WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Clerical Medical Investment Group Limited v. Protected Domain Services Customer ID: NCR-1003853, John Muddeman Case No. D2009-1203 1. The Parties
Complainant is Clerical Medical Investment Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Latham & Watkins LLP, Germany.
Respondents in this proceeding are: Protected Domain Services - Customer ID: NCR-1003853 of Denver, Colorado, United States of America (“Respondent No. 1”); and John Muddeman of Madrid, Spain (“Respondent No. 2”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2009. On September 11, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2009 the Registrar transmitted by email to the Center its verification response providing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint, and showed Respondent No. 2 as registrant of the Domain Name. The Center sent an email communication to Complainant on September 22, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
In reply to this communication by the Center, on September 22, 2009 an unidentified person sent a message to the Center in the following terms: “you can have the domain... i can just make 100 new ones...”. This message was sent from the email address of the registrant of the Domain Name as provided by the Registrar in its verification of September 16, 2009, and the user name attached to this email address was “john mayer”.
The Complainant filed an amendment to the Complaint on September 25, 2009, by which it named Respondent No. 2 as an additional Respondent in the proceeding. 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” 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 Respondents of the Complaint, and the proceedings commenced on September 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2009.
On September 29, 2009, Respondent No. 2 submitted to the Center an email message, by which he claimed that the registration of the Domain Name was made without his knowledge or authorization by a third party using his identity, and protested against his inclusion as respondent in the proceeding. Respondent No. 2 also stated that the email addresses and telephone numbers provided in the Registrar's verification response were false. In its reply of September 29, 2009 to this communication, the Center noted that under the Policy and the Rules the respondent in a proceeding was the holder of a domain name-registration against which a complaint is initiated. The Center further explained that the Rules require that the listed registrant of record of the Domain Name be named as a Respondent in the Complaint, and that the Center was obliged under the Rules to notify the Complaint to the registrant of the Domain Name as listed in the Registrar's WhoIs data. In a further submission to the Center, dated October 1, 2009, Respondent No. 2 stated that in a phone conversation with him, a supervisor at the Registrar confirmed that the payment for the registration of the Domain Name was not made by credit card, but by PayPal, and was not in the name of Respondent No. 2.
Respondent No. 1 and Respondent No. 2 did not submit any formal Response as prescribed by the Rules. Accordingly, the Center notified Respondents' default on October 23, 2009.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 29, 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.
On October 30, 2009, the Panel issued its Procedural Order No. 1, whereby it invited Complainant to provide an English translation of Annex No. 21 to the Complaint (containing evidence on the content of the website associated to the Domain Name), to comment on the submission of Respondent No. 2 that the latter was not a proper Respondent in this proceeding, and provided Respondent No. 2 with a possibility to reply to such comments. On November 5, 2009, Complainant filed the requested supplementary submission, whereby it stated, inter alia, that it was not in a position to verify the statements of Respondent No. 2, and that its arguments in the Complaint remained valid regardless of whether Respondent No. 2 was related to the Domain Name or not. On November 9, 2009, Respondent No. 2 replied to Complainant supplementary submission, and requested Respondent No. 1 to formally inform all other parties in the proceeding that no identity checks were undertaken when accepting payment for the registration of the Domain Name and that Respondent No. 2 had no connection to the Domain Name. Respondent No. 2 also contended that the sender of the email message to the Center dated September 22, 2009 with the user name “john mayor”, was the true author of the website associated to the Domain Name and the true respondent in the proceeding. On November 10, 2009, the Panel issued its Procedural Order No. 2, whereby it invited Respondent No. 1 to comment on the supplemental submissions of Complainant and of Respondent No. 2. No comments were filed by Respondent No. 1 within the time limit set by the Panel.
The Panel is of the opinion that the issues raised by Respondent No. 2 have to be dealt with as a preliminary procedural matter.
