The Complainant is Ted Britt Ford Sales, Inc., United States of America (“United States”), represented by Hyland Law PLLC, United States.
The Respondent is Contact Privacy Inc. Customer 0155442277, United States / Guy Emerson, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 30, 2020, 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 30, 2020. 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 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 23, 2020. 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 operates automobile dealerships and associated services in Fairfax, Virginia, United States. Organized as a corporation under Virginia law, the Complainant was founded in 1959 and is well known in the region, spending more than USD 3.5 million annually in advertising promoting the TED BRITT brand. The Complainant has operated a website at “www.tedbritt.com” since 1998 and has also used similar domain names incorporating the TED BRITT mark. The Complainant holds United States Trademark Registration Number 1908805, registered August 1, 1995, for TED BRITT as a standard character mark. The Complainant has done business since at least December 2006 under the trade name “Ted Britt Automotive Group,” as evidenced by fictitious name filings with the Virginia Corporation Commission. According to the Registrar, the Domain Name was created on August 12, 2019. It was registered in the name of the domain privacy service shown in the caption of this proceeding. Following receipt of the Complaint, the Registrar identified the registrant as the Respondent Guy Emerson of Sanford, Maine, United States, showing only a personal email address in the field where the registrant organization is to be listed in the WhoIs record. The Registrar did not indicate when the Respondent acquired the Domain Name. The Respondent has not replied to correspondence from the Complainant or the Center and has not submitted a Response. At the time of this Decision, the Domain Name does not resolve to an active website, and the Internet Archive’s Wayback Machine has no archived screenshots of any website associated with the Domain Name. Screenshots of a website formerly associated with the Domain Name (the “Respondent’s website”) are attached to the Complaint. The Respondent’s website featured a banner copied from the Complainant’s website, with the Complainant’s trademarked name, in the same font and style used on the Complainant’s website, the Complainant’s domain name, and its registered trade name, “Ted Britt Automotive Group,” along with logos of the automotive brands that the Complainant sells and services in its dealerships. The postal address of one of the Complainant’s dealerships was displayed as well. A copyright notice at the bottom of the page claimed copyright in the name of the Complainant, “Ted Britt Automotive Group”. But the header was noticeably different from the Complainant’s: rather than a seal referring to 60 years of service, it read, “Cheating Customers for Over 60 Years”. The Respondent’s website was a single-page “gripe site”, disparaging the Complainant’s business and the family that holds controlling interests in the Complainant. The Complainant identifies the Respondent as a dissatisfied customer, but the Respondent’s website did not detail the Respondent’s experience. Rather, it simply alleged that the Complainant had been “deceiving and cheating car buyers for years without consequence”. The site then listed personal information about members of the owners’ families (names of spouses, ages, home addresses, personal telephone and email addresses, social media accounts). The Respondent’s website encouraged site visitors to “e-mail them, call them, Face Book them, or visit them at their homes, if you have been deceived or cheated by Ted Britt Automotive Group,” advocating that they “use the information below to contact the Britt family scumbags by e-mail, phone, or at their residence to confront them about their dishonest business practices”. 5. Parties’ Contentions A. Complainant The Complainant observes that the Domain Name is identical to its registered TED BRITT trademark. While there are UDRP decisions finding a legitimate interest in using a mark in a domain name associated with a genuine criticism site (“trademarksucks” cases), a domain name that is identical to the mark is not defensible as fair use and also reflects a bad faith attempt to mislead Internet visitors as to source or affiliation. This is reinforced by the appearance of the Respondent’s website and unlicensed display of the Complainant’s and third parties’ marks. The Complainant also argues that the Respondent’s “doxing” (publishing private information on the Internet with malicious intent) is another instance of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name is identical to the Complainant’s registered TED BRITT trademark. The generic Top-Level Domain (“gTLD”) “.net” “is viewed as a standard registration requirement” and as such is disregarded under the first element of the Policy. Id., section 19.11.2. The Panel concludes, therefore, that