WIPO Domain Name Decision D2003-0166 for natwestbanksucks.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez

Case No. D2003-0166

 

1. The Parties

The Complainants are The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank of London, United Kingdom of Great Britain and Northern Ireland, represented by Cogent IPC Ltd. of United Kingdom of Great Britain and Northern Ireland.

The Respondents are Personal and Pedro Lopez of Malaga , Spain (hereinafter referred to as "Respondent").

 

2. The Domain Name and Registrar

The disputed domain name is registered with BulkR.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2003. On March 4, 2003, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain name at issue. On March 4, 2003, BulkR transmitted by email to the Center its verification response confirming that "Personal" is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on March 5, 2003. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on March 28, 2003.

Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Luca Barbero as the sole panelist in this matter on April 3, 2003. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

On April 1, 2003, the Center received an email communication from Respondent�s Representative requesting the Panel to accept and consider a late Response which was acknowledged by the Center and, on the same day, the Center received an email communication from Complainants objecting to the request of the Respondent to file a late response. The Center immediately acknowledged safe receipt of such communications, advising the parties that it would have been solely to the discretion of the Panel to accept the late filing.

On April 7, 2003, that Panel issued the following order: "With reference to the late filed response, in view of the duty of the Panel to ensure that the Parties are given a fair opportunity to present its case, the Panel herein decides to receive such a filing. The Panel is confident to receive together with such a late response also a convincing explanation of the exceptional circumstances that have determined the delay. It is also decided that an additional 10 days period shall be allowed to the Complainant to file supplementary statements or documents with reference to the late Response."

The late response was then filed by Mr. Stephen H. Sturgeon of Stephen H. Sturgeon and Associates PC. and the Complainants� supplemental statements (the "Supplemental Complaint") was received by the Center by email on April 15, 2003.

On April 16, 2003, the Respondent submitted a request for submission of a supplemental filing in reference to which the Panel on April 18, 2003, issued the following procedural order: "We acknowledge safe receipt of the late filed response submitted by the Respondent and of the supplemental complaint (by email) transmitted by the Complainant pursuant to the Administrative Panel's communication of April 7, 2003, granting to the parties - with equality - a fair opportunity to present their submissions. In absence of exceptional circumstances and in light of fact that the Panel shall also ensure that the administrative procedure takes place with due expedition as per Article 10 c) of the Rules, the Panel should now proceed to a decision on the basis of the comprehensive statements and documents provided both by the Respondent and by the Complainant. The Panel therefore will forward its decision to the Provider within fourteen days from today". Therefore, the Center confirmed that the date for the Panel decision was subsequently extended to May 9, 2003, in accordance with para. 10(c) of the Rules.

 

4. Factual Background

The Complaint is based on the following trademark registrations:

TM Number

Mark Text

Type

Date

Status

Classes  

UNITED KINGDOM MARKS    

1021601

NATWEST

WO

03.12.1973

Registered

16

1278207

NATWEST

WO

01.10.1986

Registered

35

1278208

NATWEST

WO

01.10.1986

Registered

36

1438083

NATWEST

WO

17.08.1990

Registered

09

1447078

NATWEST

WO

14.11.1990

Registered

36

1586802

NATWEST

SW

29.09.1994

Registered

41

2111611

NatWest

WO

19.09.1996

Registered

06 11 20 27

2181287

NAT WEST

WO

05.11.1998

Registered

37 42

1491407

NatWest BankLine

SW

18.02.1992

Registered

09

1491408

NatWest BankLine

SW

18.02.1992

Registered

35

1491409

NatWest BankLine

SW

18.02.1992

Registered

36

1313972

NatWest BankLine Service

WO

24.06.1987

Registered

36  

UNITED STATES MARKS    

1241454

NATWEST

WO

07.07.1983

Registered

36

The Respondent registered the domain name on October 2, 2002.

