The Complainant is Crystal Lagoons B.V. of Amstelveen, Netherlands, represented by Carey y Cia. Ltda., Chile.
The Respondent is Edward Cook of Bedford, Bedfordshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is R S.p.A. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2018. On February 16, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 19, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on April 23, 2018. 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 ADR Rules, Paragraph B(5). 4. Factual Background
The Complainant is based in the Netherlands and is wholly owned by Crystal Lagoons (Curaçao) B.V. The Complainant uses bespoke technology to develop and maintain clear lagoons for building development projects and licenses its technology to real estate project developments and now operates in more than 60 countries. Crystal Lagoons (Curaçao) B.V. is the intellectual property holding company for the Complainant’s business and owns several registered trade mark rights for the CRYSTAL LAGOONS mark including European Trade Mark registration 006326391 registered on September 17, 2008. The Complainant owns the domain names and which it has owned since their registration in 2007 and 2013 respectively.
The disputed domain name was registered on March 24, 2017 and resolves to a website that features a critique of the Complainant’s business practices in relation to one of its developments in Chile. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights for its CRYSTAL LAGOONS mark as set out above. It says that the disputed domain name wholly incorporates its mark and differs from it only by the inclusion of a hyphen. The Complainant says that the addition of the hyphen does not distinguish the disputed domain name from its CRYSTAL LAGOONS mark and that the disputed domain name is therefore confusingly similar.
The Complainant submits that it has not authorised or licensed the Respondent to use its CRYSTAL LAGOONS mark. It further says that the Respondent is not commonly known by this name or mark, does not appear to own an entity that is trading under this name and has not used the mark in the course of trade in relation to any offering of goods or services. It notes further that the Respondent is not making a legitimate noncommercial or fair use of the mark.
The Complainant submits that the disputed domain name resolves to a website that creates a false association with the Complainant by featuring the Complainant’s combined word and logo mark and attracting Internet users with the intent of causing harm and disruption to the Complainant’s business by causing Internet users erroneously to think that they are logging into the website of the Complainant and then to see a critique of the Complainant’s business practices on the website. The Complainant submits that freedom of speech principles do not permit the Respondent to use a domain name that is identical or confusingly similar to the Complainant’s trade marks in order to entice or mislead Internet users to tarnish a company’s reputation and as a result the Respondent’s conduct does not qualify as legitimate noncommercial or fair use.
In addition, the Complainant notes that the Respondent appears to have used on the website at the disputed domain name without its permission the Complainant’s combined word and logo mark as was registered on the Peruvian trade mark register under No. 0099526, on January 19, 2017.
None of this conduct says the Complainant is consistent with bona fide conduct and demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name.
As far as bad faith registration and use are concerned the Complainant says that it is clear that when the Respondent registered the disputed domain name he was well aware of the Complainant’s CRYSTAL LAGOONS trade mark as all of the information referred to in the Respondent’s web page concerns the Complainant and also includes the Complainant’s combined word and logo mark.
Further says the Complainant, apart from the unauthorised use of the Complainant’s mark, the website uses a pejorative tone by using the title “ Turbid Business Practices” and closing with the phrase “Don’t invest in a project with Crystal Lagoons unless you have a very good lawyer” and makes various reservations and harmful statements about the Complainant’s way of doing business. This says the Complainant amounts to the Respondent seeking to use the disputed domain name to lead Internet users to its website with a view to causing harm and disruption to the Complainant’s business. It says that the critique on the website goes beyond legitimate use or fair criticism and amounts to defamation and misrepresentation and is in breach of Article 8 of the European Convention on Human Rights which protects the right of reputation and honour as a limit to the right of free speech. This all amounts according to the Complainant to registration and use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has provided evidence that it is owned wholly by Crystal Lagoons (Curaçao) B.V. who is the owner of the intellectual property rights behind the Complainant group’s technology, including of European Trade Mark registration 06326391 registered on September 17, 2008 for CRYSTAL LAGOONS. The Complainant is a wholly owned member of the Crystal Lagoons (Curaçao) B.V. corporate group and has the right by virtue of a Board Resolution of Crystal Lagoons (Curaçao) B.V., which has been provided in evidence, to promote and defend the intellectual property interests of Crystal Lagoons (Curaçao) B.V. Accordingly, the Panel finds that the Complainant, or its corporate group, owns registered trade mark rights in the CRYSTAL LAGOONS mark for the purposes of the Policy.
