Satchidananada Ashram - Integral Yoga
Institute v. Domain Administrator
Claim Number: FA0209000125228
PARTIES
Complainant
is Satchidananada Ashram - Integral Yoga
Institute (IYI), Buckingham, VA, USA (“Complainant”) represented by David S. Korzenik, of Miller and Korzenik, LLP. Respondent is Domain Administrator Yoga, Hong Kong, CHINA (“Respondent”)
represented by Gregory J. Marcot, of Kring & Chung, LLP.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <yogaville.com>,
<yogaville.net>, <integralyoga.com>,
<integralyoga.net>, <integralyoga.org>,
<integralyogasf.com>, and <integralyogaofnewyork.com>,
registered with Online NIC.
PANEL
The
undersigned 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.
Louis
E. Condon, Chair; David H. Bernstein and James A. Crary as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 16, 2002; the Forum received a hard copy of the
Complaint on September 16, 2002.
On
September 17, 2002, Online NIC confirmed by e-mail to the Forum that the domain
names <yogaville.com>,
<yogaville.net>, <integralyoga.com>,
<integralyoga.net>, <integralyoga.org>,
<integralyogasf.com>, and <integralyogaofnewyork.com> are
registered with Online NIC and that the Respondent is the current registrant of
the names. Online NIC has verified that
Respondent is bound by the Online NIC 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 24, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 14, 2002 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@yogaville.com, postmaster@yagoville.net,
postmaster@integralyoga.com,
ostmaster@integralyoga.org, postmaster@integralyogasf.com, and
postmaster@integralyogaofnewyork.com by e-mail.
A
timely Response was received and determined to be complete on October 23, 2002.
On November 20, 2002, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the Forum appointed Louis E. Condon,
Chair; David H. Bernstein and James A Crary as Panelists.
On November 21, 2002, the Complainant sought leave to
submit additional evidence – a letter from Respondent dated November 15, 1999
and a New York Post article dated September 13, 1999. On November 25, 2002, Respondent filed an
objection to the submission of these supplemental materials. Because these materials were untimely, (see
Nat. Arb. Forum Supplemental Rule 7), and because the additional materials are
three years old and thus should have been included with the Complaint, the
Panel declines to accept these materials.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
Satchidananda Ashram- Integral Yoga Institute (“the Institute”) is the owner of
a Federal Trademark (Registration No. 2,347,309) for the service mark YOGAVILLE
for instructional services in the field of yoga in the nature of classes,
retreats, lectures, workshops, and seminars. The Institute‘s US
registration for YOGAVILLE was filed on July 22, 1999 and registered on May 2,
2000. The Institute has been using the Yogaville mark since 1980.
The Institute is the
owner of a Federal Trademark (Registration No. 1,312,685) for the service mark
INTEGRAL YOGA for instructional services in the field of yoga in the nature of
classes, retreats, lectures, workshops, and seminars. The Institute’s US
registration for INTEGRAL YOGA was filed on October 17, 1983 and registered on
January 1, 1985.
The Institute is the owner of a Federal
Trademark (Registration No. 1,106,648) for the trademark INTEGRAL YOGA for
magazines, books, booklets, instructional and teaching material in the form of
books and booklets. The Institute’s US registration for INTEGRAL YOGA was filed
on August 25, 1977 and registered on November 21, 1978.
The Complainant alleges as follows:
On
information and belief, an individual by the name of Matthew Cheng has
(individually or via shell corporations or foreign nominees) retained the
Registrant to register the seven challenged domain names – all of which are
identical to Complainant’s two registered marks. Mr. Cheng, who is apparently angry with the Institute, has made
the multiple domain name registrations in order to get back at the Institute
and to mislead Internet users who are looking for information about the
Institute and its programs and schedules. Viewers who think that they are going
to petitioner’s site are diverted to a third-party site which disparages the
complainant.