 

5. Parties� Contentions

A. Complainants

The Complainants indicate that National Westminster Bank (A/K/A NatWest Bank) is a fully-owned subsidiary of the Royal Bank of Scotland Group, which in March 2000, completed the acquisition of NatWest Bank. Consequently, whilst ownership of many of the trademarks still rest with NatWest Bank, many have now been assigned to The Royal Bank of Scotland Group in accordance with the Group�s centralised trademark holding policies. The Royal Bank of Scotland Group (RBS), founded in 1727, is one of Europe�s leading financial services groups. Since 1968 National Westminster Bank A/K/A NatWest Bank has sought and obtained protection by way of company registration and since 1973, has sought and obtained trademark protection in respect of the NATWEST, NATWEST BANK names in many jurisdictions worldwide, including the United Kingdom (UK) and United States of America (USA).

The Complainants, addressing the factual grounds, indicate that the same Respondent registered the domain names , , and , on May 22, 2002, he registered the domain names and and on October 2, 2002, following the filing of a UDRP Complaint against him, he registered the domain name .

The Complainants inform the Panel that the domain names , , and , formed the subject matter of a prior Complaint, The Royal Bank of Scotland pls et al. V. Pedro Lopez et al., WIPO Case No. D2002-0823 (December 3, 2003) and the domain names and were subject of the Complaint The Royal Bank of Scotland Group plc and National Westminster Bank plc A/K/A NatWest Bank v. Alberto Rodriguez / A&A System Solutions, WIPO Case No. D2003-0051 (March 10, 2003). At some date following the registration of the domain names, all six domain names were resolved to a web site featuring a home page promising to soon provide a forum for "victims" of NatWest Bank: "A Website for those victims who have suffered and had their lives destroyed as a result of the reprehensible behavior of Natwest, its executives and its "Associated Professionals"". "In memory of those NATWEST victims who took their lives as a direct result of the reprehensible attitude of this atrocious bank."

The Complainants highlight that these are highly damaging and unsubstantiated assertions against the Complainants. The Respondent gives no evidence to support these statements and the attempts to contact the Registrant by telephone and by mail (at the addresses indicated also on the web page) were not successful. It was only discovered that the telephone numbers and addresses supplied in the registrations were false. Following unsuccessful attempts also to have the contact details corrected through the registrar, on September 2, 2002, Complainants filed a Complaint regarding the domain names , and . Complainants were as yet unaware of the existence of the registrations for , and .

Sometime around September 23, 2002, Complainants� representative became aware of these registrations. On October 22, 2002, Complainants� representative, citing exceptional circumstances according to the Policy and Rules, filed a Supplemental Complaint seeking to amend the original Complaint by joining these domain names to that Complaint which was decided in WIPO Case No. D2002-0823 but the Complainants� supplemental complaint was rejected and therefore a separate Complaint was filed and decided as per WIPO Case No. D2003-0051.

The Complainants inform the Panel that following the filing of said second Complaint, Respondent made also the domain name to resolve to the same site. Complainants thus became aware of the registration of that name and, due to the fact that WIPO Case No. D2003-0051 was by then officially notified to the parties, the Complainants had to file also the present case.

In light of the above factual grounds the Complainants request that this Complaint be decided by reference to 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).

The Complainants at the beginning, were only aware of the registration by the Respondent of and had by e-mail on June 12, 2002, notified the registrar, BulkR of the false contact details contained in the Whois database for that domain name. According to the correspondence with BulkR provided to the Panel, the registrar promised to investigate and if true to request that registrant update his details. At the registrar�s prompting, the registrant did update the contact details and changed his address from Venezuela to Spain. However, according to the Complainants also the updated details were false, and neither the address nor the telephone numbers supplied could be positively verified.

In the meantime, the Complainants discovered the registrations of and and found that both names resolved to the same web site as per copy annexed to the Complaint. As of September 23, 2002, when the Complainants discovered the registrations of the two additional domain names forming the subject matter of Complaint in WIPO Case No. D2003-0051, the web site still remained and these two additional names also resolved to exactly the same page.

The Complainants underline that as of January 31, 2003, following the filing of Complaint, WIPO Case No. D2003-0051, when the Complainants became aware of the registration of the domain name forming the subject matter of this Complaint, no promised information had been put up, no explanation rendered. The Respondent�s true identity was and is still not revealed whether on the site or otherwise. In addition, Respondent failed to file a Response to Complaint, WIPO Case No. D2003-0051. The Complainants indicate that, despite this now claiming to be a parody/complaint site, by virtue of the "sucks" domain name, its very nature and history described above still remain damaging to the Complainants� trademarks and reputation.

