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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sermo, Inc. v. CatalystMD, LLC

Case No. D2008-0647

1. The Parties

The Complainant is Sermo, Inc., whose principal place of business is in Cambridge, Massachusetts, United States of America. Complainant is represented in this matter by Brown Rudnick Berlack Israels LLP, United States of America.

The Respondent is CatalystMD, LLC, Tulsa, Oklahoma, United States of America.

2. The Domain Name and Registrar

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

3. Procedural Background

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on April 25, 2008, and in hardcopy on April 29, 2008.

Because the Respondent registered the Domain Name through a privacy shield (Domains by Proxy, Inc.), the Complainant, in the Complaint, identified the respondent as Domains by Proxy, Inc.

On April 29, 2008, the Center sent a Request for Verification to GoDaddy.com, Inc. requesting registrar verification in connection with the domain name at issue. GoDaddy.com, Inc. transmitted by email to the Center its verification response on April 29, 2008 in which GoDaddy.com, Inc. lifted the privacy shield and indicated that the true Respondent is CatalystMD, LLC. GoDaddy.com, Inc. confirmed that the Respondent is listed as the registrant and provided the contact details for the administrative and technical contact.

In response to the Registrar Verification, the Center gave the Complainant the option to amend its Complaint. The Complainant elected to file an Amended Complaint in which Complainant updated the identity of the Respondent. The Amended Complaint was received by email on May 8, 2008, and in hardcopy on May 14, 2008. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Amended Complaint, and the proceedings commenced on May 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2008. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent of the default on June 5, 2008.

On June 16, 2008, the Center appointed David H. Bernstein as the Sole Panelist in this matter. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant operates a website that provides online electronic bulletin boards for registered users for transmission of messages concerning the medical community. According to the Complainant, approximately sixty thousand physicians are enrolled in its social networking community.

Complainant filed an intent to use application for registration of the SERMO mark with the United States Patent and Trademark Office (“PTO”) on March 20, 2006 (Serial No. 78/841,002). A Notice of Allowance was issued on June 3, 2008; as of June 30, 2008, the Complainant had not yet filed a statement of use. Complainant filed a use-based application for registration of the SERMO mark on February 12, 2008 (Serial Number 77/395,068), claiming first use in March 2006 and first use in commerce in July 2006; that application has been approved by the PTO and will be published for opposition on July 22, 2008.¹

Respondent registered the domain name <sermosucks.com> on April 16, 2008, and maintains a website at that address that is highly critical of the practices of Complainant’s management.

5. Parties’ Contentions

A. Complainant

Although Complainant’s SERMO trademark is not yet registered, it claims common law rights in that mark because it has continuously used the mark in commerce since 2006. In addition, Complainant claims, the SERMO mark has acquired secondary meaning because Complainant spends more than half a million dollars annually to advertise the SERMO brand, the mark has been recognized as being associated with the preeminent social network for physicians around the world, the SERMO service has received unsolicited coverage in the media, and Complainant has enjoyed substantial sales success for its Sermo service (as demonstrated by its partnership with Pfizer, Inc., through which it leverages the relationship between physicians and drug manufacturers).

Complainant asserts that Respondent’s domain name <sermosucks.com> is confusingly similar to its common law trademark SERMO because the Domain Name uses the Complainant’s mark in its entirety with the word “sucks” added to the end. Complainant argues that the Sermo online community targets physicians world-wide, and thus confusion among international customers is highly probable. Complainant therefore asserts that the Domain Name is identical or confusingly similar to a mark in which it has rights under paragraph 4(a)(i) of the Policy.

Complainant argues that Respondent has no rights or legitimate interests in the Domain Name as required by paragraph 4(a)(ii) of the Policy. Complainant states that “Respondent is not commonly known as ‘SERMO’ or ‘SERMOSUCKS’[,] . . . has not been authorized to register any domain name utilizing the SERMO mark under its own name . . . [and] is not making a legitimate non-commercial or fair use of the domain name”. Although Complainant acknowledges that “Respondent’s Domain Name resolves to a website which disseminates grievances towards the Complainant”, Complainant argues that “the contents and layout of the website are designed to tarnish the SERMO trademark and its reputation”. Complainant also alleges that, as of May 8, 2008, the website to which Respondent’s Domain Name resolves contained a confusingly similar logo and slogan, and did not contain any disclaimers regarding its disassociation to the Complainant.

