WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Coast Hotels Ltd. v. Bill Lewis and UNITE HERE Case No. D2009-1295 1. The Parties
The Complainant is Coast Hotels Ltd. of Vancouver, Canada, represented by LM Pietracupa of Canada.
The first Respondent is Bill Lewis of Washington, United States of America. Bill Lewis is the Chief Information Officer (ClO) for Unite Here, an international labor union headquartered in New York City, New York, United States of America. The Response and Supplemental Response were each filed jointly on behalf of Bill Lewis and Unite Here. For reasons discussed below, the Panel therefore regards Bill Lewis and Unite Here jointly as the Respondent, distinguishing between them only as necessary in this decision. The Respondent is represented by Davis, Cowell & Bowe, LLP of United States of America. 2. The Domain Names and Registrars
The disputed domain names and
(“Disputed Domain Names”) are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2009. On October 1, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Names. On October 1, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 2, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 2, 2009. The Center verified that the Complaint together with the amended 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 October 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2009. The Response was filed with the Center on October 29, 2009.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 6, 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 language of this administrative proceeding is English, being the language of the registration agreement. Panel Order
In response to receipt of an unsolicited submission of a Reply by the Complainant on November 13, 2009, this Panel issued a Panel Order on November 17, 2009. The effect of the Panel Order was to give the Complainant an opportunity to present further arguments and evidence by which it may demonstrate the relevance of its Supplemental Filing to the present case, including whether and why it was unable to provide that information in the Complaint, and granted the Respondent, for reasons of procedural fairness, until Friday November 20, 2009 by which to reply to the Complainant's Supplemental Filing. This Panel also extended to November 23, 2009, the date by which this Panel was required to forward a decision in this case.
Like the Panel in Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon, WIPO Case No. D2000-1440, this Panel is strongly of the opinion that parties in general should refrain from purporting to submit unsolicited supplementary submissions unless these add materially to the record and thereby provide appreciable assistance to the Panel in its deliberations. The Panel hesitated before accepting the Complainant's unsolicited supplemental submission in this case for several reasons, including the relative weakness of the Complaint at first instance, for example. The Complaint made a merely nominal submission in the Complaint heading that the domain names are confusingly similar to its trademark, referring in the text underneath the heading instead to confusion arising from the colors and logo on the Respondent's website. The Complaint is hopelessly brief in numerous other respects. Ultimately, however, the Panel felt that in this particular case it was desirable for the matter to be decided on the basis of the best available record. The exercise of the discretion in this matter should not encourage others to make supplemental filings because, had a Supplemental Filing not already been made, a request by the Panel for a Supplemental Filing would have been appropriate, eg: Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490. The Respondents on November 20, 2009, filed a Supplemental Filing entitled “Respondent's Supplemental Response”. As such, the Panel finds that both parties have had ample opportunity to complete or supplement the record. This Panel has determined to exercise its discretion to admit these supplemental filings and has taken them into account in reaching its decision. 4. Factual Background
The Complainant conducts a business operating over 40 hotels and resorts in Canada and the Unites States (“USA” or “US”). The Complainant is the owner of several trademarks that include the words “coast” and “coast hotels”, in respect of the operation of hotels and motels, restaurant and bar services, provision of convention, meeting and banquet facilities, provision of fitness facilities, provision of catering services, including registrations in Canada for the service mark COAST HOTELS (with device) dating from January 29, 1988 (Registration No 336475), and COAST HOTELS & RESORTS (with device) dating from June 17, 1998 (Registration No. 496207) In the USA, the Complainant owns the trade mark COAST HOTELS & RESORTS dating from June 4, 2002 (Registration No. 2575187) claiming first use in 1991 and another (Registration No. 3500039) from September 9, 2008 claiming first use in 1972. They own the domain name registered in 1997 and operate a website relating to its hotels at that domain name.
The Respondents registered the domain names and on August 12, 2009 5. Parties' Contentions A. Complainant
The Complainant cites its registrations of the trademark COAST HOTELS in Canada and COAST HOTELS & RESORTS in the USA, and over 40 related marks consisting of, or including the words COAST and COAST HOTELS, as prima facie evidence of ownership.
