Complainant is BBG Communications, Inc. of San Diego, California, United States of America, represented by Wenger & Vieli, Switzerland.
Respondent is Andrew Posner of Larchmont, New York, United States of America. 2. The Domain Names And Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 22, 2012. On August 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 24, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint and an amended Complaint on August 23, 2012.
The Center verified that the Complaint together with the amendment to the Complaint and 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2012.
The Center appointed Mark Partridge as the sole panelist in this matter on September 25, 2012. 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
Complainant, BBG Communications, Inc., is a well-known telecommunications company that has been active throughout the world since 1996.
On October 1, 1999, complainant registered three service marks with the united states patent and trademark office: BBG COMMUNICATIONS, which received Registration No. 2,375,351; BBG, which received Registration No. 2,371,265; and, the figure mark “bbg,” which received Registration No. 2,371,266.
The disputed domain name, was registered on November 6, 2010.
On December 7, 2010, Complainant sent a cease-and-desist letter to Respondent, objecting to the registration of . Respondent never replied to this letter.
The second disputed domain name was registered on December 24, 2010.
Respondent did not file a Response in these proceedings and was notified of its default by the Center. Thus, the allegations and evidence contained in and attached to the Complaint are uncontested. 5. Parties’ Contentions A. Complainant
Complainant contends that the first disputed domain name, , is identical to Complainant’s mark and that the second disputed domain name, , is confusingly similar to Complainant’s mark.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that it has no relationship with Respondent and that Respondent has not been commonly known by the disputed domain names. Complainant alleges that Respondent is using the disputed domain names to denigrate Complainant’s business and tarnish its marks. Complainant contends that Respondent is deceiving potential customers and is making a use of Complainant’s marks outside the scope of free speech.
Finally, Complainant contends that the disputed domain names were registered and used in bad faith. Complainant contends that Respondent registered the disputed domain names in an effort to mislead Internet traffic for the commercial purpose of inviting consumers to join a class action lawsuit against Complainant. Complainant alleges that Respondent’s anonymous use of identical or confusingly similar domain names was with the intent to cause Complainant damage. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion And Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the BBG COMMUNICATIONS and BBG marks, having registered the marks with the USPTO. Complaint Annexes 7, 8, and 9.
Complainant submits that the first disputed domain name, , is identical to Complainant’s registered mark BBG COMMUNICATIONS. The mere addition of the “.info” gTLD is not a distinguishing feature. L’OREAL v. Lewis Cheng,WIPO Case No. D2008-0437. Accordingly, this Panel finds that is identical to a trademark in which Complainant has rights.
Next, Complainant submits that the second disputed domain name, , is confusingly similar to Complainant’s BBG mark. Again, the addition of the “.info” gTLD is irrelevant to this determination. Respondent incorporates Complainant’s BBG mark in its entirety. A domain name that wholly incorporates a registered mark “may be sufficient to establish confusing similarity for the purposes of the Policy.” Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; see, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Further, several panels have concluded that, “the use of a famous mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the famous mark.” Playboy Enterprises International, Inc. v. Zeynel Demirtas, supra; see, e.g., Playboy Enterprises International Inc. v. Joao Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553.
The Panel finds that the combination of “heathrow” and “bbg” creates a domain name that is confusingly similar to Complainant’s registered mark. The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met for . B. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant has never authorized Respondent to use its marks, and Respondent has never been commonly known by the disputed domain names. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services, as described in the Policy paragraph 4(c)(i). The primary concern is whether or not Respondent is making a legitimate noncommercial or fair use of the disputed domain names, as comprehended by the Policy, paragraph 4(c)(iii). i. Prevailing Views
Here, the question is whether or not Respondent has used the disputed domain names for genuine, noncommercial criticism of Complainant. As WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) elaborates, there are two general views on criticism or “gripe” sites.
The first view is that, “[t]he right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark.” WIPO Overview 2.0, paragraph 2.4. This is especially true when the trademark alone is used as the domain name because “that may be understood by Internet users as impersonating the trademark owner.” See, e.g., Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev,WIPO Case No. D2009-1416; 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461.
The second view recognizes that, “[a] respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial,” even if the domain name itself does not connote such criticism. WIPO Overview 2.0, paragraph 2.4; Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers,WIPO Case No. D2000-0190; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
The prototypical “gripe site” domain name contains the suffix “-” or similar term for a noncommercial purpose. Such use has been permitted under the above-described second view even if it leads to economic damage to a party with a registered mark, as explained in Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003). “Gripe sites” not bearing the suffix “-” have in some cases also been protected. See, Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005). In Lamparello, the court stated that, “the Lanham Act must be restricted to ‘commercial speech’ to assure that trademark law does not become a tool for unconstitutional censorship.” Id. at 313. However, lack of an indicating suffix, like “-,” may create a heavier burden on the party seeking protection of its domain name as an exercise of free speech. See, e.g., People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001)(finding that was not protected as a parody because the PETA mark and parody did not appear simultaneously).
