WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev Case No. D2009-1416 1. The Parties
The Complainant is Anastasia International Inc. of Kentucky, United States of America, represented by Bowles Rice McDavid Graff & Love LLP of Kentucky, United States of America.
The Respondent is Domains by Proxy Inc. of Arizona, United States of America/ rumen kadiev of Sevlievo, Bulgaria. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2009. On October 22, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 22, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. 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 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2009. On November 10, 2009, the underlying registrant of the disputed domain name, Rumen Kadiev, sent an email to the Center commenting upon the original Complaint. On November 13, 2009, the Complainant filed an amended Complaint which was directed against the underlying registrant of the disputed domain name and requested a suspension of the proceedings to allow settlement discussions between the Parties. On November 16, 2009, the Center sent an email to the Complainant and the underlying registrant acknowledging receipt of the amended Complaint. 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”). On November 18, 2009, the Center suspended the proceedings until December 18, 2009. After a request from the Complainant on December 17, 2009, the Center re-instituted the proceedings on December 18, 2009. The new due date for the Response was December 28, 2009.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2009.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 6, 2010. 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. 4. Factual Background
The Complainant is Anastasia International, Inc., a Kentucky, United States of America Corporation which provides Russian-American introduction and romance tour services, predominantly via interactive websites. The Complainant has been trading since 1995 and claims to have the largest full-time staff in its industry. The Complainant is a member of the American Society of Travel Agents and the Central and Eastern Europe Travel Board and had completed 146 tours by February 2005. The Complainant's activities have been covered on numerous television shows and news features on various television networks worldwide.
The Complainant has used the unregistered mark ANASTASIA INTERNATIONAL in commerce since 1995. It is also the owner of two trademarks registered with the United States Patent and Trademark Office, namely ANASTASIA (word mark registered on July 29, 1997 under registration number 2083092) and ANASTASIAWEB (word mark registered on March 29, 2005 under registration number 2936266).
The Respondent registered the disputed domain name on November 2, 2008, originally using a “WhoIs privacy service” provided by Domains by Proxy Inc. to mask its identity from the public “WhoIs” service. The web page at the disputed domain name is entitled “ scam” and contains material which is critical of the Complainant's business practices. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that, to the best of its knowledge, the Respondent has not been commonly known by the disputed domain name either as an individual, business or organisation and has not acquired any corresponding trademark rights. The Complainant submits that it has not authorised the Respondent to use its trademarks or trading name. The Complainant states that the original content of the website using the disputed domain name was defamatory of the Complainant and constitutes an attempt to tarnish, diminish, and harm the value of the Complainant's trademarks.
The Complainant submits that based upon information known to the Complainant, the Respondent may be a competitor of the Complainant's business and that the disputed domain name was therefore registered primarily to disrupt the Complainant's business. The Complainant asserts in the alternative that the Respondent's primary purpose in registering and using the disputed domain name for the publication of defamatory content may be to extort money from the Complainant.
The Complainant submits that the Panel may draw inferences of bad faith from the Respondent's use of a “WhoIs privacy service” and from the Respondent's registration of the disputed domain name in the knowledge of and with the Complainant's trademarks in mind. B. Respondent
The Respondent did not file a formal reply to the Complainant's contentions. However, in its informal email communication to the Center of November 10, 2009, the Respondent states that the disputed domain name is free for use as the Respondent has no further interest in renewing it. The Respondent also indicates that it does not agree with the Complainant's contentions regarding registration and use in bad faith on the basis that the Respondent registered the disputed domain name to use it for a website which would provide a warning to prospective customers of the Complainant regarding allegedly deceptive business practices of the Complainant. The Respondent asserts that its exposition of such alleged practices on the Internet is “telling the truth”. The Respondent goes on to state that “this promo offer is over…I have no claims for [the disputed domain name].” 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly has registered trademark rights in the terms ANASTASIA and ANASTASIAWEB. The Complainant also makes the unchallenged assertion that it has rights in the unregistered common law trademark for ANASTASIA INTERNATIONAL based on its use of this name in commerce for more than a decade and recognition in the media for its business activities.
