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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Aspis Liv Fцrsдkrings AB v. Neon Network, LLC

Case No. D2008-0387

 

1. The Parties

1.1 The Complainant is Aspis Liv Fцrsдkrings of Norrkцping, Sweden, represented by Advokatbyrеn Gulliksson AB, Sweden.

1.2 The Respondent is Neon Network, LLC, of the United States of America (“U.S.”), represented by John Berryhill, Ph.d., Esq., U.S.

 

2. The Domain Name and Registrar

2.1 The disputed domain name <aspis.com> (the “Domain Name”) is registered with Blue Razor Domains (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2008. On March 12, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The same day the Registrar 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 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”).

3.2 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 March 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 6, 2008. The Response was filed with the Center on April 6, 2008.

3.3 The Center appointed Matthew S. Harris, Knud Wallberg and G. Gervaise Davis III as Panelists in this matter on April 24, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

3.4 Having reviewed the Complaint and Response, the Panelists on May 5, 2005, issued a procedural order under paragraphs 10 and 12 of the Rules (the “Procedural Order”). The Procedural Order noted that the alleged bad faith use of the Domain Name appeared to be directed not to the Complainant but to “Aspis Pronia” and that the exact nature of the relationship between the Complainant and “Aspis Pronia” had not been fully explained. The Procedural Order required the Complainant to file a further submission in relation to this issue by no later than 6:00 pm GMT on Monday, May 12, 2008. The Procedural Order also invited the Respondent to file a response to the Complainant’s supplemental submission by no later than 6:00 pm GMT on May 19, 2008. The Procedural Order also extended the time for the issuance of a decision in these proceedings until May 26, 2008.

3.5 Pursuant to the Procedural Order, the Complainant and Respondent filed supplemental submissions on May 12 and May 19, 2008 respectively.

3.6 On May 27, 2008, the Panel issued a second procedural order extending the time for the issuance of a decision in this matter to May 30, 2008.

 

4. Factual Background

4.1 The Complainant is a limited company incorporated under the laws of Sweden. It was incorporated in 2004 and continues the business previously undertaken in Sweden by the Aspis Pronia General Insurance Company S.A (“Aspis Pronia”), a company registered in Greece.

4.2 The Complainant is the owner of registered Swedish trade mark No. 382047 in class 36, filed on March 24, 2006 and registered on July 7, 2006 (the “Swedish Mark”). The Swedish Mark is a device mark that takes the following form:

4.3 The Complainant also owns Community Trade Mark No. 005325782 filed on September 20, 2006 and registered on October 22, 2007 (the “CTM”). The CTM takes the same form as the Swedish Mark.

4.4 The Domain Name was registered on August 1, 1998. Although the Domain Name was registered and remains registered in the name of Neon Network LLC, the registration was undertaken for one Mr. Dimitri Kukurinis.

4.5 Mr. Kukurinis is a resident of New York and at all material times has used the Domain Name to host a criticism site. The site contains text in both Greek and English and criticises stock investment advice that Mr. Kukurinis claims to have received from Aspis Pronia and, in particular, one Mr. Kosta Karavasilis of Aspis Pronia.

4.6. Both parties proceed in their submissions on the basis that it is Mr. Kukurinis that is the true registrant of the Domain Name, and save where the contrary is apparent from the context, when the Panel refers to the Respondent in this decision this is a reference to Mr. Kukurinis.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant maintains that it is part of the Aspis group of companies to which Aspis Pronia also belongs. In particular, it claims that the majority of its shares are owned (though an intervening company) by a Mr. Paul Psomiades. Mr. Psomiades is also the president and CEO of Aspis Pronia, and he holds (as a consequence of a combination of direct and indirect holdings) the majority of the shares in that company. Aspis Pronia is a minority shareholder in the Complainant. These claims as to corporate structure and ownership are supported by an affidavit sworn under Greek law provided by Mr. Psomiades.

5.2 The Complainant claims that “The Complainant and its company group are today well-known and respected actors on the Greek and Swedish insurance markets”. It maintains that it is “exclusively licensed by Aspis Pronia to use the ASPIS trade mark on the Swedish Market” and that it registered the CTM and Swedish Mark “under the direction and with the consent of Aspis Pronia”.

5.3 The Complainant claims that the Domain Name is identical or confusingly similar to the CTM, the Swedish Mark and its unregistered right in the word mark “ASPIS”. It states that the fact that the registered marks were registered after the Domain Name does not matter for the purposes of paragraph 4(a)(i) of the Policy and cites in this respect those cases which are said to represent the consensus view on this issue at paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”).

5.4 The Complainant asserts that the Respondent is not affiliated with the Complainant in any way and is not known by the Aspis name. It accepts that the Domain Name has been used to host a criticism site and claims that this site “critici[ses] and smear[s] the good name of the Complainant and its company group”. It claims that such usage does not provide a legitimate interest and in support of that proposition cites the cases listed as supporting “View 1” on this issue at paragraph 2.4 of the WIPO Overview.

5.5 So far as bad faith registration and use is concerned, the Complainant contends that it is clear that “the Respondent, at the time of registration of the [Domain Name] had actual knowledge of the Complainant and its company group and their trademark rights”. It claims that the intention of the Respondent was “to take advantage of the confusion between the domain name and the Complainant’s registered and unregistered trade mark rights in order to disrupt the business of the Complainant by smearing the good name of the Complainant and its company group as well as to prevent the Complainant [from] register[ing] the [D]omain [N]name”.

5.6 Further in its supplementary submission, the Complainant contends that the Respondent’s bad faith in this case “is directed at the ASPIS name under which both Aspis Pronia and the Complainant do business as well as Mr. Psomiades as the owner/controlling shareholder”

B. Respondent

5.7 The Respondent in his Response confirms the nature of the website operating from the Domain Name. He claims that the website is directed to Aspis Pronia, which is stated to have “generated considerable ill-will among consumers, investors and others” and that the Domain Name as been “used for more than ten years to communicate the perspective of one investor”.

