The Complainant is Ab Hur Oy of Kokkola, Finland, represented by Kolster Oy Ab, Finland.
The Respondent is Gym 24 Hour of Queensland, Australia. 2. The Domain Names and Registrar
The Disputed Domain Names , , , , and (the "Disputed Domain Names") are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2011. On September 27, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Names. On the same date, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2011. The Respondent filed an informal Response with the Center on October 7, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 4, 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 company based in Finland that sells fitness machinery bearing the trademark HUR. The Complainant is owner of numerous trademark registrations for HUR, in relation to fitness and rehabilitation equipment in various jurisdictions, including Finland, the United States of America (“US”), the Republic of Korea (“South Korea”), and India, the earliest of which dates back to 2000.
The Respondent is Gym 24 Hour, a fitness center located in Hervey Bay, Australia. The Complainant and the Respondent have a previous business relationship, whereby the owner of the Respondent, Andrew Gunn, purchased fitness products from the Complainant for use in his fitness centre. A dispute arose between the Complainant and the Respondent regarding the quality of the fitness machines that the Complainant sold to the Respondent.
The Respondent registered the Disputed Domain Names: , ,, , , on April 5, 2011. The Disputed Domain Names resolve to websites devoted exclusively to providing negative information about the Complainant's HUR brand of fitness equipment. The Respondent, in its correspondence with the Complainant as well as the informal Response submitted to the Centre, stated that it registered and is using the Disputed Domain Names to warn customers about the Complainant and make them chose other brands over the Complainant's HUR branded fitness products. The Respondent has offered to transfer the Disputed Domain Names to the Complainant, if and when the Complainant purchases back the fitness equipment for $52,000 (which was later raised to $60,000)1. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
(a) The Disputed Domain Names are identical/confusingly similar to the Complainant's HUR trademark. The Complainant's HUR trade mark is incorporated as the dominant part of each of the Disputed Domain Names;
(b) The Respondent does not have legitimate rights or interests in the Disputed Domain Names. The Respondent has been in a contractual relationship with the Complainant, and has no rights regarding the Complainant's HUR trademarks. The Respondent's conduct is not legitimate non-commercial or fair use of the Disputed Domain Names, but has the intent to misleadingly divert potential clients from purchasing HUR products as well as tarnish the reputation of the HUR trade marks;
(c) The Disputed Domain Names were registered and are being used in bad faith. The Respondent's sole purpose is to use the Disputed Domain Names to attract potential clients of the Complainant. The contents of the websites to which the Disputed Domain Names resolve (the "Websites") contain false and untruthful material regarding the goods and services of the Complainant, with a view to tarnishing the reputation of the Complainant's HUR trade marks; and
(d) The Respondent has blackmailed and extorted the Complainant, by demanding $60,000 to remove the content off the Websites and transfer the Disputed Domain Names to the Complainant. B. Respondent
A formal Response was never submitted by the Respondent. The Respondent submitted informal submissions to the Centre, however, as these informal submissions did not comply with the requirements for a response under Paragraph 5(b) of the Rules, the Panel choses to exercise its discretion under paragraph 10(d) of the Rules not to consider these informal submissions as evidence in the proceedings.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a formal Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the HUR trade mark on the basis of its numerous registrations for this trade mark in Finland, the United States of America, South Korea, and India.
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 ”.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
Each of the Disputed Domain Names incorporates the Complainant's HUR mark in its entirety. The only difference between each of the Disputed Domain Names and the Complainant's HUR mark is the inclusion of a hyphen and the words "asia", "australia", "europe", "fitness", “finland” and "uk" as descriptions. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088.
The Panel finds that "hur" is the distinctive and prominent component of each of the Disputed Domain Names and the addition of the words "asia", "australia", "europe", "fitness", “finland” and "uk" does nothing to distinguish the Disputed Domain Names from the Complainant's trade mark. Given that the Complainant conducts business in the fitness industry, the "fitness" component of the domain name if anything serves to increase the likelihood that consumers will be misled into thinking that the Disputed Domain Names are somehow associated with the Complainant. Further, the addition of the geographical identifiers of "asia", "australia", "europe", “finland” and "uk" are likely to create the impression that the Disputed Domain Names relate to the Complainant's operations in these jurisdictions.
The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the HUR trade mark 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 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 demonstrating 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 no 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 Names. Therefore, the Panel will assess the Respondent's rights in the Disputed Domain Names (or lack thereof) based on the Respondent's use of the Disputed Domain Names in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the HUR trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Names.
Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Names for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Names for legitimate non-commercial purposes or in connection with a bona fide offering of goods or services.
