The Complainant is Seven Network (Operations) Limited of Pyrmont, New South Wales, Australia, represented by Addisons Lawyers, Australia.
The Respondent is Knock Knock WHOIS Not There, LLC of Beaverton, Oregon, United States of America ("United States") / [Name Redacted] of Sydney, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Automattic Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2017. On March 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2017, 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 March 22, 2017 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 March 27, 2017.
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 March 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2017. The Respondent sent two email communications to the Center on April 17, 2017. On April 18, 2017, the Center notified the Parties that the Panel appointment process would commence.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 25, 2017. 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 April 28, 2017, the Complainant submitted to the Center by email a supplemental filing containing details of material published by the second-named Respondent and court proceedings involving the Complainant and second-named Respondent that took place after the amended Complaint was filed on March 27, 2017. On May 8, 2017, the Panel issued Procedural Order No. 1 in which the Complainant's supplemental filing was admitted, on the grounds that it contained material that the Complainant could not reasonably be expected to have included in the amended Complaint and that appeared relevant and significant to matters in dispute in the case, and the second-named Respondent was invited to respond to the Complainant's supplemental filing. The second-named Respondent sent an email to the Center in response to the Complainant's supplemental filing on May 11, 2017. On May 26, 2017, the Panel issued Procedural Order No. 2 in which the Complainant was requested to say whether the Website Suppression Order (discussed in section 4, below) remained in force and to provide comments on the effect of that order on publication of this Decision. The second-named Respondent was invited to reply to any response by the Complainant. The Complainant responded to Procedural Order No. 2 on May 30, 2017. No reply was received from the second-named Respondent. 4. Factual Background
The Complainant is the operator of the Seven Media Group, a group which includes a network of free-to-air television stations operating throughout Australia (the "Seven television network"). The Seven television network currently is the highest-rated of the three free-to-air networks in Australia. The Chief Executive Officer of the Complainant is Mr. Tim Worner. Recently an affair between Mr. Worner and a former executive assistant at the Complainant, Ms. Amber Harrison, became public knowledge, and the subject of litigation between Ms. Harrison and the Complainant (the "Harrison Proceeding").
The Complainant owns numerous trademark registrations in Australia featuring either the word "seven" or the number "7", for a variety of services relating to the operation of the Seven television network. These include a registration of the word trademark SEVEN, for services in classes 35, 38 and 41, including "news agency services", with effect from March 2, 2007.
The disputed domain name was registered on February 25, 2017. According to the publicly-available WhoIs data, the registrant of the disputed domain is "Knock Knock WHOIS Not There, LLC". The Registrar disclosed that this entity is a privacy service, and that the underlying registrant name and registrant organization is "[Name Redacted]".
The Complainant maintains that the second-named Respondent, "[Name Redacted]" is, in fact, a fake name with a fake address that is being used to hide the identity of the actual registrant of the disputed domain name, which the Complainant alleges is Mr. Shane Dowling of Bondi Beach, Sydney, Australia. Mr. Dowling is an online blogger who operates a website where he publishes posts about political, judicial and media personalities and allegations of corruption by them. Between December 2016 and February 2017, Mr. Dowling published material extracted from a confidential complaint by Ms. Harrison to the Australian Human Rights Commission, which included the identities of a number of persons (the "Plaintiffs") alleged to have had an affair with Mr. Worner. Two of the Plaintiffs initiated defamation proceedings in the Supreme Court of New South Wales against Mr. Dowling on December 21, 2016 (the "Defamation Proceeding"), and on that day obtained orders suppressing the publication of their names and restraining Mr. Dowling from publishing material imputing that they had engaged in adultery or an inappropriate sexual relationship with Mr. Worner. Further orders, to the same material effect, were made on February 22, 2017 and March 3, 2017, in respect of two other Plaintiffs.
On February 21, 2017, evidence was sought to be adduced in the Harrison Proceeding that contained allegations about the Plaintiffs. To protect the Plaintiffs, a court order was made suppressing publication of the names of the Plaintiffs and the name of Mr. Dowling's website (the "Defamation Suppression Order"). Within a few days of the making of the Defamation Suppression Order, the disputed domain name was registered and used to resolve to a website containing numerous posts concerning both the relationship between Mr. Worner and Ms. Harrison and the Harrison Proceeding. The "About" page of the website states that the website is setup to "fight for free speech rights and whistleblower rights in Australia", and criticizes Seven West Media and Kerry Stokes.
