National Arbitration Forum
DECISION
Domtar Inc. v. Joel
Theriault
Claim Number: FA0710001089426
PARTIES
Complainant is Domtar Inc.
(“Complainant”), represented by Wendy Riel, of Fraser Milner Casgrain
LLP, 99 Bank Street, Suite
1420, Ottawa, ON
K1P 1H4. Respondent is Joel Theriault (“Respondent”), represented by David Fewer
of The Canadian Internet Policy
and Public Interest Clinic 506-57 Louis Pasteur, Ottawa, ON K1N 6N5.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <domtar.org>,
which was registered with Melbourne IT, Ltd.
dba Internet Names Worldwide (“Melbourne IT”) on November 27,
2005.
PANEL
The undersigned, David H Tatham, Dennis A Foster and Clive Elliott
certify that they have acted independently and impartially and to the best of
their knowledge have no known conflict in serving as Panelists in this
proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on October 5, 2007;
the Forum received a hard copy of the Complaint on October 10, 2007.
On October 9, 2007, Melbourne IT confirmed by e-mail to the Forum
that the <domtar.org> domain name (“the disputed
domain name”) was registered with it and
that the Respondent is the current registrant of the name. Melbourne IT has
verified that Respondent is bound by its 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 October 16, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of November 5, 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@domtar.org
by e-mail.
A timely Response was received and determined to be complete on November 26, 2007.
A timely Additional Response from Complainant was received and
determined to be complete on December 3, 2007.
On December 5, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the Forum
appointed Messrs David H Tatham, Dennis A Foster and Clive Elliott as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant was originally incorporated, in Canada, as Dominion Tar & Chemical
Company, Limited but it changed its name to Domtar, Inc.
in 1965. It claims to be Canada’s largest paper company, operating more
than 80 paper distribution facilities located across North
America and employing 14,000 people.
It operates 10 sawmills and 1 wood re-manufacturing facility. Complainant contends that it is internationally
renowned for its paper, wood and distribution services throughout North America and the rest of the world under the
trademark DOMTAR and the trade name Domtar, Inc.
Its sales have exceeded 3,000 million dollars for each of the last 4 years.
Complainant owns and uses the domain name <domtar.com>.
It also owns a number of trademark registrations and applications in Canada, USA and other countries for DOMTAR
either alone, as part of a logo, or in conjunction with other wording and/or
figurative elements. In particular,
the trademark DOMTAR in plain block capital letters was registered with the
USPTO under No. 877808, on September
30, 1969, claiming July 19, 1963 as its date of first use, in Class 16 for
“Boxboard, corrugated paper medium. Liner board, fibre board.
Wrapping paper and coated papers; newsprint; blank or partially printed labels. Paper toweling, paper tape, laminated paper
materials, kraft paper, writing paper, printing paper, book paper, bond
paper. Ledger and document paper,
cover paper, stationery bristols, Bristol board, blotting paper, tag paper,
cardboard, paper board, mimeograph paper,
litho and off-set paper, chart and certificate paper, envelope paper,
wax and greaseproof paper, moisture resistant paper, and glassline”. Complainant contends that the disputed domain name
is identical to all of its trademarks.
Complainant further contends that the disputed domain name re-directs
visitors to an active website at <www.whitemoose.ca> which contains a host of articles,
photographs and video clips regarding forestry and herbicides.
Complainant contends that it has established a pattern of usage of the
name DOMTAR which pre-dates Respondent’s registration of the disputed domain
name by some 40 years and Respondent should have known of this, given the
widespread recognition of Complainant’s trademark in connection with pulp,
paper and wood manufacturing.
Complainant cited a number of UDRP Decisions in support of its contentions,
firstly, that this is a case of ‘initial
interest confusion’ and, secondly, that Respondent has intentionally deceived
the public into believing that the website is endorsed by Complainant and that
Respondent has no legitimate rights or interests in the disputed domain name. Complainant asserts that the website is a
complaint site and that the disclaimer on the website does not bolster its
legitimacy. Furthermore, the right
to express one’s views is not tantamount to identifying oneself by another’s
name when expressing such views.