Considering the Complainant's registered trademarks first, it can be seen that the Complainant's ANASTASIA mark is reproduced in the disputed domain name in its entirety, coupled to the word “international”. In the Panel's view this would be sufficient to establish confusing similarity. The threshold under paragraph 4(a)(i) of the Policy is relatively low and the Panel takes the view that “anastasia” is the more dominant element of the disputed domain name. The term “international” has a more descriptive and thus less distinctive character.
In any event, the Complainant has also asserted rights in the unregistered mark ANASTASIA INTERNATIONAL. On the subject of such unregistered or common law trademarks, the Overview of WIPO Panel Views on Selected UDRP Questions provides at paragraph 1.7: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.” In the present case, the Complainant has shown that it has been trading for well over a decade under the mark ANASTASIA INTERNATIONAL, that it has conducted a significant number of tours using this name and furthermore that it has garnered substantial media recognition for its business activities. Accordingly, the Panel finds that the Complainant is entitled to rely upon its unregistered trademark ANASTASIA INTERNATIONAL for the purposes of paragraph 4(a)(i) of the Policy. In comparing this mark to the disputed domain name, the Panel has disregarded both the hyphen in the disputed domain name which represents a substitution for the whitespace in the mark (on the basis that whitespace is not permitted in a domain name). The Panel has also disregarded the top level domain “.info” on the basis that this is wholly generic and non-distinctive. Accordingly, on this comparison, the Panel finds that the Complainant has rights in a trademark which is identical to the disputed domain name. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 non-commercial 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent. In the present case, the Complainant has put forward sufficient evidence to indicate that the Respondent is not commonly known by the name ANASTASIA INTERNATIONAL or any similar term, and has not been given any licence or other authorisation to use the Complainant's trade marks in the disputed domain name. The Panel is satisfied that this constitutes a prima facie case. Paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions provides: “Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
While the Respondent has not filed a formal response to the Complaint, an indication of its position may be gleaned from its informal email communication to the Center of November 10, 2009 in which it asserts that it registered and used the disputed domain name to expose certain allegedly deceptive business practices of the Complainant, in effect, for what it believes to be genuine, non-commercial criticism. The Panel therefore requires to consider whether such a purpose can demonstrate rights and legitimate interests in the disputed domain name.
The Panel notes that the Complainant has asserted that the Respondent may be a competitor of the Complainant's business and that as such the criticism published on the Respondent's website may be neither genuine nor non-commercial. However, the Complainant has provided no evidence in support of these assertions and accordingly for present purposes the Panel has assumed that the intention behind the Respondent's website is the provision of genuine non-commercial criticism of the Complainant.
It is well known that there is a divergence of opinion among panelists on this topic. The differing lines of thought are clearly set out in the Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.4. Broadly speaking, the view of one group of panellists is that a respondent's right to criticise a complainant does not extend to registering a domain name that is identical or confusingly similar to the complainant's registered trademark or that conveys an association with the mark, while the view of the other group is that a respondent can have a legitimate interest in using a complainant's trademark as part of the domain name of a criticism site if this use is fair and non-commercial. The Overview notes that the second view appears to have been primarily adopted by US panelists in proceedings involving US parties and that few non-US panelists have adopted this second view. The divergence of views arises predominantly as a result of the importation of local legal concepts by panelists on the basis of paragraph 15(a) of the Rules which provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.
The present Panel adopts the reasoning of the panel in 1066 Housing Association Ltd. v. Mr D. Morgan, WIPO Case No. D2007-1461 on this subject. First, it is clear that paragraph 15(a) of the Rules leaves the question of whether to apply such “rules and principles of law” to the Panel. Secondly, the phrase “rules and principles of law” calls to mind those general and globally accepted legal principles which are independent of national jurisdiction rather than the terms of any local legal concepts.
