The Complainant is Moog Inc., East Aurora, New York, United States of America (the “US”), represented by Hodgson Russ, LLP, US.
The Respondents are Andrew Botte and Sayfa Workwear Limited, Leiceister, Leiceistershire, United Kingdom of Great Britain and Northern Ireland (the “UK”), self-represented. 2. The Domain Names and Registrar
The disputed domain names , , , , , , and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2014. On August 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 30, 2014, the Registrar transmitted by email to the Center its verification response confirming Andrew Botte as the listed registrant for and confirming Sayfa Workwear Limited (with Andrew Botte as the contact) as the listed registrant for , , , , , , and . The Complainant filed an amended Complaint on September 9, 2014.
The Center verified that 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 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2014. The Response was filed with the Center on September 15, 2014.
The Center appointed John Swinson as the sole panelist in this matter on October 7, 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 Moog Inc., a US company which designs and manufacturers motion and fluid controls and control systems for applications in aerospace, defense, industrial and medical device markets.
The Complainant owns numerous US trade mark registrations for MOOG, including Registration No. 0893181, registered June 23, 1970. All of these registered trade marks will be collectively referred to as the “Trade Mark” for the purposes of this decision. The Complainant also owns the domain name . The Complainant submits that it has common law trade mark rights in MOOG dating from April 1951.
The Respondents are Andrew Botte, an individual who worked for HSBC bank prior to being made redundant, and his company Sayfa Workwear Limited, both of the UK (collectively, the “Respondent”).
The Respondent registered the Disputed Domain Names as follows:
- on March 30, 2013; and
- , , , , , and on March 31, 2013.
The website at each of the Disputed Domain Names displays the same content, which is critical of the Complainant, HSBC bank and Lockheed investors. The text of the websites, which is accompanied by a photo of rows of coffins draped in US flags, is as follows:
“WHO ARE MOOG INC? A supplier on many U.S. military aircraft and missile programs, including National Missile Defense.
HSBC Bank has lent Millions lying to Shareholders.
Invest in Hellfire Missiles in Iraq? Who do you think these missiles will kill in the future?
US Government has just approved a $700 Million deal for 5000 Hellfire Missiles.
HSBC Bank, Moog Inc & Lockheed Investors do you need to Invest in death?
Contact Us” 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Disputed Domain Names are confusingly similar to the Trade Mark. Each Disputed Domain Name incorporates the Trade Mark and a generic or descriptive word signifying one of the Complainant’s business units or product names (e.g., “innovation”, “industrial”, “AGM”).
Rights or Legitimate Interests
The Respondent is not an authorized distributor of the Complainant’s goods or services and the Complainant has not licensed the Respondent to use the Trade Mark.
The Respondent is not commonly known by the Trade Mark.
The use of the Disputed Domain Names is not a legitimate or fair use. The website at each of the Disputed Domain Names criticizes HSBC bank for providing a credit facility to the Complainant. The Respondent Andrew Botte is a former employee of HSBC bank who believes that HSBC bank violated its lending policy. The websites criticize HSBC bank, not the Complainant.
The Respondent explains the purpose of the websites on his blog (which the websites link to), in the following post, dated July 28, 2014:
“I would like to stress at no point did my concern extend to the company in question [i.e., Moog Inc.] or any wrong doing on their part. The US company in question is a perfectly successful and legitimate business – my concern is based around should we [i.e., HSBC bank] have lent? And had [HSBC’s] internal policy or procedure been breached?”
The stated goal of the websites was to encourage HSBC bank’s Chairman and CEO to resign by July 31, 2014. The Respondent has hijacked the Complainant’s Trade Mark to take its desired action against HSBC bank. Even if the websites were “criticism” sites, the Respondent has no legitimate interest in using the Trade Mark without some other term that would alert users that the Complainant does not own or sponsor the websites.
Registered and Used in Bad Faith
The Respondent’s registrations of the Disputed Domain Names significantly post-date the Complainant’s acquisition of common law trade mark rights, and its US trade mark registrations.
At the time the Respondent registered the Disputed Domain Names, it was aware of the Complainant and the Trade Mark (in fact, the websites include a description of the Complainant).
The Respondent was holding the Disputed Domain Names hostage to force executives of HSBC bank, not executives of the Complainant, to resign. When this did not occur, the Respondent put the Disputed Domain Names up for sale on eBay, with a “Buy it now” price of GBP 1,450,000. This is in excess of the Respondent’s out-of-pocket expenses directly related to the Disputed Domain Names. This method of sale also means that the Disputed Domain Names could have been acquired by one of the Complainant’s competitors. As an additional indicator of bad faith, the Respondent was also trying to sell domain names incorporating the HSBC bank trade mark on eBay at this time.
The Respondent acknowledged that the material on the websites “may be impacting” the Complainant’s business, but rejected an offer by the Complainant to purchase the Disputed Domain Names for their actual cost.
The Respondent’s use of the Trade Mark in the Disputed Domain Names diverts Internet traffic from the Complainant. B. Respondent
The Respondent’s contentions are as follows. Identical or Confusingly Similar
The Respondent does not dispute that the Disputed Domain Names are confusingly similar to the Trade Mark. The Respondent submits that the Respondent does not have exclusive rights to the term “Moog”, and lists a number of other parties which hold registrations incorporating “Moog”.
