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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fundaciуn Calvin Ayre Foundation v. Erik Deutsch

Case No. D2007-1947

1. The Parties

1.1 The Complainant is Fundaciуn Calvin Ayre Foundation of San Jose, Costa Rica, represented by Foley & Lardner, United States of America (“USA”).

1.2 The Respondent is Erik Deutsch of Los Angeles, USA, represented by Beitchman & Zekian, P.C., USA.

2. The Domain Name and Registrar

The disputed domain name <calvinayrefoundation.org> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2007, against Domains by Proxy, Inc. The Center transmitted its request for registrar verification to the Registrar on December 31, 2007. The Registrar replied on January 2, 2008, confirming that it was the registrar of the Domain Name and identifying the Respondent as the registrant. The Registrar provided the full contact details in respect of the registration on its Whois database and confirmed that it had received a copy of the Complaint, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would be remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of its principal office in respect of disputes arising from the use of the Domain Name.

3.2 The Center drew the Complainant’s attention to the identification of the Respondent by the Registrar and the Complainant submitted an amended Complaint on January 12, 2008. The Center verified that the amended Complaint satisfied the formal requirements of 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”).

3.3 In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 5, 2008. The Response was filed with the Center on February 2, 2008.

3.4 The Center appointed Jonathan Turner as the sole panelist in this matter on February 12, 2008. 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.

3.5 Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

4.1 The Complainant is a foundation established in 2001 in the name of Calvin Ayre, the founder of a successful online gaming service called “Bodog”. The Complainant operates under the name “Calvin Ayre Foundation” and sponsors various charities. The Complainant has maintained a website at “www.calvinayrefoundation.com” since 2005.

4.2 The Respondent, a public relations executive, registered the Domain Name on May 29, 2006, in the name of a proxy registration service. On September 29, 2006, a person working for Riptown.com Media sent the proxy registration service an email in the following terms:

“Since March 8, 2005, our company has registered the trade name, trademark and service mark “BODOG” in connection with products and services offered at our website, “www.bodog.com”, and micro-sites, including “www.calvinayrefoundation.com”. It has recently come to our attention that you currently own the domain www.calvinayrefoundation.org. We are prepared to purchase this domain from you and negotiate the domain ownership without involving any lawyers. We would like to resolve this quickly and peacefully. We look forward to your response.”

4.3 A lawyer responded on behalf of the Respondent by letter dated October 20, 2006, stating:

“This office represents the business and legal affairs of the registered owner of “www.calvinayrefoundation.org”. We have received a copy of your correspondence seeking purchase of this domain name. Although your letter indicates that you prefer to complete this transaction without the use of counsel, please understand that it is our custom and practice to handle all of our client’s transactions. …..

“In light of your email, my client will entertain any reasonable offer for the purchase of said domain. Accordingly, if you remain interested in purchasing the domain, kindly forward such offer to the undersigned. …”

4.4 Lawyers acting for BoDog Entertainment Group S.A. replied by letter dated November 9, 2006:

“… Our client hereby offers US$1000 for the purchase of the domain name www.calvinayrefoundation.org together with all other domain names, tradenames and trademarks owned by your client which contain the words Calvin Ayre (or variants) as well as an undertaking from your client that it will not in future use or record/register any domain names, tradenames or trademarks anywhere in the world containing the words Calvin Ayre (or variants).”

4.5 The Respondent’s lawyer replied by letter dated February 26, 2007:

“Please be advised that our client rejects your offer of US$1000 for the purchase of the above referenced domain name. We propose a counter offer of US$70,000 for the same and appreciate your reply by March 5, 2007.

4.6 By letter of June 5, 2007, lawyers acting for the Calvin Ayre Foundation rejected this counter offer, repeated the offer of US$1,000 previously made and referred to proceedings under the Policy if the Respondent did not accept it.

4.7 Since about June 11, 2007, the Respondent has directed the Domain Name to a website containing material critical of the Complainant and Calvin Ayre.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has acquired rights in the mark CALVIN AYRE FOUNDATION in various countries by its use of this mark on the Internet and in its sponsorship of charitable events and projects. The Complainant further contends that the Domain Name is identical or confusingly similar to this mark, since it differs from the mark only in the addition of the generic top level domain suffix. The Complainant adds that confusion is all the more likely because the Domain Name has the .org suffix typically used by charitable organizations.