Following the filing of the Complaint, the website resolving from the disputed domain name remained active and continued to publish material that the Complainant alleges is defamatory. On or around April 17, 2017, an article was published on the website which included an email from Mr. Dowling sent to various Directors of the Complainant. On April 19, 2017, the Complainant filed a Summons and Notice of Motion in the Supreme Court of New South Wales (the "Website Removal Proceeding") against a defendant named as "The Publisher, [name redacted-d2017-0498].com", seeking various orders that the material published on April 17, 2017, be removed from the defendant's website. On April 19, 2017, the Supreme Court of New South Wales ordered that the defendant "forthwith remove from the website www.[name redacted-D2017-0498].com" the offending material (the "Website Removal Order"). As of the date of this Decision, the material has remained on the website.
On April 20, 2017, the Court in the Website Removal Proceeding issued a further order, to the effect that the identity of the Defendant and the Defendant's website not be published (the "Website Suppression Order"). On May 26, 2017, in response to Procedural Order No. 2, the Complainant stated that the Website Suppression Order remains in in force, and that the Website Removal Proceeding remains active and is next listed for directions on June 23, 2017. The Complainant also stated that "publication of the Decision by the Center on its publicly accessible and searchable website would amount to publication of the identity of the defendant and the defendant's website" in the Website Removal Proceeding. The Complainant further stated that: "This publication would be a breach of the [Website Suppression Order] and pursuant to s16 of the Court Suppression and Non-Publication Orders Act 2010 (NSW) is and both an offence and punishable as contempt of court."
Given the exceptional circumstances of the existence and the effect of the Website Suppression Order, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules the Panel has resolved: (i) to issue this Decision with the disputed domain name, the name of the second-named Respondent and certain other potentially identifying information redacted from it; (ii) to list the disputed domain name and the name of the second-named Respondent in the Annex to this Decision; (iii) to direct the Center to not publish the Annex to this Decision; and (iv) to direct the Center to provide to the Registrar, solely for the purpose of implementing this Decision, the Annex to this Decision. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because: (i) it consists of the Complainant's SEVEN trademark, the [word redacted] word "[word redacted]" and the [phrase redacted] "[word redacted]", and that the latter two words are by themselves, or in combination, insufficient to distinguish the trademark from the disputed domain name given that the [phrase redacted] word of the disputed domain name is the Complainant's trademark; and (ii) it makes specific reference to the legal matter between the Seven television network and Ms. Harrison, such that the additional words "[word redacted]" and "[word redacted]" strengthen any similarity that may arise by reason of the incorporation of the SEVEN trademark in the disputed domain name.
The Complainant contends that the second-named Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the second-named Respondent is not affiliated with the Complainant in any way, and has not been authorized by the Complainant to register or use the disputed domain name or to seek the registration of any domain name incorporating the SEVEN trademark; (ii) there is no evidence to suggest that the second-named Respondent is commonly known by the disputed domain name or any similar name, as the named registrant "[Name Redacted]" is a pseudonym chosen to hide the true identity of the registrant; (iii) there is no evidence that the second-named Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use; (iv) the named registrant is a fake name and the actual registrant of the disputed domain name is Mr. Dowling, who registered the domain name to use it deliberately to breach various court orders preventing the publication of the identity of the Plaintiffs suing him for defamation; (v) Mr. Dowling is using the disputed domain name to publish articles that are defamatory and in breach of court orders, which is a use well outside the bounds of what could be considered a legitimate use of the domain name; and (vi) the malicious dissemination of deliberately misleading material does not constitute a legitimate or fair use.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) when the second-named Respondent registered the disputed domain name it had no rights and legitimate interests in it; (ii) the second-named Respondent registered the disputed domain name with awareness of the Complainant, its rights in the SEVEN trademark that predate the registration of the disputed domain name, and the court orders preventing publication of the identity of the Plaintiffs; (iii) the disputed domain name has been registered and used by the second-named Respondent for the purposes of publishing material that is defamatory of the Plaintiffs and in breach of specific court orders; (iv) the second‑named Respondent's use of a privacy service, combined with obviously incorrect identity details, in order to publish material in breach of specific court orders, is strong evidence of bad faith use; (v) given the content of the website resolving from the disputed domain name, the only explanation for the use of fake identity details must be a desire to avoid the legal consequences of publishing material that is defamatory and in breach of court orders; and (vi) even if the disputed domain name is held by an entity other than Mr. Dowling, the publisher of the website to which the disputed domain name resolves is both connected to Mr. Dowling and aware of the court orders against him, and the use of the disputed domain name to publish materials that are defamatory, hurtful and in breach of court orders is use in bad faith.
