The Complainant is Titan Enterprises (Qid) Ply Ltd, of Brisbane, Queensland, Australia, represented by Mullins & Mullins Lawyers and Notary, Australia.
The Respondent is Dale Cross of Red Hill, Australia / Contact Privacy Inc of Toronto, Canada represented by Davies Collison Cave, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2015. On November 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 13, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2015. In accordance with paragraph 5(b) of the Rules, on December 3, 2015, the Respondent requested a four day extension to file its Response. The Center granted this extension and the decision due date was extended to December 12, 2015. The Response was filed with the Center on December 12, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 16, 2015. 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.
On December 18, 2015, the Complainant filed a supplemental filing in this matter. While the material included in the supplemental filing was of, at best, marginal relevance to the matters the subject of the proceeding the Panel did note that the Respondent had sought a finding that the Complainant had engaged in Reverse Domain Name Hijacking, and the material filed was relevant to a possible finding of Reverse Domain Name Hijacking. On December 21, 2015, the Panel issued the following Panel Order:
"The Panel has agreed to accept the Complainant's Supplemental Filing of December 18, 2015, therefore the Panel provides the Respondent with an opportunity to file a supplementary filing in response to the Complainant's Supplemental Filing. Given the holiday season approaching, the deadline for the reply by the Respondent is January 8, 2016. The Decision Due Date is extended to January 15, 2016."
On December 21, 2015, after the Panel had indicated to the Center that he wished to issue the Panel Order above, the Respondent filed an Objection to Complainant's Supplemental Filing. On January 9, 2016 the Respondent filed a reply to the Complainant's Supplemental Filing. 4. Factual Background
The Complainant is an Australian company first registered in 1992 which operates in the business of manufacturing, selling and installing sheds, garages and related products. Since 1992 the Complainant has sold in excess of 130,000 garages, carports, awnings and sheds, having a value of AUD 500 million. Its products may be purchased from over 38 retail locations or centers in Australia. The annual revenue of the Complainant in the last three financial years has been approximately AUD20 million a year.
The Complainant is the owner of registered Australian trade mark no 926870 for the word mark TITAN (the "TITAN Mark") for goods and services in classes 6 and 37, registered from 12 September 2002. It has applied to register other marks containing the word "Titan" including TITAN GARAGES. It also operates its website from the domain name which it first registered in 2000.
The Domain Name was created on July 5, 2014. It currently resolves to a website (the "Respondent's Website") containing a number of pages expressing criticism of the Complainant. The Respondent's Website contains a litany of criticisms of the Complainant and invites other customers of the Complainant to share their stories. While it does invite visitors to join it in legal action against the Complainant, it does not contain any advertising and, at the bottom of the first page, contains the mark "© Beware of Titan Garages". 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's TITAN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the TITAN Mark having registered it since 2002. The TITAN Mark was first used by the Complainant's predecessor in title in 1985.
The Domain Name consists of the TITAN Mark in its entirety with the addition of the words "beware of" and "garages". The use of the negative term "beware of" does not prevent confusion among Internet users between the TITAN Mark and the Domain Name.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent does not use the Domain Name in connection with a bona fide offering of goods and services. While the Complainant accepts that the Respondent's site is a criticism site, the Respondent is not making legitimate noncommercial or fair use of the Domain Name for the following reasons:
a) the Respondent is intending to tarnish the TITAN Mark;
b) the Respondent's Website contains photographs of the Complainant's premises, advertising material and trade marks;
c) the Respondent has established a number of similar criticism sites, none of which incorporate the trade marks of the Complainant;
d) the Respondent's Website contains a number of misstatements or misrepresentations and posts negative reviews out of context. In particular the Complainant's supplemental filing goes into considerable detail in Annexure Y regarding the misstatements contained in on the Respondent's Website;
e) the Respondent has not posted any new complaints for the last nine months;
f) the Respondent has sought to conceal its identity by using a privacy service;
g) the Respondent appears to be using the Domain Name for commercial purposes, having purchased Google advertising for the Respondent's Website at an estimated cost of $600 a week; and
h) the Respondent appears to be recruiting people to commence a class action claim against the Complainant but no such claim has been launched.
