Citigroup Inc. and Primerica
Financial Services, Inc. v. Brian Allman
Claim Number: FA0708001066738
PARTIES
Complainant is Citigroup Inc. and Primerica Financial
Services, Inc. (“Complainant”),
represented by Christopher J. Willis, of Rogers & Hardin LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <primericaisarip-off.com>, <primericaisarip-off.net>,
<primericaisarip-off.info>,
and <primericaisarip-off.org>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 21, 2007; the
National Arbitration Forum received a hard copy of the Complaint on August 24, 2007.
On August 21, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <primericaisarip-off.com>, <primericaisarip-off.net>,
<primericaisarip-off.info>,
and <primericaisarip-off.org>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On September 4, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 24, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@primericaisarip-off.com, postmaster@primericaisarip-off.net,
postmaster@primericaisarip-off.info, and postmaster@primericaisarip-off.org
by e-mail.
A timely Response was received and determined to be complete on September 26, 2007.
On October 2, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant, Citigroup, Inc., a very large and well-known financial
services company operating around the world, alleges that the company Primerica
Life Insurance is one of its remote subsidiaries, serving millions of
customers. It owns numerous trademarks
for PRIMERICA, dating back to 1988.
The Complainant alleges that the Respondent registered the disputed
domain names in May 2007, with the intent to use them to extract a settlement
in litigation that has been pending between the Respondent and Primerica Life
Insurance since January 2007. Throughout
the litigation, the Respondent has repeatedly demanded that Primerica Life
Insurance pay him a settlement amount.
In July 2007, the Respondent sent an e-mail requesting payment and
stating “… I am having a HUGE rolling billboard sign placed on the side of my
truck which will read PRIMERICA IS A RIP-OFF! And then direct customers to my
web site.”
The websites in question are at present parked on GoDaddy’s platform
and are therefore advertising products and other services sponsored by GoDaddy.
The Respondent has in several subsequent communications threatened to
“go live” with his websites at the contested domain names if Primerica Life
Insurance does not cooperate with his demands in the litigation.
Thus, according to the Complainant, the Respondent has co-opted
registered trademarks in order to coerce a settlement of the pending
litigation. In addition, by parking the
contested domain names, the Respondent is using the Complainant’s marks to
facilitate the offering of goods and services not associated with those marks.
According to the Complainant, the contested domain names are
confusingly similar to the Complainant’s marks because they fully incorporate
and mimic the Complainant’s marks. The
mere attachment of the generic term “ISARIP-OFF” after the mark PRIMERICA is
insufficient to avoid a finding that the disputed domain names are confusingly
similar to the mark. The Complainant
cites numerous cases decided under the Policy to this effect, including several
cases where the domain name took the form TRADMARK-SUCKS. The relevant case law will be fully discussed
below by the Panel.
According to the Complainant, there is no evidence that the Respondent
was preparing to use the contested domain names in connection with any bona fide activity. Although the domain names were registered in
May 2007, they are parked, as noted above.
Further, says the Complainant, the Respondent’s true intent when
registering the contested domain names was to use them to obtain an exorbitant
sum of money in settlement of a frivolous lawsuit that he has filed. Indeed, the Respondent’s failure to develop
websites associated with the contested domain names and his registration of
several similar domains shows that he is more interested in using the domains
to make threats in litigation than engage in any critical speech.
Moreover, according to the Complainant, even if the Respondent’s sole
intention for registering the contested domain was to criticize the
Complainant’s subsidiaries, a consistent line of authority has established that
the registration of a domain name confusingly similar to a Complainant’s mark
to criticize the Complainant cannot be considered legitimate noncommercial or
fair use under the Policy. The
Complainant cites numerous cases decided under the Policy to this effect. The relevant case law will be fully discussed
below by the Panel.
According to the Complainant, the registration and use of the contested
domain names is in bad faith because they were registered as part of an effort
to obtain compensation from the trademark owner: they were registered just five
months after the Respondent initiated litigation. Further, they are parked, not being used to
point to actual criticism.