5.8 On the question of rights, he claims that it is unclear what it is that the Complainant owns and maintains that insofar as it is merely a licensee of the rights, then it does not have sufficient rights for the purposes of the Policy. So far as the CTM is concerned, the Respondent claims that the Complainant has “not explained in which countries said European registration is of legal effect”.

5.9 Further the Respondent maintains that it is unclear to what extent in obtaining these registrations the Complainant has “exceeded its admitted limited authorization in obtaining these registrations”. He also refers to another community trade mark (No. 6042113), which takes the same from as the CTM save that in that case the triangle is red, and which is registered in the name of AΣΠIΣ ΔIAXEIPIΣH’ AKINHTON A.E. and which is said to show that “the Complainant cannot claim to own exclusive rights in ‘ASPIS’ registered marks in connection with financial services in Europe”.

5.10 On the question of rights and legitimate interests the Respondent maintains that his use of the Domain Name constitutes 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.

5.11 The Respondent claims that this case is different from other “gripe site” cases in that the commentary is not directed against the Complainant, but Aspis Pronia, which is not a party to these proceedings. Furthermore the Respondent notes that the Complainant did not come into existence until 2004. In the circumstances, the Complainant’s allegation that the Respondent intended to “smear” the Complainant is said to be “absurd”.

5.12 So far as the UDRP cases cited by the Respondent on this issue are concerned, these are said to be distinguishable on their facts and /or because they involved parties not subject to U.S. law. The Respondent claims that in this case the Complainant has “admitted to a mutual jurisdiction in the U.S.”.

5.13 In particular, the Respondent maintains that in only one of the cases cited by the Complainant, was the respondent located in the U.S. It contends that

“To posit, in a Proceeding as here where the Complainant may show rights arising under Swedish and European law to demonstrate its rights under the first prong of the Policy, but then to say that the Respondent may not rely upon the rights of its jurisdiction under the second prong of the Policy, is nothing other than an outcome-determinative convenience, and ignores that the Policy was intended to examine the respective ‘rights’ on which either party may rely. It may well indeed result in certain inconsistencies, such as the application of ‘constructive notice’ to parties located in the same country, but not to parties in separate countries, but there is utterly no doubt on the Respondent’s part that the Complainant’s claim will fail in the jurisdiction to which it has admitted.”

5.14 In support of its assertion that the claim would fail in the U.S., the Respondent refers to the U.S. decision of Lucas Nursery and Landscaping Inc. v. Grosse, 2004 FED App. 0071P (6th Cir.).

5.15 On the question of bad faith the Respondent claims that the relevant “bad faith” must be shown to be directed against the complainant in proceedings under the Policy. It cites Do The Hustle, LLC v. Monkey Media, LLC, WIPO Case No. D2000-0625, in support of that proposition.

5.16 In this case, because the Complainant did not exist at the time of the registration of the Domain Name it is said that it “is chronologically impossible for the [Domain Name] to have been registered in bad faith relative to this Complainant”. Similarly, the Complainant’s contention that the Respondent had actual knowledge of “the Complainant and its company group” is said to be absurd.

5.17 In his supplemental submission the Respondent calls into question the Complainant’s interest in the ASPIS mark. In particular, he asserts that neither Mr. Psomiades, nor the company through which he owns the Complainant has any interest in the relevant trade marks. He also notes that Aspis Pronia is only a minority shareholder in the Complainant and asserts that Mr. Psomiades is simply a minority shareholder in Aspis Pronia.

5.18 The Respondent therefore maintains that “Mr. Psomiades minority interest in Aspis Pronia, and Aspis Pronia’s thin minority interest in the Complainant, does not suffice as a demonstration of ownership of substantial beneficial interest in the trade or service mark relevant to this proceeding”. On the question of beneficial interests and whether a trustee of rights can bring proceedings it also cites the decision of PwC Business Trust v. Ultimate Search, WIPO Case No. D2002-0087.

5.19 Further, the Respondent maintains that the Complainant’s supplemental submission is procedurally deficient in that the “Complainant’s attorney’s commentary is uncertified, and thus non-responsive to the Panel’s Order. Likewise, the Greek affidavit [of Mr. Psomiades filed in support] does not contain the certification said to be required by the Panel”.

 

6. Discussion and Findings

6.1 Paragraph 15(a) of the Rules directs the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and the principles of law that the Panel deems applicable.

6.2 It is incumbent on the Complainant to make out its case in all respects under the rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

6.3 The Panel deals with each of these elements in turn. Before it does so there is a procedural point that needs to be addressed. The Respondent contends that both the “Complainant’s attorney commentary” (i.e., the supplemental submission submitted by the Complainant) and the affidavit that accompanied it are uncertified and thus non-responsive. This is a reference to a requirement in the Procedural Order that any supplemental submission contains a certificate equivalent to that required for the Complaint and the Response under paragraphs 3(b)(xiv) and 5(b)(viii) of the Rules.

6.4 These allegations can be swiftly dismissed. The Complainant’s supplemental submission does contain the necessary certificate (being found in the second paragraph of that submission). So far as the affidavit is concerned, which is evidence in support of that submission, there is no need for such a certificate. Not only was it not required by the Procedural Order, but it is difficult to see what such a certificate would sensibly achieve where the evidence in question takes the form of sworn testimony under Greek law.

A. Identical or Confusingly Similar

6.5 The Complainant claims an interest in both registered and unregistered trade mark rights for the purposes of paragraph 4(a)(i) of the Policy.

