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Generic Top Level Domain Name (gTLD) Decisions |
Monsanto Company v. Rowena Tollitt
Claim Number: FA0204000110795
PARTIES
Complainant
is Monsanto Company, St. Louis, MO
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Roger Lovejoy, Cornwall, UK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <monsanto.org>,
registered with Joker.com.
PANEL
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 Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 24, 2002; the Forum received
a hard copy of the
Complaint on April 25, 2002.
On
April 25, 2002, Joker.com confirmed by e-mail to the Forum that the domain name
<monsanto.org> is registered
with Joker.com and that the Respondent is the current registrant of the
name. Joker.com has verified that
Respondent is bound by the Joker.com 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 26, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 16,
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@monsanto.org by e-mail.
A
timely Response was received and determined to be complete on May 16, 2002.
Complainant
submitted an Additional Submission in a timely manner, on May 17, 2002. Respondent submitted an Additional
Submission in an untimely manner, on May 28, 2002. The Panel may decide whether or not to use Respondent’s
Additional Submission in making its determination.
On May 29, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Roger P.
Kerans as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
Complainant Monsanto Company in its lengthy submission asserts that it is a
famous “biotechnology giant”, that it in law owns
the unique name MONSANTO, and
that it has a well-established website at <Monsanto.com>.
It
asserts that the Respondent’s <monsanto.org> is confusingly
similar, and that the Respondent has no legitimate right or interest in the
name. Moreover, the Respondent’s
website attacks the Complainant and its products, and the use of the name of
the Complainant’s business
in the Respondent’s domain name is an obvious
attempt to divert consumers away from the Complainant’s website and thus do
harm to
the Complainant.
Evidence
to support this allegation is that the the Respondent’s website contains a
reference to “Corporate Info”, offering details
of the Complainant and leading
consumers to think that the Respondent’s website is in fact that of the
Complainant. Moreover, the site
duplicates the trademark of the Complainant, and offered support for
“Decepticons”, an organization that deliberately
mimics established trade
names.
The
Respondent’s website makes shocking and false allegations about the work of the
Complainant.
The Respondent’s registration information was at least
partly false. Registration was in the name
of Rowena Tollit but, in response to the demand of the Complainant, one Roger
Lovejoy replied to say
that he had been joint owner and , in light of the
demand, was now the sole owner. This is
offered as further evidence of bad faith.
Further,
Roger Lovejoy earlier used a registered trademark in a domain name and this use
was found to be abusive under the UK rules.
See Nominet UK Dispute Resolution
Service DRS 00048). This is
evidence of a pattern of abuse.
B.
Respondent
The
Respondent’s Response was filed by Roger Lovejoy, who asserts he had no
intention of “passing myself of as “Monsanto” nor to use
the name to unfairly
disrupt their business.” Instead, the “intention is to encourage surfers to
query Monsanto with regard to the
information we provide.” The “purpose of the
site is to provide details that Monsanto suppress. . .” or “Monsanto are
unlikely to
advertise themselves”, and not to sell the site, nor to dissuade
anybody from the purchase of Monsanto products, nor to deceive anybody
into thinking
the site belonged to Monsanto.
Lovejoy
also asserted that the Nominet
decision can be distinguished, and in any event was wrong. And that he never intended to support
Decepticon.
Lovejoy
acknowledged that “an odd surfer, or three, will present a query regarding a
product or action of Monsanto” and these are
answered “in good spirit”. Indeed,
“three surfers did ask for help regarding Monsanto products and were directed
to”Monsanto” and/or
I asked Monsanto for their advice and passed it to the original
enquirer.”
As
to the business about registration name, there was no intention to confuse or
mislead. Ms Tollit’s name appeared
primarily because registration was purchased by use of her credit card at
Lovejoy’s request. He also reports
subsequent difficulty in his efforts to change registration. He supplies his Cornwall UK address.
He
also quotes Halsbury to say that there is no property in a name as such, and he
had no intention to pass himself off as Monsanto.
He
reports that he has made certain changes to the website to make it clear that
the domain owner is a critic of Monsanto, not Monsanto.
He
chose the domain name so that the site would be “more noticeable”. He likens a domain name to a chapter heading
in a book.
C.
Additional Submissions
In
a reply to the Respondent’s Response, which was filed by the Complainant in a
timely fashion, the Complainant questions whether
a non-registrant has the
right to file submissions. It is also
said that Lovejoy admitted that there had been actual confusion from his use of
the Monsanto name as a domain name. And
the Complainant repeats that this case is on all fours with the Nominet case.
Mr.
Lovejoy then made a sur-response, but it was out of time. I have nevertheless considered it. It merely repeats arguments made in his
original submission.
