Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Robo Enterprises, Inc., Bowling Green, KY, USA ("Complainant") represented by Marc J. Clark, Robo Enterprises, Inc. The Respondent is Orvin Tobiason, Covington, LA, USA ("Respondent").

The domain name at issue is "roboenterprises-investors.com", registered with Domain Direct/OpenSRS.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Tyrus R. Atkinson, Jr. Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 24, 2000; The Forum received a hard copy of the Complaint on October 26, 2000.

On November 15, 2000, Domain Direct/OpenSRS confirmed by e-mail to The Forum that the domain name "roboenterprises-investors.com" is registered with Domain Direct/OpenSRS and that the Respondent is the current registrant of the name. Domain Direct/OpenSRS has verified that Respondent is bound by the Domain Direct/OpenSRS registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On November 16, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@roboenterprises-investors.com by e-mail.

On December 14, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

Complainant has rights in the service mark ROBO ENTERPRISES. Respondent argues that "robo" is a weak mark since many others use the word in association with other words to identify their business or goods. It is further argued that "enterprises" is a generic word. Thus, Respondent argues, Complainant has no rights in the combination of the words "Robo Enterprises". Both parties agree that Complainant holds a service mark in the name ROBO ENTERPRISES. Respondentís argument is without merit.

The next element to be proved by Complainant is that the domain name ROBOENTERPRISES-INVESTORS.COM is identical or confusingly similar to the service mark ROBO ENTERPRISES. The service mark and the domain name are not identical because of the addition of the word "investors" to the domain name. But, the names are confusingly similar. Simply adding a generic work in addition to the service mark of Complainant does not make the domain name and service mark not confusingly similar. See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) which found that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainantís distinctive mark QUIXTAR, along with the generic words "sign-up", the domain name is confusingly similar. That rule is applied in this case. Furthermore, when one establishes a web site as a criticism of Complainantís products, as Respondent says he has done in this case, Respondent subjects himself to the proposition that "Since Respondentís avowed purpose is to create and maintain a ëconsumer complaint siteí concerning the Complainantís products, the domain name would be of little use to Respondent if they were not of sufficient confusing similarity with Complainants trade or service marks so as to attract potential complainants." See Estee Lauder, Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869, (WIPO Sept. 25, 2000). Complainant must prevail on this issue.

Complainant states that since it is the owner of the service mark contained in the domain name, it has exclusive right to use the mark. See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000). Thus, Complainant states, Respondent has no rights or legitimate interests in the service mark ROBO ENTERPRISES and that a Cease and Desist Letter was sent notifying Respondent of this fact.

Respondent counters this by stating that Respondent 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. If this can be satisfactorily established, Respondent and not Complainant will have prevailed on this issue. Respondent must prevail in the case. See Uniform Domain Name Dispute Resolution Policy, Sec. (4)(c)(iii).

Respondent has legitimate interests in respect to the domain name, it is contended, because the web site communicates information about investors, investing, or a group of investors, including investors that are interested in learning about Robo Enterprises. It is crystal clear that the information provided on the web site is highly critical of investment deals offered by Robo Enterprises, Inc. Respondent argues that the information expressed on the web site is protected from any claim of trademark infringement as news, news commentary, and under the free speech rights of the First Amendment of the United States Constitution.

Respondent contends that it is completely legitimate to set up a web site to criticize Complainantís product and activities.

There is a developing line of case law regarding consumer free speech complaint sites that attempt to define the limits to which a party may comment, criticize, disparage, or downplay the products and activities of another. See Estee Lauder Inc v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000); Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov 23, 2000); The New York Times Co. v. New York Internet Services, D2000-1072 (WIPO Dec. 5, 2000), for discussion and cases cited therein.

It is inappropriate to permit trademark owners to shut down sites that are aimed at criticism of the trademark holder because the content contained in site is unfair, unwarranted, or untrue. Trademark rights may be limited by First Amendment concerns. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000).

Respondent in this case may have extensive rights of free speech to provide a platform to criticize Complainantís business practices and services and a right to the fair use of Complainantís service mark in achieving the critical purpose. But it is not the purpose of the Uniform Domain Name Dispute Resolution Policy to have a Panel judge whether Respondent has legitimate or protected interests in the contents of ROBOENTERPRISES-INVESTORS.COM. See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).

It is beyond the scope of this case to consider any issues such as the boundaries of free speech generally and the manner and extent to which a trademark may be used fairly and without infringement . See Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).

"Öa distinction must be drawn between the domain name itself and the contents of the site which is reached through the domain name." Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).

The proper inquiry is whether Respondent has rights or legitimate interests in respect of the domain name ROBOENTERPRISES-INVESTORS.COM. Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).

A critical issue to be determined in cases of this kind is whether the domain name in question itself signifies critical purposes, as opposed to imitation of the service mark. See Wal Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000).