The Complainant submits that its rights in the mark COAST HOTELS predate the Respondents' registration of the Disputed Domain Names and . It submits that respectively the Disputed Domain Names are confusingly similar to its trademarks, because each of the Disputed Domain Names incorporates in its entirety the COAST HOTELS trademark (citing The Salvation Army v. Info-Bahn, Inc.,WIPO Case No. D2001-0463) and that the similarity is not removed by the addition of the “perjorative phrase ‘badforbc' meaning ‘bad for British Colombia'” (citing Wachovia Corporation v. Alton Flanders,WIPO Case No. D2003-0596). It submits that the likelihood of confusion is increased by the use of a hyphen to offset the element “coasthotels” from the element “badforbc”.
On the Respondents' rights and legitimate interests, the Complainant contends that:
(i) the Respondent's own material evidences their prior knowledge of the mark COAST HOTELS, which defeats the exception in paragraph 4(c)(i) of the Policy.
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name because the Respondents have no trademark rights in or license to use the marks COAST, COAST HOTEL or COAST HOTELS.
(iii) Only “fair” and “legitimate” non-commercial use is permitted by paragraph 4(c)(iii) of the Policy and the “right to criticize” does not extend to registering a domain name that is confusingly similar to a trademark in which a Complainant has rights (citing The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v Personal and Pedro Lopez,WIPO Case No. D2003-0166 and Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Provate Registration / 1&1 Internet Inc.,WIPO Case No. D2009-0062).
(iv) the Respondents registering a domain name that is confusingly similar to a trademark in which a Complainant has rights is an attempt to create “initial interest confusion” to drive traffic to their website which is not dispelled by the omission of a disclaimer on the website: (citing Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Provate Registration / 1 & 1 Internet Inc.,WIPO Case No. D2009-0062).
(v) it is open to the Respondents to use an alternative domain name at which to operate its criticism website without “deceptively attract(ing) internet users”.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, pursuant to paragraph 4(a)(iii) of the Policy. On the issue of registration, the Complainants contend that the disputed domain names were registered “for the purpose of attracting Internet users to the Respondents' website and to make benefit of its reputation.” And further contends that “the disputed domain names were registered and are being used to create public confusion …by diverting unsuspecting Internet users searching for Complainant to Respondent's website” (citing Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration /1 & 1 Internet Inc.,WIPO Case No. D2009-0062) On the issue of use, the Complainant contends that “the circumstances described in paragraph 4(b) are only examples and finding bad faith registration based on Respondents' intent to create initial interest confusion and attract increased internet traffic to the target website despite the websites non-commercial and critical nature” (again, citing Grupo). B. Respondent
In defense of their registration of the Disputed Domain Names, the Respondents' arguments are set out in the Response received by email to the Center on October 2, 2009 and the Respondent's Supplemental Response received by the Center on November 20, 2009. These are set out in summary below.
On the issue of confusing similarity to a trademark in which the Complainant has rights, the Respondents contend that:
(i) the Complainant has not provided sufficient evidence of ownership of the trademark or service mark COAST HOTELS used in the Disputed Domain Names.
(ii) the Disputed Domain Names themselves contain a clear criticism of the Complainant and that the negative connotation is so recognizable, even by those not fluent in English, that no confusion would arise (citing Southern California Regional Rail Authority v. Robert Arkow,WIPO Case No. D2008-0430; McLane Company, Inc. v. Fred Craig,WIPO Case No. D2000-1455; Lockheed Martin Corporation v. Dan Parisi,WIPO Case No. D2000-l0l5).
(iii) Consumers are not likely to be confused because the Disputed Domain Names resolve to a website with content that is clearly and obviously critical of the Complainant (citing Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647; Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947; and Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc.WIPO Case No. D2009-0062).
(iv) even if the Panel were to find confusing similarity, a legitimate criticism website can form the basis of rights or legitimate interests and lack of bad faith protecting the Respondents from a transfer order, even where the domain name is the same as the trade mark (citing La Quinta Worldwide LLC v. Heartland Times L.L.C. MD Sullivan,WIPO Case No. D2007-1660 and Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014; Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947 and Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc.WIPO Case No. D2009-0062).
(v) The Respondents' intention is not commercial gain, nor have they registered all available like domains.
