The Complainant is Visit Faroe Islands P/F of Torshavn, Faroe Islands, Denmark, represented by Bird & Bird Advokatpartnerselskab, Denmark.
The Respondent is Pilot Whale, Save the Whales of Port Elizabeth, South Africa. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed 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 January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 19, 2016, 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 Complainant filed an amended Complaint on January 20, 2016.
The Center verified that the Complaint together with 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 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 15, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 23, 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. 4. Factual Background
The Complainant is the official office of tourism on the Faroe Islands. The Complainant obtained a trade mark registration for VISITFAROEISLANDS in June 2014. The Complainant is also the registrant of the domain name since February 2001.
The Respondent operates a non-profit website at the Disputed Domain Name with information about the tradition of whaling at the Faroe Islands. The Disputed Domain Name was created on July 24, 2015. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarized as follows: A. The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
(a) The Complainant has registered the trade mark VISITFAROEISLANDS since June 2014 and has used the trade mark in its domain name since 2001.
(b) The Respondent has registered the Disputed Domain Name with the intention to mislead consumers by registering a domain name as close to the Complainant's domain name and trade mark as possible by adding the generic word "the" between "visit" and "faroeislands". B. The Respondent has no rights or legitimate interests in respect of the Dispute Domain Name
(c) The Complainant has not licensed or otherwise permitted the Respondent to use its trade marks or service marks or to apply for any domain name incorporating any such marks.
(d) The Respondent is an activist group called Save The Whale portraying the long standing Faroese tradition of whaling as "horrific and cruel", "mass murder", and an "orgy of blood and flesh". There is no apparent evidence that the Respondent in any way or at any time has been commonly known by the Disputed Domain Name and the Respondent must surely have been aware of the Complainant's use of the registered trade mark VISITFAROEISLANDS since February 2001.
(e) The Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services.
(f) The front page of the Respondent's website contains pictures of slaughtered whales, bloody sea water, and people covered in whale blood with knives, chainsaws, and pickaxes in their hands. These pictures are accompanied by statements including "The Faroe Islands' hunger for blood", "Your vacation in Hell starts here", and "ISIS has nothing on this lot." The Respondent's website also contains a page name "The Plight of Faroese women" with statements from three anonymous Faroese girls accusing Faroese men of incest and abuse.
(g) The Complainant acknowledges the freedom and right to criticize and exercising the right to freedom of expression, but the right to freedom of expression is not unlimited. Comparing the Faroe Islands and its people to radical terrorists and accusing them of incest are, in the eyes of the Complainant, unjustified.
(h) Should a potential tourist type in the Disputed Domain Name with the purpose of learning about what opportunities the Faroe Islands can offer as a tourist attraction, he or she will be met with these violent and hateful statements, leaving him or her with a radically different view of tourism on the Faroe Islands, thereby tarnishing the Complainant's trade mark.
(i) The Respondent is not making a legitimate fair use of the Disputed Domain Name, as the Respondent, by using a domain name so close to the Complainant's trade mark, is intentionally diverting customers to a website containing derogatory and hostile statements and accusations with the purpose of tarnishing the Complainant's trade mark.
(j) The majority of UDRP decisions concerning non-United States of America ("US") websites do not accept free speech as a justification for registration and use of a domain name that is identical or confusingly similar to the owner's registered trade mark. This corresponds to the "View 1" practice of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 2.4 (citing The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823).
(k) The principle of free speech does not justify the Respondent in misleadingly diverting the Complainant's consumers. (Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299) Where there is nothing in the domain name to indicate that the site is devoted to criticism of the Complainant, even though this criticism is apparent upon visiting the Respondent's website, the Respondent diverts Internet traffic to its own site, thereby potentially depriving the Complainant of visits by Internet users, for instance potential tourists, while also tarnishing the Complainant's trade mark. C. The Disputed Domain Name was registered and is being used in bad faith
(l) The Respondent has registered the Disputed Domain Name more than 14 and a half years after the Complainant began using its domain name and over 1 year after the Complainant obtained its trade mark registration for VISITFAROEISLANDS.
(m) The Respondent inappropriately registered the Disputed Domain Name to disrupt the Complainant's business by diverting consumers to its website, misleading consumers into thinking that the content contained on the website is affiliated with and/or supported by the Complainant.
(n) The Respondent is using a domain name very close to the Complainant's without any indication in the Disputed Domain Name that the website contains criticism of the Complainant, when there are numerous legitimate ways to communicate criticism through websites and their domain names. The Respondent could simply add a "criticism-prefix" to the Disputed Domain Name thereby leaving no question as to whether the Respondent's website was affiliated with and/or supported by the Complainant.
(o) The Respondent, through providing a telephone number referring to the South African embassy in Denmark, who by telephone denied any relation to the Respondent, has acted in bad faith trying to hide the true identity of the Respondent and thus unduly obfuscating the communications process. This is probably done in an attempt to avoid detection as long as possible (The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, supra.). B. Respondent
The Respondent's contentions can be summarized as follows:
(a) The Complainant's website (which promotes tourism) and the Respondent's website (which promotes awareness of other aspects of the Faroe Islands) are totally different.
