Complainant is Chesterfield Valley Investors, L.L.A dba Gateway Classic Cars, United States of America (“United States”), represented by Affinity Law Group, LLC, United States.
Respondent is Brock Winters, United States, represented by David L. Gray. 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 June 17, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 June 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2019. The Response was filed with the Center on July 11, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 18, 2019. 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 July 16 and 17, 2019, the Center received unsolicited Supplemental Filings from Complainant and Respondent. 4. Factual Background
Complainant Chesterfield Valley Investors, L.L.A (“Complainant”) is an automobile sales provider, offering vehicles for sale in 17 different locations throughout the United States. Since February 1999, Complainant has operated its business under the trade name GATEWAY CLASSIC CARS. Complainant owns valid and subsisting registrations for the GATEWAY CLASSIC CARS trademark, used in commerce in the United States since February 8, 1999, including United States Registration Number 5,011,825 (registered August 2, 2018). Complainant operates its primary website in connection with its automotive sales business at the domain name .
The disputed domain name, , was registered on March 3, 2019, and at the time of Complainant’s filing, resolved to a website stating that the “website is intended to provide potential buyers and consignors of Gateway Classic Cars and similar automobile consignors with more information about their consigning and buying processes.” 5. Parties’ Contentions A. Complainant
Complainant contends the disputed domain name is identical or confusingly similar to Complainant’s GATEWAY CLASSIC CARS trademark, in which it has established rights as evidenced by its United States registration.
Complainant contends Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that it has made continuous use of the GATEWAY CLASSIC CARS trademark since 1999, well before Respondent registered the disputed domain name on March 3, 2019. Complainant asserts the disputed domain name was registered around the same time Complainant terminated a former employee, and that this former employee is acting in concert with Respondent to disrupt Complainant’s business and tarnish Complainant’s image through the registration and use of the disputed domain name.
Complainant asserts Respondent’s purpose for registering and using the disputed domain name is to defame Complainant and thereby injure Complainant’s reputation and undermine its business. Complainant therefore contends that the disputed domain name is not being used for a legitimate reason, but is being used in bad faith to disrupt Complainant’s business.
Accordingly, Complainant has requested that the disputed domain name be transferred.
In a Reply to Respondent’s Response, Complainant further asserts that Respondent admits to using Complainant’s trademark in the disputed domain name. Complainant further asserts Respondent’s purpose is not to educate anyone, but harm Complainant. Complainant also contends Respondent’s purported educational purpose for the disputed domain name is undermined by Respondent’s offer to sell the disputed domain name to Complainant following the initiation of this proceeding. B. Respondent
Respondent admits that the disputed domain name is similar to Complainant’s primary domain name . Respondent admits Complainant has a registered trademark for GATEWAY CLASSIC CARS. Respondent asserts, however, that its use of the “.info” Top-Level Domain “TLD” indicates that it is not Complainant, but instead operates as an information site about Complainant, and specifically to provide information to potential buyers and consignors “about the deceptive and criminal practices at Gateway Classic Cars.” Respondent asserts the disputed domain name is “working to safeguard the public from being harmed by the fraudulent activity taking place at Gateway Classic Cars.” Respondent accordingly asserts the disputed domain name was registered in good faith in order to “serve a public good” by providing the public with “information they need to make an informed decision” about Complainant’s business. Respondent notes that the disputed domain name “directs clients to contact state attorney generals if they have been harmed by Gateway Classic Cars.” Respondent further asserts that it does not make any profit from the disputed domain name and does not compete with Complainant.
Respondent concedes that it works with former employees of Complainant in order to create its “information database” and expose the “criminal operations” and “fraudulent practices” at Gateway Classic Cars. Respondent states that its hope is that “by exposing the fraudulent practices at Gateway Classic Cars, which they would amend their business practices so that legal action does cause them and their employee’s harm.”
Accordingly, Respondent asserts that it would agree to turn over the disputed domain name to Complainant in exchange for certain changes to Complainant’s business practices. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, although Respondent in this case technically submitted a response one day beyond the formal deadline, the Panel accepts and considers the Response as if timely filed, as well as the parties’ further unsolicited submissions. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally considered to be sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant provided evidence of ownership of the GATEWAY CLASSIC CARS trademark, which has been registered in the United States, where Respondent is located, since 1999, long before the disputed domain name was registered by Respondent. With Complainant’s rights in the GATEWAY CLASSIC CARS trademark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to the Complaint’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is identical to Complainant’s GATEWAY CLASSIC CARS trademark (ignoring the generic Top-Level Domain (“gTLD”), in this case, “.info”). See, e.g., Cube Limited v. Yanting Li,WIPO Case No. D2015-0853.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the GATEWAY CLASSIC CARS trademark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant.
Paragraph 4(c) of the Policy further 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. See WIPO Overview 3.0, sections 2.1, 2.2, 2.3, 2.4, and 2.5.
