WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FMR Corp. v. Native American Warrior Society, Lamar�Sneed, Lamar�Sneede
Case No.�D2004-0978
1. The Parties
The Complainant is FMR Corp., Boston, Massachusetts, United�States�of�America, represented by Fross Zelnick Lehrman & Zissu, PC, United�States�of�America.
The Respondents are Native American Warrior Society, Cumming, Georgia, United�States�of�America and Lamar�Sneed, Cumming, Georgia, United�States�of�America, both represented by Mr.�Lamar�Sneed.
2. The Domain Names and Registrar
The disputed domain names , , , and are registered with Go�Daddy�Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on November�19,�2004. On November�23,�2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On November�23,�2004, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent Native American Warrior Society is listed as the registrant of and , that Respondent Lamar�Sneed is listed as the registrant of and and that Lamar�Sneede, whom all parties agree is in fact Respondent Lamar�Sneed, is listed as the registrant of , and providing the contact details for the administrative, billing and technical contacts for each registrant. The Panel will follow the parties’ approach and refer to all three registrants collectively as “the Respondent”. After receiving the verification response from the Registrar, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the�“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the�“Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs�2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November�29,�2004. In accordance with the Rules, paragraph�5(a), the due date for the Response was December�19,�2004. The Response was filed with the Center on December�14,�2004. The Complainant filed a Reply to the Response, along with a request for permission to file such Reply, on December�23,�2004. The Respondent filed a Reply to the Reply on December�28,�2004.
The Center appointed D.�Brian�King as the Sole�Panelist in this matter on January�6,�2005. 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.
The parties’ second round of pleadings was filed without authorization, and whether to accept those pleadings is a matter for the Panel’s discretion; indeed, the Rules’ only provision regarding additional statements after submission of the Response is that “the Panel may request” such statements. Rules, para.�12 (emphasis added). In practice, panels have accepted additional statements submitted on a party’s own initiative, but, in light of the intended speed, simplicity and low cost of dispute resolution under the Policy, they have generally done so only under exceptional circumstances. See Kirkbi AG v. Michele Dinoia, WIPO Case No.�D2003-0038 (March�9,�2003) (collecting decisions). The second round of pleadings in this case does not, in the Panel’s view, fall into the “narrow exceptions” to the rule that only a Complaint and a Response are to be considered. The T v. Jeffrey S. Poploff, WIPO Case No.�D2000-1470 (January�5,�2001). Unfortunately, in order to determine this, the Panel has been required to read the surplus pleadings, and of course the parties have expended the time and money required to produce them. Nonetheless, in the hope that it will deter wasteful submissions in the future, the Panel emphasizes that it has not taken into account anything in either the Complainant’s Reply or the Respondent’s Reply to the Reply in coming to a decision.
In any case, it would be difficult to do so: these pleadings essentially repeat the contentions made in each party’s first submission. For example, the Complaint included as exhibits an email exchange in which, the Complainant contended, the Respondent attempted to sell the disputed domain names for far more than his out-of-pocket costs. The Response asserted, without referring to those emails, that there was “no evidence” that the Respondent had attempted to sell the disputed domain names to the Complainant. It is arguably understandable that the Complainant might fear that the Panel would overlook the evidence it had previously submitted. That is not a basis under the Rules, however, to file a second pleading rebutting the Response by referring the Panel to the same evidence that had been fully discussed in the Complaint.
The Complainant’s request to file a Reply is accordingly denied, as is the request implicitly made by the Respondent to file his Reply to the Reply.
4. Factual Background
According to the evidence cited in and produced with the Complaint, the Complainant is the largest mutual fund company in the United States and one of the world’s largest financial services companies. The Complainant is also the largest provider of so-called 401(k) services, which are defined-contribution retirement programs in the United States, and the Complainant is therefore well-known to American consumers in connection with retirement planning. The Complainant also provides a range of other financial services. Most notable for present purposes are the Complainant’s brokerage services, of which the Respondent was once a client.
The Complainant offers its services under the brands and trade names FIDELITY and FIDELITY INVESTMENTS. Attached to the Complaint are examples of the numerous service marks the Complainant has registered in various countries, including the United�States. Besides FIDELITY and FIDELITY INVESTMENTS, the Complainant has many registered marks combining the word “fidelity” with other words, such as FIDELITY BROKERAGE and FIDELITY RETIREMENT RESERVES. The Complainant’s marks have been found to be “famous and distinctive.” FMR Corp. v. John Zuccarini, Case No.�FA0205000113255 (NAF June�4,�2002). The Complainant maintains a heavily trafficked web site under the domain name, among others.
The Respondent Mr.�Sneed and his wife were customers of the Complainant’s brokerage services. Their accounts apparently declined in value for a number of reasons, including margin interest charged by the Complainant and a decline in the value of some of the securities held in the accounts. The Sneeds commenced an arbitration against the Complainant. The arbitration was administered by the National Association of Securities Dealers (the “NASD”). On July�21,�2004, the NASD panel issued an award denying all of the Sneeds’ claims.
