The Complainant is Julian Arturo Alvarez Insua of Buenos Aires, Argentina, self-represented.
The Respondent is Joshua Kamens of New York, United States of America, self-represented. 2. The Domain Name and Registrar
The first disputed domain name is registered with GoD, LLC (the “Registrar”).
As discussed below, in the course of the proceeding, the Complainant requested that the domain name be joined to the proceeding. This second disputed domain name is also registered with the Registrar. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2016 (hereinafter the “Complaint”).
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 January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Response was filed with the Center on February 8, 2016.
On February 10, 2016, the Complainant sought to file a supplemental filing in rebuttal of the Response. This led to a series of four further emails being submitted by the Respondent and the Complainant on February 12, 2016.
On February 12, 2016, the Complainant submitted a request to join the domain name into the proceeding. The Complainant reiterated this request on February 17, 2016 and again on February 25, 2016. Between the two latter requests, the Respondent made two further supplemental filings in reply to the Complainant’s request on February 17, 2016 and the Complainant retaliated with two further emails.
The Center appointed Warwick Rothnie as the sole panelist in this matter on February 25, 2016. 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 March 7, 2016, the Panel issued Panel Order No. 1.
The Registrar transmitted its verification response concerning the second disputed domain name to the Center later that same day.
On March 11, 2016, the Panel issued Panel Order No. 2.
The Complainant filed further supplemental filings pursuant to the above Panel Orders on, respectively, March 8 and 12, 2016. The Respondent filed a supplemental filing pursuant to the above Panel Orders on March 18, 2016. Later that same day, the Complainant sought to file a further supplemental filing seeking to respond to the Respondent’s supplemental filing. 4. Factual Background
The Complaint does not provide much information about himself or the nature of his business activities. It would appear that he is associated with a company that has been operating in the export/import business since 1977. The Complaint includes evidence that one Vera Eisenhardt owns a trademark registered in Argentina, No. 2,606,238 for EISENHARDT in International Class 6, registered on November 12, 2013.
It would appear that the Respondent attempted to enter into a business transaction with the Complainant’s company in 2006, seeking to buy some scrap metal. The deal did not proceed. The Respondent alleges this was because the Complainant and his company set out to defraud the Respondent. The Complainant vehemently denies this allegation and says that, after paying the deposit or the first instalment under the contract, the Respondent failed to make the further payments required under the contract and so the first sum was forfeit.
The first disputed domain name was registered with the Registrar on November 18, 2014. The Complainant says it came to his attention only when some of his customers commented on the content of the website to which the first disputed domain name resolved. That website contained allegations that the Complainant had defrauded the Respondent in a business transaction. Just to be clear, however, the Panel notes that the Complainant vehemently denies this allegation.
After the Complaint was notified to the Respondent, the Respondent registered what the Panel will refer to as the second disputed domain name with the Registrar on January 27, 2016. In his Response, the Respondent offered to surrender the first disputed domain name while reserving his rights in relation to the second disputed domain name. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the 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.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
Before addressing the substantive aspects of the Complaint, it is necessary for the Panel to deal with the Complainant’s request to make a supplemental filing (and the sequence of emails it gave rise to) and also the Complainant’s request to join the second disputed domain name into the proceeding. A. Joinder of additional domain name
Although this request was made second, the Panel addresses it first because, as discussed below, the Respondent offered to surrender the first disputed domain name in his Response and the dispute between the parties is really over the second disputed domain name (if it be joined).
As the second disputed domain name was not registered when the Complaint was filed, the Complainant was not in a position to include it in the Complaint as filed.
The second disputed domain name invokes the same trademark as the first disputed domain name, albeit with additional elements. The Respondent has also made plain his intention to use the second disputed domain name to continue the conduct under the first disputed domain name to which the Complainant objects.