5.2 The Complainant submits that the Respondent has no rights or legitimate interests in this mark. It believes the Respondent is a public relations executive in Los Angeles and notes that his identity was originally masked through a proxy registration service. It appears to the Complainant that the Respondent is an aggrieved individual attempting to use a website at the Domain Name to defame and harass the Complainant and Calvin Ayre.

5.3 The Complainant refers to the Respondent’s lawyer’s letter of October 20, 2006, quoted above, and subsequent correspondence, without mentioning the Complainant’s prior email of September 29, 2006. The Complainant points out that the Respondent began operating the website at the Domain Name after it refused to meet the Respondent’s demands and alleges that the Respondent did so, posting defamatory content, as a last resort to extract an unwarranted amount of money from the Complainant.

5.4 The Complainant notes that the Respondent is using the Domain Name to re-direct Internet users to a blog created by the Respondent and hosted on another website, which seeks to discredit the Complainant and Mr. Ayre, in particular by allegations that Mr. Ayre evades taxes on the profits of the Bodog business.

5.5 The Complainant submits that the Respondent bears the burden of proving that it has rights or legitimate interests in the Domain Name. The Complainant points out that it has not authorized the Respondent to register the Domain Name and states that it is unaware of any evidence that the Respondent is commonly known as a business or otherwise by the Domain Name. The Complainant contends that the Respondent’s use of the Domain Name to redirect Internet users to a website criticizing the Complainant is not a use in connection with a bona fide offering of goods or services.

5.6 The Complainant also contends that the Respondent’s use of the Domain Name for a gripe site is not a legitimate non-commercial or fair use since the Domain Name is identical to the Complainant’s mark, citing the decisions in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248, Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, Bett Homes Limited and Betts Brothers PLC v. Bill McFayden, WIPO Case No. D2001-1018 and Arnold Clark Automobiles Limited v. Thomas (aka) Coughlan, WIPO Case No. D2002-0909. The Complainant adds that the Respondent’s website is defamatory and vindictive without cause and that it infringes the Complainant’s copyright in a photograph reproduced without permission.

5.7 The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. According to the Complainant, three indicia of bad faith are present: registration for the purpose of sale for valuable consideration in excess of costs incurred; disruption of the Complainant’s business by negative publicity; and registration with knowledge of the Complainant’s mark. The Complainant emphasizes that the Respondent offered to sell the Domain Name before it posted its gripe site.

5.8 The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

5.9 The Respondent contends that the Complainant’s founder, Calvin Ayre, has made a fortune from the losses of American citizens through an illegal online gaming business. The Respondent states that he found the philanthropist image of Mr. Ayre portrayed through the Complainant somewhat hypocritical and registered the Domain Name in May 2006 as a means of creating a public forum where people could voice their opinions about Mr. Ayre and his foundation. The Respondent adds that he never had any intention of defaming or harassing Mr. Ayre or disrupting the Complainant’s operations.

5.10 The Respondent criticises the Complainant for concealing in the Complaint its original approach to the Respondent to purchase the Domain Name.

5.11 The Respondent submits that the Complainant’s evidence is insufficient to prove secondary meaning in the term “Calvin Ayre Foundation”, which is descriptive of a charitable organization founded by Calvin Ayre. Accordingly, the Respondent contends that the Complainant has failed to establish that this term is a mark in which it has rights.

5.12 The Respondent accepts that he is not using the Domain Name in connection with a bona fide offering of goods or services and that he is not commonly known by the Domain Name. However, he maintains that he has legitimate interests in the Domain Name since he registered and uses it for the sole purpose of creating a public forum for discussion of the Complainant and its founder.

5.13 The Respondent contends that the material on the website, comprising a structured blog and reader comments, is not defamatory and that all specific assertions in it are factual and substantiated by identified sources. The Respondent submits that the Complainant’s allegations, that he is using the Domain Name to post defamatory content in an effort unfairly and vindictively to tarnish the reputations of the Complainant and Mr. Ayre, are false, unsubstantiated and conclusory. The Respondent also states that he generates no income from the Domain Name and is not using it for any commercial purpose.

5.14 The Respondent submits that the Complainant’s proposition, that the use of a domain name for a website criticizing the Complainant does not give rise to rights or legitimate interests within the meaning of the Policy if it is identical to a complainant’s mark, is a minority view, at any rate where the respondent is based in the USA, as in this case.