Complainant further contends that the disputed domain name has been
registered and is being used in bad faith.
This occurs when, as here, the domain name comprises the trademark of another
entity and is registered with a view to divert web traffic or to cause damage
and disruption to the owner of the trademark and to tarnish that owner’s
reputation. As proof thereof
Complainant points out that the website to which visitors to the disputed
domain name are re-directed contains links to correspondence between Respondent
and government officials which criticize certain alleged forest management
practices of Complainant.
Finally, Complainant contends that Respondent has unnecessarily used
Complainant’s trademark DOMTAR in the disputed domain name in order to operate
its website.
B. Respondent
Identical or Confusingly
similar
In a lengthy Response, replete with
references to UDRP Decisions, Respondent firstly takes issue with Complainant’s
claims regarding the distinctiveness of its trademark DOMTAR, and alleges that Complainant
has in no way substantiated the claim that the mark is a strong one.
Respondent contends that its
website is a non-commercial space that provides a wealth of factually-based
information and a forum for public commentary. It acts as a meeting place, where informed
citizens with environmental interests can participate in the dialogue prompted
by the posting of government reports, recent news stories, public statements,
scholarly articles and other bits of interesting information regarding the use
of herbicides in Northern Ontario. The site is
not a gripe site: it is non-inflammatory
and in no way does it single out the Complainant in its discussions.
Furthermore, it advances critical
thinking and debate in the environmental context, functions which are at the
core of free speech values, and so are protected by the First Amendment (in the
US) and s. 2(b) of the Charter of Rights and Freedoms (in Canada). As such,
the Respondent, a dual citizen, requests heightened scrutiny of the Complainant’s
attempt to transfer the Domain Name.
Respondent contends that there is a distinction between UDRP decisions
involving US parties where a more robust view of “free speech” rights could be
taken, and those where the parties were citizens of elsewhere.
Respondent denies that the disputed domain name is confusingly similar to
the Complainant’s DOMTAR trade-mark and alleges that there is no
evidence of actual confusion. The disputed
domain name was registered over 2 years ago, and Complainant has had ample time
to collect such evidence.
There is no likelihood of confusion
because no one would be inclined to believe that they would come across the
commercial site operated by Complainant by typing the disputed domain name into
the browser. In fact, the opposite
conclusion is appropriate, because typing it in will bring the visitor to a
non-profit site with information about the company that would not be posted on
Complainant’s own website.
Respondent’s site is a non-commercial
site, hence the domain name suffix .org. The .org TLD has traditionally been associated with
non-profit organizations, not large corporations, and this is why the
Respondent chose the .org TLD.
Respondent is not using the website
for commercial purposes and has not appropriated the .com
domain. Rather, the suffix .org combined with the immediate disclaimer visible
when the disputed domain name is accessed from a search engine and when it is
accessed directly (by typing <domtar.org> into the browser) both evidence that
the Respondent has made efforts to ensure there is no likelihood of confusion.
Respondent argues that the disputed
domain name indicates on its face that it is not affiliated with Complainant.
The disputed domain name does not
come up in the first pages of results when searching for “domtar” through Yahoo.com or Google.ca.
For reasons unknown to the
Respondent, the search results for <domtar.org> have been recently modified by Google.ca. In
the weeks, months, and years prior to the filing of the Complaint, any
possibility of confusion was dispelled when the search result for <domtar.org>
would indicate the bold text in the center of the middle column on the index
page, which read: “Note: This site is not associated with the Domtar corporation….” However the most recent search
indicates that Google has now changed the text appearing with the search result
to “Domtar Inc. - V - Joel Theriault
- October 5, 2007 Commencement re www.domtar.org. The
Respondent’s website is a complaint site that includes a video and ….” Respondent contends that there is absolutely no
possibility that someone might come across <domtar.org> in the Google search engine and believe
it was associated with Complainant, because the disputed domain name does not
appear. It is simply as though the domain name does
not exist in Google’s search engine. The cause of this change in the last two
weeks is unknown.
