The Complainants are Covestro Deutschland AG, Germany, H. Lundbeck A/S and Rockwool International A/S, Denmark, and No Ordinary Designer Label Ltd., United Kingdom (“UK”), represented by BrandIT GmbH, Switzerland.
The Respondent is Pat Honey Salt, Honey Salt ltd, Turks and Caicos Islands, UK, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 2021, 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 April 1, 2021. 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 April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. On April 16, 2021, the Respondent contacted the Center requesting an extension to the Response due date. Pursuant to paragraph 5(b) of the Rules, on April 19, 2021, the Response due date was automatically extended until May 7, 2021. The Response was filed with the Center on May 7, 2021. The Center appointed Reyes Campello Estebaranz, Anne-Virginie La Spada and Nicholas Smith as panelists in this matter on May 27, 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. 4. Factual Background A. Complainants and Their Rights The Complainant Covestro Deutschland AG (the “First Complainant”) is a German company founded in 2015, which operates in the high-tech polymer materials industry, with around 17,200 employees in 30 locations across the world. It operates under the trademark COVESTRO. The First Complainant holds trademark registrations in many jurisdictions around the world that comprise the term “covestro”, including International Trademark Registration No. 1272950, COVESTRO, word, registered on May 15, 2015, in Classes 1, 2, 17, 19, 25, 40, and 42; European Union Trademark Registration No. 013701412, COVESTRO, word, registered on July 28, 2015, in Classes 1, 2, 17, 19, 25, 40, and 42; and United States Trademark Registration No. 5178591, COVESTRO, figurative, registered on April 11, 2017, in Classes 1, 17, 19, 40, and 42, (collectively the “COVESTRO mark”). Prior decisions under the Policy have recognized the goodwill and reputation of the COVESTRO mark in the field of polymers research and production.1 The First Complainant is also the owner of the domain name The Complainant H. Lundbeck A/S (the “Second Complainant”) is a Danish company established in 1915, which operates in the pharmaceutical industry, particularly targeting different brain psychiatric and neurology diseases. It employs around 5,600 people in more than 50 countries, generating a revenue of DKK 17.7 billion in 2020, and it operates under the trademark LUNDBECK, as well as other trademarks that identify its various products (CIPRALEX, LEXAPRO, MOBIC, etc.). The Second Complainant holds trademark registrations in many jurisdictions that comprise the term “lundbeck”, including European Union Trademark Registration No. 002068229, LUNDBECK, word, registered on September 27, 2002, in Classes 5, 16, 41, and 42; International Trademark Registration No. 1147485, LUNDBECK, word, registered on December 14, 2011, in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45; and International Trademark Registration No. 1419469, LUNDBECK INSTITUTE, word, registered on April 10, 2018, in Classes 5, 9, 16, 41, and 42, (collectively the “LUNDBECK mark”). The Second Complainant is also the owner of the domain name The Complainant Rockwool International A/S (the “Third Complainant”) is a Danish company, which roots go back to 1909, that manufactures and commercializes stone wool insulation for the construction industry. Prior decisions under the Policy have recognized that this company is widely known globally within the insulation industry.2 It operates 45 manufacturing facilities, and has a global network of sales offices, distributors and partners. The Third Complainant’s group includes various sister companies specialized in solutions for the horticultural, marine and offshore sectors, commercialized under the trademarks GRODAN, ROCKFON and ROCKWOOL. The Third Complainant holds trademark registrations in many jurisdictions around the world that comprise the terms “rockwool”, “rockfon”, or “grodan”, including: - International Trademark Registration No. 813306, ROCKWOOL, word, registered on October 9, 2003, in Classes 17 and 19; International Trademark Registration No. 1393651, ROCKWOOL, figurative, registered on August 22, 2017, in Classes 6, 17 and 19; and United States Trademark Registration No. 6036048, ROCKWOOL, figurative, registered on April 21, 2020, in Classes 1, 6, 17 and 19, (collectively the “ROCKWOOL mark”); - International Trademark Registration No. 813307, ROCKFON, word, registered on October 9, 2003, in Classes 17 and 19; and International Trademark Registration No. 1385201, ROCKFON, figurative, registered on August 22, 2017, in Classes 6, 17 and 19, (collectively the “ROCKFON mark”); and - International Trademark Registration No. 1079668, GRODAN, word, registered on May 24, 2011, in Classes 1, 9, and 44; European Union Trademark Registration No. 004335031, GRODAN, word, registered on February 24, 2006, in Classes 1, 9 and 44; and International Trademark Registration No. 1390888, GRODAN, figurative, registered on August 22, 2017 in Classes 1, 17 and 19, (collectively the “GRODAN mark”). Prior decisions under the Policy have recognized the international well-known character of the ROCKWOOL mark.3 The Third Complainant is also the owner of various