The Respondent submits that the Complainant had every opportunity to register the Disputed Domain Names itself, but chose not to. Rights or Legitimate Interests
The Respondent is using the Disputed Domain Names for the legitimate purpose of drawing attention to a funding facility arranged by HSBC bank that the Respondent believes breaks HSBC bank’s Defence Policy. After being unable to use other avenues to voice his concerns, the Respondent saw this as being the most effective way of bringing the issue into the public arena. The Respondent states “My core objective remains to highlight HSBC Bank’s wrongdoing”. The Respondent submits that the websites are protest sites and it would be clear to any user that they are not affiliated with the Complainant. It further submits that no proof of confusion has been provided.
There are no products or services offered on the Respondent’s websites. The Respondent is not a competitor of the Complainant. The Respondent has made no attempt to tarnish the Trade Mark.
The Respondent also makes a number of submissions relating to free speech and Constitutional rights. Registered and Used in Bad Faith
The Respondent contacted the Complainant trying to seek a low cost resolution of the issues. The Respondent asked the Complainant to make a “nominal sensible” offer, and does not believe that the Complainant did so.
The Respondent has no grievance with the Complainant, and its criticism is directed at HSBC bank.
The Respondent listed the Disputed Domain Names for high prices on eBay to gain media interest. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
The Complainant provided evidence of its ownership of the Trade Mark. The Panel accepts that the Complainant owns the Trade Mark.
In this case, the generic Top Level Domain (“gTLD”) designation at the end of each Disputed Domain Name does not impact the assessment of confusing similarity under the Policy (see e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
Each of the Disputed Domain Names is a combination of the Trade Mark with a descriptive term (“AGM” (one of the Complainant’s products), “global”, “industrial”, “innovation”, “investors”, “medical”, “systems” and “turbines”). The Panel finds that the Trade Mark remains the dominant element in each of the Disputed Domain Names. It is well established that the addition of a descriptive term (such as those listed above) to a trade mark does not prevent confusingly similarity (see e.g., Mesosystem, S.A. v. LeaseD,WIPO Case No. D2013-0711 and Giorgio Armani S.p.A. Swiss Branch, Mendrisio v. Gabriella Chung,WIPO Case No. D2013-0821).
In light of the above, the Panel finds that the Disputed Domain Names are confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- the Respondent is not commonly known by any of the Disputed Domain Names; and
- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not authorized the Respondent to use the Trade Mark.
The Respondent seeks to rebut the Complainant’s case by establishing that its use of the Disputed Domain Names is a legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Mark (see paragraph 4(c)(iii) of the Policy).
The relevant facts can be summarized as follows:
- The Disputed Domain Names are substantially similar to the Trade Mark.
- The Respondent’s websites do not include an express disclaimer that the websites are not associated with the Complainant.
- The Respondent’s websites contain wording critical of both HSBC bank and the Complainant.
- The Panel is of the view that it would be clear to most users that the Respondent’s websites were not controlled or authorised by the Complainant.
- It does not appear that the Respondent is making a commercial gain from the websites. There are no advertisements on the Respondent’s websites or on the Respondent’s blog (which the websites all link to).
Panels have expressed two main views in relation to criticism websites (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0” paragraph 2.4)). View 1 is that “[t]he right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. 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.” This line of cases tends to disapprove of the use of a domain name for criticism in particular where the domain name is identical to the trademark. Additionally, in some cases, panels disapprove of the use of a domain name for criticism where another term is added, including where the criticism is apparent from the domain name itself (e.g., or ), notwithstanding the critical content of the site (see, e.g.,Kirkland & Ellis LLP v. DefaultD, American Distribution Systems, Inc.,WIPO Case No. D2004-0136 and Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev,WIPO Case No. D2009-1416, both cited by the Complainant).
The other view, to which this Panel subscribes, tends to look past whether the domain name alone connotes criticism, but focuses on the content at the website located at the domain name. If the website is a genuine noncommercial criticism site, then paragraph 4(c)(iii) of the Policy may be satisfied (see e.g., Legal & General Group Plc v. Image Plus,WIPO Case No. D2002-1019 and Sutherland Institute v. Continuative LLC,WIPO Case No. D2009-0693).
Here, the Respondent’s websites appear on the record before the Panel to be noncommercial and the use of the Disputed Domain Names similarly appear to be noncommercial. The linked websites are also seemingly noncommercial. The websites do not contain an express disclaimer that they are not associated with the Complainant. While this could potentially lead to user confusion, the Panel is of the view that the content of the websites is not misleading, and that it would be clear to users that the websites were not controlled or authorized by the Complainant (and were third party criticism websites).
This Panel considers the preservation of the free exchange of ideas via the Internet to be of the utmost importance. The Panel is of the view that any initial confusion experienced by users (due to the fact that the Disputed Domain Names do not disclose that the associated websites are criticism sites) would be immediately dispelled upon arrival at the websites. As a final point, there is no evidence that the Respondent is promoting the Disputed Domain Names, or using the Disputed Domain Names other than on the associated websites.
Accordingly, the Panel finds that insofar as the Policy is concerned the Respondent has sufficiently rebutted the Complainant’s case as to rights or legitimate interests in respect of the Disputed Domain Names. C. Registered and Used in Bad Faith
As the Complainant has failed to establish that the Respondent lacks rights or legitimate interests, it is unnecessary to determine whether the Respondent registered or used the Disputed Domain Names in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: October 15, 2014
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