The Respondent registered four of the disputed domain names five days later, on July�26,�2004, and the remaining disputed domain name on July�29,�2004. All of the disputed domain names resolve to a page containing two items. First is a “Public�Notice” dated July�31,�2004 recounting the Sneeds’ experience as customers of the Complainant. The notice accuses the Complainant of numerous wrongful and criminal actions. For example, the notice claims that one of the Complainant’s employees surreptitiously altered the Sneeds’ account opening form after they had submitted it, so that, without their knowledge, the account created for them included a margin-loan facility. The notice charges that the Complainant cost the Sneeds millions of dollars and effectively ruined their retirement by fraudulently charging them margin interest and investing their money in high-risk securities inappropriate for retired investors whose objective was capital preservation. The notice urges readers to “remove your life’s savings from Fidelity Investments now, before it is too late.” The second item on the web page is a press release from the United States Securities and Exchange Commission (the “SEC”) dated August�3,�2004. The press release announces the settlement of enforcement actions by the SEC and the New York Stock Exchange following an investigation into the alleged alteration and destruction of documents in some of the Complainant’s branch offices. According to the press release, the Complainant agreed to pay a total of $2 million in fines to settle the enforcement actions, and seven of the Complainant’s employees accepted censures and temporary bars or suspensions from the securities industry. Neither the Complainant nor its employees admitted any wrongdoing.
The Respondent, in short, created what has been called a “gripe site” or a “criticism�site” as a vehicle for “cyber-griping”.
The Complainant submitted printouts of pop-up advertisements that allegedly appeared when users visited the Respondent’s web site. The advertisements were for a satellite television service and offered consumers a free satellite dish. According to the satellite company’s web site, as printed and submitted as an exhibit to the Complaint, the company offered to pay web site owners $50 for each person who clicked through and ordered a free dish. There is no direct evidence that the Respondent ever received a payment from the satellite company, but it is reasonable to infer that he derived some income from the pop-up advertisements. The Respondent says flatly that “[n]othing is advertised on the sites” he established under the disputed domain names, but he does not address specifically the Complainant’s allegations (or evidence) that pop-up advertisements appeared when his web site was visited, nor that he would receive payments if visitors did business with the advertisements’ sponsor. It is not clear whether the Respondent would consider a separate pop-up window not to be “on” his web site, and it is therefore unclear whether his general denial that advertising appears “on the sites” is meant to include pop-up advertising. In any case, the evidence shows that pop-up advertising did appear on multiple visits by the Complainant to the Respondent’s website.
On August�27,�2004, the Complainant’s counsel sent the Respondent a lengthy cease-and-desist letter, demanding that the Respondent transfer the disputed domain names to the Complainant. In the letter, the Complainant does not mention the possibility of paying the Respondent for the transfer. The letter disputes the factual assertions in the “Public Notice” on the Respondent’s web site, making reference to the parties’ submissions to the NASD panel and the panel’s award to support the claim – repeated several times in the letter – that the Public Notice contains “false and defamatory” statements.
So far as the record shows, the next communication between the parties was in an email dated September�23,�2004 from the Respondent to a Mr.�Barnes at a Fidelity () email address: “It has come to my attention that you may be interested in purchasing certain dot com names that I own. If this is the case, please send me your offer to purchase them all and I will certainly consider it.” Judging from elements of subsequent communications, it appears that Mr.�Barnes is an in-house lawyer for the Complainant. It is not clear how the Respondent came to know of Mr.�Barnes or his email address, nor why the email was sent to Mr.�Barnes rather than to the outside counsel who had sent the cease-and-desist letter. The Respondent says he “received a number of somewhat threatening e-mails from Fidelity”, apparently predating his email to Mr.�Barnes, but those emails do not appear in the record and the Respondent does not describe their content beyond characterizing them as “somewhat threatening”. See Response at para.�5.
Mr.�Barnes responded by email on September�24,�2004, telling the Respondent that “Fidelity would, of course, be willing to reimburse you for the costs of registering the domain names and for any costs that you may incur in the course of transferring the domain names to Fidelity.”
The Respondent responded by email on October�8,�2004:
“Thank you for your response to my e-mail to you in reference to the D names. However, you have conveniently overlooked the key word in that communication, that word being PURCHASE, not reimbursement. I owe your company nothing. Regardless of the Kangaroo NASD ruling, your people lied thru their teeth and caused me and my wife to lose about everything we had. My 69 year old wife has had to return to work for the rest of her life due to your companies failure to protect our retirement funds. After she had been retired in comfort and financial security for eight years. Millions of dollars down the drain due to YOUR companies failure to assist us as promised, our loss is due to your companies incompetence, not ours. If you wish to purchase the names let me know, if not forget it. Keep in mind, they will be expensive. Contrary to your false assertions, you do not own the name FIDELITY. I Bank with a Fidelity Bank, and it is certainly not YOUR BANK.
