Complainant is Veritas Investments, Inc. of San Francisco, California, United States of America, represented by Harvey Siskind LLP, United States of America.
Respondent is Private Registrant of Brea, California / Jamie Campbell of San Francisco, California, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with New Dream Network, LLC dba DreamH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2014. On January 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 18, 2014. The Response was filed with the Center on February 18, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 25, 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
Complainant is an owner and operator of multifamily mixed-use properties in San Francisco and the Bay Area.
The Domain Name was registered on May 13, 2013. 5. Parties’ Contentions A. Complainant
Complainant states that Respondent is a tenant in one of Complainant’s San Francisco multifamily residential buildings. Since spring 2013 Complainant has had an ongoing dispute with Respondent after discovering that Respondent’s unit contains several allegedly illegal, unpermitted, and unsafe structures. When Complainant first learned of these structures—which include a roof deck and two interior rooms—it engaged two structural engineers to investigate them. According to Complainant, the engineers’ reports revealed that the structures failed San Francisco building code requirements and lacked the necessary structural support. As a result, Complainant is obliged to remove them. Although Complainant has negotiated with Respondent to compensate him for this work, to-date the parties have been unable to reach a resolution. In response, Respondent filed a tenant petition against Complainant before the San Francisco Rent Board in July 2013.
Complainant alleges that to apply pressure on Complainant outside of the Rent Board proceeding, Respondent has taken actions against Complainant that have no bearing on the merits of Respondent’s claim. When the dispute began escalating in May 2013, Respondent anonymously registered the Domain Name. The following day, Respondent met in person with the property manager of a Complainant-affiliate to discuss his demands. Complainant alleges that Respondent advised the manager that if Complainant did not resolve the issue, “I will work on driving up the costs at all opportunities for you and building ownership.” Although initially the Domain Name did not resolve to a functional website, Complainant states that that changed when Complainant would not meet Respondent’s settlement demands. Respondent’s San Francisco Rent Board proceeding advanced to a final hearing on November 15, 2013. Three days later, on November 18, Complainant learned of the existence of the Domain Name and linked website from a business partner.
According to Complainant, Respondent created a website designed to tarnish the name and goodwill of Complainant. The website comprises a single screen, titled “Veritas Investments, Inc.” Directly beneath the title, Respondent placed a photo of Yat-Pang Au, Complainant’s CEO. At the bottom of the screen is a listing of the San Francisco contact information for Complainant and its affiliates. Complainant states these details have the effect of implying that the site is somehow official. Indeed, the individual who first alerted Complainant to the site was confused about the source, believing that it was Complainant’s website. The remainder of the website is composed of static headlines and links, each of which falsely insinuates that Complainant or its leadership is under investigation for criminal activity. The site also invites individuals to “Join Us” by sending an e-mail to “[ … ]@.” The implication is that a non-profit watchdog organization, “Spotlight on Veritas,” exists and is actively monitoring Complainant for illicit activity. Complainant claims that no such entity exists.
Complainant states that the photograph of Yat-Pang Au on the site was a copyrighted work belonging to Complainant, and its use constituted copyright infringement. Accordingly, on November 22, 2013, Complainant notified Respondent’s registrar, DreamHost, of the infringement and demanded that it take down the copyrighted material pursuant to the Digital Millennium Copyright Act. DreamHost complied on December 11, 2013, removing the photograph. Even with that removal, Complainant urges that Respondent’s website remains confusing and deceptive.
When Complainant learned of the Domain Name and its linked website and initiated proceedings to challenge it, Respondent confirmed that he created and maintains it. On January 2, 2014, Respondent sent Complainant email correspondence in which he acknowledged ownership of the Domain Name and claimed that it is a “legitimate, non-commercial, fair-use” website. Complainant alleges that Respondent made clear that the website was only the beginning of his efforts to attack Complainant. Writing from the email address “[…]@”, Respondent allegedly asserted that further attacks would continue unless he obtained a favorable resolution in the dispute. Respondent provided a deadline of January 8, 2014 to respond, threatening that he would take other measures after that six-day deadline.