In its unsolicited supplemental filing, the Complainant contended that the failure of the second-named Respondent to remove offending material from the website resolving from the disputed domain name in breach of the Website Removal Order is further evidence that the second-named Respondent lacks rights or legitimate interests in the disputed domain name and that the second-named Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The second-named Respondent did not formally respond to the Complainant's contentions. The Center received two emails on April 17, 2017 – the first containing a number of spelling errors and the second being a (partially) corrected version of the first – from a "Ron McDonald", stating: "I would like you to dismiss the complaint against my website name for being frivolous. Seven West Media and their other company Channel Seven do not own the copyright to the number 7. An example is that a large convenience store network in Australia is called Seven Eleven and they operate hundresd [sic] of shops with that name. Yet Seven West Media have taken no action against them. No one ever will confuse the website [name redacted-d2017-0498].com for Channel 7 or Seven West Media and to suggest people will confuse them is ridicules [sic]. The website is there to report on the court case [case name redacted] and no one owns the name to the court case. Seven West Media and their owner Kerry Stokes have a long history of trying to close down media reporting of their activities and don't like being held to account for their actions."
In its response to the Complainant's supplemental filing, the second-named Respondent, in the name of "Ron McDonald", wrote: "The new submission by the applicants add no value to whether or not they have a trademark over the domain name. The fact that they have filed the new submission shows they themselves know they do not own the number seven or the domain name [name redacted-d2017-0498].com which no one would ever mistake for Channel Seven which the applicants claim. Big companies or wealthy people using the law to silence journalists is not new. It is common around the world. They claim the material on the website is defamatory yet no court has made that finding nor has the applicant sued The Australian who first leaked the story which would be because it is owned by Rupert Murdoch and the [sic] know they cannot scare him or threaten him. It is not for WIPO to get involved and decide what is or isn't defamatory and asking questions is not defamatory as they claim and once again given the applicants are raising this shows they do not have a real claim for the domain name." 6. Discussion and Findings A. Procedural Issue – Identity of the Registrant
The Complainant asserts that Mr. Dowling is the "true owner" of the disputed domain name and/or the "true operator" of the website to which the disputed domain name resolves, and refers to circumstantial evidence concerning the registration and use of the disputed domain name in support of this assertion. The second‑named Respondent, replying in the name of "Ron McDonald", did not refute this assertion. On the balance of probabilities, and for the purposes of this Complaint only, the Panel concludes that Mr. Dowling is the person responsible for the registration of the disputed domain name, is the person responsible for the written submissions made in the name "Ron McDonald", and hence is the person who should be regarded as the Respondent for the purposes of determining this Complaint. B. Identical or Confusingly Similar
According to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), the consensus view of panels is that the first element of the Policy serves essentially as a "standing requirement", and that the test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark, in order to "assess whether the mark is recognizable within the disputed domain name". The Panel understands the requirement that the trademark be "recognizable within the disputed domain name" to mean that the character string which is asserted to be the trademark is recognizable in the domain name as the trademark, rather than as something else, such as a descriptive word.
The disputed domain name in this case consists of the character string "seven" [phrase redacted] the words "[word redacted]" and "[word redacted]". The character string "seven" is, of course, a common word in the English language – one that signifies the cardinal number that is the sum of six and one. However, the Panel is satisfied that a typical Australian Internet user would read "seven" in the disputed domain name as a reference to the Complainant's trademark SEVEN, rather than as a reference to the cardinal number. The affair between Ms. Harrison and Mr. Worner, and the resulting legal proceedings between Ms. Harrison and the Complainant, are relatively notorious in Australia. As a result, when the character string "seven" appears with [phrase redacted] words "[word redacted]" and "[word redacted]", as it does in the disputed domain name, a typical Australian Internet user would understand "seven" to be the Complainant's trademark SEVEN rather than the cardinal number written as a word. Thus, it can be said that the Complainant's trademark is recognizable as such in the disputed domain. In this sense, therefore, the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The essence of the second-named Respondent's case, as set out in the rather unfocussed submissions made by "Ron McDonald" in response to the Complaint, is that the second-named Respondent is using the disputed domain name to engage in a legitimate action – being, to "report on the court case [case name redacted]". Although it is not expressly stated this way, the implication of the second-named Respondent's assertion is that the second-named Respondent's use of the disputed domain name is one which establishes that the second-named Respondent has rights or legitimate interests in it.
According to paragraph 4(c)(iii) of the Policy, "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", demonstrates that the respondent has rights or legitimate interests in the domain name. In the Panel's view, it is clear that the requirements that must be satisfied for a respondent to be able to demonstrate rights or legitimate interests in a domain name under paragraph 4(c)(iii) of the Policy are: (i) the respondent's use of the domain name must be legitimate; (ii) that legitimate use must be either a noncommercial use or a fair use; and (iii) the effect of that use must not be commercial gain through either misleadingly diverting consumers or tarnishing the complainant's trademark. In relation to the second requirement, the fact that a "fair use" may be read as an alternative to a "noncommercial use" indicates that use which has a commercial element can nevertheless satisfy the first requirement, so long as it is fair. However, the third requirement makes it clear that a use which has a commercial element, even though a fair use, will not give rise to rights or legitimate interests in the domain name if the use results in misleading diversion of consumers or tarnishment of the trademark. The first requirement – of the legitimacy of the use – is overarching. It requires that the use, considered in all the circumstances, be lawful, right or proper. Thus, even a noncommercial use (which, by definition, cannot have the effect of producing commercial gain and so cannot fall foul of the third requirement) will not give rise to rights or legitimate interests in the disputed domain name if, in all the circumstances, that use is not lawful, right or proper. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 2.5.2 (noting that UDRP panels examine whether the domain name has been used "as a pretext for commercial gain or other such purposes inhering to the respondent's benefit").