I know that you are aware of the Securities and Exchange Commission rulings against your company for the criminal acts conducted in many of your offices as was well reported in many of the nations newspapers, and to which I have referred to. You did many of the same things to us as your company was accused and convicted of by the SEC. I will continue to tell our story about your company’s misconduct toward us in every form and manner that presents its self to me. Remember as a lawyer you must know that TRUTH is an absolute defense against liable [sic]. I will continue to tell the truth about your company and how we were treated by them and the SEC rulings against your company every chance I get. In fact, I would love to tell the story in the Superior Court of the county in which I reside.”
On November�17,�2004 – two days before the Complaint was filed – the Respondent sent an e-mail to the Complainant’s outside counsel: “Hope you got my last e-mail.1�.�.�. By the way, I have placed a few of the names you were concerned about on the web for sale. You do remember, I OWN THEM.” The record contains no further evidence about whether the Respondent actually offered the disputed domain names for sale, and if he did so, on what terms and by what means.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant argues that the disputed domain names incorporate the Complainant’s FIDELITY, FIDELITY INVESTMENTS and FIDELITY BROKERAGE marks in connection with a generic or descriptive word or term, such as “services”, “loss”, “fraud” or “retirement.” Because the additional words are generic or descriptive, the likelihood of confusion must be presumed. See Complaint at para.�19.
Further, considering the fame of Complainant’s marks in connection with financial services, consumers in the financial services market will reasonably believe on seeing the disputed domain names that they are related to the Complainant. Consumers who use search engines to find the Complainant’s web sites may be directed to the disputed domain names. See id. (citing PepsiCo Inc. v. The Holy See, WIPO Case No.�D2003-0229 (June�18,�2003)). According to the Complainant, the Respondent has paid a service to place his web sites as a sponsored listing on several search engines, such that they appear first when the Complainant’s marks are entered as search terms, thus heightening the risk of confusion.
Rights or Legitimate Interests
The Complainant argues that no one who is not connected with the FMR Corporation could ever have a legitimate interest in any domain name that incorporates the Complainant’s marks: “Where, as here, Complainant’s FIDELITY marks are so well known and recognized, there can be no legitimate use by Respondent.” Complaint at para.�20 (citing Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No.�D2000-0163 (May�9,�2000)).
The Respondent cannot avail himself of the safe harbors of paragraphs�4(c)(i) and�4(c)(ii) of the Policy because he knew of the Complainant’s marks by virtue of his prior dealings with the Complainant and because he has never been known by any of the disputed domain names. See Complaint at para.�21.
Nor can the Respondent establish a legitimate interest under paragraph�4(c)(iii) of the Policy, because he has been using the disputed domain names for commercial gain, specifically by: 1)�using a pop-up window to advertise a satellite television service whose seller pays web site owners when users click through and order a free satellite dish; 2)�offering to sell the disputed domain names to the Complainant for more than the Respondent’s out-of-pocket costs; and 3) offering the disputed domain names for sale to the general public. See Complaint at paras.�22-23.
The Respondent has no right or legitimate interest in creating a gripe site using a domain name that incorporates the Complainant’s marks, at least without including in the domain name other words criticizing the Complainant so that consumers will not be “deceived into believing they are accessing Complainant’s web site or a web site related to one of the many services offered by Complainant.” See Complaint at para.�24. According to the Complainant, the disputed domain names , and , on their face, do not necessarily imply criticism of the Complainant but rather “suggest web sites concerning communications by Complainant on issues of concern to consumers such as fraud, identity theft and investment losses.”
Finally, the Respondent is using the disputed domain names maliciously, with the intention of harming the Complainant. See Complaint at para.�25. Although “this�proceeding does not concern the issue of whether or not Respondent’s statements are defamatory,” id. at para. 25 n.1, the Respondent’s false statements in contradiction to the NASD panel’s findings, along with his having registered the disputed domain names within a week of the panel’s decision, are evidence of the Respondent’s intent to harm the Complainant.
Registered and Used in Bad Faith
The Complainant asserts that the Respondent is acting in bad faith by deliberately and confusingly using the disputed domain names, all of which are based on the Complainant’s marks, to divert traffic to the Respondent’s web site. He registered the disputed domain names as early as five days after losing his NASD proceeding against the Complainant’s affiliate. Under the circumstances, there can be no doubt that the Respondent intended to mislead Internet users into visiting the Respondent’s web site through the creation of initial interest confusion. This is evidence of bad faith under paragraph�4(a)(iii) of the Policy. See Complaint at para.�24 (citing Annette A. Antoun d/b/a The Paxton Herald v. Stephen Millard, Case No.�FA0207000114770 (NAF�August�21,�2002); Chinmoy Kumar Ghose v. ICDS and Maria Sliwa, WIPO Case No.�D2003-0248 (May�22,�2003); The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No.�D2000-0038 (March�21,�2000)).
The Respondent’s bad faith is also established by the fact that the Respondent registered and is using the confusingly similar disputed domain names for a web site that contains materially false statements intended to harm the Complainant’s goodwill and tarnish the Complainant’s marks. See Complaint at para.�27 (citing Reg Vardy Plc v. David Wilkinson, WIPO Case No.�D2001-0593 (July�31,�2001); Arnold Clark Automobiles Limited v. Thomas (aka Tam) Coughlan, WIPO Case No.�D2002-0909 (November�19,�2002)).
