The Complainant is Kirsten Paul, Paul International Consultants of Aschaffenburg, Germany, represented by Patentanwälte A. Thürer + Dr. A. Nitz, Germany.
The Respondent is Philip Thomas of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, and the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 June 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2016. The Response was filed with the Center on June 30, 2016.
On July 7, 2016, the Center received a Supplemental Filing from the Complainant. On July 12, 2016, the Center received a Supplemental Filing from the Respondent. On July 18, 2016, the Center received a second Supplemental Filing from the Complainant. On July 24, 2016, the Center received a second Supplemental Filing from the Respondent.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 12, 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.
The Panel notes that each of the Parties has submitted supplementary submissions without being invited to do so from the Panel. The Panel has reviewed these submissions and has found them to be of limited relevance to the subject matter of the present dispute and has decided to take them into account only to the extent they contain such relevant information. 4. Factual Background
The Complainant’s company “Paul International Consultants” is a boutique Germany-based consulting firm with clients from all over the world. It has been working in the field of housing and house financing for more than 20 years.
The Complainant is the owner of the trademark KIRSTEN PAUL INTERNATIONAL CONSULTANTS, registered in Germany with registration No. DE 302013031222, applied for on May 13, 2013, and registered on August 8, 2013 for services in International Classes 35, 36 and 37 (the “KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark”).
The disputed domain name was registered on December 20, 2015. It resolves to a website criticizing the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark, which is widely used especially in the field of mortgages. The disputed domain name includes the elements “kirsten” and “paul”. These elements of the disputed domain name are identical to the characteristic elements of the KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark, which makes the disputed domain name confusing for Internet users.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because he has no interest in offering goods or services under the disputed domain name and is not making a legitimate noncommercial or fair use of it. The Respondent is not commonly known under the disputed domain name, because his name is different and he has no business in the field of mortgages with a similar name.
The Complainant states that the Respondent uses the disputed domain name only to present defamatory statements about the Complainant and to mislead and divert consumers and to tarnish the Complainant’s KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark. The Respondent is operating a website at the disputed domain name, using the logo of the Complainant. The logo was removed in June 2016 only after the Complaint was filed in the present proceeding. The Respondent’s website is defamatory for the Complainant. It contains the statement “We’ll be expanding this site to include specifics of the way they operate and how it leaves you exposed to loss. We’ll include emails detailing their incompetence and casual approach to your money”, but no such specific details or evidence have ever been given on the website.
According to the Complainant, the disputed domain name should be considered as having been registered and used in bad faith by the Respondent because it was registered and is being used primarily for the purposes of disrupting the business of the Complainant.
The Complainant also mentions that neither it, not its attorneys have been able to contact to the Respondent in person, as he has never disclosed his phone number, even after repeated requests. B. Respondent
The Respondent denies that the disputed domain name is confusingly similar to the KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark. According to the Respondent, “Kirsten Paul” is a more general name, and the element “Kirsten Paul” of the KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark is not its relevant part. The Complainant had ample opportunity to register the disputed domain name before the Respondent, but chose not to do so. According to the Respondent, the explanation for this is that the disputed domain name does not relate to the Complainant’s trademark.
The Respondent submits that the Complainant is more concerned with stopping the Respondent from publicizing the loss he has suffered as a customer of the Complainant. There is no “confusion to visitors” of the website at the disputed domain name, as the content of the website is clear and it is obvious to any sensible and prudent Internet user that this website is not related to the Complainant. The Respondent offered to put a notice on his website to say that it was not connected to the Complainant, and to make any confusion impossible. The Respondent added a disclaimer to his website.
According to the Respondent, the disputed domain name was not registered in bad faith. The Respondent denies that the disputed domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
The Respondent further submits that the disputed domain name is put to a legitimate use for a complaint website and that the disputed domain name was bought in good faith for that purpose. The Respondent’s website was made to publicize the Respondent’s case and to prevent someone else from going through the monetary loss and stress that the Respondent suffered due to the Complainant. The statements on the Respondent’s website are not defamatory, and the website has never contained any commercial advertising, sponsorship or anything else that could earn revenue.