As provided for in Rules, paragraph 1, respondent means the holder of a domain-name registration against which a complaint is initiated. Rules, paragraph 2(a) provide that, when forwarding a complaint to the respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility, including: sending the complaint to all postal-mail and facsimile addresses shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact. Further, Rules, paragraph 3(b)(v) provide that the complaint shall provide the name of the respondent (domain-name holder) and all information known to complainant regarding how to contact respondent, in sufficient detail to allow the Provider to send the Complaint as described in Rules, paragraph 2(a).
As evidenced by Complainant, the registrant of the Domain Name at the time of filing of the Complaint as shown in the Registrar's then-current WhoIs was Respondent No. 1. After the Center made its verification request to the Registrar, the latter changed the WhoIs registration data in relation to the Domain Name to point to Respondent No. 2 as holder of the Domain Name. Following the verification response of the Registrar, Complainant added Respondent No. 2 as an additional Respondent in its Complaint, and the Center notified the Complaint to both Respondents using the provided contact details for them.
The provisions of the Policy and the Rules cited above make it clear that the identification of a respondent is a formal one and is made mainly for administrative purposes. In the lack of any rebuttal or contrary evidence, the Panel is prepared to accept that, on balance, Respondent's No. 2 submission for its lack of any relation to the Domain Name is likely to be true. However, as the name of Respondent No. 2 was provided by the Registrar in its verification response, its inclusion as Respondent in the present proceedings is necessary in order to achieve compliance with the Policy and the Rules. This being so, the Panel explicitly states that its conclusions on the substantial issues should be regarded as related to the conduct of the person who has actually registered and used the Domain Name, whoever this person might be, and that, being procedurally limited by the Policy and the Rules, the Panel declines to make a factual finding on the identity of this person.
Therefore, the Panel finds that the Center has complied with Rules, paragraph 2(a), the proceedings were validly commenced, and all reasonably identifiable parties that have or may have an interest in this matter have had adequate notice of these proceedings and would suffer no prejudice as a consequence of the matter proceeding to a decision. Such a conclusion is also supported by the submission of the person using the user name “john mayor” of September 22, 2009, which shows that this person had a certain relation to the Domain Name, and that it was aware of the proceedings and had an opportunity to defend any rights or legitimate interests in the Domain Name it may have had. 4. Factual Background
Complainant was founded in 1824. Since then, it has become a leading provider of pensions and investments with wide presence in many countries of the world. Complainant managed investments or other assets of approximately £ 17 billion in 2008, approximately £ 19.4 billion in 2007, and approximately £ 21.7 billion in 2006.
Complainant is the owner of various trademarks containing the “clerical medical” element, and registered for the territories of different jurisdictions, including:
- Community trademark No. 002265130 CLERICAL MEDICAL, filed on June 13, 2001, and registered on July 18, 2002 for services in International classes 35, 36 and 38;
- Swiss trademark No. P-451764 CLERICAL MEDICAL CM 1824 , filed on July 18, 1997 for services of class 36;
- Community trademark No. 007381131 1824 CLERICAL MEDICAL, filed on November 10, 2008 and registered on June 10, 2009 for services of classes 35, 36 and 38;
- Community trademark No. 007381171 1824 CLERICAL MEDICAL, filed on November 10, 2008 and registered on July 29, 2009 for services of class 35, 36 and 38;
- Community trademark No. 000457317 CM 1824 CLERICAL MEDICAL, filed on January 20, 1997 and registered on December 22, 1998 for services of class 36;
- Community trademark No. 005629721 CM 1824 CLERICAL MEDICAL, filed on January 19, 2007 and registered on February 4, 2008 for services of class 36;
- UK trademark No. 1539716 CLERICAL MEDICAL CLERICAL MEDICAL, filed on June 24, 1993 and registered on February 9, 1996 for services in International Class 36; and
- UK trademark No. 2444186 CM 1824 CLERICAL MEDICAL CM 1824 CLERICAL MEDICAL, filed on January 19, 2007 and registered on February 8, 2008 for services of class 36. 5. Parties' Contentions A. Complainant
According to Complainant, the Domain Name is identical or confusingly similar to Complainant's trademarks carrying the “clerical medical” dominant element. Complainant submits that neither of Respondents has any rights or legitimate interests in respect of the Domain Name, that they do not own any trademark or other rights in this respect either, and that Complainant has not authorized Respondents to use its trademarks or its corporate name.
