WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Queensland Cardiovascular Group Pty Ltd v. P. K. F. Case No. D2009-1074 1. The Parties
The Complainant is Queensland Cardiovascular Group Pty Ltd of Brisbane, Australia.
The Respondent is P. K. F. of Brisbane, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2009. On August 13, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 13, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Amendments to the Complaint were filed with the Center on August 13, 2009 and August 25, 2009 by the Complainant. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2009. The Respondent did not submit any response by September 15, 2009. Accordingly, the Center notified the Respondent’s default on September 16, 2009. On that same day, the Center received an email communication from the Respondent to which it acknowledged receipt. No further communications were received from the Respondent.
The Center appointed Sebastian Hughes as the sole panelist in this matter on September 25, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The disputed domain name was registered on January 6, 2009. 4. Factual Background
The Complainant has been incorporated as Queensland Cardiovascular Group Pty Ltd since January 1995 and has been carrying on business under the name “Queensland Cardiovascular Group” (“the Name”) since that time. 5. Parties’ Contentions A. Complainant
The Complainant has since January 1995 provided cardiovascular medical services throughout Brisbane and surrounding areas under the Name. Brisbane is the capital city and largest city within the state of Queensland, Australia. The doctors comprising the Complainant have approximately 270,000 patients and have carried out approximately 137,000 test procedures and consultations in the past 12 months. Accordingly, the Complainant has developed significant goodwill in the Name. A. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The disputed domain name is identical to the Name which has been widely used by the Complainant as part of its business for over 10 years. B. The Respondent has no rights or legitimate interests in respect of the disputed domain name
There is no evidence that the Respondent has any interest in the practice of cardiology. There is no evidence on the face of the website operated by the Respondent under the disputed domain name (“the Website”), or otherwise, that the Respondent is making a bona fide offer of goods or services in any way related to cardiology. The Respondent has no prior lawful use of the Name and is not known or associated with any entity that is known by that name.
There is no evidence that the Respondent has ever been known by or had any association with the Name. The Respondent has no trade mark or other intellectual property rights in the Name.
The Respondent is using the disputed domain name for the sole purpose of misleadingly diverting consumers and/or tarnishing the Complainant’s business.
The Website contains what the Complainant believes to be derogatory and defamatory material concerning the Complainant and some of its directors.
The use of the Website does not amount to lawful criticism and does not give rise to any rights or legitimate interests in respect of the disputed domain name because:
1. the criticism is extreme and unfair. The Website primarily concerns one doctor who is a director of the Complainant and makes passing reference to two other doctors associated with the Complainant. The matters referred to in the Website have been the subject of separate formal complaints by the Respondent’s husband against the doctor concerned and those complaints have either been dismissed on the basis there was no case to answer, or otherwise abandoned by the Respondent’s husband. There is no apparent complaint against the vast majority of the doctors comprising the Complainant; and
2. the Respondent has used the Name in the disputed domain name to falsely convey an association with the Complainant presumably to lead Internet users to the Website.
Previous UDRP decisions confirm that the use of a domain name that is similar to and/or which falsely conveys an association with another party in order to make public criticism of that other party is not a legitimate use of that domain name.
The Respondent is attempting to create the impression that the Website either belongs to or is at least associated with the Complainant.
The Respondent’s use of the disputed domain name is with the intent of tarnishing the Name. C. The Disputed Domain Name was registered and is being used in bad faith
The disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant. The Respondent selected the disputed domain name, which she knew at the time to be the trade name of the Complainant, and intended to damage the reputation of the Complainant by directing potential consumers to the Website, which contains material that is disparaging of the Complainant.
The disputed domain name is intended to divert potential consumers from the Complainant’s website to the Website, which is unfairly critical of the Complainant.
This amounts to registration primarily for the purpose of disrupting the business of the Complainant. For the purposes of paragraph 4(b)(iii) of the Policy, the Respondent is acting as a competitor of the Complainant in the sense that she is acting in opposition to the Complainant.
The Respondent’s conduct in choosing a domain name identical to the Name such that it is liable to mislead consumers into believing the Website belongs to or is affiliated with the Complainant and using the disputed domain name to criticise the business of the Complainant amounts to bad faith in both the initial registration of the domain name and subsequent use of the Website. B. Respondent
The Panel notes the Respondent’s communication of September 16, 2009.
The Respondent did not reply formally to the Complainant’s contentions within the timeframe prescribed under the Rules.
Instead, the Respondent on September 16, 2009, expressed as follows:
“Hello, I am sorry I have not been able to reply.I am not a lawyer and don't know how to do it.I shall leave it up to you to make the decision.All I can respond with is that, I am not trying to take business from them,I have made it clear on my website that I am not seeking any reward.I have no connection with the company.I also would like to say that Queensland Cardiovascular Group Pty.Ltd have registered there is also a company with the domain that is neither is complaining of the other.I am simply stating the truth..I thank you for your time.
thanks P.King-ford.” 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Name acquired through use. It is trite that, under the UDRP, rights in a trade mark can be established through use, absent any registrations in respect of the trade mark in question.