With reference to the issue of the Domain Name to be identical to or confusingly similar to the trademark registrations of the Complainants, it is underlined that the relevant parts of the domain name are "natwest" and "natwestbank". Complainants assert that it is virtually identical and confusingly similar to its NATWEST and NATWEST BANKLINE trademarks.

The Complainants acknowledge divergent views in UDRP decisions relating to "sucks" domain names but stressing that in the majority of cases, Panels have concluded that such domain names were confusingly similar for various reasons quoting a number of cases expressing this view.

The Complainants also emphasize that not all Internet users speak the English language or are fluent speakers, and consequently, may not perceive that the term "sucks" is pejorative, being used to disparage, denigrate or criticize, and should immediately disassociate the domain name from the company�s trademark.

The Complainants furthermore highlight that Internet search engines such as "Google" or "Alta Vista" would most likely disclose the existence of "" especially in view of the inclusion of the term "bank", making it more likely that a customer searching for the Complainants by entering the term "natwest bank" would find the Respondent�s corresponding web site.

With reference to the issue of rights and legitimate interests in respect of the Domain Name, the Complainants submit that at no time was the Respondent known as NATWEST or NATWESTBANK. Secondly Complainants assert that the Respondent whether as a business or as an individual has never used the names nor has he been so referred to or commonly known, even as nicknames. The Respondent has no trademark rights nor any rights at all in the NATWEST or NATWESTBANK names, neither is the Respondent a licensees or other authorized user of any of the Complainants� marks.

The Complainants further submit that before any notice to the domain name registrant of the dispute, there was no evidence of the Respondent�s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. In fact, Complainants assert that such use as Registrant made of the name is bad faith use and as such, not legitimate use quoting the decision in 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), where it was held that Respondent�s registration and use of the domain names was in bad faith.

Furthermore, it is underlined that the Respondent is not making a legitimate non-commercial or fair use of the domain names, without intent misleadingly to divert consumers or to tarnish the trademark or service mark at issue since, according to the Complainants, such use as made of the names by the Respondent is clearly with an intention to tarnish the trademark of the Complainants.

According to the Complainants, the Respondent�s claimed justification and/or defence - the right to free speech or fair comment or other fair use defences - does not apply to this case for the following reasons. All six names in question were all identical to or confusingly similar to Complainants� registered trademarks and despite the use of a "disclaimer", the Respondent has used the names in such a way that the Complainants� reputation and goodwill will suffer whereas the Respondent has not made their own case nor substantiated any claims made in the web site.

The Complainants underline that the Respondent has hidden behind fictitious information and has not made known who he is or what, if any, forms the basis of his unprecedented attack and the Respondent does not require five or six domain names in order to exercise any rights of free speech he might have. One domain name alone which does not utilize the Complainant�s registered trademarks should suffice. On the contrary, the Respondent has embarked on a malicious, unprovoked attack on the Complainants, without giving the Complainants the opportunity to defend themselves by revealing his true identity.

The Complainants also indicate that the Respondent�s use goes beyond mere parody or criticism, and in the absence of any attempt by the Respondent to properly present and substantiate his case, the only conclusion that can be drawn is that such statements as contained in the web site are defamatory to the Complainants.

Addressing the issue of bad faith, the Complainants first of all refer to the case 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) annexed to the Complaint where Respondent was conclusively found to have acted in bad faith.

The Complainants inform the Panel that the Respondent has admitted in the past dealings (see WIPO Case No. D2002-0823) that he was aware of Complainants and therefore, according to the Complainants, the intention at the time of registration was to cause damage through the use of a web site whose domain names are confusingly similar to the Complainants� trademarks to disseminate harmful information aimed at tarnishing the Complainants� reputation and the Complainants� marks.

The Complainants also stress the Respondent�s pattern of behavior in constantly providing false address information for the purposes of the domain name registrations, conduct that is in breach of the Respondent�s warranty under paragraph 2(a) of the Policy. Complainants submit that this was done in an attempt to evade detection by the Complainants, hoping to prolong the period during which the damaging material would remain on the web site, thus, inflicting maximum damage on the Complainants� reputation and business. Such behavior is consistent with cybersquatting and demonstrates bad faith registration and use on the Respondent�s part.