The Domain Name at one time resolved to a purported blog website for persons allegedly injured by Complainant, the content of which consists of criticism on Complainant and reports on court proceedings against it. Visitors of the website are invited to read posted comments or to post a comment themselves. The website advertises a monthly newsletter on how to best sue Complainant which can be ordered online, and a seven-page report “CLERICAL MEDICAL FOR DUMMYS” (sic) providing information on how to sue Complainant, which report allegedly may be ordered for free as an e-book “during the next days only”.
Complainant further states that neither of Respondents has used the Domain Name in connection with a bona fide offering of goods or services nor has been commonly known by the Domain Name. Respondents do not make a legitimate noncommercial or fair use of the Domain Name. The announcement of the report “CLERICAL MEDICAL FOR DUMMYS” implies that it is usually distributed for money.
In Complainant's submission, even if Respondents were making use of the Domain Name without intent for commercial gain, this would not give rise to rights or legitimate interests in the Domain Name, as the selection of a trademark owner's trademark for a domain name with the intent that it should serve for a criticism website was manifestly not fair. The freedom of speech does not give to rights or legitimate interests in a domain name identical or confusingly similar with Complainant's trademarks even if the domain name is used for criticizing Complainant. The freedom of speech can be exercised in various ways without using the Domain Name and without risking confusion and deception of Internet users.
Complainant contends that the Domain Name was registered and is being used in bad faith in an intentional attempt to attract Internet users to the website at the Domain Name by creating a likelihood of confusion with Complainant's trademarks. As the report “CLERICAL MEDICAL FOR DUMMYS” advertised on the website at the Domain Name could be ordered for free during a limited time period only, it seemed to have been usually distributed for money in an attempt to receive a commercial gain.
According to Complainant, Respondent was obviously aware of Complainant's trademarks and corporate name prior to the registration of the Domain Name and selected an identical or confusingly similar domain name with the intent to cause disruption of Complainant's business and to stir up litigation against it, to prevent Complainant from making use of its own mark in a popular top-level domain and to expand the audience for criticism by misleading Internet users as to the source of the website.
In its supplemental submission of November 5, 2009, Complainant further stated that the provision of false contact details, pointing to Respondent No. 2, for the registration of the Domain Name by its real owner, was additional evidence of bad faith. B. Respondent
Neither of Respondents filed a formal Response to Complaint. In particular, Respondent No. 1 made no submissions, and Respondent No. 2 took position only in relation to its alleged lack of any connection to the Domain Name. Notably, none of Respondents responded specifically to the statements and allegations contained in the Complaint or included any reasons to retain the registration and use of the Domain Name. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondents have registered and are using the Domain Name in bad faith.
In this case, the Center has, in compliance with Rules, paragraph 2(a), employed the required measures to achieve actual notice of Complaint to both Respondents, and, in result, each party with an identifiable interest in the Domain Name, including the person under the user name “john mayor”, was given a fair opportunity to present its case.
In accordance with Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.[…] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.” A. Identical or Confusingly Similar
Complainant has provided sufficient evidence and has thus established its rights in the CLERICAL MEDICAL trademarks, registered in many countries. Certain of them are word trademarks containing only the “clerical medical” element, while others are combined trademarks in which the “clerical medical” element is their most distinctive part.
It is a common practice under the Policy to disregard gTLDs such as the “.info” section of domain names for the purposes of the comparison under Policy, paragraph 4(a)(i).
