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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vector Limited v. Vince and Jane Siemer

Case No. D2008-0925

 

1. The Parties

The Complainant is Vector Limited, Auckland, New Zealand, represented by Russel McVeagh, Solicitors, New Zealand.

The Respondents are Vince and Jane Siemer, Gulf Harbour, New Zealand, appearing pro se. Since the Response refers to the Respondent in the singular throughout (evidently with reference to the first-named Respondent), it will be convenient for the Panel to do so.

 

2. The Domain Name and Registrar

The disputed domain name <vectorlimited.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2008. On June 18, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 19, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 29, 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 Complaint, and the proceedings commenced on July 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2008. The Response was filed with the Center on July 29, 2008.

The Complainant sent a Supplemental Filing accompanied by a Supplemental Filing (Annex), dated July 30 July, 2008.

The Respondent sent a Supplemental Filing accompanied by a copy of a Court document on July 30, 2008. All Supplemental Filings and annexes have been provided to the Panel.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 13, 2008. 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

The Complainant is a company publicly listed on the New Zealand Stock Exchange. It operates a range of energy and technology assets and infrastructure. Its assets include New Zealand’s largest electricity network and a network of gas transmission and distribution systems, also natural gas processing facilities, open access telecommunications networks, and electricity metering services.

In relation to its activities the Complainant owns the following relevant trademarks registered with the Intellectual Property Office of New Zealand and bearing the name VECTOR:

Trademark number: 306271 registered: March 9, 1999 to March 9, 2016.

Trademark number: 306272 registered: March 9, 1999 to March 9, 2016.

Trademark number: 306273 registered: March 9, 1999 to March 9, 2016.

Trademark number: 306274 registered: March 9, 1999 to March 9, 2016.

Trademark number: 306275 registered: March 9, 1999 to March 9, 2016.

The Complainant operates its official website at “www.vector.co.nz”.

The Respondent operates the website and disputed domain name <vectorlimited.com> as a comment and criticism site for the purpose of publishing views about the Complainant. Other sites having the same broad objectives are or have been registered to the Respondent.

The disputed domain name was apparently registered on October 24, 2007.

 

5. Parties’ Contentions

A. Complainant

The Contentions of the Complainant include the following.

The Complainant says that the disputed domain name is confusingly similar to a trademark or service mark in which it has rights.

The Complainant provides documentary evidence to the effect that it has rights as the owner of the registered trademark VECTOR in relevant classes as set out in section 4 above. It is contended that the disputed domain name <vectorlimited.com> is confusingly similar to the trademark VECTOR because (a) the domain name uses the trademark VECTOR in conjunction with the name of the Complainant, which is “Vector Limited”; and (b) the domain name <vectorlimited.com> is similar to, and could be easily confused with, the Complainant’s official website (“www.vector.co.nz”).

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not an employee, agent, representative, or otherwise affiliated with the Complainant and is not licensed or entitled to use the registered trademarks. The use of the registered trademarks in the domain name and on the corresponding website is not a permitted use of the registered trademarks.

The Respondent’s use of the registered trademarks is not in connection with a bona fide offering of goods and services, and is not a legitimate noncommercial or fair use of the domain name or the registered trademarks. The Respondent is not commonly known by the domain name, or by the word “vector” or the phrase “vector limited”. The Respondent has no rights or legitimate interests in the domain name.

The Complainant further contends that the disputed domain name was registered and is used in bad faith.

The domain name and corresponding website are being used for the purpose of furthering a campaign of harassment by the Respondent against the chairman of the Complainant’s Board of Directors, and more recently, against the Board and the Complainant itself. The intention is to harm the Complainant and members of its Board of Directors by publishing defamatory material on the website, to an audience of persons who may be seeking the Complainant’s official website, and who may be misled by the use of the Complainant’s trademark in the domain name.

The Complainant says this bad faith is evidenced by:

(a) The use of the domain name to confuse and mislead;

(b) The defamatory content of the corresponding website; and

(c) The registration of the domain name in the context of the history of harassment of the Complainant and chairman of the Complainant’s Board of Directors by the Respondent.

Because of the similarity between the domain name, the Complainant’s name and the Complainant’s registered trademarks, persons seeking the official website of the Complainant may unintentionally use or be directed to the disputed domain name. For example:

(a) an Internet user may make an educated guess at the Complainant’s official website address, as the Complainant’s name is “Vector Limited”; and “.com” is the most common domain name suffix;

(b) an Internet user seeking the Complainant’s official website may be directed to the disputed domain name if they use a search engine. A Yahoo.com search for the phrase “vector limited” on 4 June 2008 (provided in documentary evidence) displayed the disputed domain name on the first page of results, and it appeared on the results page among the official web pages for four Vector businesses. Furthermore, the domain name website appeared with the title: “Vector Limited - Home”.