Finally, the Complainant submits that the Domain Name has been registered in bad faith under paragraph 4(b)(iii). In particular, Complainant states that Respondent’s actions “are representative of a desire to at least initially confuse those Internet users that are searching for the Complainant’s website”. Complainant also suggested that Respondent’s use of a privacy shield, which meant that the website was being run anonymously, constitutes bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.² Accordingly, the Panel may decide the dispute based on the Amended Complaint, all factual allegations are accepted as true, and the Panel may draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove, by a preponderance of the evidence, each of the following factors:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and used in bad faith.

A. The Domain Name is Confusingly Similar to Complainant’s Mark

Complainant has shown that it has common law rights in the SERMO trademark. As previous panels have held, in the United States of America (“U.S.”), an unregistered trademark that is used in commerce may be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy if Complainant can show that the mark is inherently distinctive (as SERMO appears to be) or at least has acquired secondary meaning and thus has become a distinctive identifier associated with the Complainant or its goods and services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), paragraph 1.7.³ Relevant evidence of such secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”. Id. In the present case, the Complainant has demonstrated both inherent and acquired distinctiveness sufficient to establish common law trademark rights.

As prior panels also have recognized, the incorporation of a trademark in its entirety in a domain name is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark for purposes of the Policy. The addition of other terms in the domain name, even derogatory ones, does not affect a finding that the domain name is identical or confusingly similar to the complainant’s trademark for purposes of the Policy.⁴ See, e.g., Chubb Security Australia PTY Limited. v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769 (for purposes of the first prong of the Policy, <chubbsux.com> is confusingly similar to CHUBB trademark); Societй Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 (<airfrancesucks.com> is confusingly similar to AIR FRANCE trademark); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (<wal-martsucks.com> is confusingly similar to WAL-MART trademark). See also Decision Overview, paragraph 1.3 (majority view is that a “domain name consisting of a trademark and a negative term is confusingly similar to the complainant’s mark”).⁵

Accordingly, Complainant has satisfied its burden under the first prong.

B. Respondent Has a Legitimate Interest in Its Criticism Site

Even though the Respondent defaulted, it is still Complainant’s burden to prove that Respondent lacks rights or a legitimate interest in the disputed domain name. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (ruling for a defaulting respondent where complainant failed to show that respondent lacked any rights or legitimate interests in the domain name at issue). Complainant has failed to do so. In particular, Complainant has failed to prove that Respondent is not entitled to the protections of paragraph 4(c)(iii) of the Policy, which provides that a Respondent has a legitimate interest if it is “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”.

As the Decision Overview recognizes, in paragraph 2.4, there is a split amongst panels as to whether the use of a domain name containing a trademark for a website that is critical of the trademark or its owner is a legitimate interest under the Policy. Some panels have adopted the view that the “right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark”; other Panels have instead held that, “[i]rrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial”. In Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, this Panel suggested that the split appears to reflect a difference in the underlying national laws. In cases involving U.S. parties, panels appear to be influenced by U.S. court decisions holding that the First Amendment of the U.S. Constitution protects a critic’s right to post a non-commercial website that is critical of a trademark owner even if the domain name consists of or contains the trademark. See, e.g., Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004); Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004); Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th Cir. 2003); Taylor Building Corp. of Am. v. Benfield, 507 F. Supp. 2d 832, 844 (S.D. Ohio 2007) (Internet gripe site, even if intended to wreak economic damage by publicizing criticism of the trademark owner, is not a commercial use and thus not subject to claims brought under the Lanham Act); Utah Lighthouse Ministry, Inc. v. Discovery Computing Inc., 506 F. Supp. 2d 889, 895-98 (D. Utah 2007); Northland Ins. Co. v. Blaylock, 115 F. Supp. 2d 1108, 1120 (D.C. Minn. 2000); Bihari v. Gross, 119 F. Supp. 2d 309, 322 (S.D.N.Y. 2000); Penn Warranty Corp. v. DiGiovanni, 810 N.Y.S.2d 807, 817 (N.Y. Sup. Ct. 2005) (no Lanham Act liability for non-commercial criticism site; “Lanham Act cannot be use[d] as a pretext to stifle critics of goods or services by someone, such as a consumer advocate, who is not engaged in marketing or promoting a competitive product or service”). In contrast, some courts and UDRP panels outside of the U.S. have held that a critic does not have the right to use a trademark owner’s trademark as the domain name for a criticism site. See, e.g., Patel v. Allos Therapeutics Inc., [2008] EWHC 1730 (Ch); Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi, Case No. D2007-0769 (WIPO August 13, 2007) (applying Australian law). Resolution of the instant case depends entirely on which of these two views should be applied here.