On the issue of rights and legitimate interests, the Respondents contend that:
(i) they have a legitimate interest in the Disputed Domain Names because they are engaged in making bona fide, non-commercial criticism of Complainant on the relevant website, which features headshots of employees and quotes, explains a dispute about Complainant's putative “unwillingness to bargain over job security”, and to provide “information to workers and customers about the way that Complainant has treated its workers”.
(ii) the Panel should apply US national law in assessing whether the Respondents have established a fair use right (citing Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647; Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070; and Myer Stores Limited. v. Mr. David John Singh,WIPO Case No. D2001-0763).
(iii) US law provides that Respondents have a legitimate interest in a domain name where it is used for bona fide, non-commercial criticism (citing Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014; Action Instruments Inc. v. Technology Asociates,WIPO Case No. D2003-0024; Bosley Medical Group and Bosley Medical Institute, Inc. v. Michael Kremer, WIPO Case No. D2000-1647; Bridgestone Firestone, Inc. Bridgestone/Firestone Research Inc. and Bridgestone Corporation, v. Jack Myers,WIPO Case No. D2000-0190; and TMP Worldwide Inc. v. Jennifer L. Potter,WIPO Case No. D2000-0536). Respondents also cite a number of US court cases in support of that contention.
(iv) the Disputed Domain Names are not being used for any commercial activity; the Disputed Domain Names do not misleadingly divert consumers; and any diversion of consumers resulting from criticism is legitimate where there is no commercial gain (citing Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
(v) even when criticism is intended to harm Complainant's reputation and drive customers away from Complainant's services, such actions are not prohibited by the Policy (citing Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647 at page 4).
(vi) The Respondents' conduct does not constitute “tarnishment” within the meaning of paragraph 4(c)(iii) of the policy (citing Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505, and Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
The Respondents also deny that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, pursuant to paragraph 4(a)(iii) or 4(b) of the Policy. On the issue of registration, the Respondents contend that registering the Disputed Domain Names “for a genuine, non-commercial criticism site is not registration in bad faith” (citing the Sermo decision). The Respondents point out that they are not a “competitor” of the Complainant within the meaning of paragraph 4(b)(iii) of the Policy and asserts that “Respondent is a labor union and is organized as a non-profit organization under U.S. tax law”. Finally, the Respondents contend that the Complaint is brought in bad faith, in an attempt to harass the Respondents, such as by reverse domain name hijacking, as contemplated by paragraph 15(e) of the Rules. 6. Discussion and Findings
The proper respondent must first be identified. Then, under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identification of Respondent
The Panel must be satisfied that any orders made will address the appropriate Respondent or Respondents.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant's original Complaint named as Respondent a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
On October 1, 2009, in response to a request, the registrar eNom Inc., sent an email to the Center advising the following Registrant contact information:
Organization Name: unitehere
First Name: Bill
Last Name: Lewis
“Bill Lewis, Unite Here” was then named as Respondent in the Complainant's Amended Complaint. Having regard to the fact that the Respondents' Response and Respondents' Supplemental Response were each filed jointly on behalf of Bill Lewis and UNITE HERE, and that the Respondents Supplemental Submissions filed on their behalf state that “Bill Lewis is the Chief Information Officer (CIO) for UNITE HERE International Union, and works in Washington DC, USA” and elsewhere that “Respondent is a labor union and is organized as a non-profit organization under U.S. tax law”, and taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243 this Panel finds that in light of the record the named Respondent Bill Lewis is a proper respondent, whether on his own behalf or as agent for UNITE HERE, and that UNITE HERE is also a proper Respondent.
As noted having regard to the Complainant's submissions and the location of the principal office of the registrar, it appears that the applicable mutual jurisdiction is the Washington in USA.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. Prima facie evidence of this, apart from the Respondent's Response, and the “Respondent's Supplemental Response” is, in response to an email sent to Bill Lewis by the Center on October 2, 2009, an email from the Respondent's legal representatives on October 9, 2009 asserting “We represent Respondent Bill Lewis/UNITE HERE in the Complaint”. B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations for marks that include the words Coast and Coast Hotels including a registration in Canada for the trademark COAST HOTELS (with device) dating from January 29, 1988 (Registration No 336475) covering “operation of hotels and motels, restaurant and bar services, provision of convention meetings, banquet and fitness facilities, provision of catering services; operation of marinas”.