The Respondent has sought to profit from the registration of the disputed domain names, both by offering to sell them for more than his out-of-pocket costs and by using a pop-up window to direct consumers to a commercial site from which he derives a financial benefit. See Complaint at paras.�28-29 (citing Arnold Clark Automobiles Limited v. Thomas (aka Tam) Coughlan, WIPO Case No.�D2002-0909 (November�19,�2002); American Lubefast Franchising, Inc. v. Chung Rigby, WIPO Case No.�D2004-0329 (August�1,�2004)).
The fact that the Respondent has registered without authorization domain names that fully incorporate the Complainant’s well-known marks, despite being aware of the Complainant’s rights therein, is in and of itself evidence of bad faith. See Complaint at para.�30 (citing Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No.�D2000-0163 (May�9,�2000); PepsiCo, Inc. v. “null,” aka Alexander Zhavoronkov, WIPO Case No.�D2002-0562 (July�30,�2002)).
Lastly, the Complainant contends that the Respondent “could only have registered Domain Names identical to Complainant’s Mark in order to capitalize on Complainant’s hard-earned and valuable goodwill.” Complaint at para.�31.
B. Respondent
Identical or Confusingly Similar
First, the Respondent argues that the Complainant “does not have a monopoly on the use of the term Fidelity.” The Respondent points out, attaching exhibits in support, that many businesses, including financial institutions, offer retirement services and use the word “fidelity” in their name. See Response at para.�5.
Second, the Respondent contends that the addition of derogatory terms, such as “fraud” and “theft”, to three of the disputed domain names shows that the names are distinct from the Complainant’s marks, such that no consumer confusion can occur. See id.
Finally, the Respondent concedes that he “cannot use the disputed domain names in the identical way that FMR does. That would be a violation. But that is not the case. They are separate and distinct names.” Id.
Rights or Legitimate Interests
Respondent makes the following arguments in support of his claim to have rights or legitimate interests in respect of the disputed domain names: there is no evidence that the Respondent’s use of the disputed domain names has actually harmed the Complainant; the Respondent is using the disputed domain names to tell “a true story of how he and his wife were defrauded,” which is his right under the First Amendment to the United States Constitution; and if the Complainant believes the statements on the Respondent’s web site are libelous and thus outside of First Amendment protection, the Complainant’s proper remedy is in a court of law rather than this proceeding under the Policy. See Response at para.�5.
Registered and Used in Bad Faith
In addition to the arguments mentioned in the preceding paragraph, the Respondent asserts that he cannot be acting in bad faith because he is telling the truth on his website. See Response at para.�5.
It was never the Respondent’s intention to make money from the disputed domain names, and the Complainant has failed to prove the contrary. See id.
The Respondent never intended to sell the disputed domain names to the Complainant. The Complainant initiated discussions between the parties about transferring the disputed domain names, and that discussion never went beyond the offer by the Complainant to reimburse the Respondent for his costs. See id.
The Respondent also submits that he is not using the web site for the purpose of harming the Complainant; rather, he uses it “totally for the purpose of exposing ALL frauds against investors�.�.�.�.” See id.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes, first, that the Complainant has protected rights in its service marks. The Panel further finds that three of the disputed domain names are identical or confusingly similar to the Complainant’s marks. Those are , and . The Complainant has failed to prove that the two remaining disputed domain names – and – are identical or confusingly similar to its marks.
The Respondent’s first contention is that the Complainant has no more right to the word “fidelity” than do the many other businesses that use that word as part of their names. That contention misses the point and perhaps misunderstands the nature of trademarks and service marks. The Complainant has protected rights in its service marks, even though those rights do not include the power to forbid all others from ever using the word “fidelity” in any business context, or even in all aspects of the financial services field. See Bonito Boats Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 157 (1989) (holding that a trademark owner has at most a quasi-property right in its mark and only limited rights to prevent its use by others). Among the Complainant’s rights, for example, is the right not to have a competitor use its marks in a way that creates confusion among consumers as to the source of a service offered by the competitor. That other businesses use the word “fidelity” in their names does not imply that the Complainant has no rights in its marks; it merely reflects the fact that those rights are not unlimited.
The domain names and could hardly be more confusingly similar to the Complainant’s marks without being absolutely identical. The Complainant is famous for its brokerage services and even more famous as a provider of investment vehicles for retirement. Indeed, two of its registered marks are FIDELITY BROKERAGE and FIDELITY RETIREMENT RESERVES. There is no doubt that many consumers would assume that typing either of these two disputed domain names into their browsers would take them to a site owned by or associated with the Complainant.
A closer case is presented by the domain name . FIDELITY INVESTMENTS is one of the Complainant’s registered marks. While the word “loss” has been appended to the mark, that word is, as the Complainant notes, a word that is not intrinsically derogatory when used in connection with securities investing. “Loss” does not necessarily connote intentional wrongdoing or even negligence. Losses are a risk taken by all investors and experienced by most at one time or another, a reality that a company in the Complainant’s business must convey and explain to its retail customers. In these circumstances, the Panel concludes that the domain name, though not identical to the Complainant’s mark, is confusingly similar within the meaning of the Policy, in that a reasonable Internet user could believe that the domain name is owned by or associated with the Complainant.
