The Complainant is Soluto Ltd. of Tel Aviv, Israel, represented by Boaz Shetzer, Israel.
The Respondent is Lorenzo Toledo of Gibraltar, Overseas Territory of the United Kingdom. 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 December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 18, 2012, the Registrar 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 December 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2013.
The Center appointed Torsten Bettinger as the sole panelist in this matter on January 30, 2013. 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 manufacturer and distributor of consumer software solutions, including the device-management program marketed under the brand Soluto. The Soluto software provides users with an online mechanism which enables the remote support and management of PC devices over the web. The Complainant’s company began as a start-up in 2008, and the Complainant was granted a CTM registration for the SOLUTO word mark in May 2012.
The disputed domain names were both registered in July of the same year. The domain name currently connects to a Wordpress page, which appears to be awaiting content input. The domain has been used in connection with a “gripe” site, whereon the Respondent has posted a number of mini-essay style comments, expressing his displeasure and frustration with the Complainant’s product. There are no pay-per-click links or other forms of advertising on these websites, either on the main landing pages or on pages connected via the various headers.
In November of 2012, the Complainant sent the Respondent a cease-and-desist letter, requesting him to refrain from using the disputed domain names and offering to purchase them for a sum equal to the reasonable costs associated with their registration and transfer. The Respondent replied one day later, stating in part:
“[Y]ou cant be serious...Your “trade marked” software crashed my new laptop (it cost me $1600 and HOURS of frustration). apparently, many others suffered and suffering from your BS software. in the last weeks i get dozens of comments from frustrated users of your “anti-frustrating software”. come on, be serious...”
The Complainant replied, offering to fix any technical problems the Respondent was experiencing with the software, and questioned him as to what login details and email address he had used to register for the service. The Complainant indicated that it had been unable to locate a client account corresponding to the WhoIs data on record. To this, the Respondent replied:
“[I] already lost hours with your support. not interested EVER in using soluto. what is your offer?”
After several additional exchanges, the Complainant again renewed its offer to purchase the domain names for the Respondent’s reasonable out-of-pocket costs. According to the Complaint, this offer was rejected, but the submitted evidence does not show that any reply was received from the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant alleges that each of the elements specified in paragraph 4(a) of the Policy is satisfied.
With regard to the first element, the Complainant cites to the long tradition of UDRP case law, holding that the inclusion of a pejorative word in a domain name does not sufficiently distinguish said domain name from the included trademark, and that Internet users less familiar with the English language may not understand the additional word as a derogatory term.
Concerning the second element, the Complainant indicates that the Respondent is not affiliated with or endorsed by the Complainant in any manner, that the Respondent has not been authorized to register or use any domain names containing the SOLUTO mark, that the Respondent is not known by a name corresponding to either of the disputed domain names, and that the Respondent does not provide any services to the Complainant’s company. The Complainant alleges that these points are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant also states that the Respondent’s use of the disputed domain name for criticism purposes is pretextual, and further alleges that the use of any domain name which may be deemed confusingly similar to a trademark for free speech purposes is barred under the Policy. Finally, with regard to the “www.” website, the Complainant notes that passive holding of a domain name is not consistent with a finding of rights or legitimate interests.
With regard to the bad faith element of the Policy, the Complainant states that “other evidence and Respondent’s own actions suggest that the domains were registered primarily to harass Complainant and extract a cash settlement.” Further, the Complainant alleges that the Respondent’s “actions in demanding an excessive monetary sum to transfer the domains provides further evidence of bad faith under Paragraph 4(a)(iii)” of the Policy. The Complainant claims that it is clear the Respondent “requested an amount in the
neighborhood of $1,600” in return for the domain names, and states that the Respondent refused its offer to purchase the domain names in exchange for reimbursement of his reasonable out-of-pocket costs.
Additionally, the Complainant states that it was unable to find any record of the Respondent’s email or name in its client database, and therefore draws the conclusions that: i) the Respondent either provided false contact details in the registration of their software services, which the Complainant alleges amounts to bad faith under the Policy, or ii) the Respondent had not actually used their services, and therefore the complaints lodged by the Respondent on the disputed domain names are invalid. The Complainant also alleges that the Respondent provided inaccurate WhoIs information, as FedEx was unable to deliver the paper copy of the Complainant’s cease-and-desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test for determining confusing similarity is confined to a comparison of the trademark and the textual string of the disputed domain name, and it has long been established that the top-level identifier, such as “.com,” is generally held to be irrelevant under an evaluation of the first element of the Policy.
