The Complainant is Dynamerse Ltd, United Kingdom, represented by Stephenson Law Limited, United Kingdom.
The Respondent is David Glowacki, United States,1 self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2021, 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 20, 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 October 25, 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 October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. On November 15, 2021, the Respondent and 13 other individuals sent a letter to the Complainant’s legal representative, copied to the Center, on behalf of the “Dynamerse.org alliance” in which they suggested a resolution of the dispute. The Response was filed with the Center on November 16, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on December 2, 2021. 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 BackgroundThe Complainant is a spin-out from the School of Chemistry of the University of Bristol. Its sole director and shareholder is Dr. Simon Bennie. “Dynamerse” is an invented word formed from a combination of the words “dynamic”, “universe” and “immersive”. Dr. Bennie registered the domain name
The Respondent is a scientist, an artist and a prolific researcher. He is also a former colleague of Dr. Bennie at the University of Bristol. He and Dr. Bennie co-authored a number of academic research papers regarding interactive molecular dynamics and quantum chemistry using virtual reality. The Respondent gave written notice of his resignation on August 1, 2021, citing his disagreement with the University of Bristol’s practices regarding access to research.
The disputed domain name was registered on April 2, 2021. Since at least September 6, 2021, it has resolved to a website for the “dynamerse.org alliance”. According to the evidence on record, the homepage displays the letters “D.ORG” in a stylized font in the top left-hand corner and tabs for “Home”, “Network”, “Manifesto”, “Donate” and “Contact”. The “Home” page presents the alliance as a group of supporters and beneficiaries of the open-source software project that the Complainant aims to exploit, with a hyperlink to Dr. Bennie’s video presentation. The text expresses criticisms of the Complainant and the possible consequences of its plans, and proposes an alternative focused on strengthening public intellectual commons and encouraging freedom of enquiry. The “Donate” page displays the following text:
“Want to support us? Maybe you want to learn about our mission? Interested to buy this domain? Get in touch!
We use our proceeds to fund initiatives aimed at:
1. Expanding how we think about and engage with the invisible & microscopic world;
2. Creative scientific experimentation beyond the traditional laboratory setting;
3. Contributing to a stronger intellectual commons;
4. Exploring sustainable technology models beyond business-as-usual capitalism;
5. Using technology to alleviate alienation & loneliness in the wake of COVID.”
By October 18, 2021, a page on the website was edited to read as follows: “To celebrate the near completion of rewrite, we are selling this domain! Interested? Get in touch!” Further edits were made to the text of the homepage by October 25, 2021. There is no evidence that the website has displayed third party advertising at any time.
Neither Party has identified any other legal proceedings that have been commenced or terminated in connection with, or relating to, the disputed domain name.
5. Parties’ Contentions A. ComplainantThe disputed domain name is identical to the Complainant’s DYNAMERSE mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent intended to cause confusion with a view to diverting traffic towards the website associated with the disputed domain name. The favicon on the Respondent’s website is similar to the logo on the Complainant’s website. The Respondent has not used, or made any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. It is unclear what products or services, if any, are being offered on the Respondent’s website.
Whilst the Complainant acknowledges the right of the Respondent to exercise his right to freedom of expression in connection with the Complainant’s current or proposed business activities, in the circumstances of this case the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert traffic or to tarnish the trademark represented by the Complainant’s mark. The Respondent has not been commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
At the time when he registered the disputed domain name, the Respondent was aware of the Complainant’s use of the DYNAMERSE mark. He registered the disputed domain name four days after the posting of a YouTube video of Dr. Bennie presenting Dynamerse (a video to which the Respondent’s website later linked). Given that the purpose of that video was to attract investment into the Complainant, the Respondent registered the disputed domain name with a view to impersonating the Complainant and diverting traffic to his website, thereby unfairly capitalizing on the Complainant’s nascent and unregistered rights in its mark.
The Respondent amended his website after being put on notice of the dispute (despite having only amended the website days previously to offer the disputed domain name for sale) in an attempt to establish the website as a criticism website. The Respondent has been willing to sell the disputed domain name for commercial gain. The “Donate” page on his website invited the public to get in touch if they were interested in buying the disputed domain name. On October 18, 2021 the website offered the disputed domain name for sale after the near “completion of rewrite”, which referred to the rewriting of software created and licensed by the University of Bristol in the context of Dr Bennie’s and the Respondent’s research, with a view to the rewritten code being released without charge under a free or open-source software licence. Knowing that the party most likely to be interested in buying the disputed domain name would be the Complainant, who was seeking investment to further its business objectives, the Respondent registered the disputed domain name in bad faith with a view to forcing the Complainant to make an offer to purchase it to avoid any confusion with the Complainant’s own domain name.