In the Wal Mart case, the Panel analyzed the holdings in People for the Ethical Treatment of Animals v. Dougherty, 113 F.Supp. 2d. 915 (E.D. Va. 2000); and OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp. 2d. (W.D.N.Y. 2000). The Panel found that these cases required that a domain name for the purpose of parody or criticism must on its face make some indication that the site is not the site of the service mark holder but is instead a site for the criticism of the service mark holder. A parody (or in this case a web site for criticism) depends upon a lack of confusion to make its point and must convey two simultaneous and contradictory messages. The first is that it refers to the original of which criticism is made, but clearly is not the original. Otherwise, there is likelihood of confusion as to the sponsorship of the web site. The user will not realize that he or she is at the wrong site until he or she reads through the site and discovers that the site is not the original site of the service mark owner but instead a web site for criticism of the service mark owner. There is created initial interest confusion which is impermissible.

There is no indication in the domain name ROBOENTERPRISES-INVESTORS.COM that suggests that the site is one for criticism or parody of Complainant.

It is stated in New York Times Co. v. New York Internet Services as follows: "Even if the site at newyorktimes.com were purely a commentary or opinion site, NYIS would not be entitled to use THE NEW YORK TIMES mark in the domain name. As this Panel discussed in E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case D2000-0615, even though NYIS may have the right to (1) to establish a commentary or opinion site re The New York Times and (2) to mention The New York Times at the site and to reproduce the mark there, NYIS is not necessarily entitled to use The New York Times name or mark as part of NYISís address for such a website. A domain name is not only an address, it is a personal identifier. Many addresses have been available to NYIS which would not in any way impinge on the trademark rights of The New York Times. NYIS consciously chose the domain name in issue to lead Internet users to the NYIS site. NYIS is consciously counting on initial confusion to direct Internet users to the NYIS site. It is highly likely that such users intend to find an authorized site of The New York Times." The New York Times Co. v. New York Internet Services, D2000-1072 (WIPO Dec. 5, 2000).

"ÖRespondent may well, and likely does, have extensive rights of free speech to provide a platform to criticize Complainant and a right to the fair use of Complainantís marks in so doing. The contents of Respondentís websites may also be a perfectly legitimate use of those rights. But Respondent could well have chosen to use a domain name that was not confusingly similar to Complainantís and/or in which Complainant had no rights; it intentionally chose not to do soÖRespondentís free expression rights do not here give it a right or legitimate interest in the domain names at issue." See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).

Under the reasoning set out in the cases cited herein, Respondent has no rights or legitimate interests in the domain name ROBOENTERPRISES-INVESTORS.COM.

This decision in no way forecloses Respondent from achieving the purpose of establishing a website for criticism of Complainant by use of a domain name which does not create confusion with the service mark of Complainant. "wallmartcanadasucks.com" was not found to be confusingly similar to Wal-Mart. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Sept. 25, 2000).

The Uniform Domain Name Dispute Resolution Policy lists four instances that constitute evidence of bad faith. The only provision applicable in this case is Paragraph 4(b)(iii). The section states that it is evidence of registration and use in bad faith that "you have registered the domain name primarily for the purpose of disrupting the business of a competitor."

Respondent argues that Complainant and Respondent are not competitors nor do they offer the same service or product.

Recent decisions have not limited the term "competitor" to competitors who compete for commercial gain. "The fact that the terms of paragraph 4(b)(iii) of the Policy, unlike those of paragraph 4(b)(iv), do not require that a party be motivated by ëcommercial gainí further supports the fact that the genre of competition referred to need not be commercial." See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000). "The natural meaning of the word ëcompetitorí is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor." See Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).

The question to be considered is whether Respondent established the website for the purpose of disrupting the business of Complainant. Respondent admits that the website contains negative views which are calculated to undermine any prior favorable views that a user might have of Complainant. "Plainly the Respondent in registering the domain names and establishing his website has used the best vehicle known to him of securing publicity for the website information on the Internet and has done so in a manner which inevitably brings visitors to the website who had an intention to find out authorized information about the Complainantís activities. The activities of the Respondent, as demonstrated by its website, is therefore disruptive of the activities of the ComplainantÖthe actual use of the domain name in fact achieved the purpose of disrupting activities of the Complainant and the primary purpose of the RespondentÖin choosing the present domain names was to cause the persons seeking information on the Complainantís activities to be drawn into the Respondentís website and thereby to be exposed to contrary and critical views. The Panel holds that bad faithÖis established. It being no answer that the content of the website is offered in good faith." See Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).

The Panel finds that Respondent established and is using the website ROBOENTERPRISES-INVESTORS.COM for the purpose of bringing Internet users desiring to learn more about ROBO ENTERPRISES to Respondentís site for the intended purpose of publishing to such users highly negative views of Complainant thus disrupting the business of Complainant. Respondent choose the domain name to cause persons seeking information on ROBO ENTERPRISES to be drawn to Respondentís website for the purpose of exposing the user to negative and critical views of Complainant. Choosing and operating the domain name for such a purpose in this case is bad faith.

The domain name ROBOENTERPRISES-INVESTORS.COM registered to Respondent be transferred to Complainant, ROBO ENTERPRISES, INC.