The Complainants highlight that the registration of six domain names (so far known by Complainants) demonstrates a pattern of such conduct by the Respondent.

The Complainants indicate that they cannot make the claim that Respondent, being a competitor, has registered the domain name in order to disrupt the Complainants� business because the Respondent has concealed his identity and Complainants have no way of knowing whether they are competitors or not. However, Complainants do make the claim that the Respondent�s true purpose in registering the domain name and publishing the attendant web site is to disrupt the Complainants� business, by publishing malicious, damaging, untruthful and unsupported information aimed at tarnishing Complainants� trademarks and destroying their goodwill and reputation among their customers and amongst the general public who will surely access the web site and having done so be likely to believe the assertion. This in itself, according to the Complainants, constitutes bad faith registration.

In the supplemental Complaint the Complainants indicate, i.a. that the Policy is the right forum to address the present case since it is a case of clear abuse as intended by the Policy. As to the disclaimer at the top of the web page, the Complainants indicate that such disclaimer was also in operation when all six names. The current name, as well as the other five names , , , (decided in WIPO Case No. D2002-0823) and (decided in WIPO Case No. D2003-0051) all pointed to the same site and indicate that the so-called disclaimer is found on the same page where all the damaging material is contained and therefore it does not have any significant effect.

In the Supplemental Complaint reference is made to the fact that it is well-established UDRP knowledge that in most of the "sucks" cases the domain names were held confusingly similar to the Complainants� trademarks.

Addressing the issue of the onus of proof, the Complainants state that the Policy shows that the burden is on a Complainant merely to make a prima facie case. Once a Complainant has done this, the onus is then on the Respondent to rebut the presumption via the methods set out in paragraph 4(c)(I-iii) of the Policy. A Respondent must show that he has at least some interest in the name indicating that according to the Complainants the Respondent has failed to demonstrate that he has any interests at all in the name, since he has failed to make a cogent argument to support his rights to the name for free speech purposes.

B. Respondent

The Respondent first of all points out that the UDRP was established to permit the expedited disposition of clear abuses and a clear abuse is certainly not present in the instant case. The Respondent furthermore quotes a number of cases holding that UDRP process is limited in scope and is to deal with simple, clear, abusive registrations of domain names, and not complex trademark disputes, and, suggesting that the instant case is not a clear case of "cybersquatting" and "cyber-piracy", invites the Panel not to grant the Complainants� request to have the Respondent�s domain name taken away.

As to the issue of the confusingly similarity of the trademark registrations the Respondent questions the accuracy of the evidence about the orientation of the majority of UDRP panelist relating to "sucks" domain names. The Respondent points out that an allegation of this nature, if true, would nevertheless be irrelevant to the determination of this issue since in the web site posted on the domain name contains two extremely clear and prominent disclaimers proclaiming that "This is not an official NATWEST site" and according to the Respondent this aspect will be sufficient to exclude similarity since any initial confusion that could occur when viewing the domain name alone would be easily dispelled by cursory view of the web site. Accordingly, any possible initial confusion should not defeat the protected right of free speech on the Internet.

The Respondent also contends the accuracy of the statement referring to the Internet search engines such as "Google" or "Alta Vista" that would most likely disclose the existence of inviting the Panelist to conduct a search of this nature for confirmation of the inaccuracy of the Complainants� statement.

According to the Respondent, Complainants have also failed to sustain their burden of proof that Respondent did not have any legitimate interest in the domain names since they only makes some unsupported statements that do not relate to the issue of the Respondent�s "legitimate interest in the domain name" for purposes of the Policy.

The Respondent indicates that has engaged in 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. The domain name is currently being used as a vehicle for directing criticism at a bank that has engaged in well-documented inappropriate activities. Respondent has attempted to express his concerns and engage in valid, protected free expression of his opinions.

According to the Respondent, although the Complainants allege that Respondent has registered and used the Domain Name misleadingly to divert customers to its highly critical site, with the probable intent of tarnishing the mark at issue, such allegations fail to undermine the legitimacy of Respondent�s use.

