The Complainant is MUFG Union Bank, N.A. of San Francisco, California, United States of America ("USA" or "US"), represented by DLA Piper US LLP, USA.
The Respondent is William Bookout of Pismo Beach, California, USA, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , ,
, and (the "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 October 17, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 17, 2014, 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 October 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2014. The Response was filed with the Center on November 14, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 21, 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 federally supervised retail bank headquartered in San Francisco, California, USA. It is the successor to a California bank established in the 19th Century, which merged to form Union Bank of California in 1996, known as UnionBanCal. The Complainant is now part of the Mitsubishi UFJ Financial Group, one of the world's largest financial organizations, which is listed on the Tokyo, Nagoya, and New York Stock Exchanges. On July 1, 2014, the group issued a press release announcing that its operations in the USA were reorganized and renamed in the present form, MUFG Union Bank, N.A. This corporate and branding history is reflected in the trademarks registered to the Complainant or its affiliates, as summarized below.
The Complainant operates a commercial website using the domain name , while the group operates websites using the domain names and , among others.
According to the Complaint and trademark filings, the Complainant and its predecessors have used UNION BANK common law or registered trademarks since 1914. The Complainant or its affiliates currently hold numerous registered trademarks consisting of, or including, the names UNION BANK, UNIONBANCAL, or MUFG. These include the following US trademark registrations:
Mark
US Registration No.
Registration Date
UNIONBANCAL CORPORATION
2137748
February 17,1998
UNION BANK
3663125
August 4, 2009
UNION BANK (words and design)
3700302
October 20, 2009
UNION BANK PREFERRED SAVINGS
3774065
April 13, 2010
UNION BANK MONEYPORT
3797478
June 1, 2010
MUFG (words and design) (registered to Mitsubishi UFJ Financial Group, Inc.)
3423047
May 6, 2008
MUFG BIZBUDDY (registered to Mitsubishi UFJ Financial Group, Inc.)
4075817
December 27, 2011
In addition, the Complainant has a pending application (serial number 86088614) with the United States Patent and Trademark Office ("USPTO") to register MUFG UNION BANK as a trademark. This application was filed on October 10, 2013, before the group reorganization was publicly announced, and later assigned to the Complainant.
The Domain Names were created in 2012 and 2014, as follows (in chronological order):
, March 14, 2012
, March 15, 2012
, November 30, 2012
, December 10, 2012
, June 27, 2014
, June 27, 2014.
All of the Domain Names are registered with the same Registrar and in the name of the same registrant, the Respondent, Mr. Bookout, an individual residing in Pismo Beach, California, USA.
The Domain Name is used for a website headed "Union Bank /SBBT". This website does not advertise any goods or services offered by the Respondent, nor does it display third-party advertising. Rather, it publishes the Respondent's commentary, with attached court papers and other documents, concerning the Respondent's objections to the Complainant's handling of a loan to the Respondent. It appears that the Respondent, doing business as Oceano Nursery, obtained a loan in 2003 under a federal Small Business Administration ("SBA") loan program from a local bank, Santa Barbara Bank & Trust ("SBBT"), which was later acquired by the Complainant. In 2007 the loan was in default, and the Complainant and the Respondent entered into a Forbearance and Workout Agreement. The Respondent subsequently declared bankruptcy. In the course of the bankruptcy proceedings, the Respondent has accused the Complainant of fraud and perjury, as detailed on the Respondent's website. It does not appear from the record in this proceeding that the Bankruptcy Court has ruled on these allegations. The website publishes emails and other correspondence with the Complainant to support the Respondent's contentions that the Complainant is guilty of "bank fraud", "perjury", and "breach of contract".
Three of the other Domain Names, , , and , resolve to websites with substantially the same content. Each is designed and introduced somewhat differently, respectively displaying the headers "Union Bank – SBBT Questions", "Union Bank Loan Fraud", and "Union Bank". The Respondent registered on June 27, 2014, shortly after media reports appeared in May and June 2014 discussing the impending reorganization and rebranding of the Complainant's US banking operations.