In the case before the Panel, the Complainant did not assert that the second-named Respondent's use of the disputed domain name was commercial. From its own inspection of the website to which the disputed domain name resolves, the Panel can see no obvious evidence that the website is commercial in nature. Accordingly, the Panel is willing to assume that the second-named Respondent's use of the disputed domain name is noncommercial.
The Complainant did not assert that the second-named Respondent's use of the disputed domain had the effect of misleadingly diverting consumers. The Panel considers that the Complainant's forbearance from making this assertion was sound. In the Panel's view, a typical Australian Internet user seeking to consume the Complainant's television services would not be diverted to the second-named Respondent's website – whether that be by virtue of the disputed domain name itself or the content of the website. The disputed domain name does not suggest to an Australian Internet user that any website to which it resolves is one from which the Complainant's television services can be consumed. Rather, that Internet user would read the disputed domain name as referring to the litigation between the Complainant and Ms. Harrison. This understanding would be confirmed upon an Internet using reaching the second-named Respondent's website, given text on the website referring to the Harrison Proceeding.
The Complainant did not assert that the second-named Respondent's use of the disputed domain name tarnished the Complainant's SEVEN trademark. Again, the Panel considers the Complainant's forbearance from making this assertion to be sound. While it could be said that the content of the second-named Respondent's website seeks to tarnish the Complainant's corporate reputation, it does not seek to, and does not, tarnish the Complainant's trademark per se.
What the Complainant did assert was that the second-named Respondent's use of the disputed domain name, even if noncommercial, was not "legitimate". According to the Complainant, this lack of legitimacy is evidenced by the fact that the second-named Respondent has used the disputed domain to resolve to a website containing material that is "misleading, defamatory, and knowingly (as can be seen by the content of the "About" page on the second-named Respondent's website) in breach of court orders relating to suppression of the identities of the Plaintiffs". Given the nature of the particular matters in issue in this case, the Panel does not consider itself sufficiently informed to be able to determine if the material published at the website is indeed misleading or defamatory. Were it not for the second-named Respondent's failure to comply with the New South Wales Supreme Court's Website Removal Order, the Panel would have been inclined to find that the Complainant had not established that the second-named Respondent's use of the disputed domain name was not legitimate.
The existence, and subsequent breach by the second-named Respondent, of the Website Removal Order is, however, material and determinative. The information provided by the Complainant shows that the Website Removal Order was made by the Court in proceedings to which the second-name Respondent is a party, and at a hearing at which the second-named Respondent had the opportunity to appear and be heard (although it chose not to do so). The Respondent made no claim to the Website Removal Order lacking validity. The Panel can see no reason to regard the Website Removal Order as anything other than validly made, relevant to this dispute and authoritative. In the Panel's opinion, the second-named Respondent's refusal to comply with a validly-made, relevant and authoritative court order requiring removal of specified material from the website to which the disputed domain name resolves takes the second-named Respondent's use of the disputed domain name outside the bounds of what can be considered lawful, right or proper – and, hence, outside the bounds of a "legitimate" use. Put simply, using the disputed domain name in a manner that is knowingly in breach of a court order cannot be considered to be a legitimate use of the domain name. For this reason, the Panel concludes that the second-named Respondent is unable to establish that paragraph 4(c)(iii) of the Policy applies to the second-named Respondent's use of the disputed domain name in the particular circumstances of this case.
For all of the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
It is clear to the Panel that the intention of the second-named Respondent, when registering the disputed domain name, was to use it to resolve to a website at which the second-named Respondent would (and subsequently did) publish, anonymously, the identities of the Plaintiffs – and thereby circumvent the effect of the Defamation Suppression Order restraining publication of those identities. The disputed domain name was indeed put to this use, and the website that resolves from it has continued to publish this information in breach of the Website Removal Order. As such, neither the registration nor the use of the disputed domain name has been in good faith. For these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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.
Andrew F. Christie
Sole Panelist
Date: June 5, 2017
1 The reason for redaction of the name of the second-named Respondent, the disputed domain name and certain other potentially identifying information is provided in the last two paragraphs of Section 4 of this Decision.
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