(i) Identical or confusingly similar: Complainant maintains that it has spent significant resources to promote and advertise its VERITAS INVESTMENTS trademark. The name is used in connection with Complainant’s San Francisco real property investments. Complainant states its trademark is known not only in Northern California, but also nationally and internationally among investors. Complainant’s chief executive officer, Yat-Pang Au, is a regular speaker at conferences providing commentary on issues in the real estate industry and promotes Complainant’s name. Complainant also states that since 2007, it has owned and operated the domain name and uses this domain name as the central site for its web presence. The website provides details regarding Complainant’s identity, services, and businesses, and serves as Complainant’s online presence for its investors.
Complainant states that the Domain Name is identical to Complaint’s VERITAS INVESTMENTS mark. It uses Complainant’s mark in its entirety, followed only by the generic Top Level Domain “.net.” Panel decisions are clear that the addition of a Top Level Domain such as “.com,” “.net,” or “.org” does not render the name meaningfully different, since Internet users understand that Top Level Domains serve a technical purpose. Similarly, the lack of a space or punctuation between word marks does not significantly change the name. Further, Complainant states the site has actually created confusion to one of Complainant’sbusiness contacts. Thus, there is no question that the Domain Name is identical and confusing.
(ii) Rights or legitimate interests: Complainant claims that Respondent has no rights or legitimate interests in the Domain Name. According to Complainant, under paragraph 4(c) of the Policy, Respondent: (i) is not using the Domain Name or its corresponding name in connection with a bona fide offering of goods or services; (ii) is not commonly known by the name “Veritas Investments”; and (iii) is not making any legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark.
Complainant contends that although Respondent in his January 2, 2013 email claims that he is making noncommercial fair use of the Domain Name to run a legitimate complaint site, this argument is false. The Policy in paragraph 4(c)(iii) emphasizes that any legitimate use must be “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Panel decisions have debated the precise balance between protecting trademark rights and allowing free speech for “gripe sites” that utilize a complainant’s trademark. Complainant states that this debate, however, is generally limited to cases in which the trademark is used with a pejorative term, e.g., “.” With “sucks” domains, panels sometimes conclude that the use is legitimate and sometimes conclude that it is illegitimate. But where, as here, the Domain Name is identical to Complainant’s mark, Complainant explains that panel decisions consistently deem the use illegitimate and order the transfer of the domain names at issue.
Complainant further argues that even in cases that allow for the possibility that an identical domain name could qualify as a legitimate use, panels seek to determine whether the site is making bona fide criticism. Factors considered include whether: (i) the criticism is well founded and genuine; (ii) it is immediately apparent to visitors that the domain name is not operated by the owner of the mark; (iii) a prominent link is provided to the relevant trademark owner's website; and (iv) the respondent has used a domain name reasonably suitable for criticism.
Here, Complainant argues that Respondent’s site would fail such analysis. First, the alleged criticism is not genuine. Although Respondent claims to have a legitimate tenant complaint against Complainant, he does not actually assert any such complaint on his website. Searching instead for something that would inflict more serious injury on Complainant, Respondent has chosen to fabricate non-genuine complaints. For example, by listing their contact details on the website, Respondent implies that authorities such as the California Attorney General and San Francisco City Attorney are investigating Complainant for “business fraud” or “real estate fraud.” These claims are false.
Further, Complainant alleges that Respondent has taken steps to conceal his actual criticisms of Complaint on the website. Unlike true “gripe” sites, Respondent’s page contains no gripes. He says nothing about his dispute with Complainant, and provides no comment boards, discussion forums, news updates, customer reviews, or other features to allow visitors to voice their complaints. According to Complainant, the fundamental purpose of the site is to deceive, not to gripe. Respondent’s goal of hurting Complainant is “driving up the costs at all opportunities” for Complainant and damaging the company’s “ability to obtain loans and value for the properties.” Revealing that he is motivated by a rent dispute would undermine this goal. Similarly, Respondent registered and maintains the Domain Name anonymously precisely because he does not want the public to know the true nature of his dispute with Complainant. Complainant relies on these allegations to underscore that Respondent’s alleged criticism is not genuine.