The Domain Name is currently parked by the Registrar "for free" on a landing page that advertises the Registrar's services and prominently displays the invitation, "Learn how you can get this domain".
The Domain Name does not currently resolve to an active website.
It is undisputed that the Respondent has registered a total of ten domain names incorporating the UNION BANK, UNIONBANCAL, or MUFG marks, or a close approximation thereof. One of these domain names, , is the subject of another WIPO UDRP proceeding, MUFG Union Bank, N.A. v. William Bookout,WIPO Case No. DME2014-0008 ("MUFG Union Bank I"). That domain name resolves to a substantially similar website headed "Union Bank". Three other domain names are at issue in yet another WIPO UDRP proceeding between the same parties, MUFG Union Bank, N.A. v. William Bookout,WIPO Case No. DCC2014-0002 ("MUFG Union Bank III"), concerning the domain names , , and , which are registered in the country code top-level domains ("ccTLDs") for Colombia and the Cocos Islands (an Australian territory), respectively. One of those domain names currently resolves to a website similar to the ones described above, while another one formerly did so. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Names are identical or confusingly similar to its UNION BANK, UNIONBANCAL, and MUFG marks and that the Respondent has no rights or legitimate interests in using the Domain Names in an effort to mislead Internet users and tarnish the Complainant's mark.
The Complainant argues that this misdirection and tarnishment also indicates bad faith in the registration and use of the Domain Names. In addition, the Complainant contends that the Respondent evinces a pattern of preventing the Complainant from reflecting its marks in corresponding domain names and seeks to disrupt the Complainant's business. The Complainant argues as well that bad faith can be inferred simply from the Respondent's having actual or constructive notice of the Complainant's mark and using it without permission in the Domain Names. The Complainant asserts that the Domain Names create initial confusion as to source or affiliation, even if that confusion is subsequently dispelled when an Internet user views the website and finds that it is critical of the Complainant. B. Respondent
The Respondent acknowledges that the Domain Names (like the other domain names mentioned above) refer to the Complainant. However, the Respondent claims a right to use the Complainant's marks in all ten domain names, for the purpose of criticizing the Complainant's business practices. The Respondent contends that this conduct is an exercise of protected "free speech" under the First Amendment of the United States Constitution and also qualifies for the "fair use" defense to claims of trademark infringement and trademark dilution under federal law in the USA, as well as serving as a defense to UDRP complaints.
The Respondent also argues that the addition of "na" to the Complainant's marks in two of the Domain Names makes them dissimilar to the marks. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." A. Identical or Confusingly Similar
The Complainant unquestionably holds UNION BANK, UNIONBANCAL, and MUFG trademarks. These are incorporated in their entirety in the respective Domain Names, with very slight variations, including the letters "na" in two of the Domain Names. These variations are not sufficiently distinctive to avoid confusing similarity for purposes of the first element of the Policy. The letters "na", for example, an abbreviation for "national association", are not part of the Complainant's marks but do appear in the Complainant's name; thus, they do not eliminate the likelihood of confusion. The Respondent acknowledges, in any event, that he selected the Domain Names precisely to refer to the Complainant.
UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Complaint has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, including this one on which the Respondent relies:
"(iii) the Respondent 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 trademark or service mark at issue."
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
In this proceeding, the Complainant demonstrates that the material portion of the Domain Names in each instance incorporates the Complainant's UNION BANK, UNIONBANCAL, or MUFG marks, respectively, in their entirety. The Respondent does not contest the Complainant's rights to relevant trademarks and acknowledges that the Domain Names are meant to refer to the Complainant. This is sufficient to make a prima facie case.
The Respondent argues that he is making "a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue", as described in the Policy, paragraph 4(c)(iii). Although the Complainant speaks of the Respondent "trading" on the goodwill associated with the Complainant's marks, that accusation lacks merit with respect to the Domain Names that resolve to the Respondent's websites (, , , and ), where there is no evidence that the Respondent has made any commercial use of those Domain Names. The Respondent's websites criticize the Complainant, but the Respondent is not a competitor of the Complainant. The websites neither promote the Respondent's business activities nor advertise goods or services offered by third parties. The Respondent's websites are genuinely "criticism sites" rather than commercial websites.