The Respondent is using the domain name solely for the purpose of attracting persons such as shareholders and customers of the Complainant to the Respondent’s website and away from the Complainant’s website. The intention is to tarnish the Complainant’s trademark and business.

At this point in the Complaint, the Complainant commences to provide extensive detail about the nature of some of the ongoing battles between itself and the Respondent over the years. Much of the detail is about named individuals associated with the Complainant, and about other domain name disputes involving essentially the same Parties as in the present case. There is detailed narration of several appearances of the Parties in the High Court of New Zealand and of injunctions, penalties and costs awarded, with verbatim quotations from Judgments. The Panel does not find this material sufficiently relevant to the present dispute to relate here.

The Complainant concludes its contentions by saying that the Respondent, in defiance of multiple orders of the High Court of New Zealand, has pursued a campaign of defamation and harassment against a person associated with the Complainant, and has previously registered other domain names for similar reasons. The history portrayed is of an escalating campaign by the Respondent against the Complainant and some of its people.

The Complainant also advances that in using the domain name for defamatory material and a campaign of harassment, the Respondent is in breach of clause 5 of the Go Daddy.com, Inc. Terms of Service.

The Complainant requests the transfer to it of the disputed domain name.

B. Respondent

The Respondent denies the Complaint and makes contentions that include the following.

In the matter of confusing similarity, the Respondent says there is no substance in the Complainant’s allegations, however the Respondent corresponded with the Complainant in attempts to mitigate alleged trademark infringement and alleged confusion with the Complainant’s website. The Complainant’s reply amounted to asking for the transfer of the disputed domain name (documentary evidence is submitted). The Respondent says this stance speaks for the lack of legitimacy of the Complainant’s actions.

The Respondent contends that the Complainant’s grounds under the heading of confusing similarity are unreasonable, in part because the Complainant has no monopoly over the word “vector” but demanded in correspondence that any domain names registered by the Respondent should not include the word “vector”.

The Respondent says he should have been given the chance to make alterations to the website acceptable to the Complainant.

In the matter of rights or legitimate interests, the Respondent says his interest in the disputed domain name is bona fide and self-evident. He is providing a valuable service to the Complainant’s shareholders. He has the right to create transparency in respect of a monopoly provider of essential services and the analysis provided on his website is accurate and cogent. The Respondent holds a bachelor’s degree in Industrial Relations (economics emphasis) from St. Louis University and an MBA degree from the Olin School of Business at Washington University, both in the United States of America. He is uniquely qualified, as well as in an ideal position, to make his accurate and valuable analysis available to readers of the website. The Respondent considers that members of the public have a right to obtain accurate information about companies they invest in or associate with.

The Respondent contends that the Complainant’s accusations of defamation are groundless, and says the Complainant has not taken any Court action in defamation in relation to the disputed domain name. The Respondent says that warnings and predictions on his website have proven to be true, and that visitors to the website have expressed gratitude. There is arguably no more valuable service than the provision of accurate information that assists investors and members of the public in making informed decisions.

The Respondent says he is a staunch proponent of free speech, which is enshrined in, for example, the United Nations International Convention on Civil and Political Rights, and that the Complainant in this action is seeking an outcome which would usurp the laws of New Zealand and International Conventions.

In the matter of bad faith registration and use, the Panel notes that some of the contentions above may belong also under this heading. The Respondent contends that his website does not display bad faith but that the information provided on it is compelling, is civil in tone, and is not defamatory, odious or unlawful.

The Respondent says he is not a competitor of the Complainant. Nothing on the website undermines any aspect of the Complainant’s legitimate businesses, but even if information (claimed to be accurate) contained on the website had that effect, it would be unreasonable to suppress it. Nothing the Respondent has done limits the Complainant’s effective use of its trademarks.

The Respondent says he did offer to sell the domain and website recently, but only in response to the Complainant’s demand for transfer of the domain name (documentary evidence is submitted). He says the NZ$250,000 asking price does not come close to wide ranging legal costs incurred by the Respondent over some years in relation to his disputes with the Complainant or associated persons.

The Respondent then presents a paragraph about a number of named individuals in which he makes unsubstantiated and potentially damaging accusations that will not be reproduced here and have no bearing on the case in hand.

In the matter of bad faith, the Respondent repeats his earlier willingness to adapt his website. He also quotes the late President Harry Truman: “If you cannot convince them, confuse them”, with the contextual implication that the Complainant’s submissions are intended to confuse the Panel.