Further, Complainant maintains that Respondent’s website contains no clear indication that it is unaffiliated with Complainant, nor a disclaimer. To the contrary, Respondent’s site design suggests that the site is somehow “official,” including using Complainant’s name as the title, using Complainant’s contact information at the page footer, and (until recently) featuring an official photo of Complainant’s CEO. Respondent’s site design has created confusion for a business contact of Complainant. Moreover, Respondent has not availed himself of alternative names for the site that would be suitable for legitimate criticism. Respondent has anonymously registered the domain name referenced on his website. That domain would be a plausible name for a criticism site to address Respondent’s claimed concerns, but Respondent has not used it, instead using the Domain Nameto allegedly apply pressure during Respondent’s ongoing dispute with Complainant. Panel decisions make clear that this type of use is illegitimate. Respondent use of the Domain Name is not for genuine criticism; instead, it is designed to mislead and divert consumers, generate leverage in an ongoing property dispute, and tarnish Complainant’s mark.
Finally, Complainant states that Respondent’s site does not fall under any of the other categories of legitimate use identified in paragraph 4 of the Policy. Respondent has not, and cannot, make a showing of bona fide use in commerce, since the website offers no goods or services for sale. Complainant has never authorized or licensed Respondent to use the Veritas Investments name or mark. Further, Respondent is not commonly known by this name.
(iii) Registered and used in bad faith: Complainant asserts that Respondent has registered and has been using the Domain Name in bad faith. The Domain Name registration constitutes bad faith in several respects. First, Complainant contends it was registered primarily for the purpose of disrupting Complainant’s business and preventing Complainant from accurately reflecting its trademark online. As discussed above, Respondent’s unit contains unpermitted structures that are structurally unsound and must be destroyed, and Respondent is dissatisfied with Complainant’s proposed compensation for this work. In response, Respondent has allegedly embarked on a campaign of retribution against Complainant, not only through the lawful channel of a Rent Board proceeding, but also by attempting to confuse and deceive the public about Complainant through the Domain Name. Further, Respondent is attempting to hold the Domain Name as a “hostage” in the dispute with Complainant, expressly offering to “take down the website and drop plans for other initiatives” if Complainant will only resolve the dispute on Respondent’s terms. These acts are an effort to unfairly disrupt Complainant’s business.
Complainant asserts that Respondent is using the Domain Name in a vindictive and deceptive manner, aiming to inflict reputational damage on Complainant for a perceived customer service concern. Respondent has not changed the site in any respect since Complainant began monitoring it on November 18, 2013. It appears that the site is static, suggesting that the information on the website is never intended to be updated. This too supports a finding of bad faith.
Finally, Complainant argues that Respondent’s site seeks commercial gain based on confusion. Respondent is using a domain name that is identical to Complainant’s trademark that has actually created confusion. Where, as here, a respondent uses an identical domain name in the midst of ongoing dispute to obtain settlement leverage, that act constitutes a bad faith effort to obtain financial gain. Thus, Respondent’s behavior here constitutes bad faith in this respect as well. B. Respondent
Respondent states he registered the Domain Name on behalf of an organization called “Spotlight on Veritas.” Respondent claims that Spotlight on Veritas is a growing, volunteer-only, noncommercial civic organization based in San Francisco. It is composed of tenants and former tenants of up to 100 residential rental properties owned and operated by Complainant, who are troubled by the allegedly questionable real estate practices and operations of Complainant and its subsidiaries, GreenTree Property Management Co. and Rent SF Now.
Respondent states that Spotlight on Veritas was formed in March 2012 after Rory Moore, a tenant in one of Complainant’s building complexes, died from injuries after falling through an allegedly rotten wooden staircase. The staircase was allegedly riddled with dry rot and repeated tenant requests for repairs had been ignored. Respondent, who lives in the same complex, states he was a friend of the deceased. Respondent further claims that after this tragedy, and after noticing that repairmen had only put a “new top” on the wooden step where the accident occurred without addressing dry rot problems in the remainder of the staircase, or in similar structures of the five buildings in the complex, tenants went to the San Francisco Building Inspections Department and the news media. They reported Rory Moore’s death and demanded that repairs be made. The media attention allegedly provoked the director of the San Francisco Building Inspections Department to visit the property, accompanied by television crews. Complainant was cited for building violations and forced to make repairs. Complainant also made selective repairs elsewhere in the five-building complex and repainted the structures, but refused to remove dry rot and make necessary repairs at Respondent’s unit.