The large font disclaimer referred
to above that is visible in the center of the index page of the website to
which the disputed domain name re-directs reads as follows: “NOTE: This site is not associated with the Domtar
corporation.” As this is the first text in the body of the
webpage, any possibility of confusion which may exist upon typing in the
disputed domain name when looking for the commercial entity called Domtar Inc. is immediately dispelled.
Nowhere on the Respondent’s site
has the Complainant’s logo ever been posted, nor has there ever been any use of
e-mail with the @domtar.org
extension.
Respondent concludes its arguments
on the absence of any similarity or confusion by
highlighting
anomalies in some of the Decisions relied upon by Complainant.
Rights or Legitimate Interest
Respondent contends that, before
any notice to the Respondent of the dispute, its use of the disputed domain name
was, and is, in connection with a bona fide offering of goods or services. Respondent is using it as a link to a bona fide
public service – one that facilitates public debate and discussion, which is
critical in a democratic society.
Respondent whole-heartedly agrees
with Complainant’s statement that the website “comprises a host of articles,
photographs and video clips regarding forestry and herbicides” for the website
in question serves as a repository of information rather than targeted
criticism. Indeed, the mission
statement of the website at <www.whitemoose.ca>
to which the disputed domain name re-directs is: “The
goal is to bring about responsible fishing, hunting, forestry, and natural resource use by
presenting information and debating the issues.”
The Respondent’s website is not a
“complaint site”, which Complainant appears to acknowledge. It acts as a directory of information.
Linking to sites that deal with
related subject matter is a bona fide use, and that is exactly what the
Respondent’s website does. Respondent
is merely trying to give information that has been collected and linked
together, and as such, should be protected by the safe harbour of paragraph 4(c)(i) of the Policy. There is no confusion about affiliation,
endorsement, or sponsorship in regards to the information that is collected and
posted, and Respondent has gone out of his way to make this clear through the
prominent use of disclaimers.
Respondent is making a legitimate,
non-commercial, or fair use of the disputed domain name, without intent for
commercial gain, to misleadingly divert consumers, or to tarnish Complainant’s trademark. There is no deception, intent to deceive, or
“unseemly conduct” in the facts of this matter.
The primary purpose of the Respondent’s site is to provide information, and
prudent users should and would recognize this. The
Respondent also has no conscious concealment of any kind of affiliation, nor
does he use meta-tags aimed at indicating an affiliation with Complainant.
The primary concern of UDRP
proceedings is cybersquatting, and that is not what Respondent is doing in the
present case. His use is legitimate
and fair: providing information to the
public. In no way does the
Respondent unfairly interfere with the intellectual property rights of the
Complainant.
Non-commercial speech is protected
in UDRP proceedings. Nothing is for
sale on the Respondent’s site and, apart from a banner ad from <www.google.com> which appears on the site in some sections, the balance of the material is non-commercial. The banner
ads were inserted into the website with a goal of easing Respondent’s financial
burden in creating a safe environment to discuss and debate environmental
issues. The banner ads have not covered even 5% of Respondent’s
costs to host the materials on the site.
Respondent is not (as the
Complainant claims) using the Complainant’s trademark to divert traffic to the
Respondent’s website, nor “deliberately creating confusion” for Internet users
attempting to reach the Complainant’s website. The Respondent expects visitors to come to
the website intentionally. There is
also no potential to mislead once they arrive at the site, as users will know
from the disclaimer immediately that they are at a site not affiliated with
Complainant.
The contact email address of
<joel@whitemoose.ca>
does not have the potential to solicit or divert customers and it is clear that
Respondent’s email address would have nothing to do with Complainant. No potential consumers have contacted Respondent,
believing that they were contacting Complainant.
