The Complainant is Nippon Paper Industries Co., Ltd. of Tokyo, Japan, represented internally.
The Respondent is Harriett Swift of Bega, Australia, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2011. On May 13, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 May 16, 2011 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 May 20, 2011. 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 May 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2011. The Response was filed with the Center on June 10, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 22, 2011. 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 a Japanese company which is one of the largest pulp and paper companies in the world with more than 15 manufacturing bases and sales offices in the domestic Japanese market and more than 25 subsidiaries and offices around the world. The Complainant was established in 1949 and has been continuously trading under the trade mark NIPPON PAPER since 1993 when it changed its corporate name to Nippon Paper Industries Co. Ltd. The Complainant has numerous trade marks incorporating NIPPON PAPER, the first of which was registered in 1995.
The Respondent is an individual residing in Australia. The Respondent registered the Disputed Domain Name on March 26, 2009. The Disputed Domain Name resolves to a website which contains negative statements criticizing the Complainant for the impact that its business has on the environment (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s registered trade mark. The substantial part of the Complainant’s NIPPON PAPER INDUSTRIES and NIPPON PAPER INDUSTRIES CO., LTD. trade marks is “nippon paper”, which is identical or confusingly similar to the Disputed Domain Name;
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not licenced to use the Complainant’s registered trade marks. The Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and services in commerce. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making legitimate, noncommercial use of the Disputed Domain Name;
(c) The Respondent is using the Disputed Domain Name to host a website condemning the Complainant, and is using the Disputed Domain Name to intentionally tarnish the Complainant’s name, reputation and trade marks; and
(d) The Disputed Domain Name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trade mark when she registered the Disputed Domain Name, and did so in order to attract for her unfair criticism, Internet users to the Website creating a likelihood of confusion with the Complainant’s trade mark. B. Respondent
The Respondent’s contentions can be summarised as follows:
(a) The Complainant chose to register and use the domain name , rather than a domain name incorporating “nipponpaper”, despite the fact that virtually all of the standard permutations of “nipponpaper” were available to register as a domain name;
(b) It is unlikely that anyone who came across the Website would be confused into thinking it was associated with the Complainant;
(c) The Respondent has a legitimate purpose for using the Disputed Domain Name. She uses the Disputed Domain Name to scrutinise the activities of the Complainant, to protect Australia's forests and wildlife, such as the Koala. Campaigning for these forests is completely legitimate and has been done for altruistic purposes;
(d) The Respondent has used the Disputed Domain Name in good faith - to campaign for the Australian forests against the operations of the Complainant;
(e) The Respondent did not acquire the Disputed Domain Name for the purpose of selling it; and
(f) The Complainant’s action in lodging the Complaint is akin to a strategic lawsuit against public participation. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the NIPPON PAPER INDUSTRIES and NIPPON PAPER INDUSTRIES CO., LTD. trade marks on the basis of the numerous trade mark applications/registrations owned by the Complainant for these trade marks for example in Japan, the European Union, United Kingdom of Great Britain and Northern Ireland, Germany, Australia, Canada, France, Benelux, Singapore, Russian Federation, etc., as well as its unregistered rights in the NIPPON PAPER and NIPPON PAPER GROUP trade mark as a result of its use of these marks in relation to paper products since 1993.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
The Disputed Domain name is an abbreviation of the Complainant’s trade marks. The Panel finds that “nipponpaper” is the distinctive and prominent component of both the Disputed Domain Name and the Complainant’s trade marks, and the removal of the words “industries” or “industries co., ltd.” does nothing to distinguish the Disputed Domain Name from the Complainant’s trade mark. While the Complainant’s full company name is “Nippon Paper Industries Co., Ltd.”, consumers would be likely to refer to the company simply as “Nippon Paper”, and an Internet search for “Nippon Paper” confirms that the Complainant is commonly referred to as “Nippon Paper”.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the NIPPON PAPER INDUSTRIES and NIPPON PAPER INDUSTRIES CO., LTD. trade marks in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of production to demonstrate it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is insufficient evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent’s rights in the Disputed Domain Name (or lack thereof) based on the Respondent’s use of the Disputed Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the NIPPON PAPER trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Name for legitimate noncommercial purposes without intention to misleadingly divert customers or to tarnish the trade mark at issue or in connection with a bona fide offering of goods or services.
The Respondent does not contend that she has used the Disputed Domain Name in connection with a bona fide offering of goods and services. The Respondent’s arguments relating to a right or legitimate interest largely revolve around the fact that she is using the Disputed Domain Name to operate a noncommercial website for the purpose of criticising the Complainant with a view to campaigning for the environment, and that this constitutes a legitimate noncommercial purpose.
There has been much discussion in previous decisions about whether using a domain name for the purpose of operating a criticism website can constitute a legitimate noncommercial purpose that would confer a right or legitimate interest in the domain name on the respondent. Many of these decisions draw a distinction between cases with a connection with the United States ( “U.S.”) (e.g. where one or both of the parties reside in the U.S., where the registrar is located in the U.S. etc.), and those cases with no connection to the U.S. This distinction appears to have been drawn on the basis that the right of free speech is a constitutional right in the U.S., which is not the case in other jurisdictions.
The Panel finds this to be an artificial distinction and agrees with the decision of the panel in Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379, in which the panel rejects the distinction on the following grounds:
- There have been non-U.S. cases which have preferred the free speech approach, and conversely U.S. cases that have rejected the free speech approach;
- The Internet is an international medium and it is desirable to have uniform implementation of the Policy;
- Many cases involve multiple jurisdictions and it is not always clear whether a particular case has a U.S. connection;
- The principle of freedom of speech is not confined to the U.S. For example the principle of freedom of expression is enshrined in the European Convention on Human Rights and the Universal Declaration of Human Rights; and
- The Policy should take into account general principles of law which are widely accepted throughout the world and not be dependant on particular national laws.
The Panel finds that the Respondent is clearly not operating the Website with a view to misleadingly divert the Complainant’s customers. As stated in the decision of the panel in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, the phrase “misleadingly diverting customers” refers to “the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales”. There is no such diversion for commercial gain in the present case.
Further, it is apparent when viewing the Website that it is not being operated by the Complainant. The Respondent makes no attempt to create the impression that the Website is operated by the Complainant, and in fact, after the Complainant commenced these proceedings to recover the Disputed Domain Name, the Respondent inserted a statement at the top of the Website informing visitors of the existence of these proceedings. This coupled with the negative statements displayed about the Complainant on the Website, make it abundantly clear that the Website is not being operated by the Complainant.
In addition, the Panel does not consider that the Respondent is operating the Website to tarnish the Complainant’s trade mark. As stated in the Britannia case discussed above, tarnishment “refers to such unseemly conduct as linking unrelated pornographic violent or drug-related images of information to an otherwise wholesome mark...[i]n contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting”.
In addition, the Panel notes that the Website is not being used for any financial gain or other commercial purpose. The Website does not contain advertisements or sponsored links and does not call for any type of donation. The Panel is also of the opinion that the Respondent genuinely believes in the criticisms that she is displaying on the Website, and that the Respondent is not operating the Website for any dishonest purposes.
Accordingly, the Panel finds on the record in these UDRP proceedings that the Respondent is apparently using the Disputed Domain Name for a legitimate, noncommercial purpose, and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Complaint thus fails and the Panel does not need to consider the third requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Dated: July 6, 2011
Full & Egal Universal Law Academy