For the reasons set out in respect to the Respondent's lack of rights or legitimate interests, the Domain Name was registered and is being used in bad faith. In particular the Complainant considers it likely that the Respondent's conduct has been undertaken by a commercial competitor who has sought to mask its identity via registration through a privacy service and in a foreign jurisdiction. B. Respondent
The Respondent states that the Complainant should not succeed in its applications for the following reasons:
a) The Domain Name is not confusingly similar because there is no risk that customers will be confused by the Domain Name. It is clear from the Domain Name that it will not lead to the Complainant's site and indeed lead to a criticism site.
b) The Respondent has a legitimate interest in the Domain Name for the operation of its website, which the Complainant has conceded is a criticism site. The only use of the TITAN Mark by the Respondent is to identify the object of the criticism.
In summary, the Respondent's use of the Domain Name is for genuine, noncommercial criticism. There is no advertising on the Respondent's Website. There is no attempt to misleadingly divert consumers, and the Domain Name is not being used to tarnish the TITAN Mark. While the Respondent does advertise its site on the Internet it does not do this for commercial gain, rather it does so to attract disgruntled customers to the Website for the purpose of logging their complaints against the Complainant.
Furthermore the Complainant's suggestions that the Respondent was publishing third party reviews without the reviewer's permission or in a misleading manner are both factually incorrect and not relevant to determining whether the Respondent is using the Domain Name for genuine noncommercial criticism. 6. Discussion and Findings A. Identical or Confusingly Similar
Given the Panel's finding below that the Respondent has rights or legitimate interests in the Domain Name, it is not necessary to make a finding under this element. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate 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." (Policy, paragraph 4(c)).
The Panel finds that the Respondent has rights or legitimate Interests in the Domain Name because it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the Complainant's trade mark or service mark.
The Panel is aware of opinions expressed as to whether rights or legitimate interests arise for criticism sites as expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Firstly, it is noted that there are many UDRP decisions where the respondent argues that the subject domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage. This does not appear to be the case in the present proceeding. There are no advertisements on the Respondent's Website, there is no evidence that the Respondent is a competitor of the Complainant, nor is there any evidence that the Respondent has operated this website for any commercial purpose. While the Respondent does solicit members of the public to provide information to participate in a legal action against the Complainant, there is no evidence that the Respondent is doing so for a commercial purpose. The fact that the Respondent may have advertised its site is not conclusive of a commercial intention, especially in the face of the operation of the site itself. The Panel rejects the Complainant's submission, unsupported by evidence, that the Respondent's conduct is likely to have been undertaken by a commercial competitor as speculative.
Secondly, prior UDRP panels have noted that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., ) as that may be understood by Internet users as impersonating the trademark owner (see WIPO Overview 2.0, paragraph 2.4).
In the present proceeding, the Respondent is operating a genuine, noncommercial criticism website that operates from a domain name that contains an appendage ("beware of") that, as noted in the Response, is clearly an identifier of a criticism site. The Panel finds that the Respondent, in registering the Domain Name using an appendage that indicates that it is critical of the Complainant, is not attempting to impersonate the Complainant or misleadingly divert Internet users. Rather, the Respondent is using the TITAN Mark in the Domain Name to identify the Complainant for the purpose of operating a website that criticizes the Complainant. Such use is generally described as "fair use" of a trade mark.
The Complainant's arguments, if taken to their logical conclusion, would suggest that any criticism website, regardless of its noncommercial nature, should be prohibited from using the name of the subject of the criticism in its domain name, even if it is apparent from the domain name itself (as it is in this case) that the subject matter of the website connected with the domain name is likely to be critical of the Complainant. The Panel does not take such an extreme view of the Policy.
The Complaint asserts that the Respondent appears to have established a number of similar criticism sites, while only providing, as evidence, one similar site located at . While the Panel accepts that the Respondent has been able to operate a similar website without using the TITAN Mark, this is not relevant to the present proceeding, which relates to whether the Respondent has rights or legitimate interests in the Domain Name.