On the other hand, typing “domtar +
herbicides” into a search engine will yield Respondent’s website as a top
result. This illustrates that the Respondent is
targeting people who might be seeking information about Complainant’s use of
herbicides, not consumers interested in buying its products. People looking for a site like the Respondent’s
site will find it, but people looking for Complainant’s site are unlikely to
stumble upon the disputed domain name.
Respondent further contends that he
has no intent to and does not misleadingly divert consumers for commercial gain
or to tarnish the DOMTAR trade-mark.
Fair use consumer commentary does not equal tarnishment, and this has been
established again and again in domain name decisions. This is even truer in the present case, as
the Respondent’s site does not criticize the Complainant so much as it provides
factually-accurate information about some of the Complainant’s environmental
practices.
Respondent has a right and
legitimate interest in the disputed domain name.
Complainant has not met its burden, under the heightened scrutiny required by
the Respondent’s freedom of expression interests or otherwise, to substantiate
its allegation that the Respondent lacks such a right or interest. At the
heart of Complainant’s argument are concerns of commercial libel but these
concerns are better addressed in a venue other than the UDRP.
Bad Faith
There is no evidence that the
Respondent has registered or has acquired the disputed domain name primarily
for the purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant.
Respondent has not registered the
disputed domain name in order to prevent Complainant from reflecting its mark
in a corresponding domain name, and has not registered multiple domain names. Respondent’s use of the .org
Domain Name has not prevented the Complainant from making its commercial
presence known on the Internet through its domain name <domtar.com>.
Respondent has not registered the
disputed domain name primarily for the purpose of disrupting the business of
the Complainant. It has been
registered for approximately 2 years, in good faith, and without the intention
of selling it. Its primary focus is
on herbicides used by the forestry industry.
There are no associated Domtar
domain names registered to the Respondent, such as <www.domtarsucks.com> or
<www.boycottdomtar.com>,
and there is no indication that there was ever any threat to Complainant
that such domain names would be registered unless payment of extortion fees
were paid. Respondent has never
attempted to interfere with or disrupt the business of the Complainant. He has not usurped the .com
domain name and has never passed himself off as someone having anything to do
with Complainant.
Respondent is not a competitor of
Domtar Inc. which, Respondent
alleges is required by paragraph 4(b)(iii)of the
Policy. Respondent is not in the
business of forestry, and is not aimed at disrupting that industry. Even if
profit is ancillary to determining if Respondent is a “competitor” of Complainant,
it is clear that Respondent is not one of its “opponents”.
Respondent has never intentionally
attempted to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s website or of
a product or service on the Respondent’s website.
Respondent’s use of a disclaimer
indicates that it is in no way attempting to actually interfere with
Complainant’s business. Although Complainant alleges otherwise in the
Complaint, the Respondent has actually gone out of his way to dispel confusion
with the disclaimer on the website at the disputed domain name. Accordingly, Respondent’s motivation cannot be
equated with the motivation of attempting to deceive visitors and turn their
positive views into negative ones.
Respondent’s goal is not to take
business away from Complainant. He provides
information that is fact-based and the opinions of various sources, not just
complaints. Respondent is not an
“aggressive opponent” of Complainant and there is no “misleading purpose.”
Respondent does not manipulate
traffic and cannot divert actual customers.
It would gain nothing, commercially or otherwise, from such confusion. Respondent’s site has different aims and works in
a different area of service.
Respondent does not sell t-shirts,
he does not tarnish Complainant’s name by calling them Domcrap, etc. The Respondent is entirely aimed at providing
balanced information to the public from the public. The use of herbicides is presented as an
issue for debate. Other topics include municipal pesticide
bylaws, the protection of white moose, global warming, safeguarding water
supplies, hunting and fishing regulations, genetically modified foods, renewable
energy, protection of endangered species, and aboriginal rights (to mention a
few). Even among the forestry sections of the
website, analysis and discussion papers make reference to forestry companies
other than Complainant.