Noting both parties have taken advantage of the opportunity to make submissions on the Complainant’s joinder request and the substance of the dispute and in the exercise of the Panel’s powers under paragraphs 10 and 15 of the Rules, therefore, the Panel will allow the second disputed domain name to be included in the Complaint. B. Supplemental filings
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Having allowed the joinder to the Complaint of the second disputed domain name for reasons discussed above, the Panel admits into the record the filings made by both the Complainant and the Respondent in response to Panel Orders Nos 1 and 2.
Paragraph 10 of the Rules also gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
The proliferation of emails expressed often in quite intemperate terms which the parties have seen fit to submit in this proceeding serves as a reminder that these proceedings are intended to be a confined exchange to enable the parties to put their respective cases so that the dispute can be resolved expeditiously. That said, the Complainant, who is self-represented, does attempt to some extent to address the justification or exculpation raised by the Respondent for his conduct. The Panel, therefore, will include the supplemental filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2. In the interests of fairness, the Panel will also include the subsequent emails by both parties as it is not really feasible to separate the invective from the substantive. C. First disputed domain name
Following the filing of the Complaint, the Respondent made a submission offering to surrender the first disputed domain name. It was in the course of that submission that the registration of the second disputed domain name came to light as the Respondent expressly reserved his rights to maintain that registration. The Respondent maintained that position in his supplemental filing on March 18, 2016.
For the reasons discussed in section D below, the Panel concludes that the Complainant has shown sufficient interest in the trademark for EISENHARDT registered in Argentina to found trademark rights under the Policy.
Accordingly, the Panel will order that the first disputed domain name be transferred to the Complainant. See e.g. Fujitsu Siemens Computers GmbH v. RareNames, WebReg,WIPO Case No. D2008-0828. It is still necessary to resolve the dispute over the second disputed domain name. D. Identical or Confusingly Similar
As already noted, the Complainant founds his right to bring the Complaint on the trademark registered in Argentina for EISENHARDT. This trademark is registered in the name of Vera Eisenhardt.
In response to Panel Order No. 2, the Complainant has submitted a statement apparently by Vera Eisenhardt stating that she has authorised the Complainant and another individual, Raul Insua, to use the trademark and further that she has not authorised the Respondent to use the trademark. The Complainant supplemented that statement with the further information that Ms. Eisenhardt is his mother and the founder of the export/import business which he operates, Eisenhardt Trading.
The Respondent points out in his supplemental filing on March 18, 2016, that the statement by Ms. Eisenhardt is undated, not notarized and has a digital signature rather than an original signature. Having regard to the nature of his allegations against the Insuas, he then claims there is a chance that it is fabricated.
The Panel of course is not in a position to determine whether the document is in fact genuine or fabricated. It has been submitted by the Complainant who claims it is genuine. The Panel also notes that the Respondent did not contest the Complainant’s rights to assert the trademark in either his original Response or the email communications which followed. Rather, he promptly offered surrender of the first disputed domain name on the basis that it was in violation of the Policy and sought to justify the second disputed domain name partly on the basis that the Complainant’s rights were limited to Argentina and did not extend to the United States of America. The Complainant for his part makes equally vehement allegations of impropriety against the Respondent.
The Panel considers that the Complainant’s supplemental statement must be treated as falling within the certification that the information submitted in the Complaint is true and correct. Apart from the Respondent’s claim that there is a “chance” that it is fabricated, there is nothing on the face of the document or otherwise in the record which suggests it is other than what it purports to be.
In these circumstances, the Panel considers that there is insufficient basis to reject the statement from Ms. Eisenhardt submitted by the Complainant. Accordingly, the Panel finds that the Complainant has proved sufficient rights in the trademark EISENHARDT to found a complaint under the Policy.
The Complainant must also show that the second disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel notes that it has long been established under the Policy that the inclusion of a person’s trademark in a domain name with some other descriptive term, even a perjorative term such as in the present case, is not usually sufficient to dispel a finding of confusing similarity. 1 That approach is entirely apposite in the present case where the point of the use of the Complainant’s trademark in the second disputed domain name is to make sure that the public knows it is the Complainant, or Complainant’s business, that is being referred to.
Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy in relation to the second disputed domain name (as well as the first). E. Rights or Legitimate Interests in second disputed domain name
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.2
The Complainant states that neither he nor his mother has authorised the Respondent to use the second disputed domain name. Nor is the Respondent affiliated with him, his mother or the Eisenhardt Trading business.
The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not hold any trademarks for the second disputed domain name.
The Respondent does not dispute any of these matters. Rather, he contends he is entitled to use the second disputed domain name to warn the general public of what he says are the fraudulent business practices of the Complainant. The Respondent points out that his website includes a prominent disclaimer making it clear it is not a website of, or endorsed or otherwise approved by, the Complainant.
The Respondent’s justification relates to the dispute between the parties over the partial payment of the moneys towards a scrap metal contract mentioned in section 4 above. That is, the Respondent says he is making a legitimate noncommercial use of the second disputed domain name as permitted by the Policy. The Panel notes that many Panels, including the present Panel, have accepted that “criticism” sites can be a legitimate use of a domain name under the Policy provided they are done in good faith.3
As noted in section 4, the Complainant vehemently disputes the allegation of fraud and contends that the Respondent is using the website to damage the Complainant’s business reputation.
The Panel is not in a position to resolve the dispute between the parties about the wrongs and rights of that contractual dispute. A dispute under the Policy is simply not the forum for resolving such disputes.
However, on July 29, 2015, the Respondent did send an email to the Complainant in the following terms:
“You should really buy this web domain from me.
I get a lot of emails like this.
I won’t be so nice next time.”
The email also forwarded an emailed inquiry that the Respondent had received from someone asking for information about the Complainant “and his team”.
Although the parties have submitted numerous emails justifying their respective positions, the Respondent has not sought to explain this email. To the Panel’s mind, it conveys the clear implication that the Respondent will continue to blacken the Complainant’s name unless the Complainant agrees to buy the domain name in question from the Respondent.
Whether the Respondent has a legitimate dispute with the Complainant or not (about which the Panel cannot comment), the use of a domain name embodying the Complainant’s trademark in this fashion is hardly good faith under the Policy. If the Respondent were genuinely operating a criticism or warning site about the Complainant, it is hardly consistent with that public interest or free speech rationale to offer to sell the domain name to the person who is the subject of the criticism.
The Panel notes that the email was sent in relation to the first disputed domain name and before the second disputed domain name was registered. However, the second disputed domain name is simply a continuation of the Respondent’s conduct under the first disputed domain name. It is true the Respondent registered the second disputed domain name and offered to surrender the first disputed domain name after receiving the Complaint and undertaking some study of the Policy. The Panel is not prepared to accept that the Respondent’s conduct and motivations under the first disputed domain name changed on receipt of the Complaint and following a study of the Policy. That is, the Panel is not prepared to find that conduct which was not in good faith under the Policy is converted into good faith conduct following a study of the Policy.
In these circumstances, the Panel finds the Complainant has established the second requirement under the Policy also. F. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Like the first disputed domain name, the second disputed domain name was clearly registered with knowledge of the Complainant and his trademark. While ostensibly seeking to be a legitimate criticism site, the circumstances of the registration of the second disputed domain name show that it was registered and is being used as a continuation of the policy which motivated the registration and use of the first disputed domain name. Whatever may be the merits of the contractual dispute between the parties, the email from the Respondent sent to the Complainant on July 29, 2015 reveals a very different motivation behind the registration and use of the first disputed domain name and, consequently, the second disputed domain name. That use and, by inference the purpose of the registrations, was not in good faith under the Policy.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy in relation to the second disputed domain name also. 6. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred to the Complainant.
Warwick A Rothnie
Sole Panelist
Date: March 23, 2016
1 See WIPO Overview 2.0 paragraphs 1.2 and 1.3.
2 See e.g., paragraph 2.1 of the WIPO Overview 2.0.
3 See e.g. WIPO Overview 2.0, paragraph 2.4.
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