6.6 The unregistered trade mark interest takes the form of a licence from Aspis Pronia to use the “Aspis” name. There is an immediate difficulty here in that although the Complainant claims that Aspis Pronia “became world renowned” having “insured the crew of the Apollo 11 during the first trip to the moon”, no attempt has been made to bring forward evidence to support the claim that it has unregistered rights in that name in any particular jurisdiction.

6.7 In Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969 (a case involving a claim for unregistered trade mark rights in a personal name) the panel noted as follows:

“Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name is capable of qualifying as an unregistered trademark recognised by the Policy, but in determining whether it does in a particular case, a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.”

6.8 The Complainant states that the “Aspis Group” has “about 300 offices in five countries”. Two of these five countries are presumably Sweden and Greece, but the other relevant countries are not identified. The Complainant does not claim or bring forward evidence that unregistered rights are recognised in any one of the relevant territories, nor does it attempt to explain how it is that the “Aspis Group’s” activities there provide it with unregistered rights under the relevant local law.

6.9 Nevertheless, it is not necessary to consider the issue of unregistered rights further given that the Complainant also relies upon two registered trade marks of which it is the owner; i.e., the Swedish Mark and the CTM. Whilst both trade marks are device rather than word marks, they each prominently feature as the dominant portion of the mark the word “aspis”. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to these trade marks.

6.10 The Respondent’s counter-arguments in this respect are misconceived. First there is the claim that the Complainant has failed to identify in which European countries the CTM is of “legal effect”. A Community Trade Mark is valid across the entirety of the European Union. To request that a complainant explain in which European states such a mark is valid would be akin to requiring the owner of a U.S. Federal Trademark to explain in exactly which States of the Union that mark is valid. Further, under the Policy, regardless of the exact country or countries in which the mark is valid, all that is necessary is that there be a valid mark somewhere.

6.11 Second, the Respondent claims that it is unclear from the Complaint whether the Complainant in registering the CTM and Swedish mark has “exceeded its admitted limited authorisation [from Aspis Pronia”] in obtaining these registrations”. It is clear from the Complainant’s supplemental submission that these marks were registered with Aspis Pronia’s authority, but even if this were not so, it would not matter. It is not a panel’s place under the Policy to investigate whether a particular registered mark that is relied upon by a complainant may or may not have been registered with the consent of an interested third party. The fact that a complainant is the registered owned of the relevant trade mark is sufficient.

6.12 Similarly, the Respondent’s claims that the Complainant has failed to show that it has “exclusive rights” in the ASPIS mark, proceeds on the mistaken assumption that a complainant must demonstrate such an exclusive right for the purposes of paragraph 4(a)(i) of the Policy. It need not. All that is required is that the Domain Name be identical or confusingly similar to a mark in which the Complainant has rights.

6.13 In the circumstances, the Panel holds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.14 The respective contentions of the parties on the question of rights or legitimate interests are for the most part familiar ones. There is little doubt in this case that the Respondent is operating a genuine criticism site. This in turn raises the question as to whether the use of a domain name that comprises a trade mark, without the addition of a modifier such as “sucks”, can provide a respondent with rights or legitimate interests under the Policy.

6.15 There are two views on this issue and they are set out in broad terms in paragraph 2.4 of the WIPO Overview. The prevailing view outside of the U.S. is that it does not provide a legitimate interest, but U.S. Panelists have held in the past that it may provide such an interest. Unsurprisingly, the Complainant cites those cases that are listed in paragraph 2.4 as representing the prevailing view outside of the U.S.

6.16 The majority of the Panel in this case are of the view that the position that has prevailed outside of the U.S. is the correct one on this issue. The reasons for this together with an analysis of previous cases on this issue are set out in some detail in 1066 Housing Association Ltd. v. Mr. D. Morgan WIPO Case No. D2007-1461. The views expressed in the 1066 Housing Association Ltd. case have also subsequently been endorsed in Paul McMann v. J McEachern, WIPO Case No. D2007-1597 and Escada AG v. Phil Mitchell, WIPO Case No. D2008-0274.

6.17 The Respondent contends on this issue that the cases that support the Complainant’s position in this issue were cases that “involved other determinative facts and/or involved parties not subject to precedent under relevant US law”. It claims that the “Complainant has admitted to a mutual jurisdiction in the U.S.” and refers to the fact that the Respondent is located in the U.S. It then goes on to assert that the U.S. courts have consistently ruled against parties outside of the U.S. who have claimed that operation of a criticism site provides no rights. It then cites in support of the last of these propositions Lucas Nursery and Landscaping Inc., supra.

6.18 Even if the Respondent’s characterisation of U.S. law on this issue are correct, there are a number of problems with the Respondent’s submissions in this respect. It is certainly not the case (although the Respondent may not actually be going so far as to claim this) that the Complainant has submitted to U.S. law for the purposes of these proceedings. It has submitted to the jurisdiction of the U.S. courts so far as any challenge to this decision is concerned (see paragraph 3(b)(xiii) of the Rules), but that is quite different.

6.19 If the Complainant therefore has not agreed that U.S. law shall apply for the purposes of these proceedings, should nevertheless U.S. law apply? The majority of the Panel believe not. For the reasons that are described in some detail in paragraph 6.43 to 6.62 of the 1066 Housing Association Ltd. case, there is in the majority’s view no compelling justification for the importation into the Policy of local law on the question of rights or legitimate interests. This is an autonomous concept that should be interpreted consistently under the Policy, regardless of the geographical location of the parties. It is clear that in the 1066 Housing Association Ltd. case the panel was of the view that this was so even where both parties are located in the same jurisdiction. There is even less justification in the majority’s view for imposing national law in a case such as the one currently before the Panel where the parties are not both located in the same jurisdiction.

