Generic Top Level Domain Name (gTLD) Decisions

The Complainant is North American Wilderness Recovery, Inc. d/b/a The Wildlands Project, Tucson, AZ, USA ("Complainant") represented by Peter D. Eisner, of Mendelsohn, Oseran & Eisner, P.C. The Respondent is Citizens With Common Sense, Maryville, TN, USA ("Respondent") represented by Nancie G. Marzulla, of Marzulla & Marzulla.

The domain name at issue is <wildlandsproject.org>, registered with Network Solutions, Inc.

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

Hon. Roger P. Kerans (ret’d) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 12, 2001; the Forum received a hard copy of the Complaint on April 12, 2001.

On April 16, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <wildlandsproject.org> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 April 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 4, 2001 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@wildlandsproject.org by e-mail.

A timely response was received and determined to be complete on June 4, 2001.

A timely additional submission was received from Complainant and determined to be complete on June 18, 2001.

On June 20, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Roger P. Kerans (ret’d) as Panelist.

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

Complainant

B. Respondent

C. Additional Submissions by the Complainant:

The parties disagree over the question of fact whether persons who reach the Respondent’s website are immediately informed that they have reached a website that is critical of the activities of the Complainant. As exhibited before me, the Home Page of the Respondent site does not contain any disclaimer explaining that it is a site devoted to criticism of The Wildlands Project, and is not the site of that Project. On the contrary, the prominent title is "The Wildlands Project", and the sub-title is "Explaining the North American Wilderness Recovery Strategy." It shows links to other pages on the site under the headings "Summary," "Slide Show," "Site Map,"" Glossary, " and "email." A special graphic invites one to click on the "Tracks of the Turtle Slide Show", which is described as "an interactive story of The Wildlands Project." In very fine print at the bottom of the page is the message "Copyright 1997 Citizens with Common Sense." The only other message is a brief quote – without comment – from an author who says. "I would like to see certain large areas of the planet set off-limits to human entry of any kind, even aerial over flights." As one pages through the "slide show" the tone of the presentation is increasingly critical of the "deep ecology" viewpoint it attributes to The Wildlands Project of the Complainant.

I do not agree that a person who reaches the Respondent’s site is immediately informed that they have reached a site critical of The Wildlands Project, as opposed to one dedicated to it. I accept that, at some point, a person would however realize the truth.

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.

Some persons who visit a site named "wildlandsproject.org" when looking for the official site of the Complainant and its Wildlands Project, are bound at first to think they have found it when they hit upon this site. They are accordingly confusingly similar.

It is said for the Respondent that the suffix ".org" is sufficient to avoid confusion. Counsel cited, Pueblo Int’l, Inc., v. Pueblo On-Line, FA 95250 (Nat. Arb. Forum Aug. 24, 2000), where the Court took note that a "org" suffix was customarily used by a not-for-profit organization and this could justify a ruling that there was no confusion with a commercial enterprise. But that case has no application here, because the Complainant, like the Respondent, obviously is a not-for-profit organization.

The Complainant has used the term "The Wildlands Project" since 1992 to describe its particular proposals, and registered the service mark in 2000. It has a legitimate interest in the name.

The Respondent rests its claim to a legitimate interest on the basis of the fair use rule in Paragraph 4(c)(iv) of the Policy. It says that the use of a service mark in connection with criticism or comment in a website of the owner of the service mark has been held to be an example of protected free speech. See Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D.Cal. 1998). In USA, one has the constitutional right to criticize, and one can hardly exercise that right if one cannot mention the name of the person or enterprise one would criticize.

It is a large jump, however, to employ the name of the person one would criticize in the critic’s domain name.

Is it a fair use for a critic to employ the name of the person to be criticized in the domain name for the critical website?