While bad faith can sometimes be
assumed from striking similarity, in this case, the site is not similar at all. In actuality, Respondent does not want to be
confused with Complainant, but having the disputed domain name show up when
someone types “Domtar + herbicides + information,” etc.
is desirable, and Respondent does not dispute this.
Respondent is merely exercising his
freedom to disseminate commentary. Free
speech negates bad faith and, as Complainant provides no other clear indicators
of bad faith, Respondent’s proven legitimate interest negates any blind
assertions of such. Complainant is
merely suppressing commentary, while claiming bad faith registration and use
(though neither has been evidenced).
The Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) case changed the line of
thinking on the Internet being a vehicle for free speech—while prior cases had
concluded that modifiers were important (i.e. trademarksucks.com
as opposed to trademark.com) to
signal commentary, this case loosened the grips and broadened the scope of
permissible domain names.
Respondent’s choice of <domtar.org>,
as opposed to <domtarsucks.org>,
only evidences that the site is intended to provide balanced information,
rather than act as a storehouse for gripes.
The Respondent does not traffic
domain names, as he is not a cybersquatter. There is no history of industry related
domain names registered by Respondent.
He is only using the disputed domain name to provide concerned-citizen commentary
and facilitate discussion, and Complainant is trying to stifle that in direct
conflict with Respondent’s First Amendment and s.
2(b) rights.
All other liabilities (for
infringement, defamation, etc.) that
Complainant alleges are separate and outside the authority of this forum. The Panel is limited to transfer or cancellation,
and cannot decide infringement, dilution or other common law causes of action. Respondent asserts this in defense of any other
claims Complainant has made in the Complaint.
C.
Additional Submission.
Complainant filed an Additional
Submission contending as follows.
Complainant disagrees with Respondent’s contention that the DOMTAR
trademark is not a strong mark, pointing out its submissions in the Complaint
that the mark had been used in Canada,
the USA
and internationally for over 40 years.
Complainant is Canada’s
largest paper company and one of North America’s
largest integrated makers and marketers of freesheet paper. Furthermore, Complainant has obtained 17
registrations in the US and
17 in Canada
of trademarks containing or comprising the word DOMTAR.
Complainant then quoted at length from several UDRP Decisions to refute
various submissions by Respondent in its Response, concluding that the issue in
them is whether the disputed domain names themselves signify critical or
commentary purposes as opposed to imitation of the trademark. A domain name for the purpose of criticism or
commentary must, on its face, indicate that any site to which it leads is not
that of the trademark holder but is instead a site for the criticism of or
commentary on the trademark holder.
Otherwise there is inpermissible initial interest confusion. In the present case, Respondent’s use of the
disputed domain name will cause initial interest confusion by “capturing initial consumer attention, even
though no sale [or other economic benefit] is finally completed [or realized]
as a result of the confusion.”
Complainant concludes by submitting that the disputed domain name does not on
its face indicate that any site to which it leads is not that of Complainant
and causes initial interest confusion.
Respondent refers to “the prudent user” but the standard test, used in
numerous Decisions is that for “the average consumer”.
Complainant submits that Respondent has deliberately chosen a domain
name which comprises only its own trademark DOMTAR with the aim of attracting
visitors who are seeking a website connected to Complainant. The inclusion of a disclaimer, after the user has
arrived at the site, does not remedy the issue of confusion.
Respondent refers to the decision in Compagnie de Saint Gobain v.
Com-Union Corp. but in
Complainant’s submission this case stands for the proposition that the issue at
hand is not freedom of speech and expression but the choice of the domain name
used to exercise these rights. In
that case, it was held that the domain name in question was identical to the
Complainant’s trademark, that the Respondent had no rights or legitimate
interest in the domain name and that it had been registered in bad faith.
Complainant concludes by submitting
that Respondent could have chosen a domain name that did not consist solely of
Complainant’s trademark, thereby eliminating, or at the very least reducing,
the likelihood of confusion.