In Full Sail, Inc. v. Spevack,WIPO Case No. D2003-0502, the Panel found the “gripe site” to be a legitimate fair use of the complainant’s mark. There, the domain name was “used for a non-commercial commentary about [c]omplainant’s business.” Full Sail, Inc. v. Spevack, supra.
Here, however, this Panel finds that Respondent’s use of both disputed domain names is not consistent with the principles permitting use of Complainant’s mark. ii.
Respondent makes dual use of . First, Respondent uses the disputed domain name to display news stories and anecdotal testimony about Complainant’s allegedly fraudulent practices. Second, Respondent directs visitors to a class action suit against Complainant. The first use may be a genuine, noncommercial criticism, but the second use is not. The very top of reads, “Class Action Against BBG Communications.” Complaint Annex 12. Further down the page is information regarding the class action suit against BBG and attorney contact information for visitors who would like to be part of the class. One section reads, “Join the Class Action and file your complaint,” providing what appears to be a link, although the site is now defunct. Finally, there is “Privacy Statement” at the bottom of the page that reads:
All information gathered via this website is solely for the purpose of bringing a CLASS ACTION against BBG COMMUNICATIONS. Your email address or any other information will never be passed to any third party other than for the purpose of legal representation.
Respondent’s use of as a vehicle to redirect traffic to a class action lawyer is a commercial use. See Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003)(finding that a “gripe site” with commercial links was not permitted). iii.
Superficially, seems to be only a “gripe site,” featuring news stories about BBG Communication’s alleged fraudulent activities. Complaint Annex 13. However, features several references to the class action suit against Complainant. Based on Respondent’s concurrent use of , this Panel finds that Respondent was making a commercial use of the disputed domain name . iv. Further Considerations
As part of this determination, the Panel notes the recent NAF decision against Respondent regarding the domain name , in which that panel decided to transfer the domain name to Complainant. BBG Communications, Inc. v. Andrew Posner, NAF Claim No. FA 1208001457693. The NAF panelist was presented with a more clear-cut analysis because Respondent was offering that domain name for sale. This NAF action is pertinent because and were both registered by Respondent after Complainant sent a cease-and-desist letter. The use of provides further indication that Respondent was not using the domain name for a legitimate, noncommercial use. To this Panel, it does not seem likely that Respondent registered three domain names involving Complainant’s trademarks and intended to use only one of them for a legitimate purpose.
The Panel also notes another recent NAF decision, in which a respondent’s class action website was not transferred to the complainant. Cedars-Sinai Medical Center v. Initiative Legal Group, NAF Claim No. FA 1207001455024. In that decision, the panel found that the domain name represented a fair use of the complainant’s mark in combination with additional the terms “unpaid wages.” The present facts are distinguishable from Cedars-Sinai because Respondent does not use similar terms as part of the disputed domain names.
This Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain names, and that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed 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.”
This Panel finds that was registered and used in bad faith. “[R]egistration of a well-known trademark as a domain name is a clear indication of bad faith in itself.” The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; see, also, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Based on Respondent’s use of the disputed domain name, it is obvious that he had actual knowledge of Complainant’s mark prior his registration of . It is more than likely that Respondent registered the site for the sole purpose of making a bad faith use of Complainant’s mark, as evidenced by his subsequent use. As discussed above, Respondent did not make a legitimate use of the disputed domain name when he directed Internet visitors to the lawyers for a class action lawsuit against Complainant. Therefore, this Panel finds that the registration and use of was in bad faith.
Further, this Panel finds that was registered and used in bad faith. Respondent registered this disputed domain name after Complainant’s cease-and-desist letter of December 7, 2010. Several panels have found that registration of a domain name identical or confusingly similar to a complainant’s marks after a cease-and-desist letter is evidence of bad faith registration. See, e.g., Société Des Eaux De Volvic v. Yasushi Okabayashi / Kikakusha,WIPO Case No. D2004-0304; Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc.,WIPO Case No. D2004-0324. Again, Respondent’s use was not a legitimate use because the website promoted a class action lawsuit against Complainant.
Therefore, this Panel determines that Complainant has satisfied it burden under paragraph 4(a)(iii) of the Policy. This Panel finds that both and were registered and used in bad faith. Nothing in this opinion should be construed as preventing Respondent from expressing its message of criticism over Complainant’s activities. Respondent may certainly do so without using the disputed domain names. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to Complainant.
Mark Partridge
Sole Panelist
Dated: October 17, 2012
Full & Egal Universal Law Academy