In the Panel's view it is appropriate to consider local law for certain issues arising under the Policy. The validity of a registered trademark, for example, can only be determined by reference to the jurisdiction from which it originates. However, as the panel in 1066 supra puts it, “so far as the specific issue of rights and legitimate interest are concerned the Panel sees no reason to import national rules and good reason not to do so”. Bringing local law into consideration has demonstrably given rise to widely differing results on the question of rights and legitimate interests. This is undesirable in a Policy which is clearly intended to have uniform application on an international basis and where a large number of cases involve parties from different jurisdictions with extremely diverse legal traditions.
The present Panel takes a similar view to that outlined by the panel in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 on the question of rights and legitimate interests in domain names used for the purposes of criticism websites. In that case, the panel commented: “In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.”
In the present case, on a similar factual basis to the circumstances described in Triodos supra, the Respondent selected a domain name which is identical to the Complainant's trading name. It is evident from the original content of the Respondent's website that it did so deliberately and with the Complainant's rights in mind. The Panel considers that the Respondent cannot demonstrate rights and legitimate interests in such a domain name merely by virtue of the fact that the Respondent's intent was to use this to publish material that is or may be critical of the Complainant.
The Panel acknowledges that a person is entitled to express his views in a wide variety of different ways and to various audiences, subject to certain legal restrictions including in particular the laws of defamation. Furthermore, the Panel acknowledges that a person may make use of a domain name for this purpose, provided that, as the panel noted in 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, the domain name in question does not cause confusion or mislead the public.
In this Panel's opinion, the Respondent's right to exercise freedom of speech does not extend to an entitlement to disseminate its views by deliberately and misleadingly cloaking itself in the name of the Complainant in order to maximise the numbers in its audience. That is an inherently deceptive practice in which a person should not, and does not require to engage in order to express his views. In the case of Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947, in which the panel found that a respondent engaging in this practice did have a legitimate interest in the domain name concerned, the panel likened the respondent's activity to “conducting a protest outside the physical premises of the organization against which the protest is directed, thereby ensuring that those visiting the premises will see the protest”. The present Panel considers that this is an incomplete analogy which fails to address the element of deception that can be present in a respondent's actions. The fundamental difference between the off-line analogy and the present case is that in a physical scenario the protester will conduct his protest outside the premises but, contrary to the online environment, he cannot effectively build his own confusingly similar or identical entrance outside those premises in order to capture an audience by confusion and deception.
Accordingly, in these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 web site or location”. (Policy, paragraph 4(b)).
Although the Complainant in the present case makes various assertions in terms of paragraph 4(b) of the Policy, the Panel does not believe that this case fits squarely within any of the non-exclusive circumstances provided therein. There is a possibility that paragraph 4(b)(iii) of the Policy might have been applicable, as the Complainant submits that “based upon information known to the Complainant, it is believed that the Respondent may actually be a competitor…” but the Complainant does not disclose any such information to the Panel and there is nothing else in the Parties' submissions which points to this conclusion. Accordingly, the Panel makes no finding as to whether the Respondent is or was a competitor of the Complainant or that the Respondent intended to attract Internet users to its website for commercial gain. The circumstances set out in paragraph 4(b) of the Policy are non-exclusive and in the present case, the Panel has reached the view that the disputed domain name was registered and used by the Respondent in bad faith for alternative reasons.
It is clear both from the Respondent's informal communication and from the content of the website associated with the disputed domain name that the Respondent's intention from the outset was to express on the Internet certain views that are critical of the Complainant's business practices. As noted above, this in itself is a potentially legitimate and good faith activity. Nevertheless, for that purpose, the Respondent selected a domain name which is not its own name and which the Respondent evidently was aware was identical to the Complainant's corporate and trading name. In so doing, the Respondent would also have been aware that the disputed domain name would be likely to make a misrepresentation to the typical Internet user that any associated website was owned and operated by the Complainant and that, as the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain name would “catch by surprise” visitors intending to reach the Complainant's website. In the Panel's view, the consequence is that the Respondent's actions are tainted, no matter whether it genuinely believed the criticisms or opinions expressed on the website associated with the disputed domain name and whether it was acting out of non-commercial or, as the Complainant asserts, commercial motives. 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 the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: January 18, 2010
Full & Egal Universal Law Academy