The Complainant threatened to sue the Respondent in both the United Kingdom and in the United States of America because of the content of the Respondent’s website, but never actually commenced such proceedings. In early 2015, the Complainant offered to buy the disputed domain name for USD 5,000. It took the Complainant 18 months to commence the present proceeding.
The Respondent further points out that the Complainant’s German trademark only applies in Germany.
Finally, the Respondent alleges that the Complainant has engaged in reverse domain name hijacking and requests the Panel to make such a finding against the Complainant. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” section of the disputed domain name.
The disputed domain name contains the element “kirstenpaul”, which represents a combination between “kirsten” and “paul”. This combination is identical to the distinctive element “KIRSTEN PAUL” of the KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark. The difference between the disputed domain name and the trademark is the lack in the disputed domain name of the descriptive elements “international” and “consultants” of the trademark. In the Panel’s view, this difference is insufficient to remove the likelihood Internet users to be confused into regarding the disputed domain name as an official online location of the Complainant.
Taking the above into account, the Panel finds that the disputed domain name is identical to the dominant and distinctive part of the KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name “Kristen Paul”, and that the Respondent has used the disputed domain name for a defamatory website targeting the Complainant, which could not be regarded as a legitimate use.
There is no evidence in the case file that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied that its name is different.
The disputed domain name contains the combination of “kirsten” and “paul”, which makes it likely that Internet users may be confused into regarding the disputed domain name as an official online location of the Complainant.
The KIRSTEN PAUL INTERNATIONAL CONSULTANTS trademark was first registered two years before the disputed domain name, and the Respondent has admitted that the disputed domain name was intended for a website targeting the Complainant. The website associated to the disputed domain name contains general allegations criticizing the Complainant.
As stated in paragraph 2.4 of the WIPO Overview 2.0, “[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.” This view was cited with approval by the panel in Strike Holdings LLC v. Domains by Proxy, LLC/Reap Sow/Daniel Paden,WIPO Case No. D2013-1772: “In the opinion of the Panel, the basic difficulty with using a domain name that is essentially identical to a trademark (…) is that in most cases the domain name, because of its nature, will be perceived by the public as being in some manner authorized by the trademark owner. Essentially, by adopting that domain name the registrant is making a false representation to the world as to who it is. While, of course, the Respondent is free to exercise its freedom of speech, the Panel finds it very problematic that it does so while misrepresenting itself as the Complainant.”
The Panel finds the above to be the case here – the disputed domain name is nearly identical to the Complainant’s trademark, and risks being perceived by the public as being endorsed by the Complainant. The Panel takes the view that the Respondent’s right to criticize the Complainant does not extend to the right to register a domain name identically incorporating the dominant and distinctive part of the Complainant’s trademark.
In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The facts of the present case do not fall squarely within the circumstances set out under paragraph 4(b) of the Policy. Nevertheless, taking into account the Panel’s analysis under the second element, the Panel finds that the intentions behind the actions of the Respondent are directed at negatively affecting the reputation of the Complainant in an illegitimate manner. The Panel considers the reasoning of the panel in Strike Holdings LLC v. Domains by Proxy, LLC/Reap Sow/Daniel Paden, supra, applicable to this case, namely that “(...) the Respondent has gone beyond legitimate fair use to use a (…) domain name that is deliberately confusing with the Complainant’s trademark, which is used by Complainant as the domain name for its website. This conduct is calculated to divert Internet traffic, disrupt the Complainant’s business, and cause economic harm to the Complainant in a manner that goes beyond mere legitimate criticism.”
On the basis of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
In light of the Panel’s findings above, the matter of reverse domain name hijacking need not be considered. 7. 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 name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: July 26, 2016
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