Since Howard Jarvis supra, several cases have expressly reconsidered whether it is appropriate to follow national laws in certain cases or whether it instead is more appropriate to advocate for a single set of legal principles that will hold across all UDRP cases. In Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070, this Panel noted that conforming decisions under the Policy to the relevant national law “help[s] ensure consistent application of the law and discourage[s] unnecessary litigation”. Id. at n.2. In three other cases, though, panelists in England and Ireland have concluded that national laws should not be considered, but instead a single set of principles should govern in the UDRP. Covance, Inc. and Covance Labaratories Ltd., v. The Covance Campaign, WIPO Case No. D2004-0206 (“As a matter of principle, this Panel would not have thought that it was appropriate to import unique national legal principles into the interpretation of paragraph 4(c) of the Policy. This is so even if the effect of doing so is desirable in aligning decisions under the Policy with those emerging from the relevant courts and thus avoiding instances of forum shopping.”); 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 (“This Panel would suggest that there is no real justification for such a local laws approach either in the Policy or the Rules and that such approach should be avoided wherever possible. It risks the UDRP fragmenting into a series of different systems, where the outcome to each case would depend upon where exactly the parties happened to reside. That way chaos lies.”); Fundaciуn Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947 (“the Internet is an international medium and uniformity in the international application of the Policy is desirable. . . . 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.”). Because this raises an interesting, and unresolved, question with respect to the application of the Policy in areas where national laws differ, the Panel believes it an appropriate subject for further review and consideration.⁶

This Panel rejects the notion that the choice here is between consistency and “chaos”. 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461. Either way, an inconsistency will be introduced into the application of the Policy. If, for example, all Panels “interpret[ed] the Policy in as uniform a manner as possible regardless of the location of the parties”, id., and consistently applied “view 1” of the Decision Overview, the result, at least in the U.S., would likely be a string of legal challenges by losing Respondents under paragraph 4(k) of the Rules. Based on the U.S. precedents listed above, the expected result would be that the courts would find that the domain name does not violate the Lanham Act and the courts would refuse to uphold the transfers ordered by the UDRP Panels. Similarly, if all panels consistently applied view 2 regardless of the location of the parties, one would expect trademark owners in non-U.S. jurisdictions to challenge the domain names in court rather than through the UDRP, where they would obtain transfer orders that would be inconsistent with the legal principals underlying view 2 of the Decision Overview. Thus, either way, UDRP decisions would be inconsistent with the expected results in some countries’ courts.

The alternative approach, as described in Howard Jarvis supra, is no less inconsistent. Under the Howard Jarvis approach, UDRP decisions may be consistent with how the relevant national courts would rule, but the decisions would be inconsistent within the UDRP system, as demonstrated by the fact that the Decision Overview describes the existence of a “view 1” and “view 2”.

Either way, then, there is an inconsistency. That hardly means that the UDRP is well on its way down the road to “chaos”. Legal systems have long recognized that accepting some inconsistency is a practical necessity, especially given the lack of global harmonization of laws (including intellectual property laws).⁷ Indeed, even the UDRP accepts inconsistency. The very first factor requires that the Complainant demonstrate trademark rights. In some countries (principally civil law countries), those rights will have to be proven based on registrations because mere use does not give rise to trademark rights; in other countries (principally common law countries), use in commerce is all that is required to create trademark rights. It is thus common for panels to consider the relevant national laws in assessing whether Complainant has established trademark rights; there is no reason why panels cannot also consider national laws in assessing whether Respondent has established a fair use right.⁸

The panel in 1066 Housing Association does, however, raise a valid question with respect to which national law should apply, especially when the parties are resident in different countries with different legal principals. On reflection, this Panel agrees that a mere consideration of the location of the parties is not sufficient (and the location of the panelists should be completely irrelevant). If both parties are resident in the same jurisdiction, then it seems wholly appropriate to consider the national laws of that jurisdiction since, presumably, those laws govern the parties’ conduct, legal rights, and potential liabilities. However, where there is some question about the laws that may apply, then a Panel should also consider the location of mutual jurisdiction, and the conflict of laws principles that would be applied by courts in that jurisdiction, since that is the jurisdiction in which the courts may be asked to consider the parties respective rights if a challenge is filed under Paragraph 4(k) of the rules. See Starkey v. Bradley, NAF File No. 874575 (Bernstein, dissenting) (suggesting that U.S. legal principals should apply in case involving a U.S. and a U.K. resident because the location of mutual jurisdiction was in the United States).