B. Respondent
The Respondent states that the Complainant has simply two purposes in
filing this action. One is to simply shut him up from telling the world, via
the Internet, that they raised his yearly insurance premiums from $1,581.52 a
year to $8,885.75 a year. And after he
filed a lawsuit against Primerica, one of their independent agents (who lied to
him by telling him that she worked for Primerica) sold him exactly the same
policy for $4,901.59 AND the second reason is to simply silence him from
telling citizens that the registrant of <primericaisaripoff.com> is
CitiBank, N.A. THAT’S IT IN A NUT SHELL.
The Respondent goes on to give extensive details of his interactions
with the Complainant’s subsidiaries and his complaints concerning those
interactions. Such matters are outside
the scope of the Policy, so they are not summarized here.
He alleges that he registered the contested domain names to tell
citizens “his story” and to offer citizens an opportunity to write to him so
that he could post their comments on a “blog.”. Further, he did post a large
billboard sign on the sides of his truck, hoping to simply send citizens to his
websites.
The Respondent cites various
According to the Respondent, criticism sites and other Internet speech
on commercial issues vindicate First Amendment values by publicizing corporate
wrongdoing when other media outlets do not.
Just as setting up a picket line near a corporation targeted for
criticism deserves constitutional protection, setting up a website with an
Internet address that makes its target known deserves the highest level of
First Amendment protection. This means that the registration and use of such an
address should not be deemed to violate trademark rights so long as its sole
purpose is not to mislead consumers into buying goods or services that they
erroneously believe to originate with the trademark owner.
The Respondent states that he purchased a website package through a
commercial web hosting company where he designed his own website using one of
their standard packages, but he does not attach any evidence of his designs. He
states that that software was difficult to use and that he encountered numerous
problems. He attempted to design his website
only to discover how difficult it was to do using his dial-up computer. He had
to go to commercial premises where there was a high-speed computer. After many nights of struggling through it, he
was about to launch his website when GoDaddy halted it because of this Complaint. Again, the Respondent does not provide any
evidence to support his contention that he actually was in the process of
developing a website containing actual criticism.
According to the Respondent, his intent in purchasing the contested domain
names was to launch a website for consumers. He never did anything in bad
faith. He never did it solely for the purpose of a monetary settlement from
Primerica Life. He also never tarnished the PRIMERICA mark and the good will
associated with their name. He initiated litigation in the
FINDINGS
The Complainant is the owner of numerous
trademarks containing the string PRIMERICA.
The contested domain names were registered in
May, 2007.
The Respondent is using the contested domain
names to point to websites containing commercial links.
The Respondent has used his ownership of the
contested domain name as an element in negotiations with the Complainant
concerning settlement of pending litigation between them.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
As a preliminary matter, the Panel
notes that although the Respondent’s hard copy of the Response was received in
a timely manner, the Respondent failed to submit an electronic submission
before the deadline as required by ICANN Rule 5(a). Therefore, the Panel has sole discretion to
determine the amount of weight given to the Response. See Telstra Corp. v. Chu,
D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the
lateness of the response is solely in the discretion of the panelist).
The Panel
nevertheless decides to accept the Response.
See Shedrick v.
The Panel is well aware of the fact that a
majority of panelists have taken the view that a
domain name consisting of a trademark and a negative term (for example,
TRADEMARK-SUCKS) is confusingly similar to the complainant’s mark, in the sense of the Policy—see the WIPO
Overview of WIPO Panel Views on Selected UDRP Questions at: http://www.wipo.int/amc/en/domains/search/overview/index.html#13.
Clearly the present case falls into that
category. However, each case must be
judged on its own, individual, specific merits.
And the Panel finds that the present case is very similar to America Online, Inc. v. Johuathan Investments, Inc., &
Aollnews.com, D2100-0918 (WIPO Sep. 14,
2001), in which the learned panel stated:
The Second Domain Name
<fucknetscape.com>. This Domain Name comprises the word "FUCK",
the Complainant’s trade mark "NETSCAPE" and the generic dot com
suffix. This Domain Name is not identical to the Complainant’s trade mark, but
is it confusingly similar to it?
In the trade mark context the term
"confusingly similar" refers to confusion as to trade origin. Is it
likely therefore that, because of the similarity between the Domain Name on the
one hand and the Complainant's trade mark on the other hand, people will
believe that the Domain name is associated in some way with the Complainant?