The Respondent states that his actions cannot be characterized as consistent with an "intent for commercial gain to misleadingly divert consumers". That phrase refers to the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales and in any event, such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the Internet. A user who misleadingly stumbles upon Respondent�s site while looking for Complainants� official site need only click the "back" button to return to her search, or the link helpfully provided by Respondent.

The Respondent also observes that the relevant domain name dispute policies are designed to protect the Respondent in the instant case in his attempt to exercise his free speech and free expression rights guaranteed under UK law under Article 10 of the Human Rights Act 1998, and under International Law by Article 10(1) of the European Convention for the Protection of Human Rights and Fundamental Freedoms, and the United Nations Universal Declaration of Human Rights. The Respondent then provides the Panel with an extensive dissertation on the doctrine of "freedom of speech" and right of criticism.

The Respondent also objects to the Complainants� allegation that the claims of the Respondent were not substantiated and, according to the Respondent there is not any basis whatsoever for Complainants� allegation that a domain name should be transferred from a registrant if the registrant engages in certain activities without "giving the Complainants the opportunity to defend itself by revealing their true identity."

With reference to the bad faith aspect, the Respondent indicates that the Complainants have failed to prove that the disputed domain names were registered and used in bad faith and therefore the Complaint should be denied.

Namely, the Respondent indicates that the Complainants did not prove Respondent�s pattern of behavior in constantly providing false address information for the purposes of the domain name registrations observing that the Panel cannot make a factual determination on this issue without any facts to support Complainants� allegation or Complainants� conclusion on this issue of fact.

The Respondent does not agree with the Complainants� interpretation of the use of the domain name as able to disrupt the Complainants� business, by publishing malicious, damaging, untruthful and unsupported information pointing out that this statement involves a factual determination of the intent, motivation and intent of Respondent and Complainants have not provided any evidence to prove the Respondent�s intent and this factor alone, even if proven, would not definitively determine that there was bad faith. According to the same Respondent though this factor is only one of many indicators that may result in a determination of bad faith.

The Respondent then quotes the different circumstances of bad faith listed in the Policy concluding that there is absolutely no evidence presented by Complainants to show that one of the circumstances set out or any other circumstance of bad faith was present and therefore the Complainants� request for the transfer of the domain name should be denied.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(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 is being used in bad faith.

6.1. Domain Name Identical or Confusingly Similar

The Complainants have provided evidence of ownership of a number of trademark registrations for trademarks consisting in and comprising of the signs NATWEST and NATWEST BANK.

Therefore, the Domain Name is not identical to the Complainants� marks and it is for the Panel to establish whether the addition of "sucks" is sufficient to exclude the confusingly similarity between the signs.

The Panel acknowledges that there are divergent views amongst the panelist on the issue since in some cases it was held that the domain names were not confusingly similar to the Complainants� trademark in light of the fact that Internet users could have immediately considered the addition of "sucks" as a pejorative exclamation and therefore dissociate it from the Complainants. See i.a. the cases Asda Group Limited v. Mr. Paul Kilgour, WIPO Case No. D2002-0857 (November 11, 2002); McLane Company, Inc. v. Fred Craig, WIPO Case No. D2000-1455 (January 11, 2001); Wal-Mart Stores, Inc. v. and Kenneth J. Harvey, WIPO Case No. D2000-1104 (November 23, 2000); Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015 (January 26, 2001), with dissenting opinion.

The opposite conclusion was nevertheless reached in what it appears to be the majority of cases. Most of the panelists finding for the confusing similarity observed that not all the Internet users are English speakers or familiar with the use of "sucks" to indicate a site used for denigration or criticisms.

As it was stated in Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (February 3, 2003) "Internet users are not always fluent in English or at least not sufficiently fluent to perceive that the term "sucks" is used to denigrate, criticize and disparage, and that it is therefore a pejorative term, which should immediately disassociate the domain name to which it is appended from the Complainant�s trademark forming part of the domain name".

In addition, as mentioned in Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No D2001-1195 (November 12, 2001)"it is not unknown for companies to establish complaint or comment sites or areas of sites to obtain feedback on their products; accordingly, some people might suppose that a website of this nature at the Domain Name was operated by the Complainant."

In the case National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd., WIPO Case No. D2000-0636 (August 13, 2000) the Panel concluded on the issue as follows: "Given the apparent mushrooming of complaints sites identified by reference to the target's name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainant? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainant's name. Adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainant; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainant".