In addition,
emblematic of his illegitimate purpose, Mr. Cheng has improperly and without
authorization obtained and used the list of the Institute’s subscribers’ e-mail
addresses. Without their consent, he sent e-mails to a part of the subscribers
that confused some of them as to the source of this e-mail.
Neither
Registrant nor Mr. Cheng conduct any business or not-for-profit organization
relating to yoga; and neither the Registrant nor Mr. Cheng do business of any
kind under trade names that are the same or even similar to the “Yogaville” or
“Integral Yoga” marks. Neither Registrant nor Mr. Cheng have any affiliation of
any kind with the Institute. Registrant’s registrations of the seven challenged
domain names was made solely to block them from being used by the Institute; to
disrupt Institute’s activities by diverting and misleading unsuspecting
internet users. Neither Registrant nor Mr. Cheng has any rights to, nor any
legitimate interest in, any of the marks or any of the challenged domain names.
The domain
names <yogaville.com>, <yogaville.net>, <integralyoga.com>,
<integralyoga.org> , and <integralyoga.net> consist
entirely of the Institute’s trademarks with the suffixes .com; .net, or .org,
added. They are identical -- and, therefore, confusingly similar -- to the
trademarks YOGAVILLE and INTEGRAL YOGA; and consumers using those domain names
and expecting to view the Institute’s web site will be and, indeed, have been
mistakenly finding themselves diverted to another web site which has no
connection with the Institute. The additional two domain names registered
consist of the Institute’s trademark INTEGRAL YOGA with the name of the
Institute’s various locations-- New York <integralyogaofnewyork.com>,
and San Francisco <integralyogasf.com>. Because virtually all of
the possible domain names using the Institute’s trademarks and locations have
now been blocked up by Respondent, Internet viewers are unable to find their
way to the Institute’s site.
Additionally,
the look of the third party web site to which the Internet viewers are diverted
has been arranged in such a way as to add to this confusion by having a web
page that can easily be mistaken for the Institute’s own Web site. The home
page features the name of the Institute—centered and in bold letters as a
heading, including the name of its founder, followed by a picture of him. A
first look at the Respondent’s site’s home page, so titled “ Yogaville/
Integral Yoga International” falsely suggests to the viewer that she/he is
looking at he Institute’s official web site. Of particular importance is the
fact that although the page further contains a paragraph explaining the real
purpose of the website --disparaging the Institute -- at no point does it
disclaim any affiliation with the Institute. Moreover, the page includes links
to the Institute’s official web site, thus wrongfully inducing the viewers to
believe that the Respondent’s site is somehow affiliated with the Institute.
The
Respondent’s use of these domain names is intended to infringe on the
Institute’s trademarks and interfere with Institute’s use of its own marks by
diverting the Internet users who intend to visit the Institute’s website to the
respondent’s site which automatically diverts all viewers to a third party
website <rickross.com>. This web
site, among other things, has pages devoted to disparaging the Institute. Given
the special focus of this proceeding, the Institute makes no statement here
concerning the offensive character of the Web site to which Respondent diverts
viewers. The Institute does object, however, to the use of its name and
trademarks to mislead Internet users and the public to a different site when
they mistakenly think that they are going to a site that is associated with the
Institute.
Respondent
has no legitimate business use or need for the use of the seven domain names
that are identical to the Institute’s marks; Registrant has registered the
seven disputed domain names in bad faith and the multiple registrations are
indicative of the Respondent’s abusive purpose; Registrant cannot by any
stretch claim that he sells goods or services in connection with the marks and,
if he did so, it would be a direct infringement of the Institute’s marks.
By blocking
and “warehousing” the seven (7) challenged domain names, the Respondent not
only prevents the Institute from reflecting their marks in corresponding domain
names, but also dilutes the value of the trademarks and thereby disrupts and
damages the Institute, its activities and its participants.
B.