The disputed domain name wholly incorporates the Complainant’s CRYSTAL LAGOONS mark with the addition of a hyphen between the words “Crystal” and “Lagoons”. The mere addition of a hyphen does not distinguish the disputed domain name and the Panel finds therefore that the disputed domain name is confusingly similar to the Complainant’s CRYSTAL LAGOONS mark and the Complaint succeeds to prove the condition set forth under Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests
The Complainant has submitted that it has not authorised or licensed the Respondent to use its CRYSTAL LAGOONS mark. It has also asserted that the Respondent is not commonly known by this name or mark, does not appear to own an entity that is trading under this name and has not used the mark in the course of trade in relation to any offering of goods or services. It further asserts that the Respondent is not making a legitimate noncommercial or fair use of the mark.
It is clear that the Respondent is using the disputed domain name to resolve to a site at which it makes a critique of the Complainant’s business practices at one of its developments in Chile. Internet users arriving at the website, apart from seeing the copied representation of the Complainant’s word and logo mark, will see the title “Turbid Business Practices” and on reading the critique in the middle and also the closing phrase “Don’t invest in a project with Crystal Lagoons unless you have a very good lawyer”, will understand very quickly that this is a criticism site that is not authorised or sponsored by the Complainant. The question for the Panel is whether it is legitimate under the ADR Rules for the Respondent to use a domain name that wholly incorporates the Complainant’s mark and is otherwise identical with the exception of a hyphen, in order to divert Internet users to its criticism website?
As noted at paragraph 2.6.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0),1 previous panels have generally found that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trade mark (i.e., (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech. The WIPO Overview 3.0 notes that panels tend to find that this creates an impermissible risk of user confusion through impersonation.
This Panel agrees with this general approach. As this Panel discussed in detail, but in different factual circumstances, in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, Internet users will necessarily be confused by the use of a domain name that incorporates the Complainant’s trade mark but which does not contain any kind of additional modifier that would assist in signifying that the domain name at issue is not necessarily associated with, or sponsored by, the trade mark owner. While each case will turn on its particular facts, this Panel considers that it is not legitimate for the Respondent to confuse and divert Internet users to its criticism website using a domain name that wholly incorporates the Complainant’s trade mark without the inclusion of any suitable modifier. In this case the Panel also notes that the disputed domain name is identical to Complainant’s domain name . This approach does not undermine any right that the Respondent may have to free speech, as the Respondent, when it registered the disputed domain name in March 2017, could have chosen a domain name containing any number of suitable modifiers that would have distinguished it from the Complainant’s trade mark and thereby avoid such user confusion. However, it seems in this case that the Respondent chose not to do so and the Respondent has failed to provide any explanation at all for its actions.
Accordingly, the Panel finds that the Respondent’s conduct is not legitimate and that the Complaint also succeeds to prove the condition under Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith
It is apparent that Respondent was well aware of the Complainant’s trade mark when it registered the disputed domain name in March 2017 and that it did so for the purpose of diverting Internet users to its criticism website. As noted above it is also apparent that the disputed domain name is identical to Complainant’s domain name . This Panel therefore finds that the disputed domain name was registered bad faith.
With reference to the use of the disputed domain name, although, using a domain name to resolve to a legitimate criticism site is not per se a bad faith use, in this case the Respondent’s use of the Complainant’s trade mark without the inclusion of any effective distinguishing modifier was calculated to confuse and mislead Internet users to the Respondent’s criticism site. This is not use in good faith.
In addition, the fact that the Respondent used the Complainant’s combined word and logo mark on its website and appears to have registered without the Complainant’s permission a replica of the Complainant’s combined word and logo mark as is also registered on the Peruvian Trade Mark registered under No. 0099526. This is also not consistent with good faith intent on the part of the Respondent.
The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint also succeeds to prove the condition under Paragraph B(11)(d)(1)(iii) of the ADR Rules. 7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the Complainant2 .
Alistair Payne
Sole Panelist
Date: May 4, 2018
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer to UDRP jurisprudence, where instructive.
2 The remedy sought by the Complainant is the transfer, as the Complainant is located in Netherlands, within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002.
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