The Complainants are Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht, France, represented by Tmark Conseils, France.
The Respondent is Pat Honey Salt, Honey Salt Limited, United Kingdom, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2020. On September 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name 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 November 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Response was filed with the Center November 25, 2020. On February 1, 2021, the Center received an unsolicited supplemental filing from the Complainants. The Respondent rebutted the Complainants’ unsolicited supplemental filing on February 4, 2021, the Parties further submitted unsolicited messages to the Center on the same day. The Center appointed Wilson Pinheiro Jabur, Angelica Lodigiani, and Douglas M. Isenberg as panelists in this matter on February 25, 2021. The Panel finds that it was properly constituted. Each member of 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 decided not to accept the unsolicited supplemental filings of the Parties. As discussed in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), neither of them has explained why it was unable to provide the information contained therein in its complaint or response, such as owing to some exceptional circumstance, and the supplemental filings do not in any event appear to add any substantial new information or evidence to the case. 4. Factual Background The Complainants are part of the Michelin Group, originally founded in 1889 and well-known manufacturer of tires. Compagnie Générale des Établissements (the “First Complainant”) is the owner, amongst dozens of others, of the following trademarks (Annexes 3 and 4 to the Complaint): - United Kingdom Trademark Registration No. 0001087973B for the word mark BFGOODRICH, in class 12, registered on December 10, 1977 and subsequently renewed; and - French Trademark Registration No. 3447866 for the word mark BFGOODRICH, in class 12, registered on August 29, 2006 and subsequently renewed. MC PROJECTS B.V Maastricht (the “Second Complainant”) is the owner, amongst dozens of others, of the following trademarks (Annexes 11 and 12 to the Amended Complaint): - Irish Trademark Registration No. 65584 for the word mark UNIROYAL, in class 12, registered on February 8, 1963 and subsequently renewed; and - United Kingdom Trademark Registration No. 00000845076 for the word mark UNIROYAL, in class 12, registered on February 13, 1963 and subsequently renewed. The disputed domain name names The Complainants assert that the mark BFGOODRICH was created in North America in 1870 and that, since then, the mark has expanded its goodwill and reputation worldwide by providing the tire industry with remarkable innovative solutions as well as high performance products, whereas the UNIROYAL mark was created also in North America in the 1960s, also having expanded its goodwill and reputation worldwide through major advertising campaigns and innovative solutions in the tire industry. Presently, the Complainants claim to use these marks on a worldwide basis in connection with products and services related to the tires industry. The Complainants further assert to have had their BFGOODRICH and UNIROYAL trademarks already found to be “weIl known” or “famous” in past UDRP decisions (Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Kaheng Cheng,WIPO Case No. D2017-0233; Michelin Recherche et Technique S.A. v. PrivacyProtect.org / DH5740243, DH5740243,WIPO Case No. D2013-1209; Michelin Recherche et Technique S.A. v. EAC International CO., Limited,WIPO Case No. D2013-1210; Michelin Recherche et Technique S.A. v. Domain Admin, Private Registrations Aktien / PrivacyProtect.org,WIPO Case No. D2013-2003 and MC Projects B.V. Maastricht. succursale de Granges-Paccot v. Tino Di Febo,WIPO Case No. D2013-0520). The Complainants contend that the disputed domain names wholly incorporate the famous trademarks BFGOODRICH and UNIROYAL, not eliminating, with the addition of the generic top-level domain (“gTLD”) “.sucks”, the identity or confusing similarity between them and the Complainants’ trademarks. As to the absence of rights or legitimate interests, the Complainants argue: (i) the existence of prior rights over the famous BFGOODRICH and UNIROYAL trademarks belonging to the Complainants; (ii) that the Complainants have not authorized the Respondent to identify itself to the public as BFGOODRICH / UNIROYAL or use the BFGOODRICH / UNIROYAL trademarks in domain names; (iii) the Respondent is not commonly known by the disputed domain names, being BFGOODRICH and UNIROYAL not generic terms but rather registered distinctive and famous trademarks owned by the Complainants; (iv) the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names since it appears to have built websites with an artificial structure with only a very small number of references to the Complainants’ marks, trying to mask them as criticism webpages but truly seeking to attract internet users to its website for financial gain through pay-per-click (“PPC”) links incorporated on the websites; (v) not all Internet users are familiar with the English language and not all of them immediately associate “.sucks” with a criticism website; and (vi) the Respondent has offered the disputed domain names for sale (Annexes 14 and 15 to the Amended Complaint). As to bad faith registration of the disputed domain names, the Complainants assert that the