Respondent claims the tenants involved in the television activities became targets of harassment by Complainant and its subsidiary, GreenTree. Requests for repairs were allegedly ignored. In the past year, Respondent alleges that tenant harassment and eviction activities have accelerated across all of Complainant’s estimated 100-plus San Francisco residential rental properties.
Respondent asserts that the specific event that influenced a group of tenants to form “Spotlight on Veritas” was another dry rot incident, at the same apartment complex where Rory Moore died. Workers who repaired the staircases told tenants that one of the five buildings in the Nob Hill apartment complex “looks like it has major dry rot problems” that could threaten the stability of the structure and the safety of building tenants. The workers were allegedly told not to make repairs and not to report the possible hazard because the owner was over-budget and had no more money to spend on repairs. Tenants saw large holes in the sides of three rear walls which allegedly had not been repainted by Complainant because they are not visible to visitors, including prospective tenants or city building inspectors. When told about the holes, Complainant’s property manager purportedly called them inconsequential and made it clear that repairs would not be made. The newly formed Spotlight on Veritas organization reported the possible problem to the San Francisco Building Inspectors anonymously with accompanying photos, including pictures taken from the rooftops of other apartment buildings. The building inspectors found a number of suspicious areas requiring further investigation and ordered the outside plaster “skin” of the building removed. When the skin was removed, inspectors discovered rotten and missing boards, posts, beams, window frames, doors, foundations and structures affecting three different walls of the building, and immediately ordered repairs. Months later, the repairs are now almost complete.
Respondent states the organizers at Spotlight on Veritas discovered they could get results by making complaints to state and city agencies, and that they needed to spread the word to other tenants of Complainant facing similar issues. Hence, Respondent states that they built the website linked to the Domain Name. Respondent contends it is a legitimate noncommercial fair-use website intended as an informational public service, created by a volunteer, noncommercial organization of concerned citizens living in San Francisco. The purpose of the website is to shine a spotlight on allegedly questionable real estate practices and operations of Complainant and its subsidiaries, and to provide information as to where complaints may be filed with state and city agencies. The target audience is tenants and former tenants of Complainant as well as other concerned San Francisco citizens, especially persons who may not have the resources to hire lawyers.
According to Respondent, Complainant has made efforts to hide behind a shell company, “LSL Property Holdings B14 DE LLC,” to escape responsibility, liability and an investigation of criminal negligence by the City of San Francisco Attorney. Respondent asserts that Complainant’s secretive real estate company has even hid behind a password-protected website at “www.”.
Respondent states this is the second UDRP complaint that Complainant has filed involving the Domain Name. The first one,WIPO Case No. D2013-2199, was filed on December 18, 2013, a month earlier than the present case, and is now terminated. Respondent argues a side-by-side comparative reading of the two complaints and the two declarations by Complainant’s chief executive office are revealing. In each case, Respondent contends that Complainant has engaged in “character assignation” against a single individual: W. B. Coyle in the first case, Jamie Campbell as Respondent in the second case. According to Respondent, Complainant’s contention is that each of these individuals, acting alone, built the website at issue in an effort to coerce a “commercial gain” from Complainant. As to Complainant’s claim that this “gain” could come from a financial settlement from ongoing litigation or to strengthen the negotiating position for a profitable sale of the Domain Name, Respondent asserts these charges are unfounded. Respondent states that W.B. Coyle is not a member of Respondent’s organization nor is he in any way associated with it.
While Respondent acknowledges that he is involved in a dispute with Complainant, as are many tenant members of Spotlight on Veritas, he disputes Complainant’s charges. Respondent claims he is not trying to “obtain settlement leverage” or realize a “commercial gain” from Complainant. Respondent and his wife have twice turned down cash offers from Complainant to end the demands for repairs, to vacate their apartment, and to agree not to take legal or other action against Complainant. Respondent claims to have turned down (i) a USD 50,000 offer from Complainant’s attorney on July 22, 2013, seven days before the first San Francisco Rent Board hearing on July 29, 2013, and (ii) a USD 100,000 offer from the operations manager of Complainant’s property management subsidiary on August 14, 2013, two weeks after the Rent Board hearing. Respondent states he and his wife refused the two offers because they were not after money; instead, they want Complainant to fulfill its obligation as landlord to make necessary repairs to their residential unit and the building complex in which they live.