That is not the case with the two remaining disputed domain names, however. A line of decisions under the Policy, buttressed by judicial decisions under related national laws, holds that adding a pejorative term to a trademark or service mark dispels the likelihood of confusion. Though there are some decisions to the contrary, the weight of authority, and the clear trend in recent cases, firmly support that position.
The reasoning is aptly summarized by the Respondent: “In no way are the names owned by respondent confusing with the names used by FMR Corp. [u]nless it wants to admit that their very name is somehow connected with FRAUD and DECEITFUL CONDUCT�.�.�.�.” Panels applying the Policy have reached the same conclusion: a company is not likely to use as the URL of its web site a domain name that communicates an inherently and necessarily negative message about the company.
A leading decision under the Policy, which surveys the subject at some length, is Wal-Mart Stores, Inc. v. and Kenneth J. Harvey, WIPO Case No.�D2000-1104 (November�23,�2000). The registrant was a serial cybersquatter, having lost several proceedings under the Policy and related national laws. He registered in an apparent fit of pique after losing another case to Wal-Mart Stores, Inc. The panel noted that his communications with the trademark holder could be construed as extortion; he may essentially have been threatening to continue embarrassing the trademark holder until he was paid off. The panel began its analysis by noting dryly, “The Respondent hardly appears with clean hands.” But unclean hands is not what the Policy prohibits:
“The UDRP [the Policy] has a narrow scope. It is meant to protect against trademark infringement, not to provide a general remedy for all misconduct involving domain names. Posting defamatory material on a Web site would not justify revocation of a domain name under the UDRP. Posting indecent material on a Web site would not justify domain name revocation under the UDRP.�.�.�. The Respondent may be acting unfairly. He may be engaged in unwarranted disparagement. He may be acting childishly. He may be retaliating for having lost earlier Cybersquatting cases. But this does not necessarily mean that he may be forced to transfer the accused domain name to the complainant under the UDRP .�.�.�. Bad faith, no matter how egregious, cannot supply a likelihood of confusion where it does not otherwise exist.”
Judicial decisions, applying national laws that also require the plaintiff to establish a likelihood of confusion – and in particular the laws of the United States, the common domicile of the Complainant and the Respondent – have reached the same conclusion when the pejorative “sucks” was appended to a trademark as part of a domain name. See, e.g., Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th�Cir.�2003) () (“And although economic damage may be an intended effect of Mishkoff’s expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business.”); Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1165 n.2 (C.D. Cal. 1998) (“no reasonably prudent Internet user would believe that ‘B’ is the official Bally site or is sponsored by Bally”). There is no logical reason to limit this reasoning to the word “sucks.” See, e.g., Compusa Management Company v. Customized Computer Training, Case No.�FA0006000095082 (NAF August�17,�2000) ( and ); America Online, Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No.�D2001-0918 (September�14,�2001) ().
The two domain names at issue here are not likely to cause confusion for the same reasons that the foregoing domain names did not. As for , the Panel finds persuasive the holding of a distinguished three-member panel that found that was not likely to cause confusion with the marks of NatWest Bank. That panel dismissed a complaint against a disgruntled customer who had demanded $2 million to sell the domain name to NatWest’s parent. The Royal Bank of Scotland Group plc v. and Umang Malhotra, WIPO Case No.�D2001-0212 (June�18,�2001). It can hardly be contended that “theft” carries less power to dispel confusion than “fraud” in the financial services context; thus, the Complainant likewise cannot establish that is likely to be confused with its marks.
In respect of these two disputed domain names, the Complaint must fail, and the Panel will not order either of these domain names transferred or cancelled. The Policy requires proof of each element. The Respondent could have no legitimate interest in either of these domain names and could use them in bad faith, and this Panel would still have no authority to transfer or cancel the domain names. If the Complainant believes the Respondent’s use of these two domain names is defamatory or otherwise unlawful, its remedies lie elsewhere.
Because the Complainant has proven a likelihood of confusion with respect to three of the disputed domain names, the Panel must now turn to the second element required by the Policy. From this point forward, unless the context clearly shows otherwise, references to the “disputed domain names” include only the three that remain in the case: , and .
B. Rights or Legitimate Interests
The Panel concludes that the Respondent did not have rights or legitimate interests in respect of the remaining disputed domain names.
The Complainant’s first argument appears to be that because its marks are famous and the Respondent knows of them, the Respondent could never have rights or legitimate interests in respect of domain names that wholly or partially incorporate those marks. Stated that broadly, the argument must be mistaken, for the entire point of the second element of the test is that it is quite possible for two, or even many, persons or entities to have rights or legitimate interests in respect of the same domain name. This element of the Policy is designed to weed out such cases, which are not appropriate for resolution in the truncated procedures available under the Policy. The Complainant may be making the less ambitious claim that no gripe site can use a domain name that is confusingly similar to the Complainant’s marks. That contention brings us to the heart of this case: what is required for a gripe site to comply with the Policy?