6.20 If the term “rights and legitimate interests” are therefore to be given an autonomous meaning, that still leaves the somewhat crucial question what that autonomous meaning should be. The majority of the Panel in this case are of the view that the cases cited in paragraph 2.4 of the WIPO Overview as being authority for the proposition that the use of a domain name which essentially comprised a trade mark without any additional “modifier” for a criticism site will not provide “rights” or “legitimate interests”, are to be preferred¹. As the panel stated in the 1066 Housing Association Ltd. case:

“6.63 If then only one view should apply regardless of the location of the parties, which is the view that should prevail? In the opinion of this Panel it is that which is set out in [ Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 ] and explained in greater detail in [ Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 ]. The basic difficulty with using a domain name that is identical to a trademark is that in most cases the domain name because of its identical nature will be perceived by the public as being in some manner authorised by the trademark owner. Essentially, by adopting that domain name the registrant is making a false representation to the world as to who he is. Perhaps there will be cases where as a matter of fact a respondent will be able to show that the domain name is not perceived by the public in this way. Nevertheless, in the absence of such evidence, a panelist can reasonably assume that such a false representation is being made.

“6.64 This conclusion involves no real curtailment of the principles of free speech. What is being curtailed is not free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorised by the trademark owner. It is also an approach that involves no judgement being made on the content of the criticism site. Of course, it may be that as a consequence of using a different domain name less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site.

“6.65 It is one thing for a person to stand on a street corner and to voice his concerns about and criticism of a trademark owner. It is quite another to pretend to passers by that you represent the trademark owner and once you have caught their attention to reveal your true identity and real intentions. The same is so on the Internet. It is for this reason that it is no answer for a respondent to claim that once the Internet user arrives at the relevant website it then becomes apparent (whether that be as a result of the use disclaimers or otherwise), who is running that site.”

6.21 This still leaves the Respondent’s contention that the current case is also distinguishable from previous UDRP cases on the issue of “rights or legitimate interests” because it is claimed that in this case the criticism in question is directed at some other entity than the Complainant. However, the Panel does not think that it makes any difference to an assessment of “rights or legitimate interests”. This is an issue that if relevant at all, is relevant to the question of bad faith. It is therefore addressed in greater detail under that heading below.

6.22 In the circumstances, a majority of the Panel holds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.23 The Respondent’s contentions on the issue of bad faith are relatively straight forward and at first sight quite powerful. The Respondent claims that for a complainant to succeed on the issue of bad faith it must show that the bad faith in question was directed towards it. Since in this case the criticism was directed not towards the Complainant but to Aspis Pronia, he maintains the Complaint must fail.

6.24 The Complainant in this case has not helped itself by the way in which at times it expressed itself in the Complaint. The initial Complaint at times appears to have been drafted without any real thought being given to consequences of the fact that the Aspis group is made up of separated corporate entities. It contains claims such as the Domain Name was registered “to take advantage of the confusion between the [D]omain [N]ame and the Complainant’s registered … trademark rights in order to disrupt the business of the Complainant by smearing the good name of the Complainant …”. Given that the Complainant did not exist as a separate corporate entity until some years after the Domain Name was registered and the criticism on the relevant website is directed to Aspis Pronia only, it is relatively easy for the Respondent to ridicule such allegations as absurd.

6.25 Nevertheless, the majority of the Panel believes that the Complainant should still succeed in this case. The reason for this is as follows.

6.26 The Panel accepts for the purposes of this case that there must be some connection between the alleged bad faith of the Respondent and the Complainant. The words of paragraph 4(a)(iii) of the Policy merely require bad faith registration and use and there is no express requirement that this bad faith be directed to or connected with a complainant. However, when one considers the four examples of bad faith given in paragraph 4(b) at least three of these (i.e., (i), (ii) and (iv)) are cases where it is quite clear from the wording used that the bad faith in question must be directed in some way towards the complainant.

6.27 The Panel also accepts that Do The Hustle, LLC v. Monkey Media LLC, WIPO Case No. D2000-0625 is relevant here. In that case, the complainant, an operator of a chain of U.S. nightclubs named “Culture Club”, commenced proceedings under the Policy against the registrant of the <cultureclub.com> domain name. The panel in that case accepted the respondent’s contention that the reason why the Culture Club name had been chosen was because of its associations with the well known 1980s British pop group. The domain name was then being used to attract Internet users to a website with adult content. In the circumstances, the panel held that although the evidence might have supported a finding of bad faith with respect to the pop group it was not bad faith with respect to the complainant, and accordingly the complaint failed.

6.28 Nevertheless, the facts of the Do The Hustle case and the case currently before the Panel are very different. In Do The Hustle the entity to which the bad faith was directed (i.e., the band) was commercially quite separate from the Complainant that brought proceedings.² In this case the connection between Aspis Pronia and the Complainant is much closer. In particular:

(a) Aspis Pronia and the Complainant are all part of the same corporate group and are ultimately controlled by the same individual.

(b) The Complainant is the successor in business to Aspis Pronia’s business and branch office in Sweden (a business that began in 1998).

(c) The proceedings in this case were commenced with the consent, authority and under the direction of Aspis Pronia.

(d) The “Aspis” name and the Complainant’s marks are all used in common by Aspis Pronia and each has cross-licensed the use of the marks that they own to the other.³

6.29 Further, some care needs to be taken in identifying what exactly is the relevant bad faith here. Given that the Respondent’s website contains criticism of Aspis Pronia, it is all too tempting to associate the bad faith with the critical content of the website itself. It is an approach that the Complainant itself comes close to adopting when it alleges that the website had been used to “smear the name” of the Aspis group. If this is accepted, then it is but a short step to say that in such a case the bad faith is directed to the person criticised and if the person criticised is not a party to the proceedings then the complaint must fail. However, in the view of the majority of the Panel such an approach is misconceived.