DISCUSSION AND FINDINGS
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) 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;
(2) that the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is
being used in bad faith.
Identical and/or Confusingly
Similar [paragraph 4(a)(i)]
The disputed domain name is <domtar.org>
and Respondent alleges that there is no actual or likelihood of confusion
between it and any of Complainant’s trademarks.
Complainant owns a registration of the word trade
mark DOMTAR in the US and
has a pending application for it in Canada.
It also owns a number of registrations and applications for trademarks which
commence with or contain the word DOMTAR.
Firstly, the Panel notes that there is no
requirement for actual confusion in the Policy.
As set out above, a complainant need only prove that he has rights in a
trademark or service mark that is identical or confusingly similar to the
domain name that is the subject of a dispute.
Therefore, Respondent’s allegations regarding the lack of actual confusion are not
directly relevant.
Certainly the overwhelmingly prevailing view
in the huge majority of Decision is that, when comparing a domain name with a
trademark, no account need be taken of the ‘www’ prefix or any suffix such as ‘.com’, ‘.org’,
‘.net’, ‘.ca’,
‘.us’ etc.
For example, in Isleworth
Land Co. v.
Lost in Space, SA, FA 117330
(Nat. Arb. Forum Sept. 27, 2002) it was said that “[I]t is a well established principle that
generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”. It was also concluded in Trip Network Inc.
v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) that the addition of a gTLD, whether it be “.com,” “.net,”
“.biz,” or “.org,”
is irrelevant to an analysis of paragraph 4(a)(i) of the Policy.
The Response referred to the Decision in Covance, Inc.
and Covance Laboratories Ltd. v. The Covance Campaign D2004-0206 (WIPO Apr. 30,
2004) as evidence that “confusion falls
somewhere along a spectrum”, but in fact in that case the domain name in
question was not identical to the trademark – as it is in the present case –
and the remarks concerning a spectrum of confusion were made in a discussion on
‘rights or legitimate interest’ and the Panel actually found that the trademark
COVANCE and the domain name <covancecampaign.com>
were confusingly similar.
Consequently the
Panel has found that Respondent’s disclaimer is in itself not sufficient to
dispel the possibility of confusion, and concludes that because Complainant has established, to its satisfaction, that he
possesses substantial rights in the name and trademark DOMTAR, applying the
above rule it has no hesitation in finding that this name is identical to the
disputed domain name <domtar.org>.
As a postscript, the Panel notes another
incorrect description of its site by Respondent, and so another reason to
mistrust the facts as presented by Respondent.
In the Response, it was stated that the mission statement on the website is:
“The goal is to bring about responsible fishing, hunting, forestry, and natural
resource use by presenting information and debating the issues.” However in fact, as the copy presented by
Complainant clearly shows, the mission statement reads in full: “To make the
world a better place …”.
Rights or Legitimate Interests
[paragraph 4(a)(ii)]
It is well established that, once a complainant
has made out a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it does have rights or legitimate
interests pursuant to paragraph 4(a)(ii) of the Policy. The Panel finds that, in this case, Complainant
has indeed made out a prima facie case.
The first point the
Panel wishes to make is that although the disputed domain name is <domtar.org>,
the arguments of both parties are concerned with the contents of an entirely
different site at <whitemoose.ca>. This is because by clicking on the former name, a
visitor is instantly transferred to the site at the latter name.
There is a marked
difference of opinion between the parties to this dispute over the contents of
this website. To Complainant it is
an attack upon itself, its production methods, and its commercial practices. To Respondent however it is a site containing
factual information and opinions concerning the use of herbicides in Northern Ontario.