Respondent intentionally registered the disputed domain names so as to unduly benefit and profit from the notorious trademarks which it evidently was aware of, not there being other reason for the Respondent’s choice to register them than to create a likelihood of confusion with the Complainants. The Complainants further contend that the Respondent is using the disputed domain names in bad faith given that the webpages that resolve from the disputed domain names contain sponsored links. Another indicative of the Respondent’s bad faith, argue the Complainants, is the registration of the The Respondent claims to have been founded on or around February 12, 2020 to register and hold domain names at the “.sucks” gTLD for the benefit of a non-profit, “Everything.sucks”, which provides an open forum for the public to discuss complaints about anything they might find fault. Users may create Wiki pages on this platform, devoted to commentary on and criticism of a particular subject. After a user creates such a Wiki page, the Respondent states that Everything.sucks may register a domain name using the topic of criticism as the “.sucks” gTLD to direct users who wish to engage in criticism of that topic to the relevant Wiki page. The Respondent further asserts to use a typical format for websites critiquing a business, describing the nature of each website, by combining the company name or mark with the gTLD “.sucks”, having, on August 27, 2020 and October 1, 2020, respectively registered the disputed domain names and caused them to resolve to corresponding Wiki pages about the Complainants as a space for – according to the Respondent – free discussion and criticism of those companies. The Respondent states that it has consistently used this format for registered criticism websites since the “.sucks” Registry was first created to allow people to “Tell the world WHAT.sucks.” The Respondent notes that the Wiki pages for the Complainants contain prominent yellow speech bubbles in the upper left corners stating, respectively, “BGGoodrich Sucks” and “Uniroyal Sucks” right above the tagline “TELL THE WORLD!”, and displays users’ criticisms of the Complainants, including criticisms of their customer service and treatment of employees, and do not resemble the Complainants’ own websites, which both include dealer searches, images of cars and tires, information about tires, and a blue and red (BFGoodrich) or red (Uniroyal) colour scheme. According to the Respondent, no one encountering its websites would conclude that they are owned by or affiliated with the Complainants, which attempt to use this proceeding to prevent legitimate criticism of their businesses. The Respondent maintains that the disputed domain names are not identical or confusingly similar to trademarks in which the Complainants have rights. According to it, the “.sucks” gTLD should not be regarded like other generic TLDs since its pejorative nature would render the disputed domain names as a whole non-identical and prevent confusion. Under the Respondent’s view, the inclusion of “.sucks” in the disputed domain names makes clear that the associated websites are not affiliated with the Complainants, but instead contain criticism of them and of their businesses. The Respondent maintains that “confusingly similar” under the Policy means that by reason of its similarity with a trademark, a domain name is likely to lead to a substantial level of confusion among Internet users that it belongs to the trademark owner or is licensed by it. The Respondent further contends that the Complainants have however put forward no evidence that the disputed domain names are likely to lead to a substantial level of confusion, and no reasonable website visitor would think that the Complainants sponsored or were affiliated with the websites at the disputed domain names which themselves contain negative feedback. The Respondent further submits that the number of Internet users who do not appreciate the significance of the “.sucks” suffix must be so small that should not be worthy of consideration. The Respondent asserts that it has rights or legitimate interests in the disputed domain names, because it uses them to host criticism websites allowing what is claimed to be independent users to exercise their free speech rights to post genuine criticism of the Complainants’ businesses, not being relevant the amount or quality of the criticism therein contained, and the only question is whether it is criticism or parody rather than free-riding on another’s trademark. The Respondent further denies that it has had an intent to misleadingly divert consumers or to tarnish the Complainants’ trademarks since the use of a trademark for purposes of criticism and commentary is noncommercial fair use. According to the Respondent, freedom of speech and freedom of expression are well established rights under the First Amendment to the United States Constitution and Article 10 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, and the Final Report of the WIPO Internet Domain Name Process issued in 1999 recognized that domain name registrations that are justified by legitimate free speech rights would not be considered to be abusive. Furthermore, the Respondent argues that incorporating a company’s trademark in a domain name that indicates that it is critical of the company in order to identify it for the purpose of operating a criticizing website is generally regarded as fair use, and the Complainants