Respondent argues that Complainant fails to understand that the UDRP is not the proper place to bring a local landlord-tenant or business dispute.
(i) Identical or confusingly similar: Respondent asserts that Complainant fails to meet a minimum requirement of the Policy because there is no evidence that Complainant owns a trademark or service mark. For this reason alone, Respondent urges the Panel to dismiss this case.
Respondent explains that to prove its case under the UDRP, Complainant must provide evidence that it owns a trademark or service mark for the name “Veritas Investments”. According to Respondent, the Rules, paragraph 4(b), requires a complainant to provide “the original trademark or service mark certificate or a copy certified as correct by the issuing body.” Respondent observes there is no such certificate is in Complainant’s evidence. Further, a search of the database of the U.S. Patent and Trademark Office (“USPTO”) reveals that Complainant does not own and has not registered a trademark or service mark for its name.
Respondent also observes that the results of a Google search for the name “Veritas Investments” reveals that at least 13 other entities own or use the name, including at least four entities in the United States and several others located internationally. Thus, according to Respondent, if the Panel rules in favor of Complainant as a “start-up” San Francisco real estate company, it would create a sudden, de-facto pre-eminence in the use of the name that could have an adverse impact on the other companies that own or use the name.
Additionally, Respondent emphasizes that Complainant has not provided evidence that it owns and has a trademark or service mark in the form of a graphic representation (e.g., a “logo”) for its name. A search of the database of the USPTO reveals that Complainant does not own and has not registered a trademark or service mark in the form of a graphic representation. Further, a search of Google Imagesreveals that several of the other entities, which own or use the name, also own or use graphic representations or a logo with their names. Respondent alleges that the search also revealed that a logo Complainant uses is remarkably similar to (and possibly derivative of) the logos owned or used by Veritas Investments, Ltd. of Aukland, New Zealand and Veritas Investment GmbH of Frankfurt, Germany. Further, Respondent argues why, if Complainant’s supposedly has “over the years […] spent significant resources to promote and advertise its VERITAS INVESTMENTS mark,” does Complainant use two different logos, one on its website and a different one on its business cards?
Respondent agrees that the Domain Name is identical or similar not only to Complainant’s name, but also to the name of a number of others entities. However, Respondent contends there is no confusion once a viewer visits the websites linked to any of these domain names. Each website is different from the others. As to Complainant’s allegation that one individual landed on Respondent’s website while searching for Complainant and was confused, Respondent argues no evidence from this individual was presented in a signed declaration. Respondent urges that the only website that has confused viewers is Complainant’s website. Respondent refers to Complainant’s statement that it uses the domain name “as the central site for its web presence. The website provides details regarding Veritas’s identity, services and businesses. The address [...] is the company’s primary domain and serves as Veritas’s online presence for its investors.”
Respondent states that for several years, up until a couple of weeks before the Complaint was filed, Complainant’s website consisted only of a static home page with four photographs, the company name and logo, saying “Veritas” in a lower-case font, and one additional word: “login.” Complainant’s site was password-protected and confusing to viewers, including most likely the viewer mentioned in Complainant’s complaint. The website provided absolutely no information about Complainant and its services. Viewers who happened to land on Complainant’s site would have no idea what kind of company they were encountering.
(ii) Rights or legitimate interests: Respondent contends there are hundreds of domain names with various suffixes identical or similar to those of Complainant and Respondent available for sale and registration – it is a free market. Unless Complainant buys all the other names, Respondent claims it has just as much right as anyone else in the world to register a domain name and build a website. This is especially true because no one appears to have registered a trademark for the name “Veritas Investments”, which is a commonly used business name, not a unique, one-of-a-kind name like Coca-Cola. Respondent therefore believes it shares the same rights to register a domain name as the other above-referenced entities that have registered domain names including the words, “veritas” with “investment” or “investments”.
In addition, Respondent states it has provided evidence, as described above, that it is making legitimate, noncommercial, fair-use of the Domain Name, without intent for commercial gain, without misleadingly trying to divert consumers from Complainant’s website or any other website with identical or similar domain names, and without intentionally tarnishing any presently existing registered trademark or service mark.
