indicated in the section on rights and legitimate interests in this dissenting decision, the Dissenting Panelist believes that the Respondent has every right to conduct its campaign against the Complainant on the Internet, but the Respondent does not have any rights to register and use a domain name reflecting the Complainant�s main trading name for that purpose.

By choosing a domain name reflecting the main trading name of the Complainant, the Respondent intends to disrupt the business of the Complainant and to divert traffic intended for the Complainant�s site to its own. That the Respondent has been, in part, successful in this aim is shown by the fact that there has been confusion where a member of the public thought that the Respondent�s site was part of the genuine site of the Complainant. This also shows that members of the public looking for the Complainant�s site may arrive at the Respondent�s site instead by mistake. In the opinion of the Dissenting Panelist this is in no doubt due to the fact that the Complainant�s main trading name has been taken in the Domain Name. It is also perhaps partly due to the fact that the Domain Name is very similar to the UK Internet address of the Complainant . The Respondent could have chosen a domain name which on face value would not be thought to be owned by the Complainant and would not have disrupted and diverted the Complainant�s business.

Accordingly, in the view of the Dissenting Panelist the Respondent has no rights or legitimate interests in the Domain Name which has been registered and used in bad faith and the Complaint should have succeeded.

 

 

Dawn Osborne
Dissenting Panelist

Dated: December 30, 2002

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