The Complainant is Timotheus Jacobus Kuik a.k.a. Tim Kuik of Amsterdam, the Netherlands, represented by Stichting BREIN, the Netherlands.
The Respondent is H.C. Pol of Coevorden, the Netherlands / Whoisguard Protected of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2012. On September 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2012, the Registrar 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 September 18, 2012, 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 September 20, 2012.
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 September 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2012. The Response was filed with the Center on September 21, 2012, the date of commencement of proceedings. On that same day, the Center acknowledged receipt of the Response and requested the Respondent to confirm whether its filed Response could be regarded as the complete Response. The Respondent subsequently sent two email communications on September 29, 2012, and on October 2, 2012, respectively.
The Center appointed Willem J.H. Leppink as the sole panelist in this matter on October 16, 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. The Panel has also found it necessary to extend the due date for its decision to the date specified in section 7 below. 4. Factual Background
The Complainant is the managing director of the Dutch anti-piracy organization “Stichting Bescherming Rechten Entertainment Industrie, BREIN” (“BREIN”). BREIN has been involved in litigation in the Netherlands against certain Dutch access providers, relating to Internet access to the website of The Pirate Bay.
The Complainant is the owner of the word mark TIM KUIK, registered with the Benelux Office for Intellectual Property under number 0898385, filed on March 24, 2011 for goods and services in classes 9, 35 and 45 (“Trademark”).
The disputed domain name was registered on September 4, 2012. On the date of notification of the Complaint, the disputed domain name resolved to a website which inter alia contained a link to the sub domain . As of the date of this decision, the website shows the following: “Fuck Tim Kuik! “www.B”. K. We recommend K for your Piratebay access!”. 5. Parties’ Contentions A. Complainant
The Complainant has invoked the Trademark.
The Complainant has insofar as relevant for this UDRP decision stated the following.
The disputed domain name is identical to the Trademark.
BREIN, in its own name for the benefit of its affiliated rights holders, is actively involved inter alia in litigation against websites and services that infringe copyrights and neighboring rights. As director of BREIN since eleven years, the Complainant is seen in the Netherlands as the personification of the fight against piracy of music, films, games, etc.
The Complainant is not aware that any other person or legal entity has any trademark rights associated with the disputed domain name. There is no evidence that the disputed domain name is used or that demonstrable preparations are made in connection with a bona fide offering of goods or services by the Respondent. The disputed domain name is only being used to make the website The Pirate Bay available via the sub domain . The Pirate Bay is the largest and best known “BitTorrent” website in the world and has been subject of litigation to which BREIN was a party.
The Complainant claims that the disputed domain name is not actively being used by the Respondent as only the sub domain is active.
The Complainant stresses that the overall context of the Respondent’s behavior constitutes registration and use in bad faith. The Complainant in particular refers to the use of the privacy shield employed, and (in summary) the fact that the disputed domain name was only registered for the sub domain which was used for an illegal reverse proxy to an illegal website. The Respondent must have had full knowledge of the Complainant’s rights and has registered and used the disputed domain name with the intent to hold the disputed domain name for perhaps illegal services and in the meantime misleading Internet users. B. Respondent
The Respondent has insofar as relevant for this UDRP decision indicated the following.
The disputed domain name is technically not identical to the Trademark as the Trademark does not include the generic Top Level Domain (gTLD) “.org”.
The Respondent uses the disputed domain name for different projects, including a platform for victims of the Complainant and BREIN. The Respondent considers himself a victim of BREIN as BREIN is stalking the Respondent and disclosing to the public full personal details of the Respondent. The Respondent is experiencing social problems as a result of this and has serious sleeping disorders.
The website to which the sub domain resolves doesn’t actually provide an exact copy of The Pirate Bay website. It has a different source, but it might be used by people to circumvent the blocking measures that prevent people from using the original The Pirate Bay website.
Use of a privacy shield does not constitute bad faith. The Respondent refers to the fact that the Complainant has not revealed his home address but has chosen domicile at the offices of BREIN.
The sub domain is a legitimate service. The disputed domain name has not been registered and is not being used in bad faith. The Respondent argues that he makes a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue and quotes the circumstances as mentioned in paragraph 4(b) of the Policy.