(iii) Registered and used in bad faith: Respondent denies that he was trying to “obtain settlement leverage” in the ongoing dispute before the San Francisco Rent Board. As discussed above, Respondent and his wife twice turned down cash offers (of USD 50,000 and USD 100,000) before and after the Rent Board hearing in July 2013, because Respondent and his wife want repairs made, not a cash buy-out. As to Complainant’s contention that Respondent was trying to “obtain settlement leverage,” this argument is now moot because on February 7, 2014, the San Francisco Rent Board issued its ruling on the dispute between Respondent and Complainant. Respondent and his wife were awarded a 21% monthly rent reduction because Complainant refused to make repairs to the outdoor deck of their residential unit. According to the ruling, the monthly rent will return to its normal rate after Complainant makes the repairs. Respondent asserts that Complainant has the option to appeal the decision, but instead has chosen to destroy the deck rather than make repairs.
Respondent further argues that it has not been acting in bad faith because the Domain Name was registered for the purpose of building a legitimate, noncommercial, fair-use website, as an exercise of its free speech rights. The Domain Name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to Complainant, as the alleged owner of a trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. The Domain Name was not registered in order to prevent Complainant from reflecting its alleged mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct. Complainant and Respondent are not competitors and the Domain Name was not registered by Respondent primarily to disrupt Complainant’s business. The Domain Name was not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s alleged mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent’s position is that landlord-tenant disputes should not be brought under the UDRP, but should be resolved elsewhere. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
The Panel observes that Complainant and Respondent have been involved in a landlord-tenant real estate dispute as described in detail above. Much of the information and evidence has little bearing on this dispute involving the Domain Name, except to provide background as to the parties’ possible motivations for various actions taken concerning the Domain Name. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent has not denied that the Domain Name is identical or similar to Complainant’s name, “Veritas Investments”. However, Respondent has challenged whether Complainant has any trademark rights in its name. Respondent has also challenged whether there is confusing similarity, given the Domain Name and Complainant’s name are the same as a number of other entities operating both within and outside the United States, and in view of the manner in which Complainant has used its own password-protected website.
With regard to confusing similarity, the threshold test under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of user confusion, irrespective of the content of any website linked the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Accordingly, the Panel finds that the Domain Name in this case is identical and confusingly similar to the Complainant's name, “Veritas Investments”.
However, the question remains whether Complainant has trademark rights in its name. Respondent has submitted evidence that Complainant owns no registered trademark or service mark in the United States for its name. Thus, any trademark rights must be considered as common law or unregistered rights. Paragraph 1.7 of WIPO Overview 2.0 addresses what needs to be shown for a complainant to successfully assert common law or unregistered trademark rights. In particular, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Moreover, relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. However, a conclusory allegation of common law or unregistered rights would not normally be sufficient.
In this case, the evidence in the record is unclear as to whether Complainant has achieved common law trademark rights in its name. Complainant’s name consists of the word “veritas” (meaning “truth”) combined with the descriptive word “investments”. Although this combination of words has some descriptive connotation, it is not wholly generic; however, the name on its own is not highly distinctive. Complainant provided the declaration of its chief executive office, Mr. Au, as a basis for asserting trademark rights. Mr. Au claimed that Complainant has spent significant resources to promote its VERITAS INVESTMENTS mark and that the name is used in connection with the firm's large San Francisco real property investments. The declaration further states “[i]ts trademark is well-known not only in connection with its Northern California services, but also nationally and internationally among investors.” The Complainant has not provided any evidence of advertising, promotion through the media or surveys on consumers. Mr. Au’s declaration indicates that he speaks at conferences where he addresses real estate industry issues and promotes Complainant’s name. Complainant has submitted evidence to show that Mr. Au has attended several conferences as a speaker, as well as a few press clippings in which Complainant’s name has been mentioned. Mr. Au also states that since 2007, it has used the domain name for its central website.