The benefits of this approach are many. Although consistency may remain an elusive goal, this approach would help promote predictability in the UDRP system in that parties would know in advance which national laws (and, with respect to the specific question here, which “view” of the Decision Overview) would most likely apply. It would also prevent forum shopping because, whether a Complainant were to file suit in court or a challenge in the UDRP, the expected result would be the same. And, by reducing forum-shopping and promoting predictability, it would help support the UDRP itself by helping to ensure that the UDRP is seen as a fair, consistent, and predictable legal system, instead of an unfair, inefficient system that results in random decisions (based on the identity of the panelist) or erroneous decisions that are disregarded and voided by courts in those cases in which paragraph 4(k) has been invoked.

Applying these principles to the case at hand, it is clear that the U.S. approach (“view 2”) should apply. Both parties are residents of the U.S., the registrar is located in the U.S., and the location of mutual jurisdiction is in the U.S. (Complainant selected as the location of mutual jurisdiction the jurisdiction in which Respondent resides, which is Tulsa, Oklahoma). Thus, if this Panel were to order transfer, Respondent could prevent the transfer by filing suit in Tulsa, Oklahoma, and the Panel firmly believes that the court would apply U.S. legal principles in any such challenge given that all of the parties are based in the U.S. and all of the conduct at issue occurred in the U.S. If Complainant doubts that would be the result, Complainant is, of course, free to test that hypothesis by filing suit in a U.S. court to learn whether the courts would find the registration and use of this Domain Name to violate the Lanham Act or other relevant U.S. laws.

For these reasons, under “the principles of law that it deems applicable”, Paragraph 15(a) of the Rules, the Panel concludes that Complainant has failed to show that Respondent lacks a legitimate interest in the domain name based on Respondent’s use of the domain name for a critical website.

Complainant makes two additional arguments in favor of transfer. Complainant alleges that Respondent’s use tarnishes Complainant’s mark, and thus is not legitimate, because the criticism on the site is false, disparaging and highly inflammatory, and appears designed to harm Complainant and its reputation. Complainant also complains that, prior to the filing of this challenge, Respondent’s website included a logo and slogan (“Know more. Know the truth”) that was confusingly similar to Complainant’s logo and slogan (“Know more. Know earlier.”).

The Panel has carefully reviewed Respondent’s website, including the printouts submitted by Complainant showing the prior version of the website and the more current version after Respondent changed the logo. The Panel does not agree that any aspect of the website constitutes “tarnishment” as that term is used in the Policy. Although it is true that Respondent’s criticism is meant to harm Complainant’s reputation and drive physicians away from Complainant’s services, that is not the kind of “tarnishment” prohibited by the Policy. Rather, as this Panel has previously held, tarnishment in the context of the UDRP refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (citing Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, Case No. D2000-1415 (WIPO Jan. 23, 2001)). Fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in commercial libel must be brought in other legal venues. Id. As this Panel held in Howard Jarvis:

Similarly, respondent’s site cannot be characterized as evidencing an intent to “tarnish the trademark or service mark at issue”. respondent’s site does not appear to be classic “tarnishment”, in the sense of associating the mark with unwholesome concepts such as drugs, violence or sexual activity. Cf. American Express Co. v. Vibra Approved Labs. Corp., 10 U.S.P.Q. 2d 2006 (S.D.N.Y. 1989) (mark DON’T LEAVE HOME WITHOUT IT tarnished by condoms sold under the slogan “Never Leave Home Without It’); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996) (adult entertainment site at domain name <candyland.com> is tarnishment of CANDYLAND trademark for children’s games); Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, Case No. D2000-1415 (WIPO January 23, 2001) (tarnishing to link actress’s name to website selling adult entertainment). Moreover, under Section 43(c) of the Lanham Act, there is no cause of action for trademark dilution (which encompasses both blurring and tarnishment) if a party is making a “[n]oncommercial use of a mark”, 15 U.S.C. § 1125(c)(4)B), which is the case if the site is a legitimate gripe site. Bally Total Fitness Holding Corp. v. Farber, 1998 WL 897335 (C.D. Cal. December 21, 1998) (no dilution where “Bally Sucks”, used for criticism site); Northland Insurance Co. v. Blaylock, 115 F. Supp. 2d 1108 (D.C. Minn. 2000) (criticism site at “www.northlandinsurance.com” is protected speech and, because the website was non-commercial commentary, it could not generate initial interest confusion and did not constitute dilution); see also L.L. Bean v. Drake Publishers Inc., 811 F.2d 26 (1^st Cir.) (First Amendment is defense to dilution tarnishment claim when use is noncommercial parody), cert. denied, 483 U.S. 1013 (1987); Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1574 (S.D. Cal. 1996) (parody not dilution because use was non-commercial), aff’d, 109 F.3d 1394 (9^th Cir. 1997). That is true even if the gripes may be untrue - the proper cause of action in that circumstance is one for defamation, not dilution or cybersquatting. Brittania Building Society v. Brittania Fraud Prevention, Case No. D2001-0505 (WIPO July 6, 2001).