domain names comprising its trademarks, including The Complainant No Ordinary Designer Label Ltd (the “Fourth Complainant”) is a British company founded in 1998, which operates in the clothing retail industry, offering menswear, womenswear and accessories. It has around 2,000 employees, 490 stores and concessions worldwide, and operates under several trademarks, including TED BAKER, TED BAKER LONDON, TED BAKER WOMAN and TED BAKER SHIRT SPECIALIST LONDON. The Fourth Complainant holds trademark registrations in many jurisdictions that comprise the terms “Ted Baker” and “Ted Baker London”, including: - International Trademark Registration No. 684563, TED BAKER, word, registered on December 1, 1997, in Class 25; European Union Trademark Registration No. 004267191, TED BAKER, word, registered on April 16, 2007, in Class 25; and United States Trademark Registration No. 2644551, TED BAKER, figurative, registered on October 29, 2002, in Class 5, (collectively the “TED BAKER mark”); and - International Trademark Registration No. 1123301, TED BAKER LONDON, word, registered on February 28, 2012, in Classes 3, 9, 14, 18 and 25; European Union Trademark Registration No. 010245827, TED BAKER LONDON, word, registered on January 11, 2012, in Classes 3, 9, 14, 18 and 25; and United States Trademark Registration No. 78871090, TED BAKER LONDON, figurative, registered on September 11, 2007, in Classes 3, 9, 14, 18 and 25, (collectively the “TED BAKER LONDON mark”). The Fourth Complainant is also the owner of various domain names comprising its trademarks, including The Respondent has been involved in prior cases under the Policy and under the Uniform Rapid Suspension System (URS), related to different generic Top-Level Domain (“gTLD”) “.sucks” domain names.4 The disputed domain names are: - - - - - - - - The disputed domain names resolve to active Wiki style pages, in the English language, all contained on a common platform (“Everything.Sucks”) with identical look and feel. These pages prominently display a black-on-yellow speech bubble in the upper left side of their heading, containing the elements of the respective disputed domain names, above the tagline “tell the world!” in smaller capital letters. They further prominently display the respective Complainants’ trademarks and logos, in the upper right side, below their respective heading and a title that follow the pattern “[Trademark] Sucks Customer Reviews and Feedback”, and include brief information about their respective businesses. These pages appear to invite Internet users to post customer reviews and feedback about the Complainants. They include various undated anonymous negative reviews and comments allegedly posted by individuals, or obtained from other platforms such as “social media” or “in the news”, without indicating their source. The comments or reviews already displayed are either in English or in other languages, showing no option for posting any further comments or evaluation regarding each of these reviews and comments. On the left side of these sites, there is a sidebar displaying links to “Popular Pages” and “Recent Updates” included in the platform, regarding other topics or brands belonging to third parties, including companies and brands unrelated to the Complainants in their same sectors. At the end of these websites, there is a notice within a rectangle indicating: “Everything.sucks is a non-profit organization and communications forum for social activism. This website allows users a voice to share their point of view online about what sucks in the world. We occasionally buy a dot sucks domain and point it at a specific page. We do this to bring awareness to our site and because, well, we love the dot sucks domain. If you ask us if we would sell the domain, our answer is simple. Absolutely not. We will give it to you. If the domain pointing at this page inspires passion in you and you want to build a fuller site around it, you can have it. That’s right, we will simply give it to you. We want to promote more sites on the Internet where people can share their voices. To make it as simple as possible for you to have this domain, simply take this Authorization Code to your favourite domain name registrar, and they can transfer it right to you […].” This text is followed, in each of the websites, by a different authentication code and a common email address indicated for providing feedback. According to the evidence provided by the Complainants, this notice was not included in the websites linked to the disputed domain names in screen captures of these sites dated March 5, 2021. These websites do not include any information about their respective owner and/or the owner of the disputed domain names. They show in their footers links to sections titled “Privacy policy”, “About Everything.Sucks” and “Disclaimers”. However, when the user clicks on “About Everything.Sucks” link, the user is directed towards the top of each site (which does not display any information about the platform or its owner). The “Privacy policy” and “Disclaimers” links take the user towards pages that contain general information but do not provide any information about the Respondent’s and/or the platform Everything.Sucks’ companies, their fiscal numbers, nor contact details. 