The trouble with this latter point of view is that the information is almost
entirely one-sided. It is clear that
Respondent is convinced that the use of such herbicides is wrong and that
companies such as Complainant are villains for their use of them. It is true that the site contains on its opening
page a disclaimer regarding its non-association with Complainant (see above)
but immediately following this is a video which is described as being a video
of the harvesting of “the Pineland Forest management under Domtar control”. This is written in the same size and typeface as
the disclaimer, and the video – which lasts for 3 minutes and 19 seconds –
consists of an aerial film showing swathes of forest where the foliage is dying
or dead, as the result of herbicide spraying by Complainant. It is true that other companies’ names are
mentioned on the opening page e.g. Tembec and Monsanto, but a click on them reveals
only factual information about the products they produce.
To argue, as Respondent does, that the site is not a protest site (about the
use of herbicides) or that it does not complain about Complainant for their use
of the same is clearly mistaken.
Consequently the
Panel has concluded that the website to which the disputed domain name
transfers is in fact primarily a protest, or a criticism, site and has
considered the matter accordingly.
All the members of
this Panel are respectful of an individual’s right to the freedom of speech,
but they have asked themselves two questions: why did Respondent choose the name
‘Domtar’ for his domain name if the site has, as he asserts, no connection with
the company of that name, and why does he concentrate on Complainant for his
disparaging remarks concerning the use of herbicides in Northern Ontario?
In reply, Respondent
pleads his right to freedom of speech.
This is a topic which, as is well known, divides panelists who have to decide
cases under the UDRP and, as the Overview of WIPO Panel Views on Selected UDRP
Questions, published by WIPO in 2005 puts it, there is a division of opinion
among Panelists over whether a Respondent is at liberty to use a domain name
that is similar to a trademark for a genuine non-commercial free speech website.
The whole subject,
and the existing case law, was extensively reviewed by the experienced panelist
David Bernstein in Howard Jarvis
Taxpayers Association v. Paul
McCauley D2004-0014 (WIPO Apr. 22, 2004).
In this he concluded that “although there
has been a split even in the United States, in this Panel’s view, the weight of
authority suggests that a consensus is emerging that trademark .TLD names, when used for U.S.-based criticism sites, can constitute a legitimate
interest, especially if there are no other indicia of bad faith. Given that this appears to be the emerging view in
federal courts as well, aligning the decisions under the Policy with decisions
emerging from the courts will prevent forum shopping.”
It is to be noted
that Respondent claims to have dual US and Canadian nationality, and also that
the website at the disputed domain name is concerned with the position in Northern Ontario.
Thus, the site is not a “U.S.-based criticism site” and so, strictly speaking,
David Bernstein’s above conclusion should not apply.
However no sooner
had the Howard Jarvis Decision
appeared than a contrary view was expressed in the Covance case, which is referred to above – “There is in this Panel’s opinion merit in the view that a domain name
which is identical to the Complainant’s trademark should necessarily not
qualify as a ‘legitimate noncommercial or fair use’ under paragraph 4(c)(iii) regardless of website content.
This because there is an immediate potential for false
association with the trade mark owner and a degree of initial confusion which
is at the top end of the spectrum.”
Respondent
originally, in 2004, created a legitimate website under the neutral name
‘whitemoose’ but a year later he inexplicably chose to register the disputed
domain name and to equip it with a link to the whitemoose site. He has provided no explanation as to why he did
this, or why he chose Complainant’s name for the title of this second site. It is difficult to think of a legitimate interest
reason for doing this.
The Panel has
therefore concluded that Respondent must have had Complainant in mind if not directly
in his sights when creating the website to which visitors accessing the
disputed domain name are transferred.
There are a number of Decisions that concur with our findings, for example in Baker
& Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) it was found that because the
respondent’s <bakeranddaniels.com>
domain name merely incorporates the complainant’s trademark, without more, it
is not protected by the First Amendment. Also, in Monty & Pat
Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) the
Panel said that it did “not dispute
Respondent’s right to establish and maintain a website critical of
Complainant . . .
However, the panel does not consider that this gives Respondent the right to
identify itself as Complainant.”,
whilst in E. & J. Gallo Winery v.