Nor does the Panel believe that Respondent’s website, and especially its use of a similar logo and slogan, constituted an “intent for commercial gain to misleadingly divert consumers”. Although it is true that Respondent mimicked the font and placement of Complainant’s logo, the logo prominently read “sermo sucks” and the website was clearly and obviously a site that was highly critical of Complainant. Because it was an obvious criticism site, and not a site deceptively designed to lure Internet users in on the false pretense of being the Complainant’s site, cf. Planned Parenthood Fed’n of Am. v. Bucci, 1997 U.S. Dist. LEXIS 3338 (S.D.N.Y. March 19, 1997), the Panel finds that the site was not likely to confuse consumers. Moreover, it is clear that the site has no intent for commercial gain; indeed, there does not appear to be any commerce on Respondent’s site, and Complainant has not alleged the existence of any such commerce.

For the foregoing reasons, the Panel finds that Complainant has failed to sustain its burden of proving that the Respondent lacks right or a legitimate interest in the Domain Name.

C. Respondent Has Not Registered and Used the Domain Name in Bad Faith.

In light of the Panel’s finding under the legitimate interest factor, the Panel need not consider in detail Complainant’s assertions that Respondent registered and used the domain name in bad faith. Nevertheless, for the sake of completeness, the Panel notes that it is inclined to find that Respondent did not register and use the Domain Name in bad faith because the registration and use of a single domain name for a genuine, non-commercial criticism site, if the site is otherwise legitimate, should not be deemed bad faith.

Nor are there any other indicia of bad faith here. For example, Respondent did not register so many domain names that the Complainant was prohibited from using its mark; Respondent is not a competitor of Complainant’s who is using criticism as a potential pretext to drive business from the Complainant to Respondent; and Respondent has not designed its site in a deceptive or confusing manner that would create a likelihood of confusion as to whether the site is a genuine criticism site or is posing as Complainant’s site. Cf. Planned Parenthood Fed’n of Am. v. Bucci, 1997 U.S. Dist. LEXIS 3338 (S.D.N.Y. March 19, 1997). As to the privacy shield, although Complainant is correct that some uses of privacy shields are appropriately treated as evidence of bad faith (such as when privacy shields are used by cybersquatters to prevent complainants from identifying other domain names that have been squatted by the same respondent, which is a necessary element under paragraph 4(b)(ii) of the Policy, or when serial registrants use privacy shields to mask each registrants actual date of registration, which can be a relevant factor when trying to determine whether a registrant registered a domain name prior to or after the creation of Complainant’s trademark rights), it is equally true that some uses of privacy shields may be perfectly legitimate and consistent with good faith. The use of a privacy shield by a critic, running a legitimate, non-commercial criticism site, is an example of a potentially legitimate use of a privacy shield, since the critic may wish to maintain anonymity to prevent unfair retribution or retaliation (though an anonymous critic must also recognize that anonymous criticism may have less power in the marketplace than criticism by a party who is willing to identify him or herself). For these reasons, it appears that Complainant has also failed to establish that Respondent registered and used the Domain Name in bad faith.

7. Decision

Because Complainant has failed to prove that Respondent lacks a legitimate interest, the Panel declines to order transfer of the Domain Name. The Complaint is denied.

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David Bernstein
Sole Panelist

Dated: July 2, 2008

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¹ The allowance of the first mark and approval of the second both occurred after the filing of the Complaint. It is well accepted that panels may conduct their own factual research, including checking the status of trademark applications with the PTO. e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake movies, WIPO Case No. D2000-1369, at n.1.