Furthermore, it should also be considered the risks that the search engines would probably retrieve a domain names consisting of the search term with the addition of any suffix, including "sucks" and therefore be likely to confuse the average Internet user who might not necessarily be able to immediately exclude any relationship with the Complainants.

Amongst the large number of decisions finding for the confusingly similarity see Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (February 3, 2003); Freeserve PLC v. Purge I.T. and Purge I.T. Ltd., WIPO Case No. D2000-0585 (August 13, 2003); Dixons Group PLC v. Purge I.T. and Purge I.T. Ltd., WIPO Case No. D2000-0584 (August 13, 2003); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000)); Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 (July 20, 20000); Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol, WIPO Case No. D2000-0996 (October 22, 2000).

The Panel determines that the addition of the term "sucks" to any trademark and especially to a well-known trademark is not sufficient to prevent the resulting domain name from being confusingly similar to the trademark.

In view of the above, the Panel finds that the Complainants have proved that the Domain Name is confusingly similar, obviously but for the suffix ".com" which is instrumental for the use in Internet, to the trademark of the Complainants according to paragraph 4(a)(i) of the Policy.

6.2. Rights and Legitimate Interests

The Complainants must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(i) He has made 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 prior to the dispute;

(ii) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(iii) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel acknowledges that there exists no relationship between Complainants and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Name. There is no evidence of any commercial relationship between the Complainants and the Respondent which would entitle the Respondent to the mark. Furthermore, the Respondent is not commonly known by the domain name nor is using the domain name in connection with a bona fide offering of goods or services prior to the dispute.

According to the Policy, the burden rests upon the Complainants to demonstrate that Respondent has no rights or legitimate interests but, once some evidence has been adduced like in the present case, the onus is transferred to the Respondent to show otherwise. In the present case, notwithstanding the extensive response filed by the Respondent, the explanation provided is that the Respondent was exercising his right to freedom of speech.

The Panel concurs with the views expressed by the Panel deciding the prior case filed by the same Complainants against the same Respondent, 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) "while one must concede that criticism per se is not a commercial use and that a criticism site may well be entirely legitimate, an argument can be made that a non controlled use can be anti-commercial when it has the effect of driving regular customers away from one's business. Having said that, the Panel also noted that the Respondents have used domain names that are identical and substantially similar to Complainants' trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants' trademarks. Respondents' can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants' marks. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else's trade name or trademark by simply claiming the right to exercise a right to freedom of expression".

The Panel notes 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.a. in Westminster Savings Credit Union v. Hart Industries Inc. And Gregory Hart, WIPO Case No. D2002-637 (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."

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain name, according to paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

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

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder�s web site or other online location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the holder�s web site or location.

The Panel is not limited by the paragraph 4 (b) to determine whether the domain name was registered and used in bad faith and the Panel can infer the proof of bad faith also from additional circumstances provided that the two requirements, i.e. that the disputed domain name was registered in bad faith and that said domain name is used in bad faith are proved.

As to the first requisite, the Respondent was certainly aware of the existence of the Complainants� trademarks at the time of registration of the Domain Name in light of the prior registrations of domain names identical or confusingly similar to the Complainants� trademark, in view of the content of the web site already published in the then corresponding web pages clearly referring to the bank. Furthermore, at the time of registration of the Respondent had already received the notification of the commencement of the proceeding of the WIPO Case No. D2002-0823 with the same Complainants.

As to the use in bad faith, the Panel notes that the Respondent�s web site to which the Domain Name resolves accuses Complainants of "reprehensible behavior" which resulted in "victims who have suffered and had their lives destroyed" and who "took their lives as a result�". Respondent neither specifies nor explains this "reprehensible behavior" and the other serious accusations on their web site nor is reference made in the Response to this issue but for affirming that it did not need to be substantiated.