As reported in WIPO Overview 2.0, paragraph 2.4, UDRP decisions reflect "two main views" on the question, "Can a criticism site generate rights and legitimate interests?". Some UDRP panels (the first view) hold that the right to criticize simply does not extend to registering and using a domain name that is identical or confusingly similar to a trademark. Others (the second view) conclude that "the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial", even where the domain name itself does not connote criticism (as in "trademarksucks.TLD" cases). See also cases collected in the WIPO Legal Index, section II.B.4.b.(i), "Criticism & Commentary".
The WIPO Overview 2.0 notes that the second approach is often taken "in cases involving only US parties or the selection of a US mutual jurisdiction". US jurisprudence recognizes a qualified free speech right to display a trademark in connection with genuine criticism, even in the context of a domain name identical or confusingly similar to a trademark, where there is not a commercial motivation or indicia of bad faith, such as an attempt to create a likelihood of confusion on the associated website. See Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d 1045 (US Court of Appeals, 10th Cir., 2008); Lamparello v. Falwell, 420 F.3d 309 (US Court of Appeals, 4th Cir., 2005); TMI, Inc. v. Maxwell, 368 F.3d 433 (US Court of Appeals, 5th Cir., 2004); Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806 (US Court of Appeals, 6th Cir., 2004). A thoughtful discussion of the trend to apply this principle in UDRP cases involving US parties is found in Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014 ("Howard Jarvis").
Both the Complainant and the Respondent in this instance are located in the USA, and the Panel finds it appropriate to adopt the second view in this proceeding. Under US law, the Respondent's conduct may qualify as "legitimate noncommercial or fair use" of the Domain Names, even though they are confusingly similar to the Complainant's marks. The Respondent's websites are noncommercial, and the Respondent is not a competitor. The websites are clearly critical of the Complainant and unlikely to be confused with a website operated by the Complainant. Whether there are nevertheless other indicia of bad faith is a topic better addressed in the following section of this Decision.
The Complainant suggests that the Respondent's websites do not reflect "legitimate" fair use within the meaning of the Policy, because the content appears to include false or unproven allegations against the Complainant. A UDRP proceeding, however, is not an appropriate or practical forum for ascertaining the truthfulness of the allegations published on the Respondent's websites, as would be necessary in a legal action for defamation. It suffices for UDRP purposes to determine whether the websites are genuinely devoted to a free speech purpose such as commentary and criticism, rather than serving as "primarily a pretext for commercial advantage." See WIPO Overview 2.0, paragraph 2.4. In the Panel's view, the truth or falsehood of the disparaging statements made on the Respondent's websites is a determination better left to a court, following evidentiary discovery and the examination of witnesses; it is not one suited to the limited scope and procedures of a UDRP proceeding.
The Complainant argues that the Domain Names were selected precisely to mislead consumers and then used for websites intended to tarnish the Complainant's mark, inconsistent with the Policy requirement that the Respondent's claimed legitimate interest must be "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue". The Policy language on its face requires a commercial motive for "misleading", however, which is not evident in this case. See Howard Jarvis, supra. As noted above, there is no indication of commercial advantage for the Respondent, who is not a competitor and does not use the Respondent's websites to advertise his own goods or services or those of third parties. The Respondent's websites are genuinely focused on criticism of the Complainant. The Respondent also does not use the Complainant's mark for websites that have the effect of associating the Complainant with unseemly and unrelated activities such as pornography, drugs, violence, or gambling, which is the traditional sense of "tarnishment" in both UDRP proceedings and in US trademark law. See Howard Jarvis, supra, and WIPO Overview 2.0, paragraph 3.11. The Complainant suggests that critical commentary amounts to "tarnishment", but this construction of the Policy, paragraph 4(c)(iii), is clearly too broad. It could effectively eliminate the possibility of claiming a right or legitimate interest in using a domain name for a genuine criticism site.