In response, Respondent has provided evidence that there are a number of other companies both within and outside the United States, in similar lines of business, operating under names that are identical or very similar to Complainant’s name. Moreover, Complainant operates through one or more property management companies in the San Francisco area using different names, which means that consumers may be more familiar with the names of these management companies. With regard to Complainant’s assertion that since 2007 it has used the domain name for its own website, Respondent has submitted evidence that, until recently, Complainant’s website consisted of a static home page with four photographs, a logo with the word “Veritas”, and the additional word, “login.” Thus, it provided little or no information to a viewer about Complainant and its business, unless the viewer had obtained a password from Complainant. The website, in this way, was limited in its ability to promote Complainant’s name or build any trademark rights. Respondent has observed that Complainant uses two different logos, one on its website and a different one on its business cards. Respondent has also alleged that Complainant has made efforts to hide behind a shell company bearing a different name. A Wall Street Journal article dating from October 2013 indicates that Complainant bought major real estate holdings in San Francisco less than three years ago.
In view of all of this information, the Panel finds that the record in this case is insufficient to determine whether Complainant has achieved common law trademark or service mark rights in its name. Accordingly, with Complainant bearing the burden of proof on this issue, the first element of paragraph 4(a) of the Policy has not been established. Even assuming that common law trademark rights do exist, the Panel finds that the Domain Name was not registered and used in bad faith. B. Rights or Legitimate Interests
Although the Panel has been unable to confirm that Complainant has common law rights in its name, the Panel will nevertheless address the second element of the Policy in relation to use of a domain name that is identical to a complainant's mark for a website providing criticism.
Paragraph 2.4 of WIPO Overview 2.0, View 1, states 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 without an additional term. In the cases Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947 and Midland Heart Limited v. Uton Black, Case No. D2009-0076, criteria were considered as relevant in assessing whether a respondent had a right or legitimate interest in a domain name identical to a complainant's mark. The Panel will apply these criteria to the present case, adding the additional criteria of whether the domain name is identical to the putative trademark:
(a) Is the domain name in dispute identical to the alleged trademark?
In the instant case, the Domain Name is identical to Complainant’s alleged trademark, VERITAS INVESTMENTS. This weighs against finding any rights or legitimate interests on the part of Respondent.
(b) Has the domain name been registered and is it being used genuinely for the purpose of criticizing the owner of the mark?
The Panel is satisfied that the Domain Name was registered and is being used genuinely in connection with a website for a purpose that is similar to a criticism website. Respondent has alleged that he is a founding member of the volunteer organization Spotlight on Veritas, which has been active in generating public attention concerning Complainant’s real estate operations and the condition of its residential properties. Respondent has stated that the website linked to the Domain Name serves as a public information service to assist those who might have concerns or complaints regarding the real estate practices and operations of Complainant and its subsidiaries. The content of the website is consistent with this claim. This factor weighs in favor of finding that Respondent has a legitimate interest in the Domain Name.
(c) Does the registrant believe the criticism to be well-founded?
The Panel believes that the concerns alleged by Respondent may be well-founded. Respondent has introduced evidence to show that properties owned by Complainant have been subject to investigation by local San Francisco housing authorities, with remedial measures required. Complainant has not denied these claims. The Panel has carefully considered Complainant’s criticisms of the content of Respondent’s website. The Panel is not satisfied that the content is deliberately deceiving or misleading so as to warrant a finding that the Respondent’s use of the Domain Names is illegitimate and unfair on this account. While it is beyond this Panel’s function to assess the merits of rival contentions in a landlord-tenant dispute, unless it is shown that the content is deliberately false and malicious, the principle of free speech should prevail. See Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE,WIPO Case No. D2003-0645.
(d) Does the registrant have intent for commercial gain?
The Panel finds that Respondent is not seeking commercial gain so as to delegitimize his use of the Domain Name. The website is being used in a noncommercial manner. Respondent may intend that his efforts as a member of Spotlight on Veritas and through the website linked to the Domain Name will result in improved service for Complainant’s residential properties, including Respondent’s unit. However, Respondent has submitted evidence to show that he and his wife turned down two substantial cash offers from Complainant, thereby refuting the argument that the Domain Name (and linked website) is a means to extort financial gain.
(e) Is it immediately apparent to Internet users visiting the website at the Domain Name that it is not a website of the owner of the mark?
The Panel is not satisfied that Respondent’s website, prior to the filing of this dispute, avoided confusion with Complainant. Although Respondent has now added a disclaimer to the website, it was not present before the dispute arose. In the circumstances, the Panel finds that this factor weighs in the balance against Respondent.