B. RespondentThe registration of the disputed domain name predates any trademark claims of the Complainant. The disputed domain name was registered 11 days prior to the Complainant’s trademark application for DYNAMERSE. At that time, the Complainant and its website had existed for nine months without ever filing a trademark application; the Respondent had no knowledge that the Complainant intended to file such an application; and there were no more than a few Google search results for “dynamerse”. Although the Complainant registered DYNAMERSE as a trademark shortly before bringing this action, it has no real trademark rights in the name. The DYNAMERSE mark is being disputed by the Respondent and will be the subject of competing registrations in other jurisdictions. As such, the Complaint is premature and should be adjudicated in the courts.
The Respondent is exercising its right to engage in criticism, which constitutes a legitimate interest. The Respondent has engaged in noncommercial fair use of the name “Dynamerse”. There is no advertising on the website associated with the disputed domain name and no money is otherwise made from it. No products or services are sold from the site. The site is devoted to criticism of the Complainant. The Complainant explicitly acknowledges that the non-profit intention of the dynamerse.org alliance is to release software without charge under free and open-source licenses. The Respondent is making nominative fair use of the DYNAMERSE name. There is no practical way to refer to the Complainant other than by its name. The Respondent uses only the Complainant’s name and there are no other aspects of that name that the Respondent could have used. The Respondent never suggests that the website associated with the disputed domain name is sponsored by the Complainant and any reasonable visitor to the site would realize from its critical content that the site is not sponsored by the Complainant. The Respondent used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or criticism prior to the Complainant’s filing of this action. The Respondent is a well-known scientist and artist. He has published more than 90 peer-reviewed scientific papers, which have received multiple citations, and he has received numerous prestigious research awards. This research and these grants are the font from which Dynamerse originated.
The website associated with the disputed domain name has evolved considerably with time, depending on the energy and positions expressed by those who have gotten involved as they became aware of its mission. The website has succeeded in its efforts to build a community that wishes to bring to light the actions of the Complainant and the University of Bristol, because they believe that such actions are widespread across the United Kingdom higher education sector. On October 17, 2021, the dynamerse.org alliance held a meeting where they discussed the software rewrite and concluded that it was preferable to cut the costs in time and money associated with website maintenance, and make an effort to recover the substantial “out-of-pocket” costs accrued to date, including website purchase, website maintenance, and the software rewrite. Accordingly, the landing page was changed to highlight the fact that the site was for sale. The declaration that the site was for sale has been a long-term feature of the website, featured in various places, primarily under a tab called “Donate”. This agile response of the dynamerse.org alliance illustrates that they have deprioritized their attempts at recovering their out-of-pocket costs in order to engage with ideological discourse as it arises given external circumstances. This is an excellent demonstration of the values that underpin the dynamerse.org alliance: to protest in response to circumstances which they believe represent attempts by the University of Bristol and the Complainant to place commercial restrictions on publicly-funded research.
The Complainant is unable to show that the disputed domain name was registered and is being used in bad faith. The Respondent is actively using the disputed domain name to exercise the right to express an opinion, which does not constitute bad faith. It is impossible for the Respondent to have known that there was any intent to trademark DYNAMERSE at the time when the disputed domain name was registered. Moreover, the dynamerse.org alliance is non-profit, devoted to a mission of seeing publicly-funded research being made available in the world without restrictions to basic research. The website associated with the disputed domain name is not attempting to impersonate the Complainant. Rather, it aims to highlight how the actions of the Complainant are restricting publicly-funded research and to emphasize ideological differences with the Complainant. The dynamerse.org alliance aims to release the software without charge under a free and open source license. The website associated with the disputed domain name makes explicit reference to the Complainant by linking directly to its website and YouTube videos, which is hardly an attempt to impersonate.
6. Discussion and Findings 6.1 Identity of the RespondentThe amended Complaint identifies David Glowacki as the Respondent, whereas the Response identifies both David Glowacki and Jonathan Glowacki as co-respondents. The Response alleges that on April 18, 2020, David transferred to Jonathan, at no charge, ownership of the account used to register and control the website associated with the disputed domain name. The Response annexes an account statement from a web hosting company showing that the disputed domain name is an active product of Jonathan Glowacki.
The Panel recalls that, according to paragraph 1 of the Rules, “Respondent” means the holder of a domain name registration against which a complaint is initiated. In the present case, the Registrar has verified that the underlying holder of the disputed domain name registration is David Glowacki and the Complaint initiates this dispute against him alone. Therefore, the Panel finds that the proper Respondent is David Glowacki. Nevertheless, the Panel will consider the role of Jonathan Glowacki in its analysis in Section 6.2C below.