 

6. Discussion and Findings

A. Procedural Matters

Paragraph 4(a) of the Policy states that the Respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

After Complaint and Response had been sent to the Center, the Complainant submitted a Supplemental Filing comprising a two page document headed “Comments on the Respondent’s response”, accompanied by a 33 page Supplemental Filing (Annex) comprising a recent Judgment of the High Court of New Zealand in a case concerning the Respondent (Solicitor-General For New Zealand v Siemer HC AK CIV 2008 404 472). The Respondent submitted an email (“... cc ... to a New Zealand TV reporter and two Members of Parliament...”) containing comments and a copy of a 9 page document that was in fact the Respondent’s Memorandum to the High Court in the same case.

Paragraph 12 of the Rules states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” The Panel did not request a Supplemental Filing and did not find the need for any, however, in the interests of natural justice it has read them and has decided they added nothing useful. They have not been taken into consideration.

The Panel noted, as mentioned with the Complainant’s contentions, that much of the Complaint was not relevant to the core of this proceeding. It was also noted that the Respondent made statements inappropriate to the circumstances of this proceeding. Neither of these matters had any prejudicial effect upon the Panel.

It should also be placed on record, in the light of the Respondent’s ultimate concerns, that the Panel understood the Complainant’s and the Respondent’s positions without confusion.

B. Identical or Confusingly Similar

The Complainant is required to prove that it has rights in a trademark and then to prove that the disputed domain name is identical or confusingly similar to that trademark.

The Complainant has provided uncontested documentary evidence of its ownership of and rights in the VECTOR trademarks detailed in section 4 above. The disputed domain name is <vectorlimited.com>. Well-established principles and precedents apply to the determination of confusing similarity in the context. The gTLD indicator “.com” or its equivalent is disregarded as being an inevitable part of a domain name. Upper and lower case are not distinguished in domain names, and punctuation spaces are not used. It has been long-established that the accompaniment of a trademark with other words or letters in a domain name, in this case “limited”, does not usually detract from confusing similarity (Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO Case No. D2000-0599; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafe, WIPO Case No. D2000-0068).

The Respondent has advanced arguments under this heading as to the content of the website, his willingness to adapt, and the exclusivity or otherwise of the word “vector”. The decision to be made under paragraph 4(a)(i) of the Policy is narrow, namely, whether the domain name is confusingly similar to the trademark, and the word “confusingly” has allowed the matter of exclusivity to receive due consideration.

The domain name <vectorlimited.com> is found to be confusingly similar to the trademark VECTOR and the similarity is exacerbated by the equivalence of the domain name to the Complainant’s company name Vector Limited.

C. Rights or Legitimate Interests

The Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Inherently there may be difficulties in proving this exhaustively. The convention under this heading is for the Complainant to make out a prima facie case that the Respondent may then refute in accordance with paragraph 4(c) of the Policy.

The Complainant certifies that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no connection with the Respondent such as agency that might give the Respondent any rights or legitimate interests. The Complainant has not permitted the Respondent to use its trademark.

Furthermore it is asserted that the Respondent is not making a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the domain name, and is not commonly known as “vector” or “vector limited”.

The Panel is satisfied that the Complainant has made out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name. It is for the Respondent to refute this.

Paragraph 4(c) of the Policy assists the Respondent by stating in part:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(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.”

The Respondent does not contest that the domain name is in use but claims such use to be a bona fide offering of a service. He says he provides a valuable service by publishing information about the Complainant and its business, and that he is positioned and qualified to do so partly by virtue of appropriate tertiary qualifications related to economics including an MBA degree. He argues that the information on the website is accurate and that the Complainant would have taken him to Court otherwise.

The Respondent argues that he has the right to freedom of expression and he resists what he sees as an attempt to block this. In other words, he avers to the recognised concept in domain name disputes of a criticism or comment site. This will also be discussed further below with reference to paragraph 4(b) of the Policy.

A website offering a bona fide service under a domain name that happens to use a trademarked word may in certain circumstances enable a Respondent to demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy, for instance if the word is generic and has been adopted in a non-trademark context. In the present case the Panel finds that the Respondent’s service is focused exclusively on the trademark significance of the mark VECTOR and the Panel does not accept that this can form the foundation of a bona fide use in the sense of paragraph 4(c)(i) of the Policy. The Panel finds that the Respondent does not have rights or legitimate interests under paragraph 4(c)(i) of the Policy.

It cannot reasonably be contemplated that the Respondent is known by the name “Vector” within the meaning of paragraph 4(c)(ii) of the Policy, nor does he claim to be, and the Panel finds that the Respondent does not have rights or legitimate interests under this paragraph.

Material published on the website of the disputed domain name includes, for example, articles critical of the Complainant and members of its Board of Directors by name, critical of the conduct of company meetings, and critical of the Complainant’s environmental record. Such material, whether justified or not, is likely to lead to tarnishment of the Complainant’s name and trademark. See e.g., Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769. Moreover, in this Panel’s view, a right to criticize a mark holder on the Internet does not necessarily extend to the unauthorized incorporation of a mark in its entirety in a domain name; nor does it necessarily extend to a right to create Internet user confusion as to the source of published critical material.