cannot use their trademark rights as shields against contrary and critical views when such views are legitimately expressed without an intention for commercial gain. According to the Respondent, the Complainants argue that because the disputed domain names are offered for sale they are not being used in connection with a fair use, what is not true given the comments posted on the websites which show criticism on the Complainants, being commercial gain permitted by the Policy if there is no intent to “misleadingly divert consumers” or “tarnish the trademark”, not having the Complainants shown that the Respondent intended to gain some competitive advantage. According to the Respondent, the Complainants have not shown that the disputed domain names are misleadingly diverting consumers since on arriving at the Respondent’s websites, no visitor could be under an illusion that the websites were the Complainants’ websites or were endorsed by the Complainants given the clearly critical content from employees and customers of each company. Also according to the Respondent, criticism is not the equivalent of tarnishment, and the fact that the Respondent’s websites primarily host negative criticism does not mean that the Respondent intended to tarnish the Complainants’ trademarks. The Respondent maintains that it has never used the disputed domain names to intentionally misdirect customers looking for the Complainants’ services, and has never intended to infringe the Complainants’ rights, being the Respondent well within its rights to offer to sell the disputed domain names to interested buyers. As to the bad faith registration and use of the disputed domain names, the Respondent states that the Complainants’ claim that the Respondent does not have any legitimate interests in registering the disputed domain names completely ignores the websites legitimate purpose of providing an open forum for criticism, being the “.sucks” gTLD primary purpose to allow people to “Tell the world WHAT.sucks”. The Respondent further contends that the mere offer to sell a domain name is not evidence of bad faith, being the Respondent’s primary purpose a fair one: to provide fora for open debate and criticism, having the Complainants’ failed to establish either confusing similarity or lack of a legitimate interest. In addition to that the Respondent denies any attempt to sell the disputed domain names to the Complainants for a price in excess of its documented out-of-pocket costs, having the Finally, the Respondent denies that it has registered the disputed domain names to disrupt the Complainants’ businesses through the attraction of Internet users to its websites for commercial gain, and points out that it is not a competitor of the Complainants. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainants must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain names transferred, according to the Policy. A. Identical or Confusingly Similar The Complainants have established rights in the BFGOODRICH and UNIROYAL trademarks. The disputed domain names incorporate the Complainants’ trademark in their entireties. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7), being the “the applicable TLD in a domain name [is] viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test” WIPO Overview 3.0, section 1.11. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are: (i) before any notice 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 it has not acquired 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. The Complainant contends that the Respondent is not making a legitimate use of the disputed domain names since it appears to have built websites with an artificial structure with only a very small number of references to the Complainants’ marks, trying to mask them as criticism webpages but truly seeking to attract Internet users to its website for financial gain through PPC links incorporated on the websites. The Respondent submits that it has rights or legitimate interests in the disputed domain names, because it uses them to host a criticism platform allowing independent users to exercise their free speech rights to post genuine criticism of the Complainants’ businesses, and the use of trademarks for purposes of criticism and commentary is noncommercial fair use. At the same time, the Respondent states that it registers and holds domain names for the benefit of a third party – a non-profit entity that maintains an open forum under the domain name As in Naos vs. Honey Salt Ltd., CAC Case No.103142, and in Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt,WIPO Case No. D2020-2836, this Panel also understands “these statements of the Respondent as a confirmation that it is not itself exercising any free speech rights, but rather assists another entity to provide an online platform for third parties who may eventually wish to exercise their free speech rights. The Respondent is essentially a third party, and has no direct relationship with any person who might be able to invoke rights of free speech and the fair use defence under the Policy. Yet it is the registrant of the disputed domain name, and not a person who may or may not have a genuine gripe to make about the Complainant”. The comments about the Complainants included on the websites at the disputed domain names are anonymous and undated, and do not directly address the Complainants, which makes them appear as automatically generated, not having the Respondent submitted