Respondent
In response, Respondent has asserted that
the “Amended Complaint by THE INTEGRAL YOGA INSTITUTE, SATCHIDANANDA ASHRAM
(“Complainant” or “IYI”) is nothing
more than an attempt by Complainant to suppress Respondent’s ability to provide
the general public with factual but unfavorable information about Complainant,
including truthful commentary and criticism about Complainant’s activities on
Respondent’s website. As seen below,
Respondent’s use of the Domain Names <yogaville.com>, <yogaville.net>
(which contrary to Complainant’s allegations, is active), <integralyoga.com>,
<integralyoga.net>, <integralyoga.org>, <integralyogasf.com>
and <integralyogaofnewyork.com> (the “Domain Names”) is
legitimate, proper and in accordance with the provisions set forth in the
Uniform Domain Name Dispute Resolution Policy.” Additional excerpts from the Response follow (footnotes omitted):
This matter
has a long, sordid and disturbing background that is much larger than the
limited legal issues contained in this arbitration. However, a brief recitation of the facts is necessary to
understand why Complainant’s Amended Complaint must be denied.
This story
begins in or about 1997, when Respondent’s family member, Catherine Cheng followed
her childhood dream to go to law school in New York City to become a lawyer
with aspirations of defending the less advantaged people of the world. Catherine excelled in her studies and was
able to obtain several fellowships, which allowed her to travel to various
parts of the United States -- working on behalf of migrant farm workers and
other indigent people. While in law
school, she met another law school student, fell in love and confided to her
friends that they would one day marry and work together after graduation.
Catherine
originally began practicing yoga while in college because she found it to be an
effective method of reducing stress. As her law school career continued, and
the stresses began to mount, Catherine found comfort in developing her practice
of yoga. It was at that time that she
began attending various yoga classes offered by Complainant in a studio located
in New York City. In December of 1998, Catherine decided to participate in a
month-long yoga-training program offered by Complainant during her winter
recess from school as a vacation. She
applied, and received a "one month scholarship" for Living Yoga
Training (“LYT”) in Yogaville, Virginia – “the Ashram" and main campus of
Complainant, devoted to the spiritual teachings of Swami Satchidananda. She
left for Yogaville on December 18, 1998 and scheduled her return home on
January 14, 1999.
At first,
Catherine's Yogaville experience was uneventful. She spoke with her family
every few days by telephone and said that much of her training had nothing to
do with yoga, but rather consisted of cooking and cleaning the bathrooms. However, on or about January 5, 1999, things
seemed to change suddenly and dramatically. Catherine called home on that date
and told her family that there had been a serious accident and that a stove at
the Ashram's kitchen had exploded in her face. She said that she thought she
was going to die, but that she was brought to the hospital, was treated and was
now feeling better. She told her father
that she was coming home earlier and was going to register for classes since
the semester was beginning shortly. She
further stated that she was going on a trip to Washington D.C. with a friend at
the ashram who was also an attorney. She said that she would be gone for
several days and would call back when she returned.
On January
11, 1999, Catherine called her father and in a frantic voice, said that she was
never returning home. She then stated that she was going to remain at the
Ashram and marry a 51-year-old man called "Swami Atmananda", (a.k.a.
Larry Gross), who was the attorney who took her to Washington D.C. She also acknowledged that she only knew Mr.
Gross for about a week and was thirty years her senior. Then she abruptly hung
up the telephone. Thereafter, her
family, boyfriend and law school friends tried many times to contact her. Various people of the Yogaville
administration took their messages, but their calls were never returned. After
the Respondent retained Rick Ross, a Cult Intervention Specialist, her family
was able to see Catherine twice in the past few years. Each visit was under the strict supervision
of Complainant, its lawyers and Larry Gross.
Concerned for
the safety and well being of Catherine, Respondent began investigating
Complainant and its representatives, using the Internet to research and
exchange information with others who had similar experiences with
Complainant. Respondent began compiling
this information and secured the Domain Names at issue herein as a means to
inform the general public about Catherine’s story and to provide an open forum
for others to share their experiences they had with Complainant. Since Respondent began the web site,
however, the Cheng family began receiving harassing phone calls from Mr. Gross
and others associated with Complainant on a daily basis threatening legal
action that would be taken by their "New York lawyers" against
Respondent’s entire family. They were
told that this would result in their family being made penniless and homeless,
facing "criminal prosecution and/or a substantial civil suit" that
would ruin their lives.