6.2 Substantive IssuesParagraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proof of each element is borne by the Complainant. Failure to prove any one element will result in rejection of the Complaint.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Complainant has rights in the DYNAMERSE mark. Although the Respondent submits that the DYNAMERSE mark is being disputed, the evidence shows that the Complainant’s trademark registration remains current.
The Panel has taken note that the Complainant’s trademark was registered after the disputed domain name but considers that circumstance relevant to its bad faith analysis in Section 6.2C below. For the purposes of the first element of paragraph 4(a) of the Policy, which operates essentially as a standing requirement, it is sufficient that the Complainant has rights in its trademark at the time when it files the Complaint, as is the case in the present dispute.
The disputed domain name wholly incorporates the DYNAMERSE mark. Its only additional element is a generic Top-Level Domain (“gTLD”) suffix (“.org”). As a mere technical requirement of registration, the gTLD suffix may be disregarded in an analysis of confusing similarity for the purposes of the Policy.
Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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.
It is clear from the submissions that the Complainant has not authorized or licensed the Respondent to register the disputed domain name or otherwise use the DYNAMERSE mark. The question that arises under this element is whether the Respondent has rights or legitimate interests in respect of the disputed domain name that would obviate the need for authorization or a license from the Complainant.
With respect to the first circumstance set out above, the website associated with the disputed domain name is not offering any goods or services for sale and there are no demonstrable preparations for it to do so. The website is critical of the Complainant’s commercial exploitation of an open-source software project and it expresses a series of objectives for an alternative. The website later makes reference to a rewrite of software, which is evidently intended for release without charge under a free or open-source software licence. However, the record does not demonstrate any plans to offer goods or services for sale. The only thing being offered for sale on the website is the disputed domain name. Accordingly, these circumstances do not fall within the terms of paragraph 4(c)(i) of the Policy.
With respect to the second circumstance set out above, the Respondent’s name is Dr. David Glowacki, not “Dynamerse” or “dynamerse.org”. Although the Respondent has published widely and is associated with the research that forms the basis of the business of the Complainant, Dynamerse Ltd, he publishes under his own name, not as “Dynamerse”. While the website also presents the “dynamerse.org alliance”, there is no evidence on the record of this proceeding outside the website associated with the disputed domain name that the Respondent or the other supporters and beneficiaries of the open-source software project at the University of Bristol are known by that name. Accordingly, there is no evidence that the Respondent is commonly known by the disputed domain name as an individual, business or other organization within the terms of paragraph 4(c)(ii) of the Policy.
With respect to the third circumstance set out above, the website associated with the disputed domain name publishes content that is critical of the Complainant and its business. The Panel recognizes that the use of the disputed domain name for criticism and free speech can support a claim to a legitimate interest under the Policy – provided that the use is legitimate and noncommercial. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.6.1. However, in the present dispute, the website associated with the disputed domain name includes a “Donate” page that aims to raise funds for certain initiatives and also offers the disputed domain name for sale. These are not criticisms. Rather, these are efforts to use the disputed domain name to generate income. The fundraising aspect of the website is not merely incidental to its operation; the website seeks to raise funds not just to defray the costs of domain name registration and website hosting but also to pay for future initiatives. In any case, it is not clear how the offering of the disputed domain name for sale could further the objectives of a genuine criticism website. Accordingly, the evidence does not show that the website is a legitimate noncommercial website within the terms of paragraph 4(c)(iii) of the Policy.
The Respondent cites decisions of previous panels under the Policy that upheld the rights of respondents to operate criticism websites. See Bosley Medical Group and Bosley Medical Institute, Inc. v. Michael Kremer,WIPO Case No. D2000-1647; Bridgestone Firestone, Inc. v. Myers,WIPO Case No. D2000-0190; and Britannia Bldg. Soc’y v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. However, those cases must be distinguished from the present dispute because in none of them did the respondent use a domain name for a commercial purpose or offer a domain name for sale.
The Respondent submits that the DYNAMERSE mark will be the subject of competing registrations in other jurisdictions but he does not assert that he holds any trademark rights as yet. There is no evidence of any other basis on which the Respondent might have rights or legitimate interests in respect of the disputed domain name.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstances are as follows:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
With respect to registration, the Panel observes that the disputed domain name was registered before the Complainant’s registered trademark rights accrued. The Respondent registered the disputed domain name on April 2, 2021 and the Complainant did not file its trademark application for DYNAMERSE until April 13, 2021, eleven days later, eventually obtaining registration of its mark on October 8, 2021. The Panel recalls that, where 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. See WIPO Overview 3.0, section 3.8.1. However, there is an exception to that general proposition in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the disputed domain name was to capitalize unfairly on the complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2 and, for example, Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; and Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall,WIPO Case No. D2006-0916.