Hanna Law Firm, D2000-0615 (WIPO Aug.
3, 2000) it was found that establishing a legitimate free speech/complaint site
does not give rights to use a famous mark in its entirety.
In Compagnie Generale des Matieres Nucleaires v.
Greenpeace International, D2001-0376 (WIPO May 14,
2001) it was held that the 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”.
Registration and Use in Bad Faith
[paragraph 4(a)(iii)]
In the opinion of the Panel, Respondent’s use of a disclaimer fails to mitigate
a finding of bad faith. As discussed
above, the disclaimer is not particularly prominent and it is negated by the
reference to Complainant in the immediately following entry on the site. In Ciccone v.
Parisi, D2000-0847 (WIPO Oct. 12, 2000) it was said that “Respondent’s
use of a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be ignored or
misunderstood by Internet users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent’s actions. Such
confusion is a basis for finding a violation of Complainant’s rights.”. Also, in Thomas & Betts International, Inc. v.
Power Cabling Corporation, AF-0274 (eResolution Oct. 23, 2000) bad faith
was found because of initial interest confusion despite a disclaimer and a link
to the complainant’s website on the respondent’s website.
Not all the members of the Panel
agree with the contention that initial interest confusion is necessarily evidence
of bad faith. However in this particular
instance it would be difficult to find otherwise.
Respondent’s
actual or constructive knowledge of Complainant’s trademark DOMTAR at the time
of registration of the domain names is further evidence of bad faith pursuant to
paragraph 4(b) of the Policy. In Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002 it was found that because the link
between the complainant’s mark and the content advertised on the respondent’s
website was obvious, the respondent “must
have known about the Complainant’s mark when it registered the subject domain
name”. Also,
in Digi International v.
DDI Systems, FA 124506 (Nat.
Arb. Forum Oct.
24, 2002) it was said that “[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.” Both of these Decisions very much chime with
the thinking of the Panel in the present case.
In Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) it was found that the respondent’s expected
use of the domain name <redbull.org>
would lead people to believe that the domain name was connected with the
complainant, and thus is equivalent to bad faith use.
The
Panel also believes that Respondent’s use of the disputed domain name, which is identical to Complainant’s trademark, to
confuse and redirect Internet users to Respondent’s website could disrupt
Complainant’s business and is therefore evidence of bad faith pursuant to
paragraph 4(b)(iii) of the Policy. In North West. Airlines, Inc.
v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) it was said that “Respondent
registered the domain name for the purpose of bringing Internet users desiring
to learn more about Complainant to Respondent's site for the intended purpose
of publishing contrary and critical views of Complainant thus disrupting the
business of Complainant. Registering
a domain name identical with the mark of Complainant, for this purpose, is bad
faith.”. Also, in TM Acquisition Corp.
v. S.E.A.
Domains, FA 156800 (Nat. Arb. Forum June
12, 2003) it was found that the respondent's use of the complainant's mark to
redirect Internet users to a website dedicated to criticizing the complainant
was evidence that the respondent’s domain names were registered and used in bad
faith.
Respondent is using the disputed
domain name, which
is identical to Complainant’s mark,
to operate a complaint website
that features Complainant and its mark.
The Panel considers that this is likely to lead to confusion among Internet users
as to Complainant’s sponsorship of or affiliation with the resulting website. In State Fair of Texas
v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) bad faith was
found where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill
and attract Internet users to its website; while in Diners Club Inernational, Ltd. v. Infotechnics
Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) it was said that “Respondent’s
registration and use of a domain name nearly identical to Complainant’s mark to
criticize Complainant’s business practices is evidence of registration and use
of the <diners-club.net>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
However the Panel would like to make clear that its finding is dependant on the
actual facts of this case, and in different circumstances its decision might
have been different.
Accordingly, it is Ordered that the <domtar.org>
domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham
Chairman
Dennis
A Foster and Clive Elliott
Dated: January 4, 2008
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