To date,
Respondent maintains the web site in the same manner as when it was originated,
as an open forum to share information with the general public relating to
Complainant. Respondent’s website
contains factual information that Complainant frankly wants to keep
secret. For example, Complainant has
been involved with several sexual scandals over the years that have brought
into question the legitimacy of their organization. In an effort to prevent
Respondent from exposing this factual, yet unfavorable information, Complainant
commenced the instant action. However,
as seen below, Respondent’s use of the Domain Names are valid, legitimate and
permissible under the Policy. Accordingly,
Complainant’s Amended Complaint must be denied. . . .
The question
of whether exclusive use of a designated name of a concept in public domain can
be granted to an individual, organization or entity through registration of a
trademark with the U.S. Patent and Trademark Office has previously been
analyzed under the Policy. In Vishwa
Nirmala Dharma a/k/a Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD
Montford, D2001-0467 (WIPO, Jun. 2001), a three-member panel ruled that a
complainant’s registration of the name “SAHAJA YOGA” did not prevent
Respondent’s use of the domain name <sahaja-yoga.org> because, although
the domain name was essentially identical to the registered trademark, the
alleged trademark was actually a descriptive term, relating to a religious
concept that not only did not originate with the complainant, but dated back
several thousands of years. As stated
in a similar action decided by this forum, to “grant Complainant’s request for
relief [to transfer respondent’s domain name] would be to permit a virtual
monopolization on the Internet by Complainant of any domain name which includes
the name of a great spiritual teacher and leader. While making no judgment on the relative merits or validity of
the world’s religions or spiritual movements or any leader thereof, this
Arbitrator finds that permitting this would be as improper as doing the same
with Christianity, Judaism, Islam, Zoroastrianism, Hinduism, Buddhism, Taoism,
Confucianism, Shintoism or any of the several hundred other of the world’s
religions and/or spiritual movements.
Neither the Lanham Act nor the ICANN Policy and Rules contemplate or
intend such a result. See Osho Int’l Found. v. Osho Dhyan Mandir and
Atul Anand, FA 94990 (Nat. Arb. Forum July 2000).
In the case at
hand, Complainant’s registered trademark “INTEGRAL YOGA” is actually a
conceptual phrase that describes a type of yoga that has been practiced and
taught long before Complainant allegedly adopted the phrase as a trademark. Specifically, the phrase “Integral Yoga”
originates with Sri Aurobindo (1872-1950) who synthesized and formulated
several different types of Yoga, including, but not limited to, Karma, Jnana
and Bhakti yogas, to create a new metaphysical system of spiritual discipline
that he called Integral Yoga.
Aurobindo
detailed the practice of this type of yoga in his 1948 book entitled “The
Synthesis of Yoga.” Accordingly, since Complainant’s first use of the phrase
“Integral Yoga” did not occur until approximately 1969, as alleged in its
Amended Complaint, neither the phrase, nor the concept originated with
Complainant. Accordingly, it would be
improper to grant Complainant the exclusive right to use the phrase or practice
the concept of “Integral Yoga.”
Accordingly, even though Respondent’s domain names that utilize the
phrase “Integral Yoga” are similar to Complainant’s registered trademark for
“Integral Yoga,” Complainant’s rights in the descriptive phrase should not be
exclusive. . . .