² Given the absence of a Response, the Panel has carefully reviewed the record to ensure that Respondent received fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. The Center sent notification of the Amended Complaint to Respondent by United Parcel Service (“UPS”) to the Respondent’s Tulsa, Oklahoma mailing addresses, and UPS has confirmed that the package was in fact delivered. The Center also sent the notification to the email addresses listed in the Registrar Verification, and attempted to send the notification by fax (although the fax number listed in the Registrar Verification for Respondent did not appear to connect to a working fax machine). Thus, it appears that the Respondent received actual notice of the Complaint, but even if did not, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules. Cf. Atrium Medical Corporation. v. Emin Keklik, NAF File No. FA0803001172416 (requiring NAF to re-notify Complaint to fix deficiencies in original service).

³ As this Panel held in Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061, at n.3: “Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions.”

⁴ Complainant argues that one basis for a finding of confusing similarity is because Complainant “targets physicians world-wide, and therefore, confusion among international customers is highly probable”. Accordingly, Complainant concludes (quoting the Decision Overview), “the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark”. That argument makes no sense in the context of the SERMO website, which is an English-language based social networking site for physicians who, presumably, speak English. In any event, for the reasons detailed in the text, “confusion” need not be shown in the Lanham Act “likelihood of confusion” sense; rather, the issue under the first factor is whether the letter string of the domain name is confusingly similar to the letter string of the trademark, devoid of marketplace factors. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. It is an objective test that looks only at the mark and the domain name; it is not a subjective test that also looks at the mental reaction of Internet users to the domain name.

⁵ The WIPO Decision Overview indicates that there is a minority view, which holds that a domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term. In support of that minority view, the Decision Overview cites two early UDRP decisions: Lockheed Martin Corporation. v. Dan Parisi, WIPO Case No. D2000-1015, and McLane Company Inc. v. Fred Craig, WIPO Case No. D2000-1455. A review of the more recent WIPO cases addressing this issue shows that in cases involving a “sucks” domain name since the Decision Overview was published in 2005 panels have found confusing similarity. See Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253; Sociйtй Air France v. MSA, Inc., WIPO Case No. D2007-0143; Societй Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168; Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769; Deutsche Telekom AG v. AdImagination, WIPO Case No. DWS2006-0001; La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan WIPO Case No. D2007-1660; Xtraplus Corp. v. Flawless Computers, WIPO Case No. D2007-0070; Southern California Regional Rail Authority v. Robert Arkow, WIPO Case No. D2008-0430; Covanta Energy Corporation. v. Anthony Mitchell, WIPO Case No. D2007-0185; Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627. It thus appears that the majority view has become the consensus view, and that panels no longer follow the minority position (which, in any event, was based only on a handful of cases from the very early history of the UDRP).

⁶ The panels in 1066 Housing Association and Fundaciуn Calvin Ayre Foundation have also suggested that there is no difference in the relevant national laws in these cases because European countries also recognize the importance of “free speech”. Other countries may well have their own free speech traditions, but as the cases cited in the text indicate, in the United States, the free speech right tends to trump other laws more frequently, and courts have generally applied U.S. free speech principals to permit non-commercial criticism sites that use domain names identical or confusingly similar to trademarks. In contrast, at least one court in England has recently ruled that, although a critic has the right to disseminate his or her criticism, there is no right to do so using a domain name consisting of the victim’s trademark. A similar rift in the Atlantic exists with respect to libel law; courts in the United Kingdom of Great Britain and Northern Ireland (“U.K.”) are more sympathetic to libel challenges, whereas the bar to proving actionable libel is significantly higher in the U.S., especially with respect to public figures, due to the robust protections of the First Amendment and the way in which courts have interpreted its guarantee of freedom of speech in the U.S.

⁷ Philosophers, too, have accepted this principal; as Ralph Waldo Emerson famously wrote in his essay Self-Reliance, “a foolish consistency is the hobgoblin of little minds”.

⁸ The panel in 1066 Housing Association recognizes this apparent inconsistency (or “tension”) in its arguments, but concludes that it presents a false dichotomy. That is because, the panel explains, the creation and existence of trademark rights “are by their very nature national rights with national scope”. Id. at n.3. The same, however, can be said of the existence of free speech rights (which, in the U.S., derive from the U.S. Constitution) and “fair use” rights, which derive from both statute and case law. E.g., 15 U.S.C. § 1115(b)(4); Century 21 Real Estate Corp. v. Lending Tree Inc., 425 F.3d 211 (3d Cir. 2005). Whether a party has a “fair use” right to use or reference a mark is just as much rooted in national law as whether another party has a trademark in the first place.