It is difficult to pigeonhole that question under either the second or third element that the Policy requires complainants to prove. Panels have considered the same features that make a gripe site illegitimate under the second element as also establishing bad faith under the third element. Accordingly, much of what follows is applicable to both elements.
It will be convenient for purposes of discussion to distinguish between “pure” gripe sites and “gripe-plus” sites. In the Panel’s usage, pure gripe sites are those that present no indicia of bad faith beyond the fact that they are highly critical of the target. Gripe-plus sites present other evidence of bad faith, either intrinsically (such as offering competing goods for sale) or extrinsically (such as the registrant’s offering to sell the domain name to the trademark owner at a profit).
The Complainant’s position seems to be that even a pure gripe site cannot incorporate in its domain name the marks of the target of the site’s criticism. Some prior decisions under the Policy support that contention. See, e.g., Justice for Children v. R neetso/Robert W. O’Steen, WIPO Case No. D2004-0175 (June�4,�2004); Chinmoy Kumar Gose v. ICDS, WIPO Case No.�D2003-0248 (May�22,�2003); Annette A. Antoun d/b/a The Paxton Herald v. Stephen Millard, Case No.�FA0207000114770 (NAF August�21,�2002). A panelist who recently and thoroughly canvassed the subject noted that most such decisions involved non-U.S. parties or panelists, a fact the commenting panelist attributed to the “robust free speech tradition” stemming from the First Amendment to the United States Constitution, but conceded that some U.S.-based cases also “broadly held that there is no legitimate interest in a trademark.TLD criticism site.”2 Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No.�D2004-0014 (April�22,�2004). Indeed, there is at least one court decision in the United States implicitly supporting this position, insofar as the second and third elements of the Policy can be analogized to the “bad faith intent to profit” element of the United States Anticybersquatting Consumer Protection Act (ACPA). See 15 U.S.C.��1125(d); Toronto-Dominion Bank v. Karpachev, 188 F. Supp.�2d 110, 114 (D. Mass. 2002).
The weight of United States judicial opinion under the ACPA, however, is that a pure gripe site does not evince a “bad faith intent to profit,” even when it uses a trademark.TLD domain name or a domain name that is confusingly similar to the plaintiff’s mark. See, e.g., TMI Inc. v. Maxwell, 368 F.3d 433, 439-40 (5th Cir.�2004); Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 809-11 (6th Cir.�2004); Mayflower Transit, LLC v. Prince, 314 F. Supp. 2d 362, 370 (D.N.J. 2004) (“[G]enuine cyber-gripers like Defendant are not covered by the ACPA”). These decisions complement the many proceedings under the Policy cited by the Howard Jarvis panelist to illustrate his conclusion that “a consensus is emerging that trademark.TLD domain names, when used for U.S.-based criticism sites, can constitute a legitimate interest, especially if there are not other indicia of bad faith.” Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No.�D2004-0014 (April�22,�2004); accord, National Collegiate Athletic Association v. Dusty Brown, WIPO Case No.�D2004-0491 (August�30,�2004).
In this Panel’s view, the emerging consensus is correct. Pure gripe sites will generally satisfy the conditions of paragraph�4(c)(iii) of the Policy, which provides that a registrant has a legitimate interest in respect of a domain name if he makes “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.” Though there is some grammatical ambiguity, the words “without intent for commercial gain” modify both “to misleadingly divert consumers” and “to tarnish the trademark or service mark at issue.” In other words, the intention to tarnish another person’s or entity’s mark deprives the registrant of protection under this provision only if it is done with intent for commercial gain.
Criticizing a commercial entity is not a commercial use of the domain name within the meaning of the Policy, nor is it done with intent for commercial gain under paragraph�4(c)(iii), simply because there may be some financial effect – perhaps an effect intended by the registrant – on the target. There are broadly speaking two types of commercial use contemplated by the Policy: attempting to profit from the sale of the domain name itself, and using the domain name directly or indirectly to sell goods or services. Harming the business of a non-competitor, at no pecuniary advantage to the registrant, is not excluded from the paragraph�4(c)(iii) safe harbor, although such conduct may be regulated by national law. Since a pure gripe site evinces no intent for commercial gain, it is protected by paragraph�4(c)(iii).3
Gripe-plus sites are another matter, depending on what the “plus” is. As Howard Jarvis explains, even U.S.-based gripe sites have been found to violate the Policy when there are “other indicia of bad faith” beyond criticism of the target. Thus, while pure gripe sites are usually protected, gripe-plus sites may not be. What, then, are the indicia of bad faith that cause a gripe site to contravene the Policy? The Complainant’s arguments suggest two possibilities.