5. Parties’ Contentions A. Complainants The Complainants request the acceptance of the consolidated Complaint filed by multiple unrelated Complainants against the Respondent, because it is in their view equitable and procedurally efficient to permit the consolidation, and the Respondent is engaged in a common conduct that has affected the Complainants in a similar fashion. Key contentions of the Complaint may be summarized as follows: The disputed domain names are respectively identical to the Complainants’ trademarks, as they incorporate entirely these marks, and the gTLD “.sucks” is a standard registration requirement that may be disregarded in the assessment of the first element of the Policy. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated to the Complainants, has not been authorized to use their trademarks, and it is not commonly known or has any registered trademarks including the terms “covestro”, “lundbeck”, “rockwool”, “rockfon”, “grodan”, “ted baker”, “tedbaker-london”, or “ted baker london”. The disputed domain names create a high risk of association, and the Respondent is not making a legitimate noncommercial fair use. The disputed domain names host misleading and tarnishing information, undated, anonymous and unverifiable “reviews” and randomly picked articles (some unrelated to the Complainants), all most likely automatically generated, copied and pasted from other websites. The Respondent has no direct connection to any person, who might be able to invoke rights of free speech or fair use. The Respondent is a company that has been involved in prior cases under the URS and the Policy, where it has admitted that its business model involves acquiring and selling “.sucks” domain names. The Respondent is the owner of more than 2,000 “.sucks” domain names encompassing well-known trademarks, several of them, including the disputed domain names, offered for sale at considerable prices (the second, fourth and eighth disputed domain names were offered for sale at USD 2,598, and the rest at USD 2,198). The notice included in the Respondent’s websites, indicating its non-profit character and its authorization to transfer free each of the disputed domain names to anyone interested, was likely added in reaction to prior unfavorable decisions regarding other “.sucks” domain names, as it was not included in screen captures dated March 5, 2021. The disputed domain names were registered and are being used in bad faith. The Complainants’ trademarks have strong online presence through their respective official websites and social media accounts. The Respondent targeted the Complainants and their trademarks to take advantage of their reputation primarily for selling them at a price that exceed out-of-pocket costs related to their registration (USD 2,198 - 2,598). Due to the strong presence online and the reputation of the Complainants’ trademarks, any search over the Internet reveals them, being implausible that a professional domain name trader (as the Respondent) would not have reviewed search engine results before valuing and acquiring the disputed domain names. The disputed domain names are identical to the Complainants’ trademarks and the websites linked to the disputed domain names include these marks as well as short descriptions of the Complainants and their businesses. The Respondent is involved in a pattern of conduct of registering domain names incorporating third party’s trademarks in order to obtain a financial gain for their sale. Further evidence corroborating the Respondent’s bad faith are the use of a privacy shield for the registration of the disputed domain names, and the fact that the notice regarding its alleged non-profit character was introduced after unfavorable decisions regarding other “.sucks” domain names. The Complainants have cited previous decisions under the Policy, as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that they consider supportive of their position, and requests the cancellation of the disputed domain names. B. Respondent The Respondent objects to the consolidation of multiple unrelated complainants into a single claim, because there is no common grievance and it is not equitable including due to the word limit for the Response imposed by paragraph 5(c)(i) of the Supplemental Rules. Key contentions of the Response may be summarized as follows: The disputed domain names are not identical or confusingly similar to the Complainants’ trademarks. The pejorative nature of the gTLD “.sucks” renders the disputed domain names of a non-identical nature to the Complainants’ trademarks, indicating a lack of affiliation and preventing confusion. The number of Internet users who may not appreciate the significance of the gTLD “.sucks” is minimal and not worthy of consideration. The Complainants have provided no evidence that the disputed domain names may lead to confusion. The Respondent has rights or legitimate interests in the disputed domain names. Using a trademark for purposes of criticism and commentary is noncommercial fair use, being irrelevant whether the Respondent is the party posting the criticism or it is providing a forum for others to do so. The well-established right to freedom of speech (under the First Amendment of the United States Constitution, the European Convention for the Protection of Human Rights, as