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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Burson-Marsteller, LLC v. Dexter Smith
Case No. D2002-1012
1. The Parties
The Complainant is Burson-Marsteller, LLC, of New York 10003, United States of America, represented by Davis & Gilbert LLP of United States of America.
The Respondent is Dexter Smith, New York, New York 10112, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bursonmarsteller.com> is registered with Gandi SARL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2002. On October 31, 2002, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On November 5, 2002, Gandi SARL transmitted by email to the Center its verification response. On November 6, 2002, the Center sought additional information from the Registrar, and on that same date Gandi SARL contacted the Center, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2002. The Response was filed with the Center on November 27, 2002.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 9, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is engaged in the field of public relations and communications and has been since 1953. Headquartered in New York, New York, Complainant employs more than 1,600 professionals in 72 offices in 32 different countries. Complainant has used the service mark BURSON-MARSTELLER for almost 50 years, and in 1997, Complainant registered the service mark with the United States Patent and Trademark Office ("USPTO") in connection with public relations and media relations services. Complaint, Annex 3.
Complainant has promoted its mark to the degree that a substantial amount of good will is attached to it. Complaint, Annexes 4, 5, and 6. Respondent has used the domain name at issue to resolve to a web site on which Complainant's service mark and other proprietary materials appear. The web site to which Respondent's domain name resolves has slight differences from the main web site maintained by Complainant. Complaint, Annexes 7 and 8.
The content of the web site to which the domain name at issue resolves changes from time to time, at one point in time displaying the "Yurt Media Center Internet Homepage Web site."
Complainant had been the registrant of the domain name at issue, but failed to renew the registration, allegedly because it did not receive a pending expiration notice. Complainant's registration expired in 2001. Respondent registered the domain name at issue on July 14, 2002. Complaint, Annex 1. Complainant also is the registrant of <burson-marsteller.com>, <bm.com>, bursonmarsteller.net>, and <bursonmarsteller.org>, among others.
Respondent's email address, according to the Whois database, is firstname.lastname@example.org. The web site to which <rtmark.com> resolves appears to encourage disruptive activities, such as hacking, the propagation of viruses in computer programs, etc. Complaint, Annexes 1 and 9. Respondent gives a New York address and a Massachusetts telephone number.
To the extent that complainant's mark is known outside of the public relations and advertising industries, it is known in connection with unethical business practices, including performing services for repressive political regimes, organizing misleading consumer-front groups to create the appearance of public support for harmful products and damaging environmental practices, exercising corporate influence over media outlets, and espionage and unsavory political activities. Response, Annexes 10, 12, 13, and 14. Respondent denies any knowledge of Complainant's mark prior to Respondent's registration of the domain name at issue.
Respondent owns a dog named "Burson," named after the New York City artist Nancy Burson. Respondent's wife also owns two dogs, one named "Westinghouse" and the second named "Marsteller." The source of the "Marsteller" name is not explained. The domain name at issue was registered with the intention to create a Web site displaying photos of the three dogs previously noted.
Three days after having registered the domain name at issue, Respondent first learned of Complainant and its business practices while contacting local colleges and universities to obtain free web hosting. Respondent obtained free web hosting services from Yurt Media Center at Hampshire College in Amherst, Massachusetts. The advisor to Yurt Media Center is representing Respondent in these proceedings.
Respondent lives in New York and purchased a cell phone in Massachusetts.
Respondent acknowledges that Respondent used the domain name at issue to redirect and modify text from Complainant's main web site, "via intelligent dynamic filtering techniques which simplify language and more accurately represent the business of the Complainant than the Complainant has done itself." Respondent made such modifications in order to make it "more clearly understandable." Users who entered Respondent's domain name into their computers did in fact see Complainant's web site (as slightly modified), so such users could not have been confused. To the extent that Complainant is alleging copyright infringement, any use by Respondent was fair use, "consistent with the values of criticism, comment, and education."
Following the filing of the Complaint in this matter, Respondent altered the web site to include a disclaimer and to post articles and opinions critical of Complainant and of its business practices. Respondent's new web site has a hyperlink to Complainant's main web site. Respondent's web site suggests that visitors contact Complainant directly concerning its products and services. Thus, Respondent's web site is offering "in good faith a valuable public service."
Respondent denies that he is in any way affiliated with the entity RTMARK and notes that many entities provide email services to unaffiliated parties.