The Panel finds on this record that the Respondent has demonstrated rights or legitimate interests in using the Domain Names for websites criticizing the Complainant's conduct. Thus, the Panel concludes that the Complainant has not established the second element of the Complaint with respect to the four Domain Names that resolve to the Respondent's websites. However, this conclusion is related to the discussion of bad faith, below, as bad faith (were there any) may undermine in the instant case the Respondent's claim of rights or legitimate interests, both in US law (as mentioned above) and in the Policy's requirement for a "legitimate" fair use of a mark.
More problematic are the Domain Names that do not actually resolve or redirect to one of the Respondent's criticism sites: and . The former is parked with the Registrar, which uses it to advertise the Registrar's own services, and the latter does not resolve to an active website. The Respondent has had these Domain Names for two years and still is not "making a legitimate noncommercial or fair use" of them. The Policy, paragraph 4(c)(iii) (unlike paragraph 4(c)(i) on bona fide commercial use of a domain name) does not expressly contemplate that a respondent can claim a right or legitimate interest through demonstrable preparations to make a legitimate use of a domain name in the future. The Respondent's intentions may be relevant to the discussion of bad faith, below. But the Respondent's failure actually to use these two Domain Names for a criticism site, two years after registering them, means that the Respondent has not established its claimed rights or legitimate interests with regard to the Domain Names and .
Thus, the Panel concludes that the Complainant has established the second element of the Policy with regard to the Domain Names and . C. Registered and Used in Bad Faith
The Policy contains in paragraph 4(b) a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including these ones cited in the Complaint:
"(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor."
With regard to paragraph 4(b)(ii), the Complainant argues that the Respondent's registration of ten domain names based on the Complainant's UNION BANK, UNIONBANCAL, or MUFG marks demonstrates a pattern of attempting to deprive the Complainant of corresponding domain names. The Complainant notes in particular that the Respondent registered shortly after media reports indicated that the Complainant would be rebranding its US banking operations.
The Panel observes that the Complainant has, in fact, obtained corresponding domain names, including , (which now redirects to ), and (which the Complainant registered but does not appear to use). The Respondent states that he registered all ten of his domain names for use with his criticism websites. In this Panel's view this is plausible, as six of the ten are currently used for criticism websites, and another was formerly used for such a website. As the Respondent is neither a competitor nor a serial cybersquatter, and the Complainant has availed itself of other appropriate domain names, the Panel finds the Complainant's argument for bad faith unpersuasive. It seems more probable that the Respondent cast his net widely to reach individuals interested in the Complainant, to present his critical comments to them, including consumers looking for the Complainant under its new name after June 2014. But he has not prevented the Complainant from reflecting its marks in corresponding, intuitive domain names.
Under paragraph 4(b)(iii), the Complainant must establish the probability that the Respondent registered the Domain Names "primarily for the purpose of disrupting the business of a competitor". However, the Respondent is not a competitor of the Complainant, nor does the Respondent's website serve a relevant commercial purpose such as advertising competing goods or services or linking to the websites of the Complainant's competitors. The Panel declines, moreover, to interpret the Policy in such a manner as to characterize genuine criticism as bad faith simply because the criticism might have an adverse impact on the Complainant's business.
The Policy's list of instances of bad faith is not exhaustive, and in addition to referring to paragraphs 4(b)(ii) and (iii) the Complainant puts forward several other arguments for finding that the Respondent acted in bad faith.
The Complainant argues that bad faith can be inferred simply from the Respondent's having actual or constructive notice of the Complainant's marks and then using similar strings without permission for the Domain Names. Constructive notice is generally found insufficient to establish bad faith for UDRP purposes (see WIPO Overview 2.0, paragraph 3.4), but notice is not an issue here in any event: the Respondent acknowledges that he meant to refer to the Complainant and did so by using its various names and marks in his domain names in order to publish critical commentary about the Complainant. As discussed above, the Respondent has not used the Domain Names to "trade on the goodwill" of the Complainant, which would evince bad faith. Rather, the record indicates that he selected and used the Domain Names for a legitimate, noncommercial, fair use: to criticize the Complainant's conduct. If that is a legitimate fair use, at least in a case such as this where US law is relevant, then the Panel cannot make a finding of bad faith simply because the Respondent was aware of the Complainant's trademarks.