The Complainant relies upon USA authorities: OBH, Inc., v. Spotlight Magazine, 86 F.Supp. 2d 176 (W.D.N.Y. 2000); Planned Parenthood Fed’n of Am., Inc., v. Bucci, 42 U.S.P.Q. 2d 1430 at 190-191 (S.D.N.Y. 1997, aff’d 152 F.3d 920 (2d Cir. 1998), cert. denied, 525 U.S. 834 (1998); and Paccar, Inc., v. TELESCAN Technologies LLC, 115 F.Supp. 2d 772 (E.D. Mich. 2000). These cases emphasize the fact that the public may inadvertently go to the critic’s site when searching for the site of the person criticized, and then be confused or frustrated and never continue the search, with the result that the commercial site loses business.

Several UDRP panels also have rejected the idea that the critic may use the name of the person to be criticized: State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name); Northwest Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (finding bad faith where the "purpose of Respondent in choosing the domain name is to cause the persons seeking information on the Complainant’s activities to be drawn into the Respondent’s web site and thereby to be exposed to contrary and critical views").

The Respondent relies upon Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that Respondent has free speech rights and legitimate 1^st Amendment interests in the domain name <bridgestone-firestone.net> where Respondent linked the domain name to a "complaint" web site about the Complainant’s products); See also Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the Respondent has rights in the domain name where she was using the domain name in connection with a noncommercial purpose); and TMP Worldwide Inc. v. Potter, D2000-0536 (WIPO Aug. 5, 2000) (holding that use of web site to criticize complainant without commercial gain or diversion of customers is permissible).

The panel in Bridgestone reasoned:

Dealing with the cases cited by the Complainant, the panel in Bridgestone said

In my view, I am well-guided by these words: "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." In other words, fair use can include the name of the person or business the critic would attack, and it will depend on the circumstances of each case whether that use is fair or not. It may well not be a fair use if the domain name offers no hint of its real purpose, but the use of a non-commercial suffix like ".org" or ".net" may suffice to differentiate when criticizing a commercial enterprise. It may well also be a fair use to employ the name together with some added words to indicate a critical purpose.

In this case, as I have already noted, the Complainant is the sort of organization that itself may well employ a suffix like ".org" or ".net". In the specific circumstances of this case, that single attempt at differentiation does not suffice to make it clear to the public that the site is that of a critic. I reject the argument for fair use in this case.

I should first observe that the merits of the attacks on the Complainant are not for me to judge, and I do not offer any judgment for or against them.

Many of the cases on this topic turn on the claim for or against bad faith. In my view, reliance on the home page or the content of the website must be a bad faith argument, because content is not directly related to the domain name. The significance of this is that one should not turn to such issues unless one first has decided that the use of the name is legitimate. That is my answer to those who would excuse an illegitimate name whose true use is clarified only on the site.

Many "critics" cases have been decided on a finding of bad faith: Where the original intent as critic was abandoned: Compagnie de Saint Gobain v. Com-Union D2000-0020 (WIPO Mar. 14, 2000) and DFO, Inc. v. Williams, D2000-0181 (WIPO Mar. 14, 2000); and where the intent was to criticize but also to sell a competing product or otherwise achieve direct commercial gain or for fundraising: CSA Int’l v. Shannon, D2000-0071 (WIPO Mar. 24, 2000), Roberts, Inc. v. Bartell D2000-0300 (WIPO June 13, 2000), National Rifle Association v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names "friendsofnra.com", "friendsofnra.net", and "friendsofnra.org" with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks).

In this case, I have no difficulty – assuming even that the name use was legitimate – in drawing an inference that the true purpose of its use in this case was to draw to the Respondent’s site unsuspecting members of the public who were curious about the Complainant’s project and then to influence them against it before they realize they have not found the right site. That is the inference I draw from the design of the home page, and the absence of an appropriate disclaimer.

I agree with the Complainant that Policy paragraph 4(b) extends to non-commercial gain from use of a domain name to attract users by creating a likelihood of confusion between the impugned site and the complainant’s mark in terms of source, sponsorship, affiliation, or endorsement.

I would transfer the domain name wildlandsproject.org. The Respondent is entitled of course to continue its criticism of the Complainant from a domain name that is a fair use