The Panel regards it as inconceivable that
anyone looking at this Domain Name will believe that it has anything to do with
a company of such high repute as the Complainant. It is manifestly, on its
face, a name, which can have nothing whatever to do with the Complainant. It is
a name, which, by its very nature, declares that it is hostile to Netscape. The
Panel notes that in support of the bad faith claim the Complainant contends
that the Respondent has registered this Domain Name in violation of paragraph
4(b)(ii) of the Policy on the basis that it has been
done to prevent the Complainant registering the name. The Panel simply does not
understand why on earth the Complainant would ever wish to register this Domain
Name. There is no evidence before the Panel to support the contention. The Panel
is aware that some companies seek to acquire such names, but only to forestall
and/or impede the more obvious protest sites, not because they believe people
will believe that the domain name in question or any site to which it is
connected belongs to or is licensed or endorsed by the trade mark owner.
The Panel finds that the Complainant has
failed to prove this Domain Name is identical or confusingly similar to a trade
mark or service mark in which the Complainant has rights.
The present case is also similar to Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001), in which
the majority of the Panel stated:
A majority of this Panel agrees with the
result reached by the panelist in the Wallmartcanadasucks.com case, and
disagrees with the opposite view in the previously cited cases. Both common
sense and a reading of the plain language of the Policy support the view that a
domain name combining a trademark with the word "sucks" or other
language clearly indicating that the domain name is not affiliated with the
trademark owner cannot be considered confusingly similar to the trademark.
Although the Panel’s conclusion comports with
the plain language of the Policy, it is worth noting that
In reaching this conclusion, the court found,
inter alia, there could be no confusion because the parties did not offer
"related goods". This case fits our Case at hand in all essential
respects. And it certainly is true that here, as in Bally’s,
Complainant’s products from aerospace to t-shirts are very different from
Respondent’s service of providing a forum for voicing criticism of Complainant
and other prominent corporations.
Furthermore, there is at least one other
federal case similar to Ballys and our Case that follow this same reasoning,
viz., "sucks" appended to a famous trademark used as a domain name
for websites used to discuss or criticize the business of the trademark owner
results in a non-infringing and not confusingly similar use of the trademark. (re the domain name <Lucentsucks.com>, Lucent
Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535, E.D. Va. 2000).
In the case cited above, the Panel held that
the plain language of the Policy is clear.
The Panel’s understanding of that plain
language is supported by a reference to the travaux preparatoires of the
Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html). This report states at paragraph 172:
… Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive. …
And at paragraph 176:
In applying the
definition of abusive registration given above in the administrative procedure,
the panel of decision‑makers appointed in the procedure shall, to the
extent necessary, make reference to the law or rules of law that it determines
to be applicable in view of the circumstances of the case. Thus, for example, if the parties to the
procedure were resident in one country, the domain name was registered through
a registrar in that country and the evidence of the bad faith registration and
use of the domain name related to activity in the same country, it would be
appropriate for the decision‑maker to refer to the law of the country
concerned in applying the definition.
In the present case, both parties are
domiciled in the
The Respondent
aptly cites cases where it has been held that
In Bally Total Fitness Holding Corp. v. Faber,
29 F.Supp.2d 1161 (C.D. Cal. 1998), the court held that there was no likelihood
of confusion between the trademark BALLY and the domain name
<ballysucks.com> because they are not “related goods.” Further, it found that the terms were not
similar because “sucks” is such a loaded term and negative word that the
attachment of it to another word cannot be considered a minor change.
Thus, it appears that, under
Taking into account the plain language of the
Policy, the case law under the Policy, and relevant
The Complainant states that “a consistent line
of authority has established that the registration of a domain name confusingly
similar to the Complainant’s mark to criticize the Complainant cannot be
considered legitimate noncommercial or fair use pursuant to the Policy,” but
this is not the case.
As stated at the WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, there are two main views, with US panelists
differing from non-US panelists in that US panelists more frequently take the
view that 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 (protection of free speech). See
http://www.wipo.int/amc/en/domains/search/overview/index.html#24.
