The Complainant is Alsace Croisieres SA of Strasbourg, France, represented by Pascal Reynaud, France.
The Respondent is John Livingstone / Write Place Publications Inc. of Carlsbad, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 2013 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 November 29, 2013.
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 December 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2013. The Response was filed with the Center on December 16, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 3, 2014. 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 French company that specialises in river cruises on European waterways. It was founded in 1976 and currently employs almost 1,200 people with annual sales of approximately EUR 127 million.
The Complainant has held trademarks for the word mark CROSI-EUROPE (the “CROSI Mark”) since at least 2007 in Europe. It has also registered and used the domain name since 1998.
The Domain Name was created on June 26, 2013. It currently resolves to a website (the “Respondent’s Website”) containing a number of pages expressing criticism of the Complainant. The language of the website is English. The Respondent’s Website contains a litany of criticisms of the Complainant and invites other customers of the Complainant to share their stories. It does not contain any advertising and, at the bottom of the first page, contains a disclaimer that the website is not associated with the Complainant and provides links to the Complainant’s official sites. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s CROSI Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the CROSI Mark having registered it since June 27, 2007.
The Domain Name consists of the CROSI Mark in its entirety with the addition of the word “sucks”. There are a number of previous UDRP panels that have recognised that the inclusion of a complainant’s trade mark in its entirety, even when accompanied by “sucks” is sufficient to find confusing similarity. This is especially the case where a majority of the complainant’s customers are French or non-English-speaking.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent’s site does not contain any genuine noncommercial criticism for the French, English or Spanish parts of the Respondent’s Website. In particular, the fact that the Respondent's website contains very little content in French or Spanish means that it is not noncommercial criticism.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that makes serious accusations on its website in French and does not attempt to clarify or explain those actions. The Respondent is using the Domain Name to misrepresent to the average Internet user that it is owned or operated by the Complainant. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent states that the Complainant should not succeed in its applications for the following reasons:
a) The Domain Name is not confusingly similar because there is no risk that customers will be confused by the Domain Name. It is clear from the Domain Name and the content of the Respondent’s Website that it leads to a gripe site.
b) The Complainant's customers are sophisticated and are unlikely to think that the Respondent is associated with the Complainant.
c) The only use of the trade mark by the Respondent is to identify the object of the criticism.
In summary, the Respondent’s use of the Domain Name is for genuine, noncommercial criticism. There is no advertising on the Respondent’s site. There is no attempt to misleadingly divert consumers, and there has been no attempt to sell the Domain Name or commercialise the Domain Name in any way. 6. Discussion and Findings A. Identical or Confusingly Similar
Given the Panel’s finding below that the Respondent has rights or legitimate interests in the Domain Name, it is not necessary to make a finding under this element. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”
The Panel finds that the Respondent has rights or legitimate Interests in the Domain Name because it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel is aware of the diversity of opinion expressed as to whether rights or legitimate interests arise for criticism sites as expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Firstly, it is noted that there are many UDRP decisions where the respondent argues that the subject domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage. This does not appear to be the case in the present proceeding. There are no advertisements on the Respondent’s Website, there is no evidence that the Respondent is a competitor of the Complainant, nor is there any evidence that the Respondent has operated this website for any commercial purpose.
Secondly, prior UDRP panels have noted that the 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. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., ) as that may be understood by Internet users as impersonating the trademark owner (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, paragraph 2.4).
In the present proceeding, the Respondent is operating a genuine, noncommercial criticism website that operates from a domain name that contains an appendage (“sucks”) that, as noted in the Response, has become well-known as an identifier of criticism sites. The Panel finds that the Respondent, in registering the Domain Name using an appendage that indicates that it is critical of the Complainant, is not attempting to impersonate the Complainant or misleadingly divert consumers. Rather, the Respondent is using the CROSI Mark in the Domain Name to identify the Complainant for the purpose of operating a website that criticises the Complainant. Such use is generally described as “fair use” of a trade mark.
The Complainant’s arguments, if taken to their logical conclusion, would suggest that any criticism website, regardless of its noncommercial nature, should be prohibited from using the name of the subject of the criticism in its domain name, even if it is apparent from the domain name itself (as it is in this case) that the subject matter of the website connected with the domain name is likely to be critical of the Complainant. The Panel does not take such an extreme view of the Policy.
The Complainant’s arguments that the Respondent lacks rights or legitimate interests appear to rest on the basis that the Respondent’s Website is primarily in English and the Complainant’s customer base is primarily non-English-speaking. This argument is irrelevant. The fact that the Respondent has chosen to create a noncommercial criticism website in English, instead of another language used by the Complainant’s customers, does not mean that such a website is somehow illegitimate or improper for the purposes of the Policy.
Finally, the argument that the Respondent is tarnishing the CROSI Mark is unpersuasive. The mere fact that the Respondent’s Website uses the words “Corrupt Deceitful Liars” to describe the Complainant does not prove that tarnishment has occurred. Fair-use criticism does not necessarily constitute tarnishment, and in cases such as this is not prohibited by the Policy. Claims based on commercial libel must be brought in other legal venues. (See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014, and Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
This is a case where the Respondent has registered a website for the purpose of criticising the Complainant. It has done so using the Complainant’s name fairly, as an identifier of the Complainant. There is no evidence that the Respondent has attempted to pass itself off as the Complainant or misleadingly divert customers of the Complainant. The Panel adopts the statement in Howard Jarvis Taxpayers Association v. Paul McCauley, Supra, that “The Policy is designed to prevent abusive cybersquatting, but ... it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.”
Therefore, the Panel finds that the Respondent has rights and legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Given the Panel’s finding that the Respondent has rights or legitimate interests in the Domain Name, it is not necessary to make a finding under this element. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: January 11, 2014
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