In this case,
Respondent has a legitimate noncommercial and fair use interest in the domain
names at issue herein. Specifically,
Respondent’s web sites were created for the purpose to provide the public with
factual information, commentary and criticism regarding the unethical and
improper tactics employed by Complainant in its recruitment and retention of
its allegedly voluntary members, as well as other information regarding
Complainant and the concept of Integral Yoga in general that cannot be found on
Complainant’s web sites. Moreover,
Respondent’s web sites provide an open forum for members of the public to
exercise their First Amendment rights by sharing their stories and experiences
relating to Complainant. See Bosley Medical Group and Bosley Medical Inst., Inc. v. Michael
Kremer, D2000-1647 (WIPO Feb. 2001) (Respondent’s contention that he
has registered the site to make information regarding Bosley Medical more
widely accessible, without any intent for commercial gain, is clearly fair
use); Compusa Mgmt. Co. v. Customized Computer Training, FA 95082 (Nat.
Arb. Forum Aug. 2000) (Respondent has a First Amendment right to offer
criticism of goods and services offered by complainant); TMP Worldwide Inc.
v. Jennifer L. Potter, D2000-0536 (WIPO Aug. 2000) (using a website to
exercise First Amendment right to comment on her experiences in dealing with
complainant is legitimate).
The fact that
Respondent’s Domain Names do not clearly designate that they are sites
dedicated to criticism of Complainant has no effect on Respondent’s rights of
free speech and fair use and the ability to use the Domain Names for the
website that criticize and inform about Complainant. See Bosley Med. Group and Bosley Medical
Inst., Inc. v. Michael Kremer, D2000-1647 (WIPO Feb. 2001) citing Bridgestone Firestone,
Inc., Bridgestone/Firestone Research, Inc. and Bridgestone Corp. v. Jack Myers,
D2000-0190 (WIPO July 2000) (domain name registrants need not utilize the
formulation “trademarksucks.com” to designate a website for consumer criticism
or commentary).
Finally,
Complainant cannot show that Respondent used the Domain Names in order to gain
a commercial advantage because Respondent’s site is a non-commercial
information resource offered to the general public free of charge. See
Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network
and SD Montford, D2001-0467 (WIPO June 2001). Accordingly, there is no commercial motivation for Respondent’s
use of the Domain Names. . . .
Respondent’s
uses of the Domain Names do not fall under any of [the Policy’s 4(b)] categories
of bad faith. Specifically, (i)
Respondent did not acquire the Domain Names with the intent of selling them for
a profit, nor have they ever offered to sell the Domain Names to anyone, let
alone Complainant; (ii) Respondent did not register his Domain Names to prevent
Complainant from using the mark in its own domain name as evidenced by the fact
that Complainant owns and uses a multitude of other related domain names; (iii)
Respondent is not a business rival or competitor of Complainant as defined under
its plain meaning in Civic Dev. Group LLC v. John Paul Schaffer, FA
100138 (Nat. Arb. Forum Nov. 2001), Vishwa
Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD
Montford, D2001-0467 (WIPO Jun. 2001), Bosley Med. Group and
Bosley Medical Inst., Inc. v. Michael Kremer, D2000-1647 (WIPO Feb. 2001), TMP
Worldwide Inc. v. Jennifer L. Potter, D2000-0536 (WIPO Aug. 2000); (iv)
Respondent’s website has no commercial purpose in that it offers access to its
open forum for discussion, criticism and commentary relating to Complainant
free of charge and does not sell any goods or service, thus the Domain Names
have not been used to attract any users for the purpose of commercial gain.
Additionally,
there is no likelihood of confusion between Respondent’s web site and
Complainant’s marks, or that Complainant somehow sponsors or endorses
Respondent’s website because of the critical commentary prominently depicted on
Respondent’s website. Similarly,
Respondent’s web site contains an explicit disclaimer that clearly
differentiates the site from one sponsored by Complainant. As stated in the Disclaimer, visible on
every page, “All such information should of course be evaluated critically,
through a process of individual and independent judgment. Please note that
there are links often prominently placed at the top of individual pages to a
group's own official website, which may reflect another viewpoint. See what
they have to say.”