In the present case, the Respondent has registered a domain name that is clearly confusingly similar to the Complainant’s trademark and identical to the Complainant’s company name, the Complaint’s trademark appears prominently on the website, and the Respondent uses the domain name to post information critical of the Complainant (although the critical nature of that information may itself not be immediately apparent on entry to the website). Previous UDRP panels have noted that, while a respondent has a right to express its views concerning a complainant on the Internet (within the boundaries of laws relating to libel and similar causes of action), “the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views.” See e.g., Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300.

Having regard to all of the circumstances in the present case, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the domain name in the terms of paragraph 4(c)(iii) of the Policy.

There are no other grounds on which the Respondent has established rights or legitimate interests in the disputed domain name and the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iii) of the Policy is regarded by this Panel as the most apposite where, as here, the Complaint is of disruption to business and the Response amounts to an assertion of the right to freedom of expression. It reads:

“(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor;”

As a preliminary matter the Panel finds that the circumstances of this dispute may indeed encompass the Respondent acting in some fashion as a competitor of the Complainant. See e.g., Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (“The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”).

One question here then is whether the Respondent’s primary purpose has been the disruption of the Complainant’s business. There is also an underlying question as to whether a respondent’s right to criticise a mark holder on the Internet necessarily extends to the use of a domain name which, without authorization, wholly incorporates and is clearly confusingly similar to the mark at issue – which the Panel discusses further below.

Even where the use of a disputed domain name centers on actual criticism and is not a cover for a commercial operation, two schools of thought are discernible in previous UDRP decisions. One, perhaps a minority view, is that the interests of freedom of speech outweigh certain aspects of trademark protection, and the trademark may be allowed to form part of a domain name (Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (<bridgestone-firestone.net>); TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536 (<tmpworldwide.net> and <tmpworldwide.org>); Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (<hjta.com>)).

The converse view is that the right to criticism should not extend to the right to appropriate a complainant’s trademark without permission in a domain name (Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314 (<skatteetaten.com>); Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (<myeronline.com>); Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 (<triodos-bank.com>); The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166 (natwestbanksucks.com); Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136 (<kirklandandellis.com>)).

Freedom of expression (subject to special constraints and absent criminal intent) lies at the heart of free society. It prevails unless specifically taken away. The Respondent’s quotation from the Article 19 of the United Nations International Convention on Civil and Political Rights can scarcely be argued with.

In a general sense the Respondent can say what he likes, limited only by his willingness to meet any consequences in damages, costs and penalties in another forum. He is at liberty to state his views on a website and may well be in a position to use the Complainant’s name collaterally in fair, robust, or even harsh criticism, in the same way that a reviewer might reasonably criticise a named car, hotel, book, or airline.

However, such right, in the Panel’s interpretation, stops short of giving the Respondent a right to name his website around the Complainant’s trademark, in the knowledge of its trademark significance, and without permission, in circumstances in which the creation of confusion with the Complainant is apparently the primary intention. Perhaps more significantly in terms of the Policy, any such right in the Panel’s view stops short of giving the Respondent a right to do so on an unauthorized basis through the domain name at issue here.

By targeting the Complainant’s trademark, the Respondent invites scrutiny of his motives. Clearly they are to deflect Internet users away from the Complainant’s website and towards the Respondent’s website with its views about the Complainant, which coupled with the exploitation of the Complainant’s trademark for the purpose, is not consistent with bona fide registration and use of a domain name under the Policy. The Panel need not determine or concern itself with the purported truth or otherwise of the website material, or whether it seems to be predominantly positive or negative. The effect is the same, namely that the domain name falsely projects itself as representing the Complainant in order to divert Internet users to the Respondent’s opinions.

Irrespective of what the Respondent wishes to say on the website, his exploitation of the Complainant’s trademark in order to divert its clients is found to constitute disruptive conduct, and to be his primary purpose in the terms of paragraph 4(b)(iii) of the Policy. While the Respondent may indeed have a right to criticise the Complainant on-line, such right does not of itself extend to the unauthorised use of the Complainant’s trademark and company name to foster confusion between the Complainant’s business and the domain name at issue. It is secondary that the website features what can only reasonably be described on a careful reading as disruptive attacks on the conduct and performance of the Complainant and the integrity of key personnel.

The Panel concludes in the particular circumstances of this case that the Respondent has registered and is using the disputed domain name in bad faith within the meaning 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 <vectorlimited.com> be transferred to the Complainant.


Dr. Clive N.A. Trotman
Sole Panelist

Dated: September 5, 2008

 

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