The Complainant has contended that the Respondent's Website contains photographs of the Complainant's premises, advertising material, misstatements or misrepresentations and posts negative reviews out of context. The Respondent has provided significant material that rebuts such allegations. Such conduct, even if accepted by the Panel, does not prove that the Respondent is not operating a legitimate, noncommercial criticism website. Moreover the correctness of such assertions is not a matter that is determinable by the Panel. The Policy is designed to deal with clear cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace,WIPO Case No. D2009-0485 ("UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts"). To the extent that the Complainant wishes to raise issues with the veracity of the statements that are present on the Respondent's Website, such matters are best decided in the courts.
Finally, the argument that the Respondent is tarnishing the TITAN Mark is unpersuasive. The mere fact that the Respondent's Website criticizes the Complainant and uses material that the Complainant considers to be misstatements or misrepresentations does not prove that tarnishment has occurred. Britannia Building Society v. Britannia Fraud Prevention WIPO Case No. D2001-0505 stated that
"As for Complainant's assertion of "tarnishment," that phrase, too, has a specific meaning that does not apply here. Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, Case No. D2000-1415 (WIPO Jan. 23, 2001); cf. Etam, plc v. Alberta Hot Rods, Case No. D2000-1654 (WIPO Jan. 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO Sept. 19, 2000) (protection for genuine criticism sites is provided by Policy's legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues."
See also Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014, and Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
This is a case where the Respondent has registered a website for the purpose of criticizing the Complainant. It has done so using the Complainant's name fairly, as an identifier of the Complainant. There is no evidence that the Respondent has attempted to pass itself off as the Complainant or misleadingly divert Internet users of the Complainant. The Panel adopts the statement in Howard Jarvis Taxpayers Association v. Paul McCauley, Supra, that "The Policy is designed to prevent abusive cybersquatting, but ... it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain."
Therefore, the Panel finds that the Respondent has rights and legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Given the Panel's finding that the Respondent has rights or legitimate interests in the Domain Name, it is not necessary to make a finding under this element. D. Reverse Domain Name Hijacking
The Respondent in this proceeding has sought a finding that the Complainant has engaged in Reverse Domain Name Hijacking. Paragraph 15(e) of the Policy provides that if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Jazeera went on to note that:
"Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations."
The three-member panel in Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.
In the view of the Panel this is a Complaint in which the prospects were limited. The Complainant concedes that the Respondent is operating a criticism site, both in its Complainant and correspondence with the Respondent. The Complainant's submissions suggesting that the Respondent, despite conceding that it is operating a criticism site, lacks rights and legitimate interests are limited to:
a) submissions about misstatements on the site, significantly rebutted by the Respondent. Such material may be relevant to a court proceeding however the Policy does not require operators of non-commercial criticism websites to justify the correctness of every statement made on their websites;
b) submissions, not supported by UDRP precedent, about tarnishment; and
c) submissions about the Respondent's commercial purpose and/or being connected to an unseen commercial competitor. These submissions are based on the fact that the Respondent has used a privacy service and because the Respondent allegedly purchased Google advertising for its website (for the estimated cost of USD 600 a week, an assertion that is entirely unsupported by any evidence). Such submissions are little more than speculation and do not rebut the clear and obvious inference available from the site itself, being that the Domain Name is being used as a legitimate non-commercial site criticising the Complainant and its products.
Nevertheless, the present case is not a case where it would be appropriate to make a finding of Reverse Domain Name Hijacking for the following reasons:
a) As noted in the WIPO Overview 2.0, there are a some varying opinions expressed by UDRP panelists as to whether a criticism site generates rights and legitimate interests. It may therefore be to some extent difficult for a filing complainant to foresee the outcome of a particular case, criticism cases, such as this, being decided on a case by case basis.
As such, despite the finding made in this case, the Panel declines to find that the Complainant should have appreciated at the outset that its Complaint could not succeed.
b) The present proceeding is one where there are significant factual disputes between the parties relating to the conduct of both the Complainant and the Respondent in the proceeding. As noted in the WIPO Overview 2.0, WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances where there is a question of clean hands or factual accuracy on the part of both parties. The Panel considers that this is such a case and declines to make a finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: January 13, 2016
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