Complainant is HBT Investments, LLC d/b/a Valley Goldmine of Phoenix, Arizona, United States of America, represented by The Bhandhusavee Firm, PLC, United States of America.
Respondent is Christopher D. Bussing of Gilbert, Arizona, United States of America, represented by The Law Firm of Cameron Hall & Associates, LLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name (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 August 5, 2010. On August 5, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On August 7, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on August 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2010. The Response was filed with the Center on September 2, 2010.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on September 8, 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 following undisputed facts are summarized from the Complaint.
Complainant registered the trademark, VALLEY GOLDMINE (the “Mark”), as a trade name with the Arizona Secretary of State on March 26, 2008. The Mark was registered with the United States Patent and Trademark Office on July 27, 2010, with a first use in commerce date of March 1, 2008. Complainant has operated a website at the domain since early 2008. Complainant uses the Mark in connection with its business of providing exchange services for gold and other precious metals into cash through locations in Arizona as well as five other U.S. states.
Respondent is the principal owner of GSFC, LLC, doing business as Gold Stash For Cash, a direct competitor of Complainant based in metropolitan Phoenix, Arizona. Respondent’s website at the Disputed Domain Name receives very high placement on Google search results for the Mark, appearing directly beneath Complainant’s own website. Respondent has never been a customer of Complainant and has not otherwise transacted any business with Complainant.
On March 5, 2009, a local TV station aired an investigative report entitled “How to get the most cash when selling gold in Arizona.” As part of said report, a reporter solicited offers to purchase the same piece of gold jewelry from Complainant, Respondent’s company, and two other local competitors, which process was recorded by hidden camera. The report found that Complainant offered the highest amount while Respondent’s company offered a much lower amount.
Complainant has also offered unrefuted evidence that Respondent’s spouse posted a series of accusations against Complainant in the “comments” section of the online version of the TV station’s report. The Disputed Domain Name was registered by Respondent on March 13, 2009. On the same date, Respondent’s spouse registered the domain name .
Respondent’s website at the Disputed Domain Name is in the form of a blog, containing in its entirety two postings, both from May 2009. Both posts accuse Complainant, the TV station, and various others of collusive, dishonest, and unethical behavior in connection with the report.
On February 24, 2010, Complainant filed a civil complaint in the Superior Court of Maricopa County (Cause No. CV2010-051082) against then-unknown owners of the Disputed Domain Name. The filing of the civil complaint enabled Complainant to subpoena records from the proxy domain registrant. Complainant’s counsel sent a cease and desist letter to Respondent, but received no response. Complainant amended the complaint to name Respondent as a defendant on June 19, 2010, claiming defamation, injurious falsehood, and intentional interference with business relationships, and seeks a permanent injunction against Respondent. The case is currently pending. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name is confusingly similar to Complainant’s Mark. Many panels have found that the addition of the pejorative word “sucks” to a mark does not make a domain name less confusingly similar either because “sucks” is a dictionary word, because the disputed domain name is highly similar to the mark, or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark. Respondent, a direct competitor, is using Complainant’s Mark to spread misinformation about Complainant’s business, with the intention of damaging its reputation and, as a result, diverting Internet users to Respondent’s competing business.
Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that Respondent has been known by the Disputed Domain Name or has used it in connection with a bona fide offering of goods or services. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert Complainant’s customers or to tarnish its trademarks. Respondent’s website at the Disputed Domain Name cannot be characterized as a legitimate gripe site. Respondent is neither an aggrieved customer nor a concerned social activist. Respondent’s complaint is with the TV station’s report and therefore has no legitimate reason to target Complainant’s Mark.
The Disputed Domain Name was registered in bad faith because Respondent is simply using it to disrupt the business of a competitor. Respondent’s website makes false and misleading assertions against Complainant and accuses it of deceit and chicanery in connection with the TV station’s report. B. Respondent
The Disputed Domain Name is not confusingly similar to Complainant’s Mark because, as some panels have held, no reasonable consumer would think that a domain name with a pejorative word attached to a trademark would believe that the associated website was operated by the trademark owner.
Respondent’s website consists of pure noncommercial speech and does not offer any competing goods or services, has no commercial links, and directs visitors to contact the TV station regarding its journalistic standards. It would not be obvious to a consumer that Respondent’s website is operated by a competitor of Complainant, given that Complainant had to resort to a subpoena in order to confirm that fact. Further, Complainant has offered no evidence of actual confusion.