First, the Complainant contends that the Respondent has no legitimate interest in using the disputed domain names with the deliberate intention of hurting the Complainant. The Panel is reluctant, however, to read into the Policy a prohibition on malice per se. Using wrongful means to carry out a harmful intention might fall afoul of the Policy in some circumstances, but simply proving a bare desire to injure the Complainant is insufficient. The Complainant mentions the Respondent’s allegedly false statements on his web site. These falsehoods are particularly objectionable, in the Complainant’s opinion, because they contradict the findings of the NASD panel after an evidentiary hearing at which the Respondent was represented by counsel. The Respondent replies that this proceeding is not the proper place to determine whether his claims are defamatory, a point that the Complainant commendably concedes. See Complaint at para.�25 n.1. Indeed, the Howard Jarvis proceeding involved a very similar claim that the respondent’s web site lied about the outcome of litigation between himself and the complainant, noted that “it may be true that Respondent’s statements are libelous under United States law,” but concluded: “The Policy is designed to prevent abusive cybersquatting, but under United�States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites.”
The Complainant’s second candidate for gripe-plus treatment is more firmly grounded in the Policy and the purposes of this proceeding: the use of a domain name for profit in addition to criticism. Cybersquatters, as a United States Senate committee pointed out, should not be able to shield their activity by posting pro forma griping on sites whose domain names they have actually obtained to sell on. See S. Rep. No.�106-140, at 9 (1999). Accordingly, Policy panels and United States courts have found registrants in violation of the Policy or the ACPA, respectively, when their non-commercial criticism was accompanied by other means of using a domain name for commercial purposes. See, e.g., National Collegiate Athletic Association v. Dusty Brown, WIPO Case No.�D2004-0491 (August�30,�2004); Coca-Cola Co. v. Purdy, 382 F.3d 774, 785-86 (8th Cir. 2004); People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 368 (4th Cir. 2001).
Precisely what type and degree of commercial activity will cause a gripe site to violate the Policy is more easily analyzed in conjunction with the examples of bad faith conduct listed in paragraph�4(b) of the Policy. Therefore, discussion of whether the Respondent went “too far” in this case will be deferred to the following section of this Decision.
C. Registered and Used in Bad Faith
One issue can be disposed of quickly. The Complainant contends that the Respondent violated paragraph�4(b)(iii) of the Policy, which pertains to “disrupting the business of a competitor.” It would stretch the Policy’s text and purpose too far to consider a disgruntled customer a “competitor”.
The Complainant’s more telling charge is that the Respondent has violated paragraph�4(b)(iv) of the Policy. As in the rest of the Policy, that paragraph�addresses the registrant (here, the Respondent) as “you”, and it explains that it can be evidence of bad faith if
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location” (emphasis added).
Because of the italicized phrase, a pure gripe site would not ordinarily trigger the evidentiary inference available under this paragraph. The Complainant cites three pieces of evidence suggesting that the Respondent acted for commercial gain in attempting to attract Internet users to his web site through confusion with the Complainant’s marks.4 These are: the pop-up advertisements; the Respondent’s email offer to Mr.�Barnes to sell the disputed domain names to the Complainant; and the Respondent’s assertion in his email to the Complainant’s outside counsel that he had placed the disputed domain names for sale on the Web.
The Panel concludes that the Respondent’s installation of�pop-up advertisements for satellite dishes on his web site is evidence of registration and use of a domain name in bad faith. It is irrelevant that the product featured in the pop-ups is unrelated to the Complainant’s trade. Unlike some national trademark laws, the Policy is not limited to the exploitation of consumer confusion by competitors of a mark’s holder. See�National Association of Stock Car Auto Racing, Inc. v. RMG Inc.- BUY Lease by E-MAIL, WIPO Case No.�D2001-1387 (January�23,�2002) (“[I]t is well known that pornographers�rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping and other pernicious online marketing techniques.”).
Although there is no evidence as to how much income the Respondent has generated from the pop-ups, unrebutted evidence shows that he stands to earn $50 every time a visitor clicks through and orders a satellite dish. Even if it turned out that the pop-ups have failed to attract a single customer or no longer appear on the web site, the reasonable inference is that the Respondent placed the pop-ups on his web site in the hope that they would generate income. So far as appears from the record, the pop-ups have been on the Respondent’s web site from at or near the web site’s inception, supporting an inference that the Respondent has both used and registered the disputed domain names with the intention of generating income through advertising.
Some panels have permitted registrants to engage in income-generating activity without triggering a finding of bad faith, so long as it was de minimis or ancillary to the registrant’s main purpose. See, e.g., Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No.�D2004-0206 (April�20,�2004) (“The�Complainant contends that by offering for sale t-shirts and other ‘merchandise’ and by acquiring financial donations the Respondent is making commercial gain. On the evidence, these are activities that are merely ancillary to the Respondent’s main purpose which is to criticize the Complainants’ activities�.�.�.�.”). In somewhat different circumstances, the previously cited Kirkbi AG case found third-party advertising to be evidence of bad faith. There, although the registrant had immediately contacted a web designer about setting up a web site where the complainant’s customers could discuss the complainant’s products, the designer told him that the web site would not be ready for several months. In the interim, the registrant used the domain name to forward visitors to a cost-per-click search engine that paid domain name owners for traffic they generated. Although the panel accepted the registrant’s contention that he had intended to establish a non-commercial “free speech site,” it also found that he used the domain name for commercial gain pending establishment of the free speech site. “Coming so soon after he registered the disputed domain name, this was also one of his intentions at that time.” Kirkbi AG v. Michele Dinoia, WIPO Case No.�D2003-0038 (March�9,�2003).