6.30 It is not the Panel’s role to pass comment on the content of a genuine criticism website. No matter how robust that content may be, that content is incidental to the consideration of the issue of bad faith. The bad faith that exists in this and similar cases arises not from any critical statement or alleged “smear” but from the fact that the Respondent has chosen a domain name that comprises without modification a mark used by the Aspis group and the misrepresentation and impersonation that this involves.

6.31 It is also no answer to this to say that the Respondent could not have registered the Domain Name with the Complainant in mind because at the date that the Domain Name was registered the Complainant did not exist. Such an approach is overly simplistic and fails to recognise both commercial reality and the true intentions of the Respondent in this case. The Respondent registered the Domain Name with the “Aspis” business in mind. It is somewhat fanciful to suggest that he did so with regard to the exact corporate structure adopted by the Aspis business at the time of registration. The fact that now part of that business and a number of the marks used by that business is embodied in a corporate entity that (albeit still part of the group) did not exist at the relevant time, does not matter.

6.32 It is, for example, common practice for some corporate groups to hold registered trade marks that companies in the group use in common in a single separate company. That entity may engage in no trading activity in its own right and merely licence the right to use those marks to others within the group. It would be absurd to suggest that if that separate IP holding company existed at the time a domain name was registered, then proceedings brought by it under the Policy might succeed, but that if it only came into existence after the domain name was registered those proceedings must fail. In the view of the majority of the Panel, the Policy does not operate in such a capricious way that the outcome of proceedings in such a case may depend upon the exact timing of, say, a corporate reorganisation.

6.33 The majority of the Panel are of the view that this approach is also consistent with a number of the decisions of previous panels including, Virgin v. Internet Protocols Limited, WIPO Case No. D2001-0837; Skype Limited v. Xiaochu Li, WIPO Case No. D2005-0996; and Jenna IP Holding Company LLC v. Mobile Alive Pty Limited, WIPO Case No. DAU2006-0013. A case which is even closer to the facts of the case now before the Panel is Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763. Admittedly, in none of these cases was the specific issue of to whom the bad faith was directed expressly addressed, but if the Respondent’s contentions in this respect were to be accepted here, it could call into question whether these cases were correctly decided, which a majority of this Panel sees no reason to do.

6.34 In the circumstances, the majority of the Panel are of the view that the Domain Name in this case has been registered and used in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy

 

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 <aspis.com> be transferred to the Complainant.

Dated: June 2, 2008

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DISSENTING OPINION

 

General Comments

With due respect to my distinguished fellow Panelists, I must vigorously dissent to virtually all but one of the conclusions and decisions the Majority has reached in this matter. I do agree that the Domain Name <aspis.com> is potentially confusingly similar to the word mark “ASPIS” on which Complainant holds several recently registered Swedish and CTM trademarks. It is not, however, similar to the logo, which is not properly considered in such cases, according to many prior decisions. However, as I explain below, this similarity does not, alone, provide Complainant with the right to have the Domain Name transferred to it under the Policy.

Unfortunately, I cannot agree with the Majority that Respondent, in registering and using the Domain Name solely as a criticism website, has done anything illegal or improper under the Policy and Rules that govern the administrative proceedings which this Panel is legally bound to follow. The Majority decision correctly sets out the facts alleged by the parties, which are largely undisputed, other than a dispute over the status of Complainant as a licensee of uncertain trademark rights to bring this action, on the basis that it is not harmed by the Domain Name and that the critical comments are not directed at it, so it is the wrong party to bring this case. It is in the application of the Policy and established trademark law to these facts where I must disagree with my fellow Panelists.

 

Normal Practices for Dissenters

Because of the lack of any appeal process under the Policy and its accompanying rules adopted by ICANN, and the futility of spending the considerable time needed to write a detailed Dissent, I would normally simply state my reasons in a short comment and let it go at that point. In this case, I feel I am morally obligated to deviate from that practice because of the pernicious and, in my judgment, unsubstantiated practice of recent UDRP Panels taking away domain names that have nothing whatsoever to do with abusive use of valuable trademarks or “cybersquatting”, which was the sole stated basis for ICANN adopting the Policy. The Policy was not intended as some “Super Internet Court” to resolve all trademark disputes, and the Policy, itself, makes clear that the parties have the right to resort to court litigation, which immediately stops the proceedings or enforcement of the decision, if timely.

Furthermore, many UDRP cases have declined to rule on domain name disputes on the basis that the facts and circumstances of the dispute were too complex for summary adjudication, and belonged in the courts where witnesses could testify and be cross examined. This is simply not a case where the Policy should be invoked, and in my judgment it is wrong to permit this Complainant to do so, especially when there are so many disputed or unsubstantiated factual matters that have been assumed by the Majority of the Panel here.

 

Stated Purpose of the Policy and Rules

As the ICANN Staff Report (which ultimately resulted in the adoption of the existing Policy and Rules) stated, concerning the limited purpose of the UDRP:

In general terms, chapter 3 of the WIPO final report recommends that ICANN establish an administrative procedure for the cancellation or transfer of domain names found to have been abusively registered (in essence, through cybersquatting/cyberpiracy) in violation of another’s rights under a trade or service mark by an SLD holder with no rights or legitimate interests in the domain name. WIPO recommends that all SLD holders be required, in their registration agreements, to agree to this administrative procedure in cases of abusive registrations, but that both the SLD holder and the challenger retain the right to initiate court litigation (or, with the consent of both parties, arbitration) over the name. ICANN Staff Report: Uniform Dispute Resolution Policy for gTLD Registrars, August 24, 1999. [Emphasis added by Dissenting Panelist]

Note that the ICANN and WIPO emphasis is on what are consistently called “abusive” registrations, which point was a direct outgrowth of the practice condemned in a number of U.S. court cases involving a small group of opportunists like Dennis Toeppen, as described in Panavision International v. Toeppen, 141 F.3d 1316 (9^th Cir. 1998), where Mr. Toeppen registered hundreds of well known trademarks and then offered to sell the domain names and usage rights to the owners of the marks for near extortionate prices. Other abusers registered domain names with names identical to commercial competitors, intending to mislead readers into going to the site, thinking it was sponsored by the trademark owner, and then siphoning off business from the trademark owner. There is no evidence in the instant case that any such abusive practices exist here or that it has engaged in such practices with other domains.