(b) Everything on the Respondent's website is factual. The photos on the Respondent's website were taken at the Faroe Islands and the stories are authentic.
(c) The Respondent's website is non-profit and the Respondent is not a competitor of the Complainant.
(d) There is no law stating that a website must offer goods and services. The Respondent's website does not offer goods and services, but it offers information and education to those who want to see what the Grind is about and what other points of interest there are available on the Faroe Islands.
(e) When the Respondent registered the Disputed Domain Name, it had no knowledge of the Complainant.
(f) The Complainant and the Respondent are not competitors and the Respondent did not register the Disputed Domain Name to disrupt the Complainant's business.
(g) The Complainant's Complaint amounts to censorship, where it is trying to hide what is in full view and fully available on the Internet. The Complainant is attempting to sweep under the rug what is factually happening in the Faroe Islands. If the Complainant succeeds, it will surely set a new standard in Internet censorship, not to mention, setting a dangerous precedence for future cases. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is 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 Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the VISITFAROEISLANDS mark based on its trade mark registrations since June 2014.
The only difference between the Disputed Domain Name and the Complainant's trade mark is the addition of the definite article "the" between "visit" and "faroeislands" in the Disputed Domain Name. It has been held in many cases that, where the only difference between a disputed domain name and a complainant's trade mark is the removal of the definite article "the", as the definite article offers little meaning to the trade mark, its removal does nothing to negate the confusing similarity between the disputed domain name and the complainant's mark (see e.g., Press-Enterprise Company v. Cook Barela,WIPO Case No. D2006-0731; Mandarin Oriental Services B.V. v. Control Alt Delete,WIPO Case No. D2000-1671; and Witmer Public Safety Group, Inc. v. Kwang pyo Kim,WIPO Case No. D2011-0075). The Panel is of the view that the same principle applies here in reverse, where the addition of the definite article "the" is the only difference between the Disputed Domain Name and the Complainant's trade mark. Accordingly, the Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant's trade mark.
It is a well-established rule that in making an enquiry as to whether a domain name is identical or confusingly similar to a trade mark, the generic Top-Level domain extension ("gTLD"), in this case ".com", may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use its VISITFAROEISLANDS mark, and that the Respondent has not become commonly known by the Disputed Domain Name. The Panel is therefore of the view that a prima facie case has been established, and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.
Accordingly, the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Name for legitimate non-commercial purposes without intention to misleadingly divert customers or to tarnish the trade mark at issue or in connection with a bona fide offering of goods or services.
The Respondent does not contend that it has used the Disputed Domain Name in connection with a bona fide offering of goods and services. The Respondent's arguments mainly revolve around the argument that its use of the Disputed Domain Name to operate a website which criticises the whaling activities and other issues on the Faroe Islands, and consequently raises awareness amongst the public, constitutes a legitimate non-commercial purpose.
It has been discussed in many decisions whether using a domain name for the purposes of operating a criticism website can constitute a legitimate noncommercial purpose, such that it would confer a right or legitimate interest in the domain name on the respondent.
The Panel agrees with the view that domain name complaints should be decided on the basis of general principles of law that are widely accepted throughout the world and not be dependent on particular national laws, which view was adopted in various cases, including Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond,WIPO Case No. D2007-1379; Coast Hotels Ltd. v Bill Lewis and UNITE HERE,WIPO Case No. D2009-1295; Nippon Paper Industries Co., Ltd. v. Harriett Swift,WIPO Case No. D2011-0832; and Neste Oil Oyj v. Föreningen Greenpeace-Norden,WIPO Case No. D2012-0891. Following the approach in these cases, the freedom of expression as conferred by principles of international law should be protected, so long as the respondent is not using the disputed domain name in a way which would otherwise contravene the Policy. Paragraph 15(a) of the Rules.
Based on the content of the website to which the Disputed Domain Name resolves, the Panel accepts that the Respondent is not operating the website with an intent for commercial gain. The Panel is persuaded that the Respondent registered and is using the Disputed Domain Name with a view to voicing its concerns about whaling activities and other issues on the Faroe Islands, as opposed to obtaining commercial gain or for any other dishonest purpose.
The Panel also finds that the Respondent has not registered and is not using the Disputed Domain Name with a view to mislead or divert Internet users or with the purpose of tarnishing the Complainant's trade mark. As stated in the decision of the panel in Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505 (hereinafter "Britannia"), the phrase "misleadingly diverting customers" refers to "the kind of confusion that arises in a trade mark context, when a competitor diverts consumers to its site and, potentially diverts sales". The Panel finds no evidence of such diversion for commercial gain in the present case in view of the content of the website.
In addition, the Panel does not consider that the Respondent is operating the website to tarnish the Complainant's trade mark. As stated in the Britannia case discussed above, tarnishment "refers to such unseemly conduct such as linking unrelated pornographic violent or drug related images of information to an otherwise wholesome mark […] 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".
Accordingly, the Panel finds that the Respondent is using the Disputed Domain Name for legitimate, noncommercial purposes, and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Panel does not need to consider whether the requirements of paragraph 4(a)(iii) are met. 7. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Date: March 8, 2016
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