The Panel concurs with the decision amongst the same parties in 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) stating that "without support, this innuendo serves no purpose other than to tarnish the reputations of Complainants and their trademarks. While Complainants need not know the identity of their accusers to respond to the accusations, Complainants cannot defend themselves against Respondents� slurs without knowing the facts on which they are based. It is here that Respondents� free speech arguments fail. Respondents may have a valid basis to denigrate Complainants, but having failed to allege any basis for their slurs on their website, Respondents have not demonstrated that use of their Domain Names is legitimate" (�) Respondents having failed to provide a better explanation (or any explanation) other than that they sought to tarnish Complainants and their trademarks, Panel finds that Respondents have not engaged in legitimate non-commercial or fair use of the Domain Names, nor have they shown a lack of bad faith sufficient to negate Complainant�s showing of bad faith use and registration."

Furthermore, the Panel also notes that the content of the web site of the instant domain name is exactly the same adopted in the other five domain names object of the quoted two prior decisions against the same Respondent. The Panel finds that should be registered to be a true criticism site in order to express the Respondent�s free speech rights, additional content and further explanations should have been added by the Respondent.

The Panel acknowledges the importance of freedom of speech and recognizes in some instances the legitimacy of a criticism site claimed by the Respondent; however, the Panel is also convinced, as held in other "sucks" cases, that Respondent can continue expressing themselves through the registration of a domain name other than the ones that may cause confusion or mislead the public; the disclaimer added to the web page published serves little or no purpose in the instant case in view of the general conduct to the Respondent.

In light of the fact that the parties and the facts are coinciding, the panel again concurs with the decision in 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) stating that "the Respondent actions are pointing to an intention to tarnish Complainants' trademarks or dilute their goodwill. Given the very nature of the Internet, the readily free access to a world-wide audience and the impossibility of Complainants to counteract or respond to inaccurate and/or incomplete statements or accusations made by Respondents, the Panel is of the view that the Respondents can achieve the goal of exercising their right to freedom of expression, by using another name. Consequently, the Panel finds that all of this points to bad faith on Respondents' part".

The Panel considers an additional circumstance evidencing bad faith the Respondent�s pattern of behavior in providing false address information for the purposes of the domain name registrations, conduct that is in breach of the Respondent�s warranty under paragraph 2(a) of the Policy. The Respondent has objected that the Complainants have not provided any facts to support Complainants� allegations - thus without providing any convincing explanation as to such conduct in the Response - and therefore Panel could not have made a factual determination on this issue. The Panel observes that the pattern in such a behavior of the Respondent is sufficiently established by the different entities which were subsequently quoted as administrative contacts of the five other registrations identical or confusing similar to the Complainants� trademarks, all transferred pursuant to the two quoted prior WIPO decisions.

The Panel, as it was held in The Royal Bank of Scotland Group plc and National Westminster Bank plc A/K/A NatWest Bank v. Alberto Rodriguez / A&A System Solutions (WIPO Case No. D2003-0051), agrees with the Complainants "in the sense that this was probably done in an attempt to avoid detection as long as possible. The Panel considers that such changing of contact details and providing untrue information is itself an abuse of the registration process and can be considered as a use of the domain name in bad faith".

The Panel also indicates that even thought the Policy is not a forum to decide defamation issues, it must be highlighted that the instant defamation and damage to goodwill not supported by any evidence nor substantiated in the Response, is occurring via use of a sign confusingly similar to the Complainants� registered trademarks and is therefore likely to tarnish and damage those marks irreparably. Since the Respondent is not apparently a competitor, this behavior cannot fall under the provision of paragraph 4(b)(iii) and therefore be considered primarily aimed at disrupting the business of a competitor, but can certainly be considered an additional circumstance evidencing bad faith.

Furthermore, the Panel expresses the view that in the cases in which the identity of the Respondent is not clearly identifiable either in the Whois, in the web site or in the Response, the Respondent�s reasoning based solely on the doctrine of free speech to justify tarnishing contents on a web site shall be excluded as proof of use in good faith since the subject who can actually hide behind the false or inaccurate personal details is not ascertainable.

In view of the above, the Panel finds that Respondent registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Panel finds that the Domain Name registered by the Respondent is confusingly similar to the trademarks in which the Complainants have rights; and the Respondent has no rights or legitimate interests in respect of the Domain Name; and the Domain Name has been registered and is being used by the Respondent in bad faith.

Accordingly, the Panel decides that the domain name be transferred to the Complainants.

 

 

Luca Barbero
Sole Panelist

Dated: May 9, 2003

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