However, in the late 1990’s, the unfair and predatory practices by people like Toeppen cried out for a special, international set of policies and rules to protect trademark owners and the domain registrars by setting up a quick and summary arbitration scheme, which expressly denied the parties any appeal, but allowed overriding court proceedings. The proceedings, however, were to be limited to very specific cases, very limited factual situations, set very short deadlines that were far more limiting than any court timelines, and the Rules even set up the conditions which would conclusively protect the Respondent from being held as acting in bad faith or improperly. It was not intended, however, as a general trademark dispute court covering the normal trademark infringement issues, which were left to the national courts to resolve.

 

Tarnishment Not Parody or Criticism

Another issue addressed in the ICANN Second Staff Report of October 24, 1999 was the reference to “tarnishment” of a trademark, which it felt might be misconstrued as including a criticism or parody of the owner of the mark. As Note 2 states:

….. [O]ne detail of the policy’s language should be emphasized. Several commentators indicated that the concept of “tarnishment” in paragraph 4(c)(iii) might be misunderstood by those not familiar with [U.S.] law or might otherwise be applied inappropriately to noncommercial uses of parody names and the like. Staff is not convinced this is the case, but in any event wishes to point out that “tarnishment” in paragraph 4(c)(iii) is limited to acts done with intent to commercially gain. Staff intends to take steps to publicize this point. [Emphasis added by Dissenting Panelist]

Since these early Internet practices became a significant cause of very expensive and time-consuming litigation for trademark owners, governments, businesses in general, and for domain name registrars, ICANN the governing body responsible for overseeing the Internet commissioned WIPO to come up with recommendations for a summary means of ending such activities, while leaving access to the court systems of the world if desired. See, “www.icann.org/udrp/udrp-schedule”. This process was followed and it resulted in adoption of the Policy, and a set of specific Rules for such proceedings, on October 25, 1999.

Note that these Rules were adopted more than one full year after Respondent in the instant case registered <aspis.com>, which also raises the interesting question of how one could retroactively be liable for knowingly engaging in an allegedly abusive registration when such action was not illegal at the date of registration in the country in which it occurred.

 

Effect of Commercial Use Requirement

Because of the clear emphasis and requirement of commercial use of the mark, established in the Policy and Rules, in my opinion, the Majority decision fails to comply with the Policy and its very specific rules, and the public policies on which these rules are based. The majority decision turns upside down the stated purposes of the Policy and ignores centuries of trademark principles requiring commercial use of a mark in order to find an actionable damage, tarnishment or infringement of the trademark owner’s rights. Trademarks are, by definition, commercial marks identifying goods or services so that buyers can identify the source of the goods or services. Readers of criticism sites, even those who inadvertently stumble upon them because of the use of a domain name similar to a trademark, are not being deceived for more than an instant, since it is instantly clear on reaching the site that goods and services are not being offered on the website. If the confusing site is a commercial competitor then the Policy applies, by definition, and transfer is normally the appropriate remedy. That is not the case here.

 

The Principle of Initial Interest Confusion

While acknowledging the many failures of the Complainant to establish its case, the Majority decision simply sweeps them away in an apparent and admirable effort to do equity and to implement a recent trend of several unsupported domain name cases holding that one may not register and use as a domain name, any name which is confusingly similar to a trademark, regardless of lack of commercial use, and even though this concept cuts across the important principles of freedom of speech applicable in numerous countries, and particularly the U.S. where Respondent and its owner reside and work, as is its Domain Name Registrar.

This small group of recent domain name cases are based on a judicially invented legal concept that arose in the early 2000’s which is sometimes called “Initial Interest Confusion”, where it is argued that the Internet reader is initially confused as to who maintains the website at the domain in question. Adoption of this concept is a classic case of judicial activism where a Panel or Court is attempting to adopt some new and beneficial equitable principle that it considers “fair and reasonable”, in spite of the fact there is no legal basis or practical reason for such a conclusion. Moreover, even if the principle of Initial Interest Confusion were a valid concern at the beginning of the use of the Internet, it is no longer a rational justification for inventing some equitable principle because of the extensive use of near instant result search engines like Google and Yahoo. I explain why this is so in some detail, below, in this Dissent.

 

Why The Initial Interest Confusion Concept Is Wrong In Principle

Assuming that the reader has carefully read the facts and the detailed reasoning of the Majority in this case, it should be quickly obvious that since there is no commercial use of the domain, the principles established by ICANN preclude any concept that the mere use of a domain name that is similar to a trademark is, in and of itself, in violation of paragraph 15(a) of the Rules and the specifics of paragraph 4(a) of the Rules. In fact, paragraph 4(c)(iii) expressly states that a Respondent has established good faith, and countered a claim of bad faith registration and use, if:

(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. [Emphasis added]

This is exactly the factual situation established here by the Respondent concerning the <aspis.com> domain. Respondent is not selling anything, is not competing with Complainant, and the heading on the site clearly indicates that the site is a critical commentary on the business practices of the Greek company Aspis Pronia, as of May 4, 1996, the date of the letter set out on the website to which the domain name <aspis.com> leads the reader to. Further, it is not even the Complainant against whom the site is addressed, and it has no commercial purpose nor will it lead to any commercial gain on the part of the Respondent, in any sense of the word.