A careful analysis of case law and of the
true intent of the Policy can be found in National Alliance for the Mentally
Ill Contra Costa v. Fouts, FA 204074 (Nat. Arb. Forum Nov. 28, 2003). That decision quotes from other decisions,
and the quotations are rather lengthy.
In order to facilitate the reader’s distinguishing the quotation from
the text of the present decision, the long quotation below is italicized. The text of the present decision then
continues in normal font.
The question of
whether or not criticism sites violate the Policy is a controversial issue,
with Panels taking opposite views on the matter. …
Decisions transferring the
domain names of criticism sites include Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, <cogema.org> D2001-0376 (WIPO
May 14, 2001) (Respondent’s showing that it “has a right to free speech and a
legitimate interest in criticizing the activities of organizations like the
Complainant ... is a very different thing from having a right or legitimate
interest in respect of [a domain name that is identical to Complainant’s
mark]”, especially given that the mark was famous); and Monty & Pat
Roberts, Inc. v. Keith, <montyroberts.net> D2000-0299 (WIPO June 9,
2000) (“[T]he Panel does not dispute Respondent’s right to establish and
maintain a website critical of (the Complainant) . . . . However, the panel
does not consider that this gives Respondent the right to identify itself as
Complainant”, especially given that the mark was famous); and Compagnie de
Saint Gobain v. Com-Union Corp., <saint-gobain.net> D2000-0020 (WIPO
Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain
name, identical to Complainant’s mark, to voice its concerns, opinions, and
criticism about Complainant).
Decisions denying
the transfer of the domain names of criticism sites include Bridgestone
Firestone, Inc. v. Myers, <bridgestone-firestone.net> D2000-0190 (WIPO
July 6, 2000) (finding that Respondent has free speech rights in the domain
name <bridgestone-firestone.net> where Respondent linked the domain name
to a “complaint” website about Complainant’s products and stating that as a general proposition: “the same facts
establishing fair use and the exercise of free speech negate a finding of bad
faith intent” (citing Lucent Techs., Inc. v. Lucentsucks.com, 95 F.
Supp. 2d 528, 535-536 (E.D. Va. 2000)); Legal & Gen. Group Plc v. Image
Plus, D2002-1019 <legal-and-general.com> (WIPO Dec. 30, 2002) (finding that initial interest confusion is displaced by the
criticism content at Respondent's website, that such a "low level of
confusion is a price worth paying to preserve the free exchange of ideas via
the Internet, and that “the goals of the Policy are limited and do not
extend to insulating trademark holders from contrary and critical views when
such views are legitimately expressed without an intention for commercial
gain”); and Britannia Building Society v. Britannia Fraud Prevention,
<britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001).
This Panel takes
the view that the goals of the Policy are limited. Domain name registrations are basically
first-come-first-served, and the purpose of the Policy is limited to rectifying
cases of obvious cyber-squatting.
The closest
equivalent to a legislative history for the Policy can be found in the 30 April
1999 Final Report of the WIPO Internet Domain Name Process, which formed the
basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc
). This report states at
paragraph 135:
In view of the weight of opinion against
mandatory submission to an administrative procedure in respect of any
intellectual property dispute arising out of a domain name registration, the
final recommendations of the WIPO Process contain two major changes in respect
of the suggested administrative dispute‑resolution procedure:
(i) First,
the scope of the procedure is limited so that it is available only in respect
of deliberate, bad faith, abusive, domain name registrations or “cybersquatting”
and is not applicable to disputes between parties with competing rights acting
in good faith.
(ii) Secondly,
the notion of an abusive domain name registration is defined solely by
reference to violations of trademark rights and not by reference to violations
of other intellectual property rights, such as personality rights.
And the WIPO Report
states at 153:
… The scope of the procedure would be limited to cases of
abusive registrations (or cybersquatting), as defined below, and would not be
available for disputes between parties with competing rights acting in good
faith.
And at 166:
The first limitation would confine the availability of the
procedure to cases of deliberate, bad faith abusive registrations.
And at 172:
… Domain name registrations that are justified by
legitimate free speech rights or by legitimate non‑commercial
considerations would likewise not be considered to be abusive.