5.15 In this regard, the Respondent cites the Center’s “Overview of WIPO Panel Views on Selected UDRP Questions” and the decisions in Covanta Energy Corp. v. Anthony Mitchell, WIPO Case No. D2007-0185, Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024, TMP Worldwide Inc. v. Jennifer L Potter, WIPO Case No. D2000-0536, Bridgestone Firestone, Inc. v. Myers, WIPO Case No. D2000-0190, The Laurel Pub Company Limited v. Peter Robertson / Turfdata, WIPO Case No. DTV2004-0007, Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396 and Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248.

5.16 The Respondent accepts that he offered to sell the Domain Name to the Complainant for US$70,000 and that he did not post content critical of the Complainant at the Domain Name immediately after registering it. However, the Respondent denies that he has acted in bad faith. On the contrary, he maintains that he registered and is using the Domain Name in good faith to provide a forum for discussion about the Complainant and Mr. Ayre.

5.17 The Respondent states that he runs a small professional service business with several time-intensive clients and that the posting of content on the website was unexpectedly delayed due to pressure of work combined with his intention only to post thoughtful, factually supportable commentary, which required careful research.

5.18 The Respondent reiterates that he did not initiate the discussion about a possible sale of the Domain Name and states that he proposed an exorbitant price to demonstrate his lack of interest in selling the Domain Name and to establish a price which would provide ample funds to create and optimize an alternative website if a sale ensued.

5.19 The Respondent denies that he registered the Domain Name primarily for the purpose of sale or of disrupting the Complainant’s business. He also denies that he had actual or constructive knowledge that the Complainant had protectable rights in the mark CALVIN AYRE FOUNDATION.

5.20 The Respondent’s factual assertions are reinforced by a formal declaration made under penalty of perjury under the laws of California.

5.21 The Respondent requests a decision denying the Complaint.

6. Discussion and Findings

6.1 In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name was registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the burden of proof in respect of each element rests on the Complainant. However, evidence provided by the Complainant on any of these elements may shift the onus to the Respondent to show why the Complainant’s evidence does not prove that element.

A. Identical or Confusingly Similar

6.3 The Panel is satisfied that the Complainant has common law rights in the mark CALVIN AYRE FOUNDATION in the USA and possibly other countries. It is now well established that unregistered trademark rights qualify as rights in trademarks for the purpose of the first element of the Policy where there is sufficient evidence of distinctiveness and secondary meaning. See, e.g., paragraph 1.6 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” and cases cited therein. Although the Complainant’s evidence of its use of the mark is rather limited, it is apparent from the content of the Respondent’s website that the term “Calvin Ayre Foundation” denotes a specific organization and hence that it is distinctive of the Complainant to those addressed by the Respondent.

6.4 It is clear, and not disputed, that the Domain Name is identical or confusingly similar to this mark. The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

6.5 As both parties have noted in their submissions, there have been differing decisions under the Policy on the issue of whether use of a domain name for a website criticizing a complainant without intent for commercial gain can give rise to rights or legitimate interests if the domain name is identical to the Complainant’s mark, apart from the generic top level domain suffix.

6.6 In the absence of an appellate system under the Policy, this difference will persist unless and until one view on the issue becomes generally accepted. With this in mind, the Panel will set out its view on this issue in some detail, in the hope that it may be persuasive, even though the Panel’s conclusion in this case could be reached on the basis of either view.

6.7 In formulating its view on this issue, the Panel has given further consideration to its analysis in Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379, in the light of recent decisions such as 1066 Housing Association Ltd v. Mr D Morgan, WIPO Case No. D2007-1461 and Brahma Kumaris World Spiritual Organization v. John Allan, NAF Claim No. FA0709001075486.

Distinction between US and non-US cases

6.8 It has been suggested that a distinction may be drawn between cases governed by United States law and/or involving United States parties on the one hand, and cases governed by other laws and/or involving other parties on the other hand. Some Panels have considered that a difference in approach may reflect, at least partly, a view that freedom of speech is more strongly entrenched in the United States than other countries: see for example Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 and Ryan Air Limited v. Michael Coulston, WIPO Case No. D2006-1194. On this basis, it has been postulated that United States cases of this nature involving identical domain names and non-commercial criticism may be decided in favour of respondents; and cases relating to other jurisdictions in favour of complainants.