Interestingly enough, the Complainant alleges that the criticisms on the website “smear” the good name of the company, which is just another way of alleging tarnishment of a trademark, if the site were sponsored by a competitor. Yet, as set out above, the notes to the Policy make clear that such criticisms are not the form of tarnishment Complainant seeks to rely upon, and is never the basis for transferring the domain name.

 

Parking Pages; Criticism Sites

It has been suggested that so-called “parking/landing pages” are an example of application of the Policy and Rules to non-commercial websites operating under a similar name to a trademark, and that therefore there is no commercial use requirement in the Policy. I sincerely disagree, for a number of reasons. For example, careful examination of any number of such parking cases shows that the reason such use of a domain name may be improper and may be the basis for transfer is that the owner of the parked page is making money from click-thru payments from the advertisers or people who pay to have the links on the parking page. Such use is obviously a commercial and profit-making purpose, so it does not meet the conditions of the Policy. See, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415, where the reasoning behind finding such use improper is explained in some detail and where the panel ruled for transfer even though it said criticism websites and domain names could be proper, but that the decision must be based on the facts and circumstances of each case. The Majority here has not even given any consideration to these cases and principles, simply assuming that all criticism sites are an improper use of the domain name and trademark.

 

Divergent Views

I recognize that my view is one of a minority of UDRP panelists and that most of those with my view are panelists from the U.S. where Freedom of Speech is so strongly protected. However, even aside from the First Amendment argument, I strongly believe that simply ruling that all criticism sites are automatically improper even if they use a very weak, generic trademark as a domain name, as the Majority here appears to conclude, is simplistic and unfair to Respondents like the one here. By way of example, in CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988, the panel discussed the divergent views of U.S. panels and some European panels, and took the time to lay out the conditions that might make a criticism site a commercial use and thus provide a basis for transferring the domain name, versus some automatic rule violation. As the CBS Broadcasting panel stated:

“[H]owever, the conclusion that no legitimate noncommercial use can ever be made of a domain name which is identical to the complainant’s mark is not consistent with the balancing test envisioned by Paragraph 4(c)(iii), at least not when there otherwise is no evidence of cybersquatting or bad faith. Clearly, a respondent has no right to use the complainant’s mark or a corresponding domain name so as to trick the public into believing that the complainant endorses any of the critical views expressed on the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175 (bad faith may be found if the respondent’s criticism site created “look and feel” of the complainant’s official website). And a respondent cannot make a legitimate noncommercial or fair use of a domain name within the meaning of Paragraph 4(c)(iii) if such use is merely a pretext to cybersquatting, or if bad faith registration and use of the domain name otherwise is indicated from the circumstances of the case. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

In several of the decisions referred to above involving domain names that were identical to the complainant’s mark, other indicia of cybersquatting or bad faith were present. For example, the respondent in Justice for Children copied the “look and feel” of the complainant’s website, while making no attempt to disclaim any affiliation. In New York Times Co. v. New York Internet Services, WIPO Case No. D2000-1072, the Panel noted in the record substantial evidence of actual public confusion as to the complainant’s affiliation with the respondent’s website. In addition, the Panel found that the respondent was making a commercial use of the disputed domain name. See also Council of American Survey Research Organizations v. Consumer Information Organization LLC aka Pinelands Web Services, WIPO Case No. D2002-0377 (criticism site used to market products, respondent owned over 1200 domain names, and many of respondent’s domain names incorporated famous marks); Estйe Lauder, Inc. v. estelauder.com, estelauder.net, and Jeff Hanna, WIPO Case No. D2000-0869 (domains of complaint sites suggested typosquatting, there was evidence of actual confusion, and respondent reserved other domain names incorporating famous marks); Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (respondent’s noncommercial use of domain name pre-textual where respondent made “overtures to be bought off” in order to transfer domain name)”.

The CBS case, and common sense, cause me to feel that as part of our obligation of fairness to all parties, any Panel concluding that use of a domain name for a criticism website is improper has an obligation to first examine the website, the timing of the postings and registration, and the other relevant facts. Only if it is shown that the Respondent has attempted to commercially profit from the use of the trademark, or has engaged in conduct suggesting the hope of being bought off, as in many cases, then can and should the Panel find for a transfer.

There is simply no such evidence of commercial use or purpose in the instant case, and as has been pointed out before by the parties, the domain was registered and put into use years before the Complainant come into existence; it does not even direct its criticism to the Swedish trademark owner; and the Registrant and the Domain Name Registrar are all in the U.S. and would normally expect to have their actions judged by the law that existed at the time. More significantly, even the Policy and Rules did not exist at the time the domain name was registered and the website was first posted, and it has not changed since then. There is simply no suggestion that Respondent expects to profit from posting criticism or the description of the alleged misconduct of the Greek company.

 

A Perfect Example of Why The Initial Interest Confusion Principle Makes No Sense, Especially In This Case

The Initial Interest Confusion principle has no possible application to this case, even when taking at face value the argument of the Majority, if one carefully examines the language of their authority in this quote taken from the 1066 Housing Association Ltd. Case, to the effect that:

“The basic difficulty with using a domain name that is identical to a trademark is that in most cases the domain name because of its identical nature will be perceived by the public as being in some manner authorised by the trademark owner. Essentially, by adopting that domain name the registrant is making a false representation to the world as to who he is. Perhaps there will be cases where as a matter of fact a respondent will be able to show that the domain name is not perceived by the public in this way. Nevertheless, in the absence of such evidence, a panelist can reasonably assume that such a false representation is being made.” [Emphasis added]

Respondent here has correctly argued that no rational person looking at the instant website could possibly think that Complainant or its Greek affiliates have anything to do with sponsoring this website. There are some fascinating reasons that this is the case, which less than an hour of Internet research by this Dissenting Panelist disclosed. These results demonstrate that any concept that momentary confusion and damage over the actual sponsor of an Aspis website is illusory at best, and no longer even rational at worst. The concept might once have made sense during the early days of the Internet, but have long since disappeared with the advent of comprehensive search engines and their immense databases.