the first element of the Complaint has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name. The Respondent has not advanced rights or legitimate interests, but the obvious question would be whether the Respondent’s website qualifies under paragraph 4(c)(iii). The Panel is of the view that it does not. Although the Domain Name does not currently resolve to an active website, it previously resolved to a single-page “gripe site”, disparaging the Complainant’s business and the family that holds controlling interests in the Complainant. While there is no evident commercial use of the Domain Name, and the Respondent certainly has a right to criticize, the Respondent’s legitimate interest in including the mark in the Domain Name to refer to the Complainant is tempered by the principle that it is fundamentally unfair to impersonate the Complainant or falsely suggest association or endorsement. This is why WIPO UDRP panels have generally found that domain names identical to a trademark carry a high risk of implied affiliation (as opposed to the “trademarksucks” cases, for example), and other factors such as the appearance of the associated website can heighten the false impression of affiliation. See WIPO Overview 3.0, sections 2.5, 2.6. Here, the Domain Name is identical to the trademark, and the website banner (with the name of the Complainant’s website, in the Complainant’s font), the logos of the automobile brands in which the Complainant deals, and the copyright footer all give the Respondent’s website the appearance of being a website created by the Complainant. The entire point seems to be to mislead Internet users so they will visit the website and then remain long enough to be exposed to the disparaging content. The Panel is aware that [“i]n 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”. WIPO Overview 3.0, section 2.6.2. Here, however, the Respondent went to great lengths to reinforce the false impression of affiliation with the Complainant. There is a line between nominative use and impersonation, and the Respondent crossed that line. The Respondent’s website does not meet the standards for “fair use” of the Domain Name. Accordingly, the Panel concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. None of them squarely fit the circumstances of this case. Paragraph 4(b)(iv), which addresses the likelihood of creating confusion “as to source, sponsorship, affiliation, or endorsement” (which the Respondent attempted to do), speaks of doing so for commercial gain, which does not appear to be the Respondent’s motive. The illustrative list is non-exclusive, however, and the Complainant argues that bad faith is reflected in the Respondent’s unauthorized use of the Complainant’s exact trademark in the Domain Name and in the Respondent’s website, impersonation in the website, and extensive doxing, particularly of family members who are not involved in the management of the Complainant’s business. As the Panel has determined that the Respondent is not shielded by a legitimate claim of fair use under the second Policy element, the Panel finds that these acts do represent bad faith within the meaning of the Policy. Without detailing a single act of supposed business misconduct, the Respondent published home addresses and personal contact information, not all of which may be publicly available, for individuals including spouses of business owners. This is not a new practice for the Respondent. The Complaint attaches a temporary restraining order issued against the Respondent for similar conduct in 2018, Symetra Life Insurance Company v. Emerson, 2:18‑CV‑00492-JDL (US Dist. Ct., D. Maine, December 4. 2018). In that case, the Respondent published a website with personal information about the complainant insurance company’s claims personnel, encouraging anyone else whose claim had been denied to “stop by” a particular claims agent’s home and discuss the matter with her. “If [name] is not home when you arrive, I’m sure her daughter [First Child], or her daughter [Second Child], would be more than willing to keep you company until she arrives home.” The Respondent has not gone quite that far in this case, but the Respondent employed similar tactics here in researching and revealing personal information on the website associated with the Domain Name, including personal information about family members, apparently because of dissatisfaction about a business transaction. This is a dangerous and indefensible practice; in some instances it can be actionable (as was evidently the case in Symetra Life Insurance v. Emerson, supra) or result in criminal prosecution (see, e.g., Wikipedia, “Doxing”). Doxing can be added to the illustrations of bad faith. The fact that the Domain Name does not currently resolve to an active website, does not change the Panel’s findings. The Panel concludes that the Complainant has established the third element of the Complaint. 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 Domain Name, W. Scott Blackmer
Sole Panelist
Date: April 28, 2020
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