6.9 This Panel rejects this distinction both as an analysis of decisions to date and as a resolution of the issue going forward. In the first place, there have been non-United States cases where the respondent’s freedom of speech has been preferred (see, for example, Britannia Building Society v Britannia Fraud Prevention, WIPO Case No. D2001-0505); and, conversely, there have been United States cases in favour of complainants in such situations (see, for example, Kirkland & Ellis LLP v. DefaultData.com, American Distribution System, Inc., WIPO Case No. D2004-0136).

6.10 Secondly, the Internet is an international medium and uniformity in the international application of the Policy is desirable. The Policy is part of a structure intended to enable registrars throughout the world to compete on an equal footing. That competition is likely to be distorted if registrars in the United States can offer registrants of domain names for complaint websites a more favourable treatment under the Policy.

6.11 Furthermore, while there are some cases where only one jurisdiction is involved, many cases involve at least two, if not more, jurisdictions. One party may be based in the United States; the other not. Both parties may be in the United States, but the registrar and the mutual jurisdiction selected by the complainant may be outside the United States; or vice versa. Parties may be multinational with management, operations and/or ownership in a number of countries; and trade mark rights may be owned by a company in a different country to those where they are used. A distinction based on an undefined connection of the dispute with a particular jurisdiction is liable to be impracticable or unsatisfactory in many cases.

6.12 Thirdly, respect for the principle of freedom of speech is not confined to the United States, just as recognition that it cannot be absolute is not unknown within the United States. The principle of freedom of expression is enshrined, for example, in article 10 of the European Convention on Human Rights and article 19 of the Universal Declaration of Human Rights. The latter pertinently states that:

“Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”

6.13 On the other hand, article 29(2) of the same Declaration provides that:

“In the exercise of his rights and freedoms, everyone shall be subject only to such limitations as are determined by law solely for the purpose of securing due recognition and respect for the rights and freedoms of others and of meeting the just requirements of morality, public order and the general welfare in a democratic society.”

6.14 Fourthly, the Policy operates contractually, and its scope and effect depend in the first instance on the terms of its provisions. These provisions may in places import or refer to principles or rules of national law, and they have to be interpreted in the context of established principles and rules of national and international law. However, the primary basis for determining the application of the Policy must be the terms of the Policy itself.

Relevance of national laws

6.15 Paragraph 15(a) of the Rules provides that

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any principles of law that it deems applicable”.

6.16 In the Panel’s view, this provision does not mean that an issue should be determined on the basis of national law where the applicable provision of the Policy does not import or refer to national law.

6.17 The requirement for a complainant to prove that a respondent does not have rights or legitimate interests in respect of the domain name in dispute is specified in paragraphs 4(a)(ii) and 4(c) of the Policy. These provisions do not directly refer to national laws (apart from the reference to “trademark or service mark rights” in paragraph 4(a)(ii)) and they contain concepts such as “legitimate interest”, “legitimate use” and “fair use” which are not defined in many national laws, at any rate in the field of trademarks. Furthermore, by providing that certain specified situations shall demonstrate that a respondent has a right or legitimate interest, paragraph 4(c) of the Policy requires a complaint to be rejected where such a situation is established even if a relevant national law does not recognize an entitlement to use a domain name comprising a complainant’s mark in those circumstances.

6.18 In the Panel’s view, paragraph 4(c)(iii) of the Policy should be ascribed an autonomous meaning based on its terms and context. The meaning should take into account general principles of law which are widely accepted throughout the world, in relation to both freedom of speech and intellectual property rights. In addition, some weight may also be attached to court decisions to the extent that they address the issue arising under the terms of this provision of the Policy. However, the meaning of this paragraph of the Policy should not depend on or vary with the particular national law or laws which might be considered relevant in any particular case.

6.19 Although this conclusion is contrary to the view expressed in the cases cited in paragraph 6.8 above, it is supported by decisions in other cases such as Covance, Inc v. The Covance Campaign, WIPO Case No. D2004-0206 and 1066 Housing Association Ltd v. Mr D Morgan, WIPO Case No. D2007-1461, where the point was addressed in detail. Earlier thinking on this point should be re-evaluated in the light of subsequent experience and the cogent reasoning in these decisions.

Does identity to mark preclude legitimate use?