The Complainant argues as well that it is bad faith to use a Domain Name that "misdirects" Internet users by initially suggesting an association with the Complainant, citing UDRP decisions addressing the problem of "initial interest confusion". This analysis is not determinative, however, in the case of criticism sites, particularly where US law is relevant and US jurisprudence expresses an especially strong interest in protecting noncommercial free speech, as discussed above in connection with the second element of the Complaint. In such cases, the possibility of initial interest confusion does not automatically negate the Respondent's rights or legitimate interests and compel a finding of bad faith. Instead, under US federal law on trademark infringement, trademark dilution, and anti-cybersquatting, and under state anti-dilution laws, the trademark owner must point to evidence of commercial motivation or of bad faith in engendering a likelihood of confusion in the associated content itself, neither of which is present here. (See US judicial citations above.) In this case, to the extent that the Panel finds that the Respondent has rights or legitimate interests in the Domain Names under relevant US law, it is not reasonable to conclude that the Respondent acted in bad faith by exercising those rights or legitimate interests within the scope of their protection.
The Complainant further suggests that the Respondent's actions tarnish the Complainant's marks and thereby reflect bad faith. While tarnishment has been held to be an indication of bad faith in some cases, it is generally in the sense of associating the Complainant with socially disfavored and irrelevant online activity such as pornographic websites. See WIPO Overview 2.0, paragraph 3.11. For the same reasons outlined above in connection with the discussion of rights or legitimate interests, the Panel is unwilling to find that a genuine criticism website "tarnishes" a mark and indicates bad faith in the registration and use of a domain name within the meaning of the Policy.
The Panel concludes, accordingly, that the Complainant has failed to establish either the second or third elements of the Complaint with respect to the Domain Names associated with the Respondent's criticism sites: , , , and .
The Domain Name resolves to a "free parking" landing page advertising the Registrar's services. Allowing the Domain Name, confusingly similar to the Complainant's trademarks, to be used commercially by a third party could be deemed bad faith. See WIPO Overview 2.0, paragraph 3.8. The Domain Name does not resolve to an active website, and there is no indication in the record (or on the Internet Archive's Wayback Machine) that it has ever done so. Such "passive use" of a Domain Name based on a distinctive trademark could also reflect bad faith. See WIPO Overview 2.0, paragraph 3.2.
However, the Policy, paragraph 4(a)(iii), requires a complainant to establish the probability that a domain name "has been registered and is being used in bad faith", suggesting that the Panel must be satisfied of the likelihood of bad faith both at the time of registration and in subsequent use. In this case, the record indicates that the Respondent has strongly held critical views and registered all of the Domain Names for the purpose of expressing those views. It does not appear that he has profited in any way from the Domain Names or has any likely plans to do so. The Panel finds it more likely than not that the registration of the two Domain Names that are not currently associated with criticism websites was nevertheless undertaken with a good faith intent to exercise free speech rights rather than to take commercial advantage by "trading on the goodwill" of the Complainant. The Respondent has, in fact, established several criticism websites and does not appear to have a commercial motivation for naming the Complainant in his various domain names. Thus, the Panel considers that the Respondent, more likely than not, selected all of the Domain Names for potential use in criticizing the Complainant, and accordingly did not register any of the Domain Names in bad faith.
The Panel concludes, therefore, that the third element of the Complaint has not been established for any of the Domain Names. 7. Decision
For the foregoing reasons, the Complaint is denied with respect to all of the Domain Names.
W. Scott Blackmer
Sole Panelist
Date: December 3, 2014
Full & Egal Universal Law Academy