In any case, in light of the evidence of his offers to sell the disputed domain names, the Respondent could not take advantage of any “ancillariness” exception, assuming one existed. See American Lubefast Franchising, Inc. v. Chung Rigby, WIPO Case No.�D2004-0329 (July�26,�2004) (dismissing “small amount of external advertising” by registrant because the “primary purpose” of the site was to collect and disseminate customer complaints about the complainant, but nonetheless ordering the domain name transferred because the registrant had offered to sell it for $20,000).
Attempting to sell the domain name is of course the classic indicium of cybersquatting, and it is addressed by a separate subparagraph�of the Policy that considers it evidence of bad faith if
“circumstances indicat[e] that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”
Policy at para.�4(b)(i). Here, it should be noted that the Policy strongly suggests an “ancillariness” defense; paragraph�4(b)(i) applies only if the registrant acquired the domain name “primarily” to sell it. It must also be noted, however, that the kinds of evidence enumerated in paragraph�4(b) are not exhaustive. The ultimate question is not whether any of the subparagraphs literally applies but whether the totality of the evidence proves that the registrant acted in bad faith. Here, it is not necessary to determine whether selling the disputed domain names was the Respondent’s primary purpose. In combination with his placing the pop-up advertisements on his web site, his emails demanding substantial, if unspecified, sums for the disputed domain names lead the Panel to conclude that financial gain was a significant element of the Respondent’s purpose in registering and using the disputed domain names, even if publicizing his grievance against the Complainant was an arguably more significant element.
Two final points merit consideration.
First, in context, the Respondent’s email to Mr.�Barnes may reflect not merely a cybersquatter’s desire to ransom a domain name for the maximum amount, but an effort to get the Complainant to remedy the wrongs the Respondent believed had been done to him. It is possible that the Respondent genuinely believes that the Complainant owes him millions of dollars and that he would no longer have a grievance – and therefore no further interest in maintaining a gripe site and using the disputed domain names – if the Complainant were to admit its supposed wrongdoing and compensate him. Even if this is the case, a registrant cannot use a domain name to “leverage” a settlement of a dispute he has with the owner of marks to which the domain name is confusingly similar. Bank of Alabama v. Sumith Rodrigo & Co., WIPO Case No.�D2004-0912 (December�16,�2004).
Second, the Respondent asserts that he did not initiate the discussions of a possible sale of the disputed domain names. So far as the record reflects, the idea of a sale was first broached in the Respondent’s first email to Mr.�Barnes. It is possible that the Complainant in fact proposed a possible sale in the allegedly somewhat threatening emails referred to in the Response. If so, the onus was on the Respondent to provide the relevant emails to the Panel rather than simply making a bare assertion that the extant record cannot support. And even if it had been the Complainant who first suggested a possible sale, that would not necessarily change the outcome. Accepting for argument’s sake the possibility that larger discussions during which an offer to sell is made can defeat an inference of bad faith by providing context for the offer, the mere fact that the topic is first broached by the trademark or service mark holder is not dispositive. National Federation of Coffee Growers of Colombia v. Daniel Henderson, WIPO Case No.�D2002-1134 (February�17,�2003).
The Panel concludes that the Complainant has sufficiently proved that the Respondent has both registered and used the disputed domain names in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is granted in part and denied in part. In accordance with paragraphs�4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , and be transferred to the Complainant. However, the Panel denies the Complaint insofar as it requests the transfer or cancellation of the domain names and .
D. Brian King
Sole Panelist
Dated: January�20,�20051 The email referred to is not in the record. From the items that are in the record, and from the Respondent’s reference to receiving “somewhat threatening” emails from the Complainant, it seems probable that the parties engaged in several communications between September and November 2004 that have not been submitted. Their absence has made it difficult to assess some of the factual claims made in the pleadings, particularly those made by the Respondent.
2 A “trademark.TLD” domain name consists of only the trademark plus a top-level domain; in this case, would be a trademark.TLD.
3 Further, it is doubtful whether the kinds of criticisms generally seen on gripe sites constitute the misleading diversion of consumers or the tarnishing of a mark for purposes of the Policy. These are terms of art that must be carefully construed. In particular, it is a mistake to conclude that any commentary that lessens a consumer’s opinion of the trademark or service mark holder constitutes tarnishment of the mark. See Britannia Building Society v. Britannia Fraud Prevention, Case No.�D2001-0505 (WIPO July�6,�2001).
4 Although paragraph�4(b)(iv) explicitly repeats the “likelihood of confusion” element, it should be clear that the entire discussion of the legitimate interest and bad faith prongs applies only to the three disputed domain names that the Panel has found create a likelihood of confusion. See Comitato per l‘Organizzazione dei XX Giochi Olimpici Invernali Torino 2006 v. gate 24, WIPO Case No.�D2003-0411�(July�16,�2003)�(mere offer for sale of domain name for substantial sum is not a violation of the Policy unless the other elements of paragraph�4(a) of the Policy are also violated).
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