6.20 It is clear that there have been conflicting decisions on the question of whether the use of a domain name for a website criticising a complainant without intent for commercial gain can give rise to rights or legitimate interests if the domain name is identical to the Complainant’s mark apart from the generic top level domain suffix.

6.21 Some Panels have answered this question in the negative: see Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166 Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136; Covance, Inc v. The Covance Campaign, WIPO Case No. D2004-0206; and 1066 Housing Association Ltd v. Mr D Morgan, WIPO Case No. D2007-1461.

6.22 Other Panels have held the contrary: see Bridgestone Firestone v. Myers, WIPO Case No. D2000-0190; Britannia Building Society v Britannia Fraud Prevention, WIPO Case No. D2001-0505; Satchidananada Ashram - Integral Yoga Institute v. Domain Administrator, NAF Claim No. FA0209000125228; Elm Grove Dodge Chrysler Jeep v Schedule Star, NAF Claim No. FA0410000352423; Invention Technologies v Alliance for American Innovation, NAF Claim No. FA0607000758833; Civic Development Group v John Paul Schaffer, NAF Claim No. FA01090001038; Jenny Solursh v. American European Marketing, NAF Claim No. FA0612000864749; Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379; and Brahma Kumaris World Spiritual Organization v. John Allan, NAF Claim No. FA0709001075486.

6.23 Unanimous decisions of three-member Panels can be found on both sides. The issue cannot presently be resolved on the basis of a clear preponderence or weight of authority and may only be resolved through cogency of reasoning. As is often the case, there is merit in the arguments on both sides, and the better view may lie somewhere between the extremes.

6.24 The view that the use of a domain name for a website criticising a complainant cannot give rise to rights or legitimate interests if it is identical to a complainant’s mark has been based primarily on two arguments: first, that the use of such a domain name necessarily involves a misrepresentation by impersonation of the complainant; and secondly, that preventing the use of such a domain name does not involve any real curtailment of freedom of speech.

6.25 In this Panel’s view, the drawing of absolute conclusions from these arguments is inconsistent with the terms of the Policy. Paragraph 4(c) of the Policy provides that:

“Any of the following circumstances … if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name …

“(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

6.26 The Panel considers that this provision applies where a domain name is identical or confusingly similar to a complainant’s mark and, where the specified circumstance is found, mandates a finding in favour of a respondent despite the confusion entailed by the use of such a domain name. If so, a view which precludes a finding in favour of a respondent because the domain name is identical to the complainant’s mark contradicts this provision.

6.27 Furthermore, where the website itself makes it clear that it is not a website of owner of the mark, any confusion is temporary or “initial interest confusion”. The Panel is aware of no general and widely accepted principle recognised in national legal systems that such confusion must be prevented, particularly where to do so would curtail freedom of speech or restrict competition.

6.28 To the contrary, for example, in Australian and UK law, initial interest confusion has been found not to be sufficient for a finding of unfair competition: see Cadbury Schweppes Pty Ltd v Pub-Squash Co Pty Ltd [1981] RPC 429 and BP Amoco plc v. John Kelly Ltd [2002] FSR 5; and there can be no trademark infringement unless the complainant’s mark is registered and the domain name is being used in the course of trade.

6.29 More pertinently, the US Federal Court of Appeal (4^th Circuit) held in Lamparello v. Falwell that initial interest confusion was insufficient to found liability for unfair competition under the Lanham Act where the domain name was not being used for financial gain; and that such confusion was compatible with “bona fide noncommercial or fair use” as a contra-indication of bad faith intent for the purposes of the Anticybersquatting Consumer Protection Act (“ACPA”).

6.30 It is right to attach some weight to the Court of Appeal’s decision in Lamparello v Falwell in accordance with the approach discussed in paragraphs 6.15-6.18 above, since the relevant test under ACPA is closely related to the criteria of the Policy, and that decision effectively reversed the majority decision of a NAF Panel under the Policy in The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International, NAF Claim No. FA0310000198936, which had ordered transfer of the domain name in dispute.

6.31 It is also in the Panel’s view illogical and unsatisfactory to make a rigid distinction for the purpose of this provision of the Policy between a domain name which is regarded as identical to a complainant’s mark and one which is confusingly similar. If some Internet users seeking the complainant’s website are liable to visit a respondent’s website by mistake, but then to realize that it is not the complainant’s website, it makes no difference whether the initial mistake was induced by the identity or by the confusing similarity of the domain name to the complainant’s mark.