It is also well-established that the addition of a generic term or, in this case, pejorative word to a complainant’s trademark will not render a disputed domain name distinguishable from the included mark. Although a negative or derogatory word might, in the minds of some Internet users, serve as an indicator that the domain name may not be owned or authorized by the Complainant, there is a significant risk that some Internet visitors might not be familiar with the language in which the word is written, or may not appreciate the colloquial meaning of a particular term. Therefore, it has become the “consensus view” amongst UDRP panelists that the addition of a pejorative word or phrase to a complainant’s mark will not abrogate confusing similarity under the first element of the Policy. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2.0 (the “WIPO Overview 2.0”), paragraph 1.3, and Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
The Panel thus finds that the disputed domain names and are confusingly similar to the Complainant’s SOLUTO mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Given the Panel’s findings with respect to the third element of the Policy, it is unnecessary to reach a conclusion with regard to this issue. C. Registered and Used in Bad Faith
The Complainant has alleged that the Respondent’s “www.” website does not offer genuine criticism, and has claimed that the content posted thereon is pretextual in nature, designed to provide the Respondent with an opportunity to demand large sums of money from the Complainant. Despite these broad statements, however, the Complainant has provided no concrete evidence to support these claims. From the evidence provided, it was the Complainant who first raised the issue of purchasing the disputed domain name, and the Panel can find no inference that the Respondent has attempted to demand “an excessive monetary sum” for the disputed domain name. A complainant may not initiate settlement discussions with a respondent and then allege that the respondent has attempted to sell the disputed domain name in breach of the Policy.
As to the Complainant’s allegations regarding the content of the “www.” website, the Complainant offered no explanation as to why it felt the Respondent’s postings were pretextual, and offered no evidence in support of these claims. From the Panel’s review of the evidence and without expressing any view on the merits or otherwise of, the Respondent’s critical comments on the website, these do seem to be at least cogent, well-organized, and logically written. Furthermore, there are no advertisements or commercial links displayed on either of the Respondent’s websites, and therefore it seems apparent that the Respondent was not attempting to utilize the disputed domain names for online monetization. Since there is no evidence of the Respondent’s attempt to ransom the disputed domain names, it is unclear to the Panel exactly what purpose the Respondent might have in creating a phony criticism site. Moreover, the Respondent’s website appears, from the evidence available in the case file, likely to be legitimate.
The Complainant further alleges that the fact it cannot locate a login for the Respondent, and that therefore the Respondent may have breached the terms and conditions of use for their products, constitutes bad faith under the Policy. While the Panel is sensitive to the Complainant’s concerns, and indeed there might (given a full investigation of the facts, a discovery process, etc.) be sufficient grounds for the Complainant to bring a contractual suit (or seek any contractually-specified remedies available under the terms of service), these questions are outside the scope of the UDRP. The Policy is designed to address clear-cut cases of cybersquatting and, particularly in light of the abbreviated pleadings proscribed by the Policy and Rules, cannot address issues more properly suited to national courts. It may also be possible that the Complainant would be entitled to seek redress in tort under the laws of Israel or Gibraltar, but again, these are not issues to be decided here.
Similarly, the Complainant suggests that since it cannot locate a login for the Respondent, and he was not forthcoming with the information, it may be possible that the Respondent has never actually used the Complainant’s services. This argument is entirely speculative. It is possible that the Respondent shares a computer with a roommate or a spouse who registered the service, or perhaps he used a nickname and alternate email address. The Respondent’s comments about the product, and his documented personal experiences with the software, seem quite detailed and thorough, suggesting to the Panel that it is highly likely that the Respondent is actually familiar with the workings of the Complainant’s software.
The Panel notes that there are, essentially, three prevailing views regarding the question of a respondent’s rights to register and use domain names containing third party trademarks for free-speech and criticism purposes. As crystallized in the WIPO Overview 2.0, they are commonly referred to as “view 1,” “view 2” and a totality of the circumstances approach. Of these interpretations, view 1 follows the more restrictive line, indicating that a respondent may never register a domain name containing a complainant’s mark for the purposes of criticism, claiming that many other domain names would serve a similar purpose. This approach is often adopted in cases where a respondent has registered a domain name in the format of .
The Complainant argues that several recent decisions under the Policy appear to have followed the view 1 approach, and claims therefore that any registration of a domain name which is confusingly similar to a complainant’s trademark is in violation of the Policy and constitutes evidence of bad faith registration and use. The Panel is aware of these decisions, and, for the sake of completeness, would address the Complainant’s concerns. In each of these prior cases, additional evidence of bad faith activity or intent on the part of the relevant respondents was clearly demonstrated. In the case of Dar Al-Arkan Real Estate Development Company v. AnonymousSpeech AnonymousSpeech,WIPO Case No. D2012-0692, the respondent had stolen critical files and information from the complainant, which was a significant factor in the panel’s decision. To quote, “…the facts present an even more egregious situation, in that the Respondent has also made available on its website a wide array of confidential commercially sensitive documents which have been purloined from the Complainant.” In Streamtel Corporation SRL v. Ton Kamminga,WIPO Case No. D2010-0423, the respondent was a disgruntled former employee of the complainant, utilizing the domain name as leverage to receive what it believed was far compensation for prior wrongs. And in MIG Banque SA (MIG Bank Ltd) v. Akram Mohammad Khalid,WIPO Case No. D2011-0159, there was no evidence to suggest that the respondent was using the domain name to lodge legitimate criticism, as the website provided little information or detail about the alleged wrongs.