This Panel agrees
with the case law cited by the Panel in Bridgestone Firestone, Inc. v.
Myers, <bridgestone-firestone.net> D2000-0190 (WIPO July 6, 2000), but
mutatis mutanda, in the sense that the Complainant in the present case would
not be expected to have a domain name under “.com” (see discussion on that
point at the end of this section):
The "fair use doctrine
applies in cyberspace as it does in the real world." See
Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1065 (9th Cir. 1999). In
In this case, the Respondent is
not using the website for commercial purposes and has not appropriated the
<.com> domain, which the Complainants have themselves registered and are
using for a commercial website. This case is more closely analogous to the
facts in Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161
(C.D. Cal. 1998), one of the cases cited approvingly by the Ninth Circuit Court
of Appeals in Brookfield on the fair use issue. In Bally, the
court held that the defendant’s use of a trademark in an Internet site for
purposes of consumer commentary and criticism did not infringe or dilute the
plaintiff’s mark. The court held that the defendant was "exercising his
right to publish critical commentary about Bally" and that he could not do
so without making reference to Bally:
Faber is using Bally’s mark in the
context of a consumer commentary to say that Bally engages in business
practices, which Faber finds distasteful or unsatisfactory. This is speech
protected by the First Amendment...As such; [sic] Faber can use Bally’s mark to
identify the source of the goods or services of which he is complaining. This
use is necessary to maintain broad opportunities for expression.
The court in Bally thus
recognized both fair use and free speech as defenses to trademark infringement
and dilution in the Internet context. In Bally, the defendant was not
using the trademark in the domain name itself, however, but on the website,
which prominently stated, inter alia, "Bally sucks." The Bally
court distinguished cybersquatting cases like Panavision International v.
Toeppen, 141 F.3d 1316 (9th Cir. 1998) on the grounds
that the use of the trademark in domain names in those cases created a high
likelihood of consumer confusion, i.e., that reasonably prudent consumers would
believe that the site using the appropriated name was the trademark owner’s
site. However, the court pointed out that "no reasonably prudent Internet
user would believe that "Ballysucks.com" is the official Bally site or is sponsored by Bally." Bally at 1163-1164.
The Panel sees no reason to
require domain name registrants to utilize circumlocutions like
<trademarksucks.com> to designate a website for criticism or consumer
commentary. "We must be acutely aware of excessive rigidity when applying
the law in the Internet context; emerging technologies require a flexible
approach."
The Panel is aware of the line of
trademark infringement cases holding that <trademarksucks.com>domain
names may be protected as free speech because of their "communicative
content" while <trademark.com> domain names serve merely as
"source identifiers" and are thus unprotected. See, e.g., OBH,
Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000), cited by
Complainants. The Panel declines, however, to adopt that distinction for
purposes of analysis of the Policy’s requirements and notes that the Second
Circuit Court of Appeals has recently expressly rejected this distinction
because "the nature of the domain names is not susceptible to such a
uniform, monolithic characterization," in view of the "lightning
speed development" and "extraordinary plasticity" of both the
Internet and the domain name system. See Name.Space, Inc. v. Network Solutions Inc. 202
F.3d 573, 585 (2d Cir. 2000). With respect to free speech, the Second
Circuit held in Name.Space that "Domain names ... per se are
neither automatically entitled to nor excluded from the protections of the
First Amendment, and the appropriate inquiry is one that fully addresses
particular circumstances presented with respect to each domain name."
As noted above, the
disputed domain name was redirected to a criticism site, but the site was
clearly identified as criticizing the planned Crestwood facility and users
would not be confused into believing that the site was associated with the
Complainant.
This Panel also
agrees with Britannia Building Society v. Britannia Fraud Prevention,
<britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001):
Complainant
has failed to prove that Respondent lacks a legitimate interest in the Domain
Name. In particular, it 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".
The Panel concludes that Respondent
is making a legitimate noncommercial use of the domain name because Respondent
maintains its website as a site critical of the policies of the management of
The Respondent’s actions cannot be
characterized as consistent with an "intent for
commercial gain to misleadingly divert consumers." That phrase refers to
the kind of confusion that arises in a trademark infringement context, when a
competitor diverts consumers to its site and, potentially, diverts sales. See Universal City Studios, Inc. v.