 

“Aspis” is Generic

First, the term “Aspis” is hardly unique to Complainant and its affiliates since, according to various dictionaries and encyclopaedias, Aspis is the Greek word for a warrior’s shield, and thus a highly generic term, unless added to a logo like that of Complainant’s logo mark. Respondent is not using the logo as a domain name. There is also a viper known as vipera aspis, its scientific name, which appears in many hundreds of searches. Thus it is equally logical that someone looking for a Greek shield or the viper would use the domain name <aspis.com> when trying to find the subject of interest. It is not as if the Complainant were a company using a trademark like Exxon, which is unique and distinctive.

Second, evidence of the generic nature of the word “aspis” can be further established by doing a Google search on the word, which results in 395,000 hits (in a search that took only 0.25 seconds), only one of which in the first ten hits even remotely relates to Complainant and its affiliates and many of which lead to other websites critical not only of Complainant’s affiliates in Greece, but also of the officers and officials of the Swedish Aspis Liv company. The hits involve hundreds of companies in dozens of countries, which entities develop software, electronics makers, sell services, relate to the history of the word, and otherwise lead to literally tens of thousands of other businesses and sites that have absolutely nothing to do with Complainant.

Similarly, using Yahoo, the user is led to some 660,000 hits involving the single word “aspis”, of which only two of the first ten or fifteen entries appear to relate to the Aspis group of entities in various countries.

In light of this fact, alone, it is absurd to assume as the Majority does that someone looking for the Swedish Aspis insurance company would simply sit down and type, <aspis.com>, and expect to be directed to that company’s Swedish website. In fact, it is far more likely that one of the other thousands of other companies and sources using this term would be the logical destination of the Internet user. The logical assumption is that the user would do as virtually all Internet users do today – go to a search engine and type in the word and a likely modifier which will likely lead to the desired location in a few seconds. Since this saves time and avoids mistakes it is the most likely solution when looking for a specific company. For example, since there are so many companies with the word “United” in their name, almost no one would expect to type <united.com> and get the United Van Lines or the United Nations. Prior to search engines the Initial Interest Confusion Principle might have made sense, but it no longer does, especially where the trademark sought to be protected is generic and in widespread use all over the world.

Moreover, another observation from a quick WHOIS search indicates that the Complainant owns and operates its Swedish insurance operations from two Swedish country specific domains, <aspis.se> and <aspispronia.se> which would seem to be the logical places an Internet user in Sweden would seem likely to start looking for, if the user did not first use a search engine.

Furthermore, since the disputed <aspis.com> domain name was registered on August 1, 1998, some six years before Complainant even came into existence, it is even more likely that there are literally hundreds of thousands of other businesses and entities and subjects that are equally likely to be the objective of an Internet user who elects not to use a search engine and to type in this Internet address. Why then, does this Complainant have any more right than the other businesses to this name? Or are they all equally entitled to object to the use of this name by Respondent?

 

Ownership of Words

Another of my concerns about the application of this “equitable principle” is that in cases like ours, applying the rule to terms which are generic and in widespread use, in effect gives the owner of a trademark, in a limited field of use and a limited geographic area, absolute ownership of the term and the domain name, without regard to any evidence that it has an superior rights to the others who may have similar rights. This is not what the trademark laws provide in any nation that I know of; in fact it is an essential element that is often pointed out by appellate courts when they feel the trademark owner is overreaching. It also suppresses free speech on the basis of the desire of the trademark owner to stop the criticism on the Internet, using the leverage of the Policy and its trademark for purposes never intended by the drafters of the Policy. Remember that these Rules and the Policy were developed only after several years of debate and with special consideration for the fact it had international effect, and were to apply solely to cybersquatting types of cases. This is not a cybersquatting or piracy case, especially when the domain name was registered before the Policy existed and years before the Complainant came into existence.

It seems to me that these facts alone, confirmed in my brief Internet search, make it clear that the whole concept of awarding domain names to any trademark owner who happens to come along years after the domain name is registered to someone else, makes no sense at all. Nor does the Initial Interest Confusion principle make sense unless the trademark owner has a unique, distinctive trademark that is the only logical subject of an inquiry, especially when there are literally hundreds of country top level domains available. In all events, no such equitable or legal principle exists that would justify its application to the instant case.

 

Other Errors

As the Dissenting Panelist, I have a number of other reasons that I believe the Majority opinion is incorrect, but having expressed my major misgivings about the total failure of the Majority to take into consideration the requirement for at least some commercial use in order to have a Policy violation, and the complete inapplicability of the Initial Interest Confusion principle on these facts, detailing the other objections would only add to the length of this Dissent.

Suffice it to say, I believe the Respondent has been improperly deprived of the Domain Name, in violation of his or its U.S. Constitutional rights of free speech, and feel that if this case were brought in virtually any court in the U.S., the result would be different, or the decision of the Majority overturned. Given the facts, denial of application of U.S. law is unfair and unreasonable, especially when the registration and use by U.S. residents and U.S. companies of the Domain Name commenced, in the U.S., nearly one year before the Policy even existed and six or seven years before Complainant came into legal existence in Sweden. I do not believe that the framers or members of ICANN who adopted the Policy had any intent of overturning the laws of the various nations, which this decision does.

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G. Gervaise Davis III
Dissenting Panelist

Dated: June 2, 2008