6.32 The illogicality of drawing a rigid distinction between domain names which are identical to a complainant’s mark and those which are merely confusingly similar is illustrated by the domain name in dispute in the Lamparello case, namely <fallwell.com>, a mis-spelling of the name of the complainant, Dr. Falwell. It is difficult to see why that domain name should be treated differently from <falwell.com>; but if <fallwell.com> is treated as “identical”, where does one stop?

6.33 The argument that prohibiting the use of a domain name identical to a complainant’s mark does not curtail freedom of speech is also in the Panel’s view incompatible with the terms of paragraph 4(c)(iii) of the Policy. That provision does not merely recognise a right to place legitimate non-commercial or fair content on an Internet website; it recognises a right to use a domain name which is identical or confusingly to the Complainant’s mark, provided the use is legitimate non-commercial or fair use and without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6.34 To say that a registrant’s freedom of speech is not curtailed by removing a particular domain name since he can communicate his views using an alternative domain name is like telling someone who has a right of way on a direct route between A and B that his right is not affected by an obstruction of that route, since he can go from A to B by another route.

6.35 The use of a domain name identical to a complainant’s mark does afford the registrant a greater opportunity of communicating information to those interested in the complainant; and conversely, it makes it easier for Internet users to obtain alternative information about the complainant. Indeed, since members of the public may be unaware that any criticism is being made of the person in question, the use of such a domain name may be one way in which he can disseminate his message effectively. Denial of the use of such a domain name by a party other than the complainant does inhibit freedom to impart and receive information about the complainant to a non-insignificant extent.

6.36 Furthermore, where the domain name is already in use (as it must be for paragraph 4(c)(iii) of the Policy to apply), its removal may disrupt established channels of communication between the registrant (and possibly others posting content on the respondent’s website) and Internet users who have previously visited and noted or bookmarked the location of the website.

6.37 To be precise, in the Panel’s view, the Policy does not confer a right on a registrant to use a domain name identical to a complainant’s mark where the conditions of its paragraph 4(c)(iii) are met; it merely recognises that such cases are not egregious abuses which should be addressed by the mandatory administrative proceeding provided by the Policy. The meaning of paragraph 4(c)(iii) in the context of the Policy should not be distorted to achieve results not envisaged by those who framed and adopted the Policy.

6.38 For these reasons, this Panel rejects the view that use of a domain name identical to a complainant’s mark can never be justified under paragraph 4(c)(iii) of the Policy. However, this does not mean that the use of a domain name identical to a complainant’s mark will always be justified under this provision. On the contrary, all of the requirements of this provision must be met for it to apply: the Respondent must be making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Relevant criteria

6.39 Although absolute conclusions cannot be drawn from the considerations discussed above consistently with the terms of paragraph 4(c)(iii) of the Policy, they are nevertheless relevant considerations which should be given due weight in its application.

6.40 Bearing these considerations in mind, the use of an identical or confusingly similar domain name for a complaint website can be likened to conducting a protest outside the physical premises of the organization against which the protest is directed, thereby ensuring that those visiting the premises will see the protest.

6.41 This analogy suggests that the registration and use of a domain name for bona fide, non-commercial use is likely to be legitimate, even if it is identical or confusingly similar to a complainant’s mark, provided that it does not materially obstruct access by Internet users to the complainant.

6.42 Access to the complainant is materially obstructed if it is not immediately apparent to Internet users on visiting the respondent’s website that it is not connected or associated with the complainant. It is therefore an essential condition of legitimate use of such a domain name for the purpose of this provision that the respondent makes it very clear, whether by a disclaimer or other content or both, in the first field of vision of a person visiting his/her/its website, that it is independent of the complainant. This point has been made in many cases: see, for example, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.

6.43 Access may also be obstructed if the respondent registers all or most of the obvious domain names suitable for the complainant or the brand in question. This may prevent or unduly interfere with the complainant’s provision of convenient access to its website.

6.44 A further restriction on access may occur if the respondent registers an obvious domain name suitable for the complainant and fails to provide a convenient link to the complainant’s website, so that a bemused Internet user who has realized that he/she has come to the wrong site, but does not understand why, can readily correct his/her mistake. This consideration may underlie the significance attached in the Britannia Building Society and other cases to the respondent’s provision of such a link. The same point may apply where the respondent registers an obvious domain name for the complainant varied by a typographical error. The link must be appropriate to facilitate access to the complainant’s website by Internet users who were seeking to reach it and should comply with any reasonable request of the complainant, including its removal if the complainant so wishes.