Finally, of
the twenty-six (26) domain names currently owned by Complainant . . . only
fifteen (15) of the domain names direct visitors to active web sites. The other eleven (11) are inactive, unused
domain names. This demonstrates Complainant's trivial need for stockpiling
additional domain names that it has no intention of ever using. Thus, Respondent has not only not used the Domain Names in bad
faith, but Complainant’s cyber monopolization of domain names evidences their
own bad faith in attempting to gain control over Respondent’s Domain
Names. Therefore, Complainant’s Amended
Complaint must be denied. . . .
As seen
herein, the main purpose for Complainant’s action is to shut down Respondent’s
website simply because it criticizes Complainant and offers truthful accounts
from ex-members as to the improper techniques used by Complainant to recruit
and contain its members. Respondent’s
website is a valuable resource of information that cannot be found anywhere
else on the web. Complainant should not
be permitted to defeat Respondent’s First Amendment rights simply because it
does not like Respondent’s message. As
one National Arbitration Forum Panelist has previously stated, “the Policy
should not be used to shut down robust debate and criticism. Allowing trademark owners to shut down web
sites that obviously are aimed at criticism of the trademark holder does just
that.” Civic Dev. Group LLC v. John
Paul Schaffer, FA 100138 (Nat. Arb. Forum Nov. 2001) citing Wal-Mart Stores, Inc. v.
Wal-MartCanadaSucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov.
2000). Accordingly, Respondent should
not be compelled to transfer the Domain Names and Complainant’s amended
complaint should be dismissed in its entirety.”
FINDINGS
(1)
The domain
name is identical or confusingly similar to a mark in which Complainant appears
to have rights.
(2)
The
Respondent has a legitimate interest in and right to use that trademark in his
domain names in the exercise of his First Amendment rights.
(3)
The
Complainant failed to establish that the domain name was registered in and is
being used in bad faith.
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.” 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.
Identical and/or Confusingly Similar
Rights or Legitimate Interests
Respondent
asserts that it is making a legitimate noncommercial and fair use of the
disputed domain names pursuant to Policy ¶ 4(c)(iii) because it is using the
disputed domain names in connection with its public forum/information
website. Respondent asserts that its
website is dedicated to providing the public with factual information,
commentary and criticism regarding the unethical and improper tactics employed
by Complainant in its recruitment and retention of its allegedly voluntary
members. Respondent also asserts that
the domain names are being used as a public forum because Respondent provides
space for past members of Complainant to share their stories and experiences
related to Complainant. Respondent
argues that it is not necessary to designate in a domain name that a website is
being used as a public forum for criticism and information.
Without
judging the merits of the parties’ dispute, it is crystal clear that Respondent
is using the disputed domain names for legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). Brttannia
Building Soc’y v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (criticism site at
<britanniabuildingsociety.org> is protected, non-commercial speech); TMP Worldwide Inc. v. Potter, D2000-0536
(WIPO Aug. 5, 2000) (finding that a
criticism forum is an exercise of First Amendment rights and, therefore, a
legitimate noncommercial use of the <tmpworldwide.net> and
<tmpworldwide.org> domain names); Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6,
2000) (finding that the Respondent has free speech rights and legitimate First
Amendment interests in the domain name <bridgestone-firestone.net> where
the Respondent linked the domain name to a “complaint” website about the
Complainant’s products); Pensacola Christian Coll. v. Gage, FA
101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that Respondent has rights and
legitimate interests in a domain name incorporating Complainant’s name at which
commentary and criticism of Complainant are offered, and at which users are
free to post messages about Complainant).
As explained in the Britannia Building Society case:
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. Use of the Policy to provide such insulation would radically
undermine freedom of discourse on the internet and would undercut the free and
orderly exchange of ideas that the Policy seeks to promote.
Registration and Use in Bad Faith
Respondent
did not register the domain names for the purpose of selling the registrations
to Complainant, or any other party.
Respondent did not register the domain names in order to prevent
Complainant from reflecting its mark in a domain name because Complainant
already holds and uses numerous other domain names to advertise its services.