At the time of the Complaint, the Disputed Domain Names resolved Websites that contained many derogatory statements about the Complainant and its HUR brand of fitness machines. It is accepted that the Respondent was aware of the Complainant and its marks when registering the Disputed Domain Names. In fact, by the Respondent's own admission, it registered and is using the Disputed Domain Names to publicize grievances with the Complainant's HUR brand of fitness machines, as he considered them to be of unsatisfactory quality.
It must be determined whether the Respondent's use of the Disputed Domain Names in connection with the operation of such criticism sites constitutes legitimate, non-commercial use which confers on the Respondent legitimate rights or interests in the Disputed Domain Names. This issue was discussed in a previous case decided by the present Panel, Nippon Paper Industries Co., Ltd. v. Harriett Swift,WIPO Case No. D2011-0832, as outlined below:
"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 non-commercial purpose that would confer a right or legitimate interest in the domain name on the complainant. 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 US 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-US cases which have preferred the free speech approach, and conversely US 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 US connection;
The principle of freedom of speech is not confined to the US. 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 Respondent is clearly not operating the Websites with a view to misleadingly diverting 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 immediately apparent when viewing the Websites that they are not being operated by the Complainant. The negative statements displayed about the Complainant on the Websites, make it abundantly clear that the Websites are not being operated by the Complainant.
In addition, the Panel does not consider that the Respondent is operating the Websites 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 [...]. In 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 the Nippon Paper case, the Panel held that the operation of a criticism site constituted use of the disputed domain name for a legitimate, non-commercial purpose, and therefore conferred on the respondent legitimate rights and interests in the disputed domain names. However, the present case can be distinguished from the Nippon Paper case in one important respect. In the Nippon Paper case, the website was not being used for any financial gain or other commercial purpose. In the present case, while the Respondent insists that the Disputed Domain Names are not for sale, on numerous occasions he demanded sums ranging from $52,000 to $60,000 from the Complainant, upon payment of which he indicated that he would transfer the Disputed Domain Names to the Complainant. The fact that the Respondent is using the Disputed Domain Names to host criticism websites with the intention of pressuring the Complainant to pay the Respondent such a large sum of money precludes a finding that the Disputed Domain Names are being used for legitimate non-commercial purposes in the present case.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names. C. Registered and Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well known trade mark at the time of registration of a domain name by a respondent. See Samsonite Corporation vs. Colony Holding, NAF Case No. FA 94313. In the present case it is clear that the Respondent, having had previous contractual dealings with the Complainant, was aware of the Complainant's HUR trade mark at the time of registering the Disputed Domain Names.
It is also relevant to the issue of bad faith that the Respondent demanded $52,000 (and later $60,000) from the Complainant for the return of the Disputed Domain Names. While the Respondent contends that this sum was not for the purchase of the Disputed Domain Names, but rather for the purchase of the fitness equipment previously purchased from the Complainant (which the Respondent considers to be faulty), he says he will return the Disputed Domain Names if the Complainant pays this sum. Therefore, in effect, the Respondent is demanding this amount (which far exceeds the Respondent’s out of pocket expenses in relation to the Disputed Domain Names) from the Complainant in return for the Disputed Domain Names. It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent in registering the domain names can be compelling evidence of bad faith. See The Board of Regents of the University of Nebraska v. Bill Saedlo,WIPO Case No. D2000-0154; and Adamovske Strojirny v. Tatu Rautiainen,WIPO Case No. D2000-1394.
The Respondent has made it clear in his correspondence with the Complainant that his intention in registering and using the Disputed Domain Names is to publicize negative statements about the Complainant and its business. It is clear, from statements such as "I'm going to enjoy doing this, its not work is more like sport, a sadistic type of hunting", "I will spend a minimum of 8-10 hours every week until Feb 2012 working on this…There will be product reviews, service reviews, installation reviews, cost reviews the web will be drowning with the HUR…and if you think for one moment that I will be spending a lot of time on it, well it will be nothing compared to what your company will, trying to clean the mess up. Maybe you might even have to change your name", "I can get someone in India to write an article about HUR…I then ‘SPIN’ that article into approximately 300 articles using special software. And then I send those articles out to websites…you do exactly the same thing with blogs and videos using websites such as YouTube etc… So if I was to invest $1000 that would give me 250 articles, time they are spun you would have 75,000 articles…Christ knows what 75,000 articles, 50,000 blogs and 10,000 DVDs will do" and "The gloves are OFF… Good Luck" that the Respondent registered and is using the Disputed Domain Names for the sole purpose of disrupting the Complaint's business. This is further reinforced by the following statement which is displayed on the Websites "if you are thinking of buying Hur Fitness Equipment - DON’T!!! It really is just not worth it, the stress, money and heartache, simply isn't worth it".
In the circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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 names , , , , and be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: November 17, 2011
1 The Panel is not entirely clear from the evidence which particular currency the Respondent intended in this respect, though ultimately, it does not matter to the Panel’s finding.
Full & Egal Universal Law Academy