G.A.B. Enterprises, Case
No. D2000-0416 (WIPO June 29,
2000); Houghton Mifflin Company v.
The Weathermen, Inc., Case
No. D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion "for
commercial gain" and thus no loss of legitimacy. That some internet users
might initially be confused into thinking that, because of the use of the mark
in the Domain Name, <britanniabuildingsociety.org> is Complainant’s
official web site is of no moment. First, any such confusion would immediately
be dispelled by Respondent’s prominent disclaimer and the link that is
displayed to Complainant’s official site. Second, and in any event, such a low
level of confusion is a price worth paying to preserve the free exchange of
ideas via the internet. A user who misleadingly stumbles upon Respondent’s site
while looking for Complainant’s official site need only click the
"back" button to return to her search, or the link helpfully provided
by Respondent.
In the present
case, the Respondent’s criticism site clearly states that the views are the
Respondent’s own personal views, so a user would not be confused into thinking
that he or she had accessed information provided by the Complainant. The Complainant is promoting the Crestwood
facility and its name is associated with information regarding the
facility. Thus, the Respondent has,
prima facie, a legitimate interest in using a variation of the Complainant’s
name in order to publicize her own views concerning the Crestwood facility.
But the cited case National Alliance for the
Mentally Ill Contra Costa v. Fouts, FA 204074 (Nat. Arb. Forum Nov. 28,
2003)—the text presented above in italics—must be distinguished from the
present case, because in that case the disputed domain name had been used to
point to a website containing actual criticism, which is not the case here.
Indeed, there is consensus amongst WIPO
panelists that, if a website is not in fact being used for criticism, then free
speech considerations do not apply and the domain name must be
transferred. See, for example Wal-Mart
Stores, Inc. v. Walsucks & Walmarket Puerto Rico, D2000-0477 (WIPO
July 20, 2000).
Such is the case here. The Respondent is not using the contested
domain name to point to a website containing criticism: the domain name points
to a website containing commercial links.
The Respondent does allege that he has the
intention of building a criticism site, but he provides no evidence to support
this allegation (for example, mock-ups of the website). The Respondent alleges that he has not had sufficient
time to build his website. Yet he
registered the disputed domain name more than three months before the
Complainant initiated proceedings under the Policy. And the Respondent has access to tools that
would allow him easily to create a simple website, since his Response was sent
as an HTML file. With today’s software
tools, anybody who can use a text editor can create a simple website literally within
a few hours. The Respondent had ample
time to create a website containing actual criticism, but did not do so.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that respondent might be capable of doing otherwise).
As a consequence, the Panel finds the
Respondent does not have a legitimate interest in the contested domain names.
Since the Respondent has not provided any evidence that he has made demonstrable preparations to use the disputed domain names to point to actual criticism of the Complainant, the Panel accepts, on the basis of the preponderance of the evidence submitted, the Complainant’s allegation that the Respondent registered the disputed domain names in an apparent attempt to extract a settlement of pending litigation or, as the Complainant bluntly states:
Respondent’s failure to develop websites associated with the Offending Domains and his registration of several similar domains shows he is more interested in using the domains to make threats in litigation than engage in any critical speech.
The Complainant appropriately cites K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (stating that registration of domain names for extortionate purposes “typifies bad faith registration and use as defined in Policy 4(b)(i)”); and Schlund + Partner AG & GMX GmbH v. Global Tlds, Inc., FA 174667 (Nat. Arb. Forum, Sept. 10, 2003) (finding bad faith where Respondent’s apparent purpose in registering the domain was “to extort valuable consideration from mark holders”).
Thus the Panel
holds that the Respondent has registered and is using the disputed domain names
in bad faith in the sense of the Policy.
DECISION
Having examined all three elements required under the ICANN Policy, and
concluded that the Complainant failed to prove the first element, although it
did prove the other two elements, the Panel concludes that relief shall be DENIED.
Richard Hill, Panelist
Dated: October 16, 2007
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