well as the Policy), includes the right to make comments and to invite others to comment. The Respondent was formed in February 2020 to register and hold domain names for Everything.sucks, a non-profit organization that has created a free platform where users may exercise their freedom of speech and criticism on a wide variety of topics, creating Wiki pages or posting commentary on the already created sites. The disputed domain names are linked to this platform, resolving to pages that use a typical format for criticism websites, mentioning the Complainants’ trademarks to identify the subject of their criticism, and the gLTD “.sucks” clarifies that these sites contain criticism, not being affiliated with or sponsored by the Complainants. These sites contain negative feedback and have no resemblance to the Complainants’ corporate websites, so no one would consider that they are owned by or affiliated with the Complainants. There is no attempt to impersonate the Complainants or misleadingly divert Internet users. Some of the reviews and comments included in the platform are aggregated from other sources and some are left directly by its users, being anonymous and undated, however, this does not indicate that they are not genuine or that the pages themselves are not genuine criticism sites. This proceeding is not the proper forum for addressing claims of defamation or questions of factual accuracy. The “quality” of the criticism is irrelevant under the Policy, as well as the fact that the Respondent has no direct relationship with any person who might be able to invoke freedom of speech rights. The Complainants are attempting to use this proceeding to prevent legitimate criticism of their businesses. The Respondent neither registered nor is using the disputed domain names in bad faith, the Complainants having failed to substantiate their claims. The disputed domain names have not been offered for sale since March 12, 2021 (before the Complaint was filed), and the fact that they have been offered for sale does not detract from their fair purpose. Selling of a domain name is an evidence of bad faith only if it capitalizes the value inherent to the brand by selling it to the trademark owner or its competitors. The current offer of transferring the disputed domain names free of charge (included in all sites related to the disputed domain names), highlights the Respondent’s good faith and legitimate purpose, and could have been used by the Complainants to obtain the disputed domain names for free. The Respondent is not a competitor of the Complainants, there is no diversion or intention to impersonate the Complainants, and criticism is not equivalent to tarnishment. Prior unfavorable decisions under the URS and the Policy have ignored numerous cases supporting the Respondent’s position as well as its sworn testimony, but there is a prior URS case decided in favor of the Respondent issued by the “Czech Arbitration Court”. 5 The Respondent has cited previous decisions under the Policy as well as various sections of the WIPO Overview 3.0 that it considers supportive of its position, and requests the Panel deny relief to the Complainants. 6. Discussion and Findings The Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the case examining the three elements in paragraph 4(a) of the Policy,6 taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Multiple Complainants Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels have looked inter alia at whether: (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. See section 4.11.1, WIPO Overview 3.0. Panels have further considered that a respondent is engaged in common conduct that has affected the complainants in a similar fashion where: (i) the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or (ii) there is a clear pattern of registration and use of all the disputed domain names in question. See National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021; and London Court of International Arbitration (LCIA), International Chamber of Commerce (ICC), Singapore International Arbitration Centre (SIAC), Arbitration Institute of the Stockholm Chamber of Commerce (SCC), American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR) v. ICSID Lawyers, LLC,WIPO Case No. D2013-0685. The Panel notes that prior decisions under the Policy accepting the consolidation of multiple domain name disputes against one single respondent (cited by the Complainants or that the Panel is aware of), have considered cases where the complainants share a connection of some sort. The Panel wishes to emphasize that this is an issue that should be analyzed and determined on a case-to-case basis. In the present proceeding, although the Complainants may have established that the Respondent has engaged in similar conduct as to the individual Complainants, which has broadly-speaking affected their legal rights in a similar fashion, the Complainants do not appear to have any apparent connection between the Complainants. Rather it appears that a number of what can only realistically be described as separate parties have filed a single claim (in the nature of a purported class-action) against the Respondent, arising from similar conduct. As the Panel sees it, the Policy does not support such class actions and therefore, the