This Panel accepts the submission that the letters “badforbc” are intended to convey the meaning “bad for British Colombia.” However, there have been numerous panel decisions in which it has been held that the addition of terms with derogatory or negative connotations does not necessarily affect a finding of confusing similarity: see La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan,WIPO Case No. D2007-1660; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647; TRS Quality, Inc. v. Gu Bei,WIPO Case No. D2009-1077; Société Air France v. Mark Allaye-Chan,WIPO Case No. D2009-0327.
In any event, the Respondents' intention does not inform the issue of confusion under the third element of the Policy (although such intent may well be relevant to the assessment of subsequent elements under the Policy). International customers may not for example recognize the connotation of the letters “b” and “c” as being short for a province in Canada. It is possible it may be mistaken for, say, a marketing campaign. It is likely that there are people for whom English is not their first language wishing to stay in a hotel in Canada or the Western US who may be sufficiently confused by the presence of the Complainant's trademark in the Disputed Domain Names as to visit the Respondent's website to which they resolve. In any event, this particular case is not one that is readily susceptible to resolution under the threshold first element, but is rather one more appropriately dealt with under subsequent elements, which is what the Panel proposes to do.
Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the trademark COAST HOTELS owned by the Complainant, since it incorporates the Complainant's trademark in its entirety and that the confusing similarity is not removed by the addition of the phrase “badforbc” regardless of whether it is considered perjorative or not (Wachovia Corporation v. Alton Flanders,WIPO Case No. D2003-0596). The likelihood of confusion is neither increased nor decreased by the use of a hyphen to offset the element “coasthotels” from the element “badforbc” (Chernow Communications Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119; Columbia Sportswear Company v. Mahlon Keeler,WIPO Case No. D2000-0206; Teradyne, Inc. v. 4Tel Technology,WIPO Case No. D2000-0026).
In view of the above, the Panel finds that the Complainant has proven that the Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant must show that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Respondents may establish a right or legitimate interest in the Disputed Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Policy places the burden on the Complainant to establish the absence of Respondents' rights or legitimate interest in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondents lack rights or legitimate interests. The evidential burden then shifts to the Respondents to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000 1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1). If the Respondents fail to demonstrate rights or legitimate interests in the Disputed Domain Names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel finds that there is no evidence of a relationship between the Respondents and the Complainant, whether pursuant to a licence or otherwise, whereby the Respondents have obtained authorization to use the Complainant's trademark. There is also no evidence before the Panel that the Respondents are commonly known by the Disputed Domain Names, or has made preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services.
As numerous UDRP decisions have held, review of the relevant website informs determination of this issue. The website to which the Disputed Domain Names resolve is a single website located at the domain . A screenshot has been provided by the Complainant's Supplemental Filing. The website states at the top: “This site created and maintained by Unite Here Local 40.” This is followed by the heading “Coast Hotels, Bad for Workers, Bad for BC” and the words “Coast Hotels markets itself as a good corporate citizen and a worker-friendly employer. But workers at Coast Hotels at Vancouver, Kelowna, Prince George, Nanaimo and Victoria tell a different story”. The site goes on to criticize Complainant, using headshots of employees together with “gripe” quotations and downloadable vision of UNITE HERE rallies. Its content argues a case for why the Complainant's conduct is supposedly bad for workers and bad for British Columbia in Canada.
Previous panel decisions are divided as to whether the use of a domain name containing a trademark for a website that is critical of the trademark or its owner is a legitimate interest under the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.4). In WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas,WIPO Case No. D2009-1105, the Panelist stated:
“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).”
In the present case, the Complainant is based in Canada. The first Respondent is a US citizen, the second Respondent is a US entity and the disputed domain name has been registered with the US registrar, eNom, Inc. The mutual jurisdiction of the Complaint is US law, even though as the Complainant's Supplemental Filing points out, it had no say in the location the Respondents chose to register the Disputed Domain Names. Respondents urge the application of US national law, no doubt hoping to be advantaged by the above-mentioned Constitutional, common law and legislative rights; Complainant urges the Policy to be applied consistently in cross-border disputes without favoring one forum over another.
