The Complainant is Thomas Leen, Australia, represented by Herbert Smith Freehills, Australia.
The Respondent is Domain Registry, PeRiQuito Holding, Sweden. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2019, 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 October 18, 2019, 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 October 23, 2019. 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 October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019. The Center appointed Jane Seager as the sole panelist in this matter on December 4, 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. 4. Factual Background The Complainant is the Chief Information Security Officer of the company BHP – a diversified resources company focused on mining, metals and petroleum. The Complainant is the owner of Andorran Trademark Registration No. 40469, THOMAS LEEN, registered on September 10, 2019, for use in connection with services in Class 42, namely Internet security, and advisory services on computer software. The disputed domain name was registered on April 7, 2019. The disputed domain name resolves to a website that displays a photo of the Complainant together with several negative statements about the Complainant (the “Respondent’s website”). The statements on the Respondent’s website relate primarily to the Complainant’s personality and behavior. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical to the Andorran trademark THOMAS LEEN, registered by the Complainant. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, nor is the Respondent commonly known by the disputed domain name for the purposes of the Policy. The Complainant claims that the Respondent is not the true owner of the disputed domain name, nor of the website to which it resolves. In support of this claim, the Complainant notes that the website includes a photo of the Complainant which is not available outside the environment of the Complainant’s employer, that the nature of the defamatory content on the Respondent’s website makes it clear that there has been some form of personal connection between the Parties in the past, and that the Complainant has never had any contact with the named Respondent, PeReQuito Holding. The Complainant further submits that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to a third party’s registered trademark, as this may create an impermissible risk of user confusion through impersonation. The Complainant states that there is nothing evident in the disputed domain name itself to indicate that the Respondent’s website is independent of the Complainant. In addition, the Complainant asserts that the content is entirely disparaging and defamatory, rather than constituting any form of genuine criticism. The Complainant further submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that for the purposes of assessment under the third element, the concept of bad faith includes the generally accepted meaning of that expression, and includes concepts such as “intentionally misleading another” and “violating basic standards of honesty or decency”. The Complainant asserts that the Respondent (i.e., the “true owner of the disputed domain name”) clearly knew of the Complainant prior to registering the disputed domain name, as evidenced from the allegedly defamatory content posted about the Complainant on the Respondent’s website. The Complainant asserts that the Respondent’s purpose in registering and using the disputed domain name was to harass, defame, and intimidate the Complainant. The Complainant submits that the Respondent registered the disputed domain name in bad faith with the sole purpose to engage in a personal vendetta against, and to disparage, the Complainant, and to tarnish his reputation. The Complainant asserts that where a domain name that is used for purposes of criticism or disparagement is identical to a complainant’s trademark, such registration and resulting use is likely to be in bad faith. The Complainant asserts that the Respondent is intentionally misleading others into visiting the Respondent’s website by registering and using a domain name that wholly encompasses the Complainant’s name. The Complainant submits that the inflammatory, defamatory, and disparaging language used to describe the Complainant at the Respondent’s website falls within the “broad ambit” of bad faith. In support of his assertion that the disputed domain name was registered in bad faith, the Complainant makes reference to Adam Milstein v. Benjamin Doherty, NAF Claim No. 1647496, in which the panel found that the disputed domain name The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Identity of the Respondent The Complainant asserts that the Respondent is not the “true owner” of the disputed domain name, and that the disputed domain name is held by a Swedish Internet service provider as the agent of the Respondent. Paragraph 1 of the Rules provides that a “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The registrant of the disputed domain name was confirmed by the Registrar as “Domain Registry, PeRiQuito Holding”. Paragraph 13 of the Registrar’s Registration Agreement states: “AGENTS AND LICENSES: If you are registering a domain name for or on behalf of someone else, you represent that you have the authority to and will bind that person as a principal to all terms and conditions provided herein. If you license the use of a domain name you register to us or a to third party, you remain the domain name holder of record, and remain responsible for all obligations at law and under this Agreement, including but not limited to payment obligations, and providing (and updating, as necessary) both your own full contact information, and accurate technical, administrative, billing and zone contact information adequate to facilitate timely resolution of any problems that arise in connection with the domain name and domain name registration and for ensuring non-infringement of any third party intellectual property rights or other rights.” The Panel accepts the Complainant’s submission that the disputed domain name is likely held by a person or persons with a connection to the Complainant’s place of work, as evidenced by the content of the Respondent’s website. Nevertheless, the Panel finds that the Complaint has been properly filed against the named Respondent as the registrant of record. The named Respondent has not come forward to disclose the identity of any alleged beneficial owner. In the circumstances, the Panel sees no barrier to proceeding to a decision on the merits naming the Respondent as Domain Registry, PeRiQuito Holding. 6.2. Substantive Matters In order to prevail in his Complaint, the Complainant must prove, on the balance of probabilities, that he has satisfied the requirements of paragraph 4(a) of the Policy, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; The Complainant has provided evidence of his ownership of an Andorran trademark registration, THOMAS LEEN. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case”. It is also stated at WIPO Overview 3.0, section 1.1.2, “[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. Also, the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements.” The Panel further notes that personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case; see WIPO Overview 3.0, section 1.5.1. The disputed domain name incorporates the Complainant’s THOMAS LEEN trademark in its entirety. The only variation on the Complainant’s trademark is the substitution of a hyphen between the elements “Thomas” and “Leen” making up the Complainant’s trademark. The Panel finds that the presence of a hyphen in the place of a space does not affect the appearance of the disputed domain name vis-à-vis the Complainant’s trademark, noting in particular that a space is not capable of representation in a domain name. The generic Top-Level Domain “.com” is disregarded as a standard registration requirement; see WIPO Overview 3.0, section 1.11. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel notes that the Policy requires a complainant to prove all three elements of paragraph 4(a) of the Policy. Failure to prove one element will result in the denial of the complaint. Noting that the Complaint has ultimately failed on the issue of bad faith registration, as set out in detail below, the Panel need not issue a finding under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s case under the third element is founded on the notion that the Respondent registered the disputed domain name having knowledge of the Complainant, that the disputed domain name, by nature, deliberately gives the false impression that it is the domain name of the Complainant, and that the Respondent is using the disputed domain name to defame the Complainant and to tarnish his reputation. The Panel acknowledges that the Respondent clearly had knowledge of the Complainant, as can be inferred from the content of the Respondent’s website. The Panel further acknowledges that the disputed domain name is essentially an exact match with the Complainant’s name, and prior UDRP panels have consistently found that the right to criticize does not necessarily extend to registering or using a domain name identical to a trademark; see WIPO Overview 3.0, section 2.6.2. Notwithstanding the above, the Complainant is obliged to prove all elements of paragraph 4(a) of the Policy, including registration in bad faith. As noted above, the date on which a complainant’s rights were accrued, the goods and services for which they were registered, and the jurisdiction in which a complainant has registered its trademark rights will typically not have bearing on a complainant’s standing to file a UDRP Complaint; however, it may impact the outcome of the case as it relates to the second and third elements. WIPO Overview 3.0, section 3.8.1, states that “[w]here a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”. That is not to say that a complainant cannot succeed under the Policy where the trademark registration post-dates the registration of a disputed domain name. Rather, as stated in WIPO Overview 3.0, section 3.8.2, “[i]n certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.” In the present case, the disputed domain name was registered on April 7, 2019. Historic screen captures submitted in evidence by the Complainant would tend to indicate that the Respondent’s website has been active since mid-May 2019. The Complainant’s registered trademark on the other hand was acquired some months later on September 20, 2019. While the Panel acknowledges that the Complainant has duly registered a trademark sufficient to provide standing for the Complainant to file his case, the Complainant has submitted no evidence to suggest that the Complainant had used his name in such a way that might give rise to a finding of the existence of common law or nascent trademark rights at the time that the Respondent registered the disputed domain name. In fact, the Complainant has provided no information about his position or use of his name as a trademark. The only information about the Complainant’s position is inferable from the services for which the Complainant’s trademark was registered, and, at that, from the Respondent’s website. The Panel is therefore unable to conclude, on the basis of the record before it, that the Complainant’s personal name was used as a trademark-like identifier which consumers associated with the Complainant’s goods or services, at the time the disputed domain name was registered. The Panel has duly considered the panel’s reasoning in Adam Milstein v. Benjamin Doherty, supra, and finds the Complainant’s reliance on that case to be misguided. The panel in that case applied reasoning that has not gained traction as a consensus view of UDRP panelists; the Complainant in this case would have done well to take note of the caveat in the WIPO Overview that “application of registrant representations in UDRP paragraph 2 in finding so-called ‘retroactive’ bad faith [renewal] registration [...] has not been followed in subsequent cases”. In any event, the Panel notes that irrespective of registrant representations undertaken further to paragraph 2 of the Policy, UDRP panels have consistently found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith; see WIPO Overview 3.0, section 3.9. The Panel recognizes that the Complainant has been put in a highly unfortunate position by the Respondent, and is sympathetic to the Complainant’s position; however, noting the timing of the registration of the Complainant’s trademark and the lack of evidence put forward to support a finding that the Complainant had common law trademark rights at the time that the disputed domain name was registered, it would be inappropriate for the Panel to enter a finding of bad faith registration. See Susan Scheff v. Psyborgue,WIPO Case No. D2008-1177, and cases cited therein. The Panel finds that the Complainant has failed to prove that the disputed domain name was registered in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The Panel further notes that questions regarding whether criticism on a respondent’s website is accurate or defamatory are generally considered to fall outside of the scope of the Policy, as they may involve determinations on truth or falsity that cannot be determined in the limited scope of a UDRP proceeding; see Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers,WIPO Case No. D2000-0190. The Policy does not preclude the Complainant from seeking recourse against the Respondent in a court of competent jurisdiction, and the Panel’s findings in the present proceeding are without prejudice to any further action brought by the Complainant. 7. Decision For the foregoing reasons, the Complaint is denied. Jane Seager
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: December 18, 2019
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