Panel does not find it justified admitting the consolidation of the multiple separate complaints with no apparent connection, against the Respondent, and finds that such consolidation may not be equitable in all the attendant circumstances. Paragraph 10(b) of the Rules states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Accordingly, for the reasons discussed herein, the Panel determines that it is not equitable and fair to permit consolidation of the complaints into a single Complaint for the purpose of the present proceedings under the Policy. Particularly, the Panel notes that the requested consolidation has forced the Respondent to file a common Response in connection to all the disputed domain names, whereas on its face it would be more equitable that the Respondent had the chance to file different responses in connection to each of the disputed domain names or to all the disputed domain names belonging to each Complainant. This is complicated here by the fact that the Respondent has provided what has been called in prior cases a platform for claimed free speech that may be in essence a pretext for a cybersquatting business model. In principle, a genuine free speech site would be judged in relation to the particular grievance as between two particular parties, but again, that is not the case here. In a sense, this fact leads the Panel to wonder if consolidation is in fact appropriate here, given that the sites at issue are effectively copycat pages with no original content. And while the Panel certainly does not condone the Respondent’s business model, it is given pause by the potential slippery slope that could ensue, e.g., for the event a putative class of complainants against a respondent hosting a range of random pay-per-click pages each directed towards the individual complainants. That, in the Panel’s view, would be a bridge too far. What the prior cases seem to stand for, insofar as they speak of a connection between complainants (yet framed as “common conduct” by the respondent) is that there is a particular reason the respondent sought to register a group of domain names because of some common factor related to the complainants. Here, that simply does not seem to be the case. While the Panel is sympathetic to the Complainants’ grievance, there is simply no articulated connection between them except that they share a common representative. The Panel therefore finds that the Complaint should be denied without entering into an examination of its merits and without prejudice to each of the Complainants filing separate independent complaints under the Policy, with respect to their respective marks and disputed domain names. The Panel wishes to emphasize that it makes no finding as to whether the Respondent's conduct is legitimate under the Policy and the Complainants may file separate complaints under the Policy referred to their respective disputed domain names against the Respondent. The Panel finally notes that there exists another potential dispute resolution option outside of both the Policy and the courts, namely the (Trademark) Post Delegation Dispute Resolution Procedure, for which the WIPO Center is a provider. See: “https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf”. 7. Decision For the foregoing reasons, the Complaint is denied. Reyes Campello Estebaranz Anne-Virginie La Spada Nicholas Smith 1 See Covestro Deutschland AG v. Kay Mone / KMN INC.,WIPO Case No. D2018-0145; Covestro Deutschland AG v. Registration Private, Domains By Proxy, LLC / Online Resource, Online Resource Management Ltd.,WIPO Case No. D2016-1462; and Covestro Deutschland AG v. Guan Chao Xiang,WIPO Case No. D2019-0126. 2 See Rockwool International A/S v. YellowBlue Media Ltd, Steven Pickett,WIPO Case No. D2012-0332. 3 See Rockwool International A/S v. Mr. Zhu, TUNGKIN INDUSTRY Co. Ltd,WIPO Case No. D2020-2183; and Rockwool International A/S v. Rose, Rosewool Insulation Refractory Co., Ltd,WIPO Case No. D2020-2184. 4 See Equinor ASA v. Redacted for Privacy, Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd,WIPO Case No. D2021-0796; Bureau Veritas v. Pat Honey Salt, Honey Salt Ltd,WIPO Case No. D2021-0769; BforBank v. Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd,WIPO Case No. D2021-0765; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt,WIPO Case No. D2021-0186; M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited,WIPO Case No. D2020-2545; Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited,WIPO Case No. D2020-2517; Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd.,WIPO Case No. D2020-3398; Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt,WIPO Case No. D2020-2836; Cargotec Oyj / Cargotec Patenter AB v. Honey Salt ltd, URS ADR Center of the Czech Arbitration Court (CAC) Case No. 103423; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Honey Salt Ltd., URS CAC Case No. 103141. 5 Boehringer Ingelheim Pharma GmbH & Co. KG v. Honey Salt Ltd., supra. 6 Paragraph 4(a) of the Policy lists the three elements, which a complainant must satisfy in order to divest a respondent of a domain name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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.
Presiding Panelist
Panelist
Panelist
Date: June 22, 2021
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