6.45 The registration and use of a domain name identical or confusingly similar to a party’s mark can also obstruct access to that party by email, as illustrated by the decision under the Nominet Dispute Resolution Policy in Bernard Matthews plc v. Jason McCluskey, Case No. DRS 0936, and by Global Project Management v. Citigroup [2006] FSR 39 in the High Court of England and Wales. Where there is likelihood that email intended for the complainant will be sent using the domain name in issue, it is necessary for a registrant to ensure that senders are immediately alerted in an appropriate way that they have misaddressed their email. Abusive responses to email, as in the Bernard Matthews case, are not compatible with legitimate or fair use within the meaning of paragraph 4(c)(iii) of the Policy. Again, where the domain name is an obvious one for the complainant to use, the respondent may have a responsibility to provide a correct email address of the complainant to the sender.

6.46 In addition to these requirements, the use of a website for criticism is not fair if the registrant knows that the criticism is unfounded. On the other hand, if the registrant does believe that the criticism is well-founded, the fact that it is trenchant does not delegitimise it. That is an incident of free speech: see Meat and Livestock Commission v. David Pearce, WIPO Case No. D2003-0645.

6.47 Finally, it is an express condition of paragraph 4(c)(iii) that there must be no intent for commercial gain. Panels should be alert to the possibility that criticism may be used as a cover for commercial use or straightforward cyber-squatting. On the other hand, if there is no intent for commercial gain, the application of paragraph 4(c)(iii) is not precluded by the fact that there is initial confusion which could be characterized as “misleading diversion” or criticism which might be said to “tarnish” the mark. The references to both of these concepts in paragraph 4(c)(iii) are governed by the phrase “without intent for commercial gain”: see Ryanair Limited v. Michael Coulston, WIPO Case No. D2006-1194 and Brahma Kumaris World Spiritual Organization v. John Allan, NAF Claim No. FA0709001075486.

Summary of the approach

6.48 In summary, and without intending to limit further development of the applicable principles or the evaluation of other factors indicated by the facts of different cases (see also the Chelsea and Westminster case, supra), this Panel suggests that a registrant of a domain name is likely to have a right or legitimate interest in a domain name which is identical or confusingly similar to a mark of another party in accordance with paragraph 4(c)(iii) of the Policy if the following conditions are met:

(a) the domain name has been registered and is being used genuinely for the purpose of criticising the owner of the mark;

(b) the registrant believes the criticism to be well-founded;

(c) the registrant has no intent for commercial gain;

(d) it is immediately apparent to Internet users visiting the website at the domain name that it is not a website of the owner of the mark;

(e) the respondent has not registered all or most of the obvious domain names suitable for the owner of the mark;

(f) where the domain name is one of the obvious domain names suitable for the owner of the mark, a prominent and appropriate link is provided to the latter’s website (if any);

(g) where there is a likelihood that email intended for the complainant will be sent using the domain name in issue, senders are immediately alerted in an appropriate way that their emails have been misaddressed.

Supporting considerations

6.49 Further support for an intermediate approach as suggested above may be derived by analogy with the near-consensus which has developed on the issue of whether the registrant has a right or legitimate interest under paragraph 4(c)(i) of the Policy in a domain name used for the resale of products placed on the market under the mark in question by the complainant.

6.50 On this issue, there has been widespread acceptance of the principle and criteria identified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As summarised in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”.

“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”

Application to the facts of this case

6.51 It remains to apply the criteria identified above to the facts of this case. The first and fundamental criterion is that the domain name is being used genuinely for the purpose of criticizing the owner of the mark. As noted in paragraph 6.47 above, Panels should be alert to the possibility that criticism may be used as a cover for commercial use or straightforward cyber-squatting.

6.52 It is an obvious ploy for a cyber-squatter to resist a complaint and increase the pressure on the complainant to pay for the disputed domain name by using it for a website criticizing the complainant. As observed in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”:

This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain.”

6.53 In this case the Domain Name was registered on May 29, 2006, but was not used for a website criticizing the Complainant until about June 11, 2007, shortly after the Complainant rejected the Respondent’s counter-offer and threatened proceedings under the Policy.