“In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.” See id. at 2.6.2. As discussed above, Respondent has claimed, with supporting evidence, that it is using the disputed domain name in connection with a noncommercial criticism website aimed at warning consumers regarding certain alleged bad business practices by Complainant.
The Panel notes the following factors that prior UDRP panels have used to evaluate fair use: (i) the domain name has been registered and is being used for legitimate purposes and not, on the evidence before the Panel, as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit; (ii) the respondent reasonably believes its use to be truthful and well-founded; (iii) Internet users are unlikely to ultimately be confused as to any connection between the complainant’s trademark in the disputed domain name and the corresponding website content; (iv) the disputed domain name is not used to divert Internet users to a competitor of the complainant or otherwise attempt to obtain an unfair commercial advantage in the complainant’s industry; and, (v) the domain name registration and use by the respondent is consistent with a pattern of bona fide activity by the respondent. See WIPO Overview 3.0, section 2.5.2. Whether a respondent’s use of a domain name constitutes a legitimate fair use will depend on whether the corresponding website content prima facie supports the claimed purpose, such as commentary or criticism, is not misleading as to source or sponsorship, and is not a pretext for tarnishment or commercial gain. See WIPO Overview 3.0, section 2.5.3.
Here, the evidence suggests that Respondent’s registration and use of the disputed domain name was legitimately done to raise gripes or criticisms of certain of Complainant’s business practices, even if done as a “disgruntled” former employee of Complainant (or in concert with such former employees). Although the footer of the website at the disputed domain name does refer to “clients,” this seems, in the context of the broader website text, to be an unintentional use of the term and it does not appear that the disputed domain name is used for commercial gain or to gain a commercial advantage over Complainant. Respondent is exercising its free speech right without any evidence of financial compensation. Both Complainant and Respondent are citizens of the United States, where the United States Constitution protects a critic’s right to post a noncommercial website that is critical of a trademark owner, even if the domain name consists of the trademark. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647; Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004); Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004); Penn Warranty Corp. v. DiGiovanni, 810 N.Y.S.2d 807, 817 (N.Y. Sup. Ct. 2005) (stating no Lanham Act liability for noncommercial criticism site; “Lanham Act cannot be use[d] as a pretext to stifle critics of goods or services by someone, such as a consumer advocate, who is not engaged in marketing or promoting a competitive product or service”).
Complainant asserted Respondent was acting to disrupt Complainant’s business and tarnish Complainant’s image through the registration and use of the disputed domain name, and defame Complainant and thereby injure Complainant’s reputation and undermine its business. In response, Respondent stated their purpose in registering and using the disputed domain name was to expose certain bad practices by Complainant. That is not the type of “tarnishment” prohibited by the Policy. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. 2008-0647 (stating that “tarnishment in the context of the UDRP refers to unseemly conduct such as unrelated pornographic, violent, or drug-related images, or information to the detriment of an otherwise wholesome mark”). Fair criticism does not constitute tarnishment and is permitted under the Policy. Id. It is beyond the Panel’s ability and the scope of the Policy to evaluate the legitimacy of such gripes (i.e., whether any statements by Respondent are false and defamatory), but Respondent here has sufficiently demonstrated a possible fair use of the disputed domain name to refute Complainant’s prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name. Accordingly, Complainant has not met its burden under this element of the Policy.
The Panel notes Complainant provided an email between Complainant and Respondent where Respondent threatens that he is “just getting started” and “[i]f they [Complainant] want me to stop, just make an offer to buy the domain name and associated products.” While this could be construed as evidence of an illegitimate intent to extort money out of the Complainant while hiding behind a free speech argument, given the broader apparent history between the parties, and in particular the noncommercial and plainly critical content of the website at the disputed domain name, the Panel considers it more likely a “knee-jerk reaction” (albeit arguably an ill‑advised one)., In any event, this factor, on its own is not dispositive particularly in view of the broader facts and circumstances that have been presented,. C. Registered and Used in Bad Faith
Because Complainant did not meet its burden under Policy paragraph 4(a)(ii), it is unnecessary for the Panel to consider Complainant’s and Respondent’s arguments under paragraph 4(a)(iii) for purposes of its decision. That said, any ill will by Respondent towards Complainant that may have motivated Respondent to register and use the disputed domain name in the manner discussed herein must not to be conflated with “bad faith” as contemplated by the UDRP. To find otherwise would eviscerate the free speech protections afforded to criticism sites, most if not all of which are likely motivated by a bad experience. As noted elsewhere, it is beyond the scope of this proceeding to evaluate the legitimacy or truthfulness of Respondent’s criticism, which is best left to a court of competent jurisdiction in the nature of an action sounding in defamation. 7. Decision
For the foregoing reasons, the Complaint is denied.
Brian J. Winterfeldt
Sole Panelist
Date: August 16, 2019
Full & Egal Universal Law Academy