Thus, the relevant part of the Domain Name is the sequence “clericalmedical”. This sequence is identical to Complainant's word trademarks CLERICAL MEDICAL, and confusingly similar to Complainant's combined trademarks which include the “clerical medical” word element. Therefore, the Panel finds that the Domain Name is identical or confusingly similar to trademarks in which Complainant has rights. B. Rights or Legitimate Interests
Complainant has contended that Respondents have no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once a complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.
All reasonably identifiable parties that may have an interest in the Domain Name, including both Respondents, although given a fair opportunity to submit any arguments and evidence for the existence of rights or legitimate interests in the Domain Name in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), have chosen not do so, despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If any of them had any legitimate reason for the registration or use of the Domain Name, it could have brought it to the attention of the Panel.
The available sources of information about Respondents and the person acting under the user name “john mayor” are the WhoIs information, information provided with the Complaint, the verification response of the Registrar, the communications by Respondent No. 2 and by the person with the user name “john mayor” to the Center, and the content of the website at the Domain Name.
The WhoIs information and the verification response of the Registrar contain no evidence that either Respondent is commonly known by the Domain Name.
In their respective submissions, Respondent No. 2 and the person using the user name “john mayor” claim no rights or legitimate interests in the Domain Name. To the contrary, Respondent No. 2 rejects any association between him and the Domain Name, while “john mayor” explicitly states that “[Complainant] may have the domain…”.
As evidenced by Complainant, the website at the Domain Name at the time of filing of the Complaint was organized as a criticism blog directed at Complainant and its activities. As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the question of whether the use of a domain name for a criticism site generates rights and legitimate interests for the respondent has not found a common answer. In the event that a domain name confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main schools of thought. This Panel joins the one that accepts that the right to criticize does not extend to registering a domain name that is identical to the owner's registered trademark. Therefore, the Panel finds that the described use of the Domain Name does not give rise to rights or legitimate interests in the Domain Name of the person controlling the Domain Name, whoever it might be.
In summary, the evidence before the Panel supports a finding of lack of rights and legitimate interests of either of Respondents or the person with the user name “john mayor” in the Domain Name. C. Registered and Used in Bad Faith
As discussed above, the Panel is of the opinion that Respondent No. 2's submission for the lack of any connection between him and the Domain Name appears to be true. Consequentially, the person behind the Domain Name is likely to have provided incorrect registrant details and thus to have concealed the real party with interest in respect of the Domain Name. The use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is not necessarily a sign of illegitimate conduct. Privacy is an understandable objective, particularly for individuals who do not want to have their physical and electronic addresses exposed on the Internet. However, ICANN policies, including the UDRP, are designed to preserve accountability for unlawful acts on the Internet and for resolving claims of abusive domain name registrations. Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696. Therefore, the use of proxy services for concealing one's identity combined with the provision to the Registrar of wrong contact details of the beneficiary may indicate bad faith intent to evade responsibility.
At the same time, the party who requested and paid for the Domain Name, appears to have used it for a website organized as a criticism blog directed at Complainant and its activities. As discussed above, the Panel is of the opinion that, if such an activity involves the registration of a domain name that is identical to the trademark of the target of the criticism, it would not be acceptable. Notably, in the present case no party alleges to have itself used the Domain Name for a legitimate criticism website or raises the freedom of thought doctrine in its defense. If the party behind the Domain Name is the so called “john mayor”, as its own submission makes very likely, then it is clear that this person has a good knowledge of Complainant and that its conduct was squarely directed to affect the latter. It may well be true that this person has registered and used the Domain Name, identical to Complainant's trademark, in an intentional attempt to attract Internet users to the website at the Domain Name by creating a likelihood of confusion with Complainant's trademarks, and thus to extract some benefit for itself. Moreover, the same person has expressly shown its readiness to continue the same conduct in the future, and has not denied any of the allegations of Complainant.
Taken together, the above is sufficient for the Panel to conclude that the Domain Name was registered and used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Assen Alexiev
Sole Panelist
Dated: November 23, 2009
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