6.54 Furthermore, when the Complainant contacted the Respondent, he apparently did not indicate that he intended to use the Domain Name for a website critical of the Complainant. Instead, he informed the Complainant through his lawyer that he would “entertain any reasonable offer for the purchase of said domain”; and subsequently met the Complainant’s offer to pay US$1,000 for the Domain Name with a counter-offer of US$70,000.

6.55 In the Panel’s view, these circumstances raise a strong prima facie inference that the Respondent registered the Domain Name primarily for the purpose of sale to the Complainant and not for the purpose of bona fide criticism of the Complainant.

6.56 The Respondent seeks to explain the delay in establishing the website as attributable to pressures of his professional work. However, the delay was in excess of a year and he has not provided any specific evidence of the commitments which he says prevented him from preparing the website throughout this period.

6.57 The Respondent also says that he proposed an exorbitant price for the Domain Name to demonstrate his lack of interest in selling it and to establish a price which would provide ample funds to create and optimize a website at an alternative address if a sale ensued. As well as being somewhat self-inconsistent, this explanation is difficult to reconcile with the initial response on behalf of the Respondent, that he would entertain any reasonable offer. Furthermore, the suggestion that the Respondent proposed an exorbitant price to demonstrate lack of interest in selling the Domain Name is inconsistent with the amount of the counter-offer of US$70,000. To the contrary, that figure suggests a desire to sell for a good price.

6.58 The Complainant’s assertions are reinforced by a formal declaration. Panels have held that appropriate weight should be attached to sworn affidavits in proceedings under the Policy: see, for example, KCTS Television Inc. v. Get-on-the-Web Limited, WIPO Case No. D2001-0154. It is relevant in this connection that Panels do not have the assistance of oral examination of witnesses in resolving disputed questions of fact in proceedings under the Policy.

6.59 However, this consideration does not require a Panel to accept a statement which is implausible. Indeed, it is noteworthy that in the KCTS case, the Panel did not accept the respondent’s evidence that it had registered the disputed domain name for the purpose of a website about tourist sites in Kensington and Chelsea, established after notice of the dispute; but did accept the respondent’s more plausible evidence that it had not heard of the complainant when it registered the domain name.

6.60 Taking the evidence in this case as a whole, the Panel is satisfied that the Respondent’s use of the Domain Name for a website criticizing the Complainant was not genuinely non-commercial, but rather was an attempt to strengthen his position after the Complainant rejected his counter-offer to sell the Domain Name for US$70,000.

6.61 Paragraph 4(c)(iii) of the Policy does not specify when the legitimate non-commercial or fair use must commence in order to give rise to a right or legitimate interest for the purpose of this provision. Comparison with paragraph 4(c)(i) of the Policy would suggest that there must be such use or demonstrable preparations for such use prior to notice of the dispute. A similar approach may well be appropriate under paragraph 4(c)(iii) of the Policy, particularly as one of the justifications for not removing a domain name from a registrant in these circumstances is that it would disrupt established channels of communication (see paragraph 6.36 above). Furthermore, where a registrant commences such use only after notice of a dispute, the genuineness of the use itself is suspect.

6.62 The Panel would not rule out the possibility of a respondent acquiring a right or legitimate interest in a domain name through non-commercial or fair use after notice of a dispute. However, in the circumstances of this case, the Panel regards the Respondent’s failure to commence such use prior to notice of the dispute as a further factor confirming a finding that he does not have rights or legitimate interests in respect of the Domain Name.

6.63 In all the circumstances, the Panel concludes that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

6.64 For the reasons set out above, the Panel finds on the evidence that the Domain Name was registered by the Respondent primarily for the purpose of sale to the Complainant for valuable consideration in excess of his out-of-pocket expenses. In accordance with paragraph 4(b)(i) of the Policy, this constitutes evidence of registration and use of the Domain Name in bad faith.

6.65 The Panel further considers that, whatever the Respondent’s views of the Complainant may be, the Respondent’s use of the Domain Name for a website criticising the Complainant was intended to strengthen his position in negotiating a profitable sale of the Domain Name.

6.66 The Panel concludes in all the circumstances that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.

7. Decision

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, <calvinayrefoundation.org>, be transferred to the Complainant.

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Jonathan Turner
Sole Panelist

Dated: February 25, 2008