(f) Has the respondent registered all or most of the obvious domain names suitable for the owner of the mark?
The Respondent has registered the Domain Name and a second domain name, . The Panel finds that Respondent has not attempted to register all or most of the domain names that would be most suitable for Complainant.
(g) Where the domain name is one of the obvious domain names suitable for the owner of the mark, is a prominent and appropriate link provided to the latter's website (if any)?
At the time the dispute arose, there was no link provided on Respondent's homepage to Complainant's website, although there is now a link. The Panel regards this as a further point against Respondent.
(h) Where there is likelihood that email intended for the complainant will be sent using the domain name in issue, are senders immediately alerted in an appropriate way that their emails have been misaddressed?
The Panel considers that there is a reasonable possibility that members of the public might send email intended for Complainant using the Domain Name. However, the Panel is not satisfied on the evidence that the Respondent has failed or will fail to make it clear to the senders of such emails that they have been misaddressed.
Finally, the Panel observes that Complainant has never authorized or licensed Respondent to use the Veritas Investments name, and that Respondent is not commonly known by this name.
On balance, taking into account all of these considerations, the Panel has concluded that Respondent's use of the Domain Name is not such as to confer a right or legitimate interest in the Domain Name. In all the circumstances, the Panel finds that the second requirement of the Policy is met in this case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP identifies a number of circumstances which, if found, constitute evidence of registration and use of a domain name in bad faith. These factors are not exhaustive, but it is useful to consider whether they apply in this case before considering more generally whether the Domain Name was registered and is being used in bad faith. The Panel observes that Respondent registered the Domain Name with Complainant in mind; however, this alone does not prove bad faith registration.
As to paragraph 4(b)(i), the Panel finds that Respondent has not registered or acquired the Domain Name primarily for the purpose of transferring it to Complainant or a competitor of Complainant for profit. As discussed above, Respondent has refuted the allegation that the Domain Name is being used for financial gain. Respondent rejected two substantial offers from Complainant, demonstrating that Respondent did not register the Domain Name with the intent of transferring it to Complainant or a competitor of Complainant for profit.
With respect to paragraph 4(b)(ii), the Panel finds that Respondent did not register the Domain Name in order to prevent Complainant from reflecting its mark in a corresponding domain name. The Panel notes that Complainant has registered and is using the domain name . There is no evidence that Respondent has registered other domain names corresponding to Complainant’s name, or that the primary purpose was to block Complainant.
The Panel is also not satisfied that Respondent registered the Domain Name for the purpose of disrupting the business of a competitor within the meaning of paragraph 4(b)(iii). Complainant has charged that Respondent has embarked on a campaign of retribution against Complainant, not only through the lawful channel of a Rent Board proceeding, but also by attempting to confuse and deceive the public about Complainant through the Domain Name and its linked website. However, Respondent is not a competitor of Complainant. Further, Respondent’s use of the Domain Name to highlight concerns about Complainant’s business practices and to provide contact information for relevant state and local offices, particularly in light of evidence that Complainant has been subject to investigation by local San Francisco housing authorities due to safety concerns associated with Complainant’s buildings, does not constitute a disruption of the type recognized by the Policy.
Finally, the Panel finds that Respondent is not using the Domain Name for commercial gain, as discussed above. Accordingly, paragraph 4(b)(iv) of the Policy does not apply.
Although none of the specific circumstances identified in paragraph 4(b) of the Policy applies, it remains to consider generally whether the Domain Name was registered and is being used in bad faith. As described above, the Panel finds that aspects of Respondent's use of the Domain Name are not entirely satisfactory. Complainant has charged that Respondent is attempting to hold the Domain Name as a “hostage” in the real estate dispute with Complainant. The record on this charge is mixed, as Respondent has turned down substantial cash offers from Complainant and refers to other practices of Complainant that, according to Respondent, motivated registration of the Domain Name and development of the linked website. In sum, despite the Panel’s finding under the second element, the Panel is not satisfied that these deficiencies or any of the other circumstances of the case necessarily amount to bad faith on the part of Respondent. The Panel therefore concludes that the third requirement of the UDRP is not met in this case. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; Midland Heart Limited v. Uton Black, WIPO Case No. D2009-0076. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: March 9, 2013
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