The Panel considers that the circumstances of this case are exceptional. The Respondent and the sole director of the Complainant, Dr. Bennie, are former colleagues. The Respondent and Dr. Bennie have co-authored a number of academic research papers and it is not disputed that the Complainant’s business derives from academic research conducted by both of them, as well as by others. The disputed domain name incorporates the Complainant’s DYNAMERSE trademark in its entirety with no additional element besides a gTLD suffix, which is a technical requirement of registration. “Dynamerse” is a coined word with no other meaning. The Complainant had been operating as “Dynamerse” for nine months prior to the registration of the disputed domain name, up to and including Dr. Bennie’s video presentation, which was uploaded to a YouTube channel. The Respondent registered the disputed domain name four days later and the associated website specifically criticizes the Complainant’s business plan with a link to the video. The Panel does not consider these circumstances to be a coincidence. Accordingly, it appears that the disputed domain name was registered in anticipation of the Complainant’s trademark rights and that its aim was to take unfair advantage of the reputation that would attach to that trademark as the Complainant continued to use it. See, for example, BML Group Limited v. Rikard Beach, Proxy My Whois AB,WIPO Case No. D2015‑1897.
The Respondent submits that it was impossible for him to have known that there was any intent to trademark DYNAMERSE at the time when the disputed domain name was registered. However, the record shows that, in his video presentation, Dr. Bennie sought to attract potential investors and non-executive directors to the Complainant, presenting a team that included business experts and expressing the hope that its research would become industrially successful. The DYNAMERSE mark featured prominently in the video. Therefore, it was entirely foreseeable that the Complainant would seek to secure its rights to that trademark. While the Respondent may be correct that the filing of the Complainant’s trademark application was hastened by discovery of the disputed domain name, that does not mean that the Complainant lacked any intention to trademark DYNAMERSE. Accordingly, the Respondent has not rebutted the Complainant’s prima facie case that the disputed domain name was registered in anticipation of the Complainant’s trademark rights.
With respect to use, the website associated with the disputed domain name offers it for sale. Although a price is not specified, the website explains that the operator uses its proceeds to fund various initiatives. Read in context, the “proceeds” are a reference to the proceeds of donations and any eventual sale of the disputed domain name, and the list of “initiatives” is not limited to out-of-pocket costs directly related to the disputed domain name. The Response confirms that revenue is needed not just to cover website purchase and maintenance costs but also the software rewrite. That rewrite is not a cost directly related to the disputed domain name. Accordingly, the Panel finds that the circumstances of this case fall within the terms of paragraph 4(b)(i) of the Policy.
The Complainant also argues that the disputed domain name is being used to divert Internet traffic away from its own website and claims the Respondent’s favicon imitates one of the logos designed for its website. The evidence does not show the Complainant’s website but, in any case, the similarities between the parties’ respective D logos appear rather limited while the differences between the D.ORG and DYNAMERSE logos appear considerable. More importantly, the disputed domain name consists solely of the Complainant’s DYNAMERSE trademark and a gTLD suffix, which entails a high risk of implied affiliation with the Complainant. Although the Respondent is correct that the content of the website makes plain that it is operated by a party highly critical of the Complainant and its business, by the time that Internet users read the text on the Respondent’s website they have already been diverted to it and away from the Complainant’s website. Internet users then have the opportunity to find the donations page and fund the Respondent’s future initiatives. Accordingly, the Panel finds that the circumstances of this case fall within the terms of paragraph 4(b)(iv) of the Policy.
The Panel has taken note that Jonathan Glowacki holds an account with a web hosting company regarding the disputed domain name and that he may be the person who maintains the associated website. However, this does not alter the Panel’s conclusions as the Respondent, David Glowacki, remains responsible for that content as the registrant of the disputed domain name, even if he has not directly profited from it. See WIPO Overview, section 3.5.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
D. Reverse Domain Name HijackingThe Respondent asks the Panel to make a finding of reverse domain name hijacking. He alleges that the Complainant’s trademark application appears to have been filed in response to the registration and use of the disputed domain name; that the Complainant never made contact via the Respondent’s website; and that the Complaint is a “Plan B” option to obtain the disputed domain name without negotiation.
Paragraph 15(e) of the Rules, provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
E. Final remark 7. DecisionFor 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,
Matthew Kennedy
Sole Panelist
Date: December 14, 2021
1 The original Complaint was filed against a privacy service. The amended Complaint replaced the privacy service with the Registrar-verified registrant of the disputed domain name.