The appearance of the web page of the Yurt Media Center upon the entry of the domain name at issue in a computer was an accident that resulted from "a misconfiguration of the Apache software used to host Respondent's Web site."
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical or confusingly similar to the service mark in which Complainant has rights. Respondent has no right or legitimate interest in respect of the domain name. Respondent has registered and is using the domain name in bad faith, in that it is misleading people who use it into believing that they are arriving at or will arrive at Complainant's web site, in that it is attempting to prevent Complainant from reflecting its service mark in a corresponding domain name, and in that it dilutes the mark.
Respondent's domain name is not confusingly similar to Complainant's mark, since it lacks the hyphen contained in Complainant's mark. Respondent has rights and legitimate interests in respect of the domain name, since it is using it to perform a public service, i.e. to expose Complainant's hypocrisy. Respondent registered the domain name in good faith; because it was registered as the combined name of two of the three dogs owned by Respondent and his wife and was registered without knowledge of Complainant's mark. Respondent has never used the domain name at issue for commercial gain.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It has long been established that the deletion or insertion of a hyphen in a domain name does not distinguish it from a corresponding mark and that the mark and the domain name are identical. EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075. The Panel finds that the domain name at issue is identical to the service mark in which Complainant has rights.
B. Rights or Legitimate Interests
Respondent registered the domain name at issue with the stated intention of using it to publish pictures of the three family dogs, two of whom had names that make up the domain name at issue and coincidentally correspond to Complainant's service mark. However the domain name at issue was never used for that purpose. Prior to the filing of the Complaint, the domain name was used to redirect and modify the text on Complainant's own web site to "more accurately represent the business of the Complainant than the Complainant has done itself." No effort has been made to create the "family dogs" site. Only after the Complaint had been filed did Respondent modify the site to include a disclaimer, a link to Complainant's actual (and accurate) site, and the posting of articles and information critical of complainant. Respondent had no right or legitimate interest in modifying the copyrighted material on Complainant's web site and post it as if Complainant had created it. Respondent cannot create a right and legitimate interest "after the fact" of having been made a party to a UDRP proceeding. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
"As panelists, we are not obliged to put away our common sense before we open a file." Time Inc. v. Chip Cooper, WIPO Case No. D2000-1342, § 6, at 6. Respondent's story defies all credulity. Respondent purportedly registered the domain name at issue to publish pictures of the family dogs, two of whom just happened to bear the names of "Marsteller" and "Burson," a combination of which is coincidentally the service mark and name of Complainant. The third was named "Westinghouse," whose name inexplicably was not deemed worthy of inclusion in the domain name at issue. The domain name at issue was never used for its "intended purpose," but rather was used to redirect the copyrighted material on Complainant's web site and to modify it to "more clearly portray" the nature of Complainant's business. Of course, there was no indication to a user that this was what was being done, and any user would believe that he or she had arrived at Complainant's own web site.
While this conduct does not fit squarely within any of the examples set forth in Paragraph 4(b) of the Policy, those examples are not intended to be exclusive. It has long been established that in given factual situations, non-use and inaction can constitute bad faith registration and use. One of the earliest Panel decisions, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, established that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." Telstra, paragraph 7.9. Perhaps the most cited of all UDRP decisions to be handed down to date, the Telstra decision and its rationale have been followed by numerous subsequent panel decisions. By now the rule is well established that in performing the Telstra analysis a Panel must "give close attention to all the circumstances of the Respondent's behaviour." [SIC]. Id., paragraph 7.11. It is important to note that the focus is to be placed on the Respondent's behavior, rather than on his words.
In this case Respondent registered as a domain name words in combination that were identical to Complainant's mark. While Respondent denies knowledge of Complainant or its marks until three days following the registration of the domain name at issue, the Panel finds this contention fanciful. Respondent began and continued using the domain name at issue to redirect Complainant's copyrighted materials from its web site and to alter them in a subtly disparaging manner so that a user would believe that it had arrived at Complainant's web site and would be puzzled by the content thereof. This conduct only changed after Complainant had filed a UDRP Complaint against Respondent.
The Panel believes that Respondent created an unauthorized derivative work from Complainant's copyrighted material, and that this illegitimate activity constitutes bad faith registration and use. However, even if such conduct is viewed as "inaction," it is bad faith inaction within the meaning of Telstra.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <bursonmarsteller.com> be transferred to the Complainant.
M. Scott Donahey
Date: December 13, 2002