Respondent has a legitimate interest in the Disputed Domain Name, using it for the legitimate purpose of engaging in free speech, encouraging robust debate, and criticizing the media for a lack of journalistic standards.
There is no evidence of bad faith registration or use because Respondent has not attempted to sell or otherwise profit from the Disputed Domain Name, Respondent has no history of cybersquatting, and Respondent’s website is noncommercial in nature. 6. Discussion and Findings A. Preliminary Issues
Complainant and Respondent are currently engaged in a lawsuit filed by Complainant in the Arizona Superior Court. Paragraph 18(a) of the Rules allows the Panel to suspend or terminate the UDRP proceeding in its discretion where, as here, the Disputed Domain Name is the subject of other legal proceedings. Because neither party has requested that the proceedings be suspended or terminated and because the Panel's decision has no binding precedential effect on the court proceedings, the Panel elects to issue a decision in this UDRP dispute. B. Identical or Confusingly Similar
It is undisputed that the Disputed Domain Name incorporates the Mark in whole, adding the term “sucks” to the end of the Mark. In dealing with cases where a pejorative term is added to a mark in a domain name, panels typically prefer to examine the legitimacy of the registration under the rights or legitimate interests or bad faith prongs rather than under confusing similarity. This approach allows panelists to examine the relevant context in which the “sucks” domain name is used. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,WIPO Case No. D2000-0477.
The panel’s decision in TPI Holdings, Inc. v. AFX Communications a/k/a AFX,WIPO Case No. D2000-1472 stated
“When an Internet user enters a trademark into [a] search engine and a ‘sucks’-formative domain name is returned as a search result, that user is likely to proceed to the site so identified because of interest or puzzlement created by association of the trademark and the pejorative term. The operator of the website identified by the ‘sucks’-formative domain name will have accomplished the objective of diverting the Internet user seeking the trademark holder’s website. Bad faith adoption of a trademark, including in a ‘sucks’-formative domain name, increases the likelihood of a finding of confusing similarity.”
In the instant proceeding, the Disputed Domain Name appends the term “sucks” to Complainant’s Mark. The associated website has high placement on search engine results for the Mark and is operated by the principal of a direct competitor of Complainant. Respondent’s use of the Disputed Domain Name in this context is precisely within the list of bad faith criteria under paragraph 4(b) of the Policy, which, in this Panel’s view, clearly indicates Respondent’s intent to create confusing similarity in the minds of Internet users. See TPI Holdings, supra. Consequently, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s Mark within the meaning of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Panel notes the following in relation to any possible rights or legitimate interests of Respondent in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy: there is no evidence that Respondent has used or made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, and Respondent has not been commonly known by the Disputed Domain Name. Respondent argues that his use of the Disputed Domain Name is a legitimate noncommercial use and an exercise of his free speech rights. Respondent points to the fact that the website at the Disputed Domain Name does not link to any other commercial website, does not promote any competing products, and encourages visitors to contact the TV station regarding its alleged poor journalistic standards.
Section 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes that “[t]here are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain.” See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, supra, among others.
Panels have long held the view that the right to express one’s views is not the same as the right to use another’s trademark as the platform for expression. See Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299. This is particularly the case where the website at the Disputed Domain Name is operated by a direct competitor of complainant, as is the case here. Although cloaked in the mantle of a gripe site, Respondent’s website is quite clearly a platform for Respondent to cast aspersions on the reliability of a report that portrayed his company in a negative light and his competitor in a positive light, and to otherwise sling mud.
Given the foregoing circumstances, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the Disputed Domain Name for the purpose of disrupting the operations of a competitor within the meaning of paragraph 4(b)(iii) of the Policy, not for any legitimate free speech purpose as urged by the Respondent. Ironically, in criticizing the TV station’s and Complainant’s journalistic ethics, Respondent deliberately hides the fact that he is a competitor of Complainant, posing as a concerned citizen who refuses to identify himself so that the TV station doesn’t “[try] to slander [him] with some [expletive] ‘investigative reporting’.” Likewise, there is evidence that Respondent engaged in search engine optimization such that the website at the Disputed Domain Name appears third on Google search results for the Mark—directly underneath Complainant’s own website. Accordingly, the Panel concludes that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 Disputed Domain Name, be transferred to Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: September 24, 2010
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