The disputed domain name comprises the Name in its entirety. The Panel therefore has no hesitation in finding that the disputed domain name is identical to the Name.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, 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; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Name. The Complainant has prior rights in the Name which precede the Respondent’s registration of the disputed domain name by over 10 years. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has not filed any submissions in response to the Complaint.
The Panel finds no evidence that the disputed domain name has been used in respect of a bona fide offering of goods or services, nor is there any evidence that the Respondent has been commonly known by the disputed domain name.
It is clear however that the Website is being used to criticise the Complainant.
There is a divergence of opinion among panelists regarding fair use by way of criticism cases. This is sometimes said to reflect differences in national laws relating to freedom of speech. Cases involving US parties, US jurisdiction and/or US panelists have tended to support the right to set up non-commercial websites which are critical of trade mark owners. Such panel decisions sometimes refer to the constitutional right of US citizens to free speech under the First Amendment to the US Constitution, and to the considerable body of case law in the US Courts in which it has been held that setting up websites critical of trade mark owners, even if designed to cause economic damage to trade mark owners, is not a commercial use, and not therefore prohibited under the US Lanham Act.
Conversely, there have been several panel decisions often without a US connection in which it has been held that use of trade marks in respect of websites set up for criticism of trade mark owners does not amount to a legitimate non-commercial or fair use (particularly where the domain name in question is identical to the complainant’s trade mark), on the grounds that, in order to fully exercise free speech rights, it is not indispensable to use someone else’s identical or confusingly similar trade mark (Chubb Security Australia Pty Ltd v. Mr Shahim Tahmasebi,WIPO Case No. D2007-0769).
In the present case, both parties are based in Australia. The Panel notes that in UDRP decisions involving Australian parties, previous panels have tended to find in favour of complainants in cases involving websites used to post genuine non-commercial criticism of complainants.
In any event, paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any principles of law that it deems applicable.”
The Panel agrees with the view expounded in several WIPO UDRP decisions that issues arising under the Policy should not be decided on the basis of national law if the relevant provision does not import or refer to national law (Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947). Rather, issues should whenever possible be determined having regard to general and globally accepted principles of law and any applicable principles derived from some ten years of accumulated WIPO UDRP decisions.
In accordance with paragraph 15(a) of the Rules, applying “the principles of law that it deems applicable”, the Panel finds insufficient evidence to establish under paragraph 4(c)(iii) of the Policy that the Respondent’s registration and use of the disputed domain name in respect of a website critical of the Complainant amounts to a legitimate non-commercial or fair use of the domain name.
The Panel has reached its decision for the following reasons:
1. the Respondent has not filed any submissions to rebut the presumption in favour of the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
2. the disputed domain name is identical to the Name. There has been no attempt by the Respondent to obviate the risk of “initial interest confusion” by adding any distinguishing words to the disputed domain name (Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314);
3. although it appears the Website has been changed following the filing of this Complaint by adding reference to the Complaint, including the wording:
“I have no vested interest in the company called QUEENSLAND CARDIOVASCULAR GROUP.PTY.LTD
I only own the domain name.
(www.)”
the Complainant has claimed that, prior to the filing of the Complaint, the Website did not contain any disclaimer confirming the Website has no association with the Complainant, and this claim has not been rebutted by the Respondent (supra, Chubb Security Australia Pty Ltd v. Mr Shahim Tahmasebi);
4. the criticism of the Complainant on the Website is strong and seemingly directed at damaging the reputation of the Complainant through criticising primarily one of the many doctors associated with the Complainant, using prominent wording such as:
(i) What is medical malpractice?
(ii) Choose your cardiologist carefully
(iii) Stand up for your rights
(iv) Don’t let this happen to you
(v) Medical errors are killing Australians
The Complainant contends that the material on the Website is defamatory and this contention has not been refuted by the 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).1
In any event, in all the circumstances, the Panel finds that the Respondent has registered and used the disputed domain name in order to engage in aggressively disparaging criticism of the Complainant, in order to tarnish the goodwill and reputation of the Complainant in the Name. This Panel does not find the use of a domain name that is identical to the complainant’s mark for such purpose to be consistent with holding rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel does not find any evidence to suggest that the Respondent is acting as a competitor of the Complainant in order to disrupt the business of the Complainant, under paragraph 4(b)(iii) of the Policy. It appears from the submissions in the Complaint in this regard that the Complainant’s representatives may have misinterpreted this particular section of the Policy.
However, the Panel is satisfied that the conduct of the Respondent in registering and using the disputed domain name in connection with the Website amounts to bad faith, although none of the non-exclusive grounds under paragraph 4(b) of the Policy have been made out in this case.
The disputed domain name is identical to the Name, and the content of the Website operated by the Respondent is highly critical and disparaging of the Complainant, indeed, in the opinion of the Complainant, defamatory. It is likely that at least some Internet users will initially be attracted to the Website due to its identity with the Name, and will then be exposed to the highly damaging allegations against the Complainant featured prominently on the Website.
For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: October 9, 2009
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