Respondent is not a competitor of Complainant nor is it using the disputed
domain names for commercial gain, because it is not selling or offering any
good or service, it is merely using the disputed domain names to host a website
that offers a public space to discuss Complainant, and experiences people have
had with Complainant. Furthermore, this use is a legitimate noncommercial and
fair use of the disputed domain names and therefore Respondent’s registration
and use of the domain names cannot be construed as bad faith. See Britannia Building Soc’y,
supra; Bridgestone Firestone, Inc., supra (“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 at 535-536); see also Pensacola
Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001)
(finding that, after Respondent is determined to have rights and legitimate
interests in the disputed domain name, there is no need to decide the issue of
bad faith).
Not
only is Respondent’s use wholly non-commercial, but also, there is no
likelihood of confusion between Respondent’s website and Complainant’s marks
because of the critical commentary prominently depicted on Respondent’s
website, and Respondent’s use of an explicit disclaimer. The disclaimer is visible on every page of
Respondent’s website. See Britannia
Building Soc’y, supra (“Respondent
goes to great lengths to dispel any possible confusion about the source of the
website, including a prominent disclaimer at the top of the site and a link to
Complainant’s actual site. This conduct
is paradigmatic of good faith, not bad.”); Caterpillar Inc. v. Off Road
Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad
faith when Respondent put a very visible disclaimer on its website located at
<catparts.com>, because the disclaimer eliminated any possibility that
Respondent was attempting to infer an affiliation with Complainant and
Complainant’s CATERPILLAR mark); Al-Anon
Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000)
(refusing to find bad faith where Respondent conspicuously informs viewers that
his site is not affiliated with Complainant and alternatively finding that such
a disclaimer is evidence of good faith on the part of Respondent which
precludes any determination that Respondent intentionally attempted to attract
Internet users to his website by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of Respondent's website).
One Panelist, David Bernstein, is of the
opinion that, under Rule 15(d), the Panel must consider whether Complainant is
guilty of Reverse Domain Name Hijacking. He feels that is true notwithstanding
that Respondent has not requested such a finding because, in his opinion, the
Rules specifically put the burden on the Panel to determine whether a
complainant has tried to use the Policy in bad faith to attempt to deprive a
registered domain name holder of a domain name. See Rodale, Inc. v.
Cambridge, DBIZ2002-00153 (WIPO June 28, 2002).
In this case, Mr. Bernstein would have
found Reverse Domain Name Hijacking given what he considers Complainant’s bad
faith effort to use the Policy as a crude club to suppress legitimate,
protected, First Amendment speech. It has become clear that the Policy cannot
and should not be used to try to silence genuine criticism. Cf. Church in Houston v. Moran,
D2001-0683 (WIPO Aug. 2, 2001).
On the other hand, Complainant has valid
trademark registrations and the right to bring a claim under the Policy and
Rules. The other two Panelists did not believe that Complainant’s conduct was
so outrageous as to rise to the level of bad faith abuse of the Policy. In
their opinion, there was no showing that the Policy and Rules were being used
as a club to thrash Respondent for exercising its First Amendment Rights.
Respondent did not request this sanction on Complainant. While they agree that
the Panel has the responsibility to make a reverse cybersquatting finding even
when not requested by the Respondent, in their view those situations should be
limited to cases where the Complainant was clearly shown to be abusing the
Policy. In their opinion, there are no facts in this case apart from the mere
bringing of the Complaint to support finding abuse.
DECISION
Although the domain names are identical
and/or substantially similar to marks in which Complainant has rights, the
Panel concludes that Respondent has a legitimate noncommercial and fair
interest in the domain names at issue and that the Respondent did not register
these names in bad faith. Accordingly,
the relief requested is DENIED and the Respondent may RETAIN the
domain names.
For the Panel
Louis E. Condon,
Chair
December 13, 2002
Panelists:
David H. Bernstein
Louis E. Condon
James A. Crary
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