The disputed domain name is registered as a matter of free speech for people who believe they are victims of the Complainant and/or BREIN.
Finally, the Respondent has stated that he considers the decisions under the UDRP to be biased and has suggested to the Panel in case a transfer would be ordered to ask the Registrar to cooperate in disabling the name servers after a period of three months and freeze domain name transfers in order for the users to find the new location and for the private data to never reach the Complainant. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Trademark.
The disputed domain name includes the Trademark in its entirety. The Respondent has, however, argued that the disputed domain name is technically not identical to the Trademark as the Trademark does not include the gTLD “.org”.
This argument, however, misses relevance under UDRP case law. As was established in many previous UDRP decisions (see A.P. Møller v. Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457), the Top-Level suffix (which here is the “.org” gTLD) does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar to a complainant’s trademark or service mark.
For the foregoing reasons, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production therefore shifts to the Respondent to show that he has such rights or legitimate interests.
The Respondent alleges to use the disputed domain name for a criticism site in relation to the Complainant and/or BREIN and has indicated that the sub domain provides an exact copy of The Pirate Bay website, being the subject of litigation between BREIN and certain Dutch access providers. According to the Respondent, the copy has a different source but might be used by people to circumvent the blocking measures that prevent people from using the original The Pirate Bay website.
A key issue is therefore whether the disputed domain name is used for a genuine criticism site, and, if so, whether in the circumstances of the present case such a site can generate rights or legitimate interests under the Policy.
The Panel notes that the record of the present case presents a somewhat unusual picture. The sub domain was used to provide access to a copy of the website of The Pirate Bay, whereas the disputed domain name resolved to a website which, at the date of notification of the Complaint, did not express any criticism in relation to the Complainant and/or BREIN, except perhaps, indirectly, for the link to the sub domain. However that may be, the Panel acknowledges the possibility that the disputed domain name was registered for the purpose of creating such sub domain, which in turn was used for a copy of The Pirate Bay. In this regard, the Panel notes that the legitimacy of the website of The Pirate Bay is clearly a topic on which the Complainant and the Respondent strongly disagree.
To the extent that the Respondent’s conduct with regard to the disputed domain name must be considered as criticism, the Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.4.
It has been accepted by some UDRP panelists, with which this Panel agrees, that the right to criticize does not necessarily extend to registering and using a domain name that is identical to the complainant’s trademark, where a respondent is using the trademark alone (i.e., without any clarifying term(s)) as the domain name.
In connection with this view, the Panel refers inter alia to Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763, ; Triodos Bank NV v. Ashley Dobbs,WIPO Case No. D2002-0776, ; 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, ; Kirkland & Ellis LLP v. DefaultD, American Distribution Systems, Inc.,WIPO Case No. D2004-0136, ; 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461, ; Hoteles Turísticos Unidos S.A., HOTUSA v. Jomar Technologies,WIPO Case No. D2008-0136, ; Aspis Liv Försäkrings AB v. Neon Network, LLC,WIPO Case No. D2008-0387, ; The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No. D2009-0022, ; and Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416, .
This Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name for purposes of the Policy.
Therefore, the Panel finds that the second element of paragraph 4(a) of the Policy has been met. 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”.
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.
As noted in section 6.B above, this Panel does not find a right or legitimate interest on the part of the Respondent in the circumstances of this case. This Panel furthermore notes that the Respondent selected a domain name which does not correspond to his own name and which the Respondent evidently was aware was identical to the name of the Complainant, which has been registered as a trademark. In doing so, 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 the disputed domain name would “catch by surprise” visitors intending to reach the Complainant’s website. It is also clear to the Panel that the Respondent intentionally used the disputed domain name to divert Internet users to the copy of The Pirate Bay website. In the Panel’s view, the consequence is that the Respondent’s actions are tainted. The Panel refers to Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416, .
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
Therefore, the third element of paragraph 4(a) of the Policy has also been met. 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 name be transferred to the Complainant.
Willem J.H. Leppink
Sole Panelist
Date: November 13, 2012
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