evidence that they have been actually made by real people on specific dates. The websites contain no criticisms of the Respondent itself against the Complainants. As the evidence submitted indicates, the Respondent’s websites contain both links to other webpages about third parties, i.e., other brands, with similar content, as well as links to third parties’ websites that contain PPC links, not having the Respondent provided a plausible explanation about the inclusion of these links on the websites. This Panel is inclined to conclude that in the absence of such explanation, it appears more likely to the Panel that the inclusion of these links was intended to increase the traffic to the respective domain names and websites, which would generate revenue and possibly increase their attractiveness and price in case they are being offered for sale. Indeed, the declaration of the domain name manager of the Respondent, submitted with the Response, includes a statement that the disputed domain names have been offered for sale to the public. Although “the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor),” such an offer is “highly fact-specific” and may include an evaluation of “the distinctiveness of [the] trademark at issue.” WIPO Overview 3.0, section 3.1.1. Here, as in the past cases against the Respondent, the distinctiveness of the BFGOODRICH and UNIROYAL trademarks and the fact that the disputed domain names are an exact match to them is clear evidence that an offer to sell the disputed domain name constitutes bad faith. As discussed in sections 2.6.1 – 2.6.3 of the WIPO Overview 3.0, to support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial, and in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment. See, e.g., Marc John Randazza v. Contact Privacy Inc. Customer 1248477621 / Don Juravin,WIPO Case No. D2020-3041 (because “a respondent’s criticism must be genuine and noncommercial… the Panel agrees with the Complainant’s assertions that the Respondent’s use of the disputed domain name amounts to a pretext for cybersquatting or tarnishment”); and Wikimedia Foundation Inc. v. Protected Domain Services - Customer ID: NCR 1181691 / webudaipur, web Udaipur,WIPO Case No. D2011-0107 (website with automatically generated content intended solely as a pretext to create the impression that it is legitimate and not in bad faith). Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (such as <[trademark].TLD>); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. Where the domain name is not identical to the complainant’s trademark (which is not the case here), but it comprises the mark plus a derogatory term (such as <[trademark]sucks.TLD>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. In view of the circumstances of the present case the Panel is not satisfied that the websites at the disputed domain names are true “gripe sites” and thereby represent genuine and fair exercise of the right of free speech, such that they may give rise to rights or legitimate interests of the Respondent in the disputed domain names. Rather, it appears more likely that these websites have been set up to serve as a pretext to create the impression that the registration and use of the disputed domain names are legitimate and not in bad faith, and that the actual intent behind the actions of the Respondent is more likely to have been to from the hoped-for sale of the disputed domain names. A similar fact pattern leading to similar conclusions was discussed in De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465. The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the use of the disputed domain names which do not characterize genuine noncommercial criticism of the Respondent (or by third parties for that matter) against the Complainants, since the contents of the associated websites appear to have been automatically generated rather than created by independent persons making genuine comments directed specifically at the Complainants through the Respondent’s so-called platform. As the evidence submitted indicates, given that no genuine criticism appears to be made at the webpages that resolves from the disputed domain names, it leads the Panel to conclude that either the Respondent sought to increase Internet traffic to the associated websites and to other websites of the Respondent or of a third party related to the Respondent (and possibly thus inflating the prices of the domain names to which these websites resolve), or to the links to third parties websites that appear at the pages that resolve from the disputed domain names and which contain PPC links. Even if the criticism was genuine, under Policy precedent the Respondent would not be entitled to use a domain name identical to the Complaints’ marks for such purposes. In addition to that, it must be taken into account that the Respondent admits to have listed the disputed domain names for sale on the open market, shortly after their registrations, what is an indicative of a pattern of abusive registrations in which the Respondent has been involved, as established by the decisions cited above, further supporting a finding of bad faith pursuant to paragraph 4(b)(ii) of the Policy. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy. 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 Wilson Pinheiro Jabur Angelica Lodigiani Douglas M. Isenberg
Presiding Panelist
Panelist
Panelist
Date: March 12, 2021
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