With regard to the second line of cases, referred to as view 2, panels following this approach have held that a domain name containing a trademark and a pejorative term (e.g. - ) may be a permissible action where the respondent is making a legitimate, noncommercial or fair use of the domain name to express free speech criticism of the complainant’s goods or services.
Finally, an additional group of panels has elected to take a “totality of the circumstances” approach to “sucks” cases, evaluating all of the available evidence. Some factors commonly considered include whether: (i) the domain names have been registered and used genuinely for the purpose of criticizing the mark holder, and the registrant believes the criticism to be well-founded, (ii) the domain name lacks mechanisms for commercial gain; (iii) it would be apparent to Internet visitors that the website is not operated by the mark holder; (iv) the respondent has not registered large batches of domain names which would be attractive to the mark holder; (v) where appropriate, a link is provided to the relevant trademark owner's website; and (vi) if there is a likelihood that emails intended for the complainant might be submitted through to the disputed domain name, senders are alerted in an appropriate way that their emails have been misaddressed. See the WIPO Overview 2.0, paragraph 2.4.
Given the disparate factors often present in “sucks” cases, and the widely variant fact patterns which often give rise to them, the Panel finds this third approach most appropriate. In the present case, the Respondent has made no commercial use of the disputed domain names, and there is no evidence to suggest that the Respondent had plans to use the disputed domain names as leverage or collateral in any bargaining between the parties. The domain name appears to have been registered for expressing, and has been used to provide, criticism content. In the Panel’s view, given the completely different layouts of the Complainant’s and Respondent’s websites, and the fact that as soon as visitors access the Respondent’s site they are greeted with a bold line of text stating: “Marketed as anti-frustrating software but actually adds frustration,”, it is highly unlikely that Internet users reaching the page would believe the website of the Respondent is sponsored or endorsed by the Complainant. The Respondent has registered only two domains, and they both include pejorative terms that are unlikely to be attractive domain names for use by the Complainant. A link to the Complainant’s website is not included, but, since there is no way to submit email correspondence through the Respondent’s site, there is also no likelihood that messages intended for the Complainant could be misdirected. Moreover, the disputed domain names are not of the format , and accordingly although they may be deemed confusingly similar for the purposes of the Policy, the risk of impersonation is dramatically limited.
After evaluating all of the facts and circumstances, and the limited evidence available on the record, the Panel finds insufficient support for the argument that the Respondent registered and used the domain name in bad faith. The facts are similar to those raised in TUI AG v. Andrej Gajdar,WIPO Case No. D2009-1371, and the Panel concurs with the analysis expressed in the decision. Where, as here, the Respondent has used the disputed domain name to provide noncommercial, free-speech content, and the Complainant has been unable to provide any evidence demonstrating that the Respondent intended to resell the domain name or that the content is posted on a merely pretextual basis, these actions are not consistent with a finding of bad faith registration and use.
With regard to the domain name, the Complainant states that passive holding of a domain name containing the Complainant’s mark is evidence of bad faith registration and use. Although in some cases, passive holding of a domain name may provide evidence of bad faith activity, it is necessary in every case to evaluate the issue in light of all of the relevant facts and circumstances. Some of these key issues include whether: 1) the Complainant’s mark has a strong reputation and is widely known, 2) there is any evidence of the Respondent’s use of the domain name in connection with a contemplated good-faith activity, 3) the Respondent has taken active steps to conceal its identity or provided false contact details, and 4) whether it is impossible to conceive of any good faith use of the domain name by the Respondent which would not infringe the Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In this case, then, the Complainant has provided no evidence to demonstrate that its mark has a strong reputation or is widely known. The only evidence supplied to demonstrate the scope of its market penetration are some illustrated documents apparently taken from the company’s blog posts, which provide almost no concrete information. Although the Respondent has elected not to reply to the Complaint, and thus there is no absolute proof of the Respondent’s plans for the domain name, the Panel does not find it outside the realm of possibility that this domain name would be used in the same or similar manner to the Respondent’s other domain name , for the publication of a noncommercial criticism site. The Complainant has certainly provided no information or evidence to suggest otherwise. With regard to the Respondent’s contact details, the Complainant states that the Respondent’s physical address (as shown in the WhoIs records) is false, but it is apparent from the parties’ communications that the Respondent’s email address was functional, and that he checks it on a regular basis. Finally, and as touched on above, the Panel finds it quite conceivable that the Respondent could elect to use this website in connection with a good-faith undertaking – namely, the development of a noncommercial commentary site. Similarly, see Applied Systems, Inc. v. Atlantic Insurors, Inc,WIPO Case No. D2012-2167.
In reaching the above conclusions, the Panel notes that the information available in the present record is sorely lacking. Many aspects of the case are unclear, including why the Respondent elected not to reply in the present action. Had the Complainant provided substantiating evidence to support its claims, it is possible that additional facts may have come to light. As it stands, however, the Panel finds that there are insufficient grounds to conclude that the Respondent registered or used the disputed domain names in bad faith, and accordingly, the Complaint must fail. 7. Decision
For the foregoing reasons, the Complaint is denied.
Torsten Bettinger
Sole Panelist
Date: February 14, 2013
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