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”.
In broad terms, the Panel is of the view that Respondent has the right to express its views in any forum of its choice, subject of course to libel, hatred and similar causes of action. Issues arising under the Policy should be decided on the terms and context of the relevant provision and 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; Covance, Inc and Covenance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206 and 1066 Housing Association Ltd v. Mr D Morgan,WIPO Case No. D2007-1461; WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas,WIPO Case No. D2009-1105).
Unless a provision imports national law, issues should be determined by engaging in a legal analysis that incorporates recognition of normative principles of international law1, which of course should seek congruence with the law of the relevant forum, and prior UDRP decisions.
Therefore, in accordance with paragraph 15(a) of the Rules, applying “the principles of law that it deems applicable”, this Panel finds that the Respondent has on the record in this present case established under paragraph 4(c)(iii) of the Policy that its 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 Disputed Domain Names.
Complainant also alleges that Respondent's use tarnishes Complainant's mark, and thus is not legitimate. However, fair-use criticism does not necessarily constitute tarnishment, and in cases such as this is not prohibited by the Policy. Claims based on commercial libel must be brought in other legal venues. (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014, and Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
The Panel therefore finds for the Respondent on the second element of the Policy as the Complainant has failed to prove that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii). D. Registered and Used in Bad Faith
As the Complainant has failed to satisfy the second limb under paragraph 4(a)(ii) of the Policy, the Panel is not required to consider whether the Disputed Domain Names have been registered and used in bad faith under the third limb of the Policy but will do so for completeness.
This Panel finds that none of the illustrative circumstances set out in paragraph 4(a)(iii) of the Policy are present on this factual matrix, to evidence the registration and use of the Disputed Domain Names in bad faith.
True it is that these are only illustrative, but there are no other indicia of bad faith here either. Other examples are set out by the Panel in Sermo, Inc v. CatalystMD, LLC,WIPO Case No. D2008-0647, to include:
(i) using criticism as a pretext to drive business from the Complainant to Respondent;
(ii) designed the site in a deceptive or confusing manner that would create a likelihood of confusion as to whether the site is a genuine criticism site or is posing as Complainant's site.
(iii) The use of a privacy shield other than by a critic, running a legitimate, non-commercial criticism site
In the Sermo decision, the Panel found that “the registration and use of a single domain name for a genuine, non-commercial criticism site, if the site is otherwise legitimate, should not be deemed bad faith”. This Panel is of the view that it is unimportant whether “a single” domain name is registered or more than one, if the second level names are identical and it is apparent that the Respondent is not trying to “corner the market”. It is well-established that the top-level designation used as part of a domain name should be disregarded (See Accor v. Noldc Inc., WIPO Case No. D2005-0016; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names: and . The second level name, in this case, is identical.
For these reasons, the Complainant has also failed to establish that Respondent registered and used the Disputed Domain Names in bad faith. E. Reverse Domain Name Hijacking (“RDNH”)
The Respondent alleges that the Complainant brought this proceeding in an attempt to “harass” the Respondent, such as by Reverse Domain Name Hijacking, citing paragraph 15 of the Policy. The key element in paragraph 15(e) of the Rules is bad faith: (David Robinson v. Brendan, Hight / MDNH Inc.,WIPO Case No. D2008-1313).
Both bad faith and harassment are required to be present to determine the existence of reverse domain name hijacking. In support of that proposition, Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224) states:
“To establish reverse domain name hijacking, the respondent must show knowledge on the part of the complainant of the respondent's right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge (citing Plan Express Inc. v. Plan Express,WIPO Case No. D2000-0565).
Because Respondent has failed to demonstrate with evidence, or evidence of any weight, any conduct that would be regarded in other contexts, as well as UDRP proceedings, as constituting harassment or bad faith or similar conduct, the Panel declines to find that the Complainant has engaged in harassment or bad faith by bringing this proceeding. 7. Decision
Because Complainant has failed to prove that Respondent lacks a legitimate interest, the Panel declines to order transfer of the Disputed Domain Names. The Complaint is denied.
Nicholas Weston
Sole Panelist
Dated: November 23, 2009
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