FINDINGS
I accept the explanation by Mr. Lovejoy
about the registration confusion, and that he had no intention thereby to
mislead or confuse. I accept also that
he had an interest in the domain name at the time of registration, and I infer
that he responds on behalf of himself
and the registrant Tollitt.
I
accept the explanation of Lovejoy that the sole purpose of the Respondent’s
website is to offer criticism of the Monsanto Company
and its products. That
said, it is disingenuous of Mr Lovejoy to assert that he had no intention “to
dissuade anybody from the purchase
of Monsanto products.” I find that this very much is his
purpose. It seems to me the only
reasonable inference when the site proclaims “Monsanto actions are detrimental
to the environment.”
I
also accept his assertion that any documentation on the Respondent’s website
that may have led a member of the public to believe
that this was the website
of the Monsanto Company, as opposed to its critic, was inadvertent. His choice of domain name is, however, a
very different matter. He nowhere offers any explanation why he did not choose
a domain name
that better described the function of the domain. A hint as to
his true intent can be gained for his acknowledgment that he chose
the name
because it was
“more noticeable”. I infer that what he had in mind was that
members of the public who search the internet for the Monsanto Company domain
would find
his site. I find that he hoped to attract to his site people looking
for the Monsanto site, and hoped that some would stay to read
his criticisms.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
It is undeniable, and undenied, that the
names “Monsanto Company” or “Monsanto.com” and <monsanto.org> are
confusingly similar. In fact there has
been confusion, which is unsurprising.
Indeed, as I have found, the Respondent chose the name because of this
likely confusion.
In some cases, it has been held that the
suffix ".org" is sufficient to avoid confusion. See Pueblo Int’l, Inc., v. Pueblo On-Line,
FA 95250 (Nat. Arb. Forum Aug. 24, 2000), where the panel 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. It is a question of
fact. See North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v.
Citizens With Common Sense FA97058 (Nat. Arb. Forum July 1, 2001). Here, the suffix was insufficiently
distinguishable to prevent confusion.
Rights or Legitimate Interests
It is undeniable, and undenied, that the
Complainant has valuable property rights in the name “Monsanto”, rights that
would be recognized
in the United Kingdom and elsewhere.
It is undeniable, and undenied, that the
Respondent had no business or other pre-existing legal interest in the name
“Monsanto”.
The Respondent protests reference to US
cases by the Complainant, and refers to UK law.
The
law that governs, however, is the Uniform
Domain Name Dispute Resolution Policy.
This derives from the fact that the Respondent chose to register his
domain name with a firm that had adopted the Policy. And that is the law that I shall apply.
In any event, the
Respondent’s claim rests on his right to free speech. I accept that, in the United Kingdom, one is free to do anything
not forbidden by law. Mr Lovejoy argues that, in the United Kingdom,
a person
is free to adopt any name he chooses because “there is no property in a name as
such”. This is true as far as it goes,
but in the United Kingdom the user of a name acquires rights over it when
goodwill attaches to its
use, as is the case with the use by Monsanto Company
of the name Monsanto. Monsanto has the
right to prevent others from passing themselves off as Monsanto by the use of
that name, if that practice causes
it damage. It causes Monsanto damage when a
potential customer is diverted away.
To
employ the name of another, a name in which that other has rights, in a domain
name in order to attract persons searching for that
other is not a legitimate
right or purpose with the meaning of the UDRP. See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet
traffic is not a
legitimate use of the domain name). See
also Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by
using Complainant’s
trademarks).
The
Respondent would justify breach of this rule on the ground that the domain in
question does not compete with the Complainant,
it merely criticises the
Complainant. I note that the
Complainant acknowledges that the Respondent has a right to criticise the
Complainant (although it protests that the
criticism offered by the Respondent
is untrue and unfair). 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. But, even
if the purpose of the Respondent’s domain is to offer valid criticism of the
Complainant, that admirable purpose does not
legitimise the use of the
Complainant’s name to attract persons looking for the Complainant. 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. See
Weekley Homes, L.P. v. Fix My House Or
Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment
of a website containing criticism is not a legitimate use of
the
<davidweekleyhome.com> domain name because the disputed domain name is
confusingly similar to Complainant's DAVID WEEKLEY
HOMES mark); See also
Chi-Chi’s Inc. v. Rest. Commentary,
D2000-0321 (WIPO June 29, 2000) (finding that Respondent had no rights or
legitimate interest in the domain name even though Respondent
stated that it
intended to use the domain name for “public comment” on the Internet); See also
E. & J. Gallo Winery v. Hanna Law
Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a
legitimate free speech/complaint site does not give rights to use a
famous mark
in its entirety). If the decisions in TMP Worldwide Inc. v. Potter, D2000-0536
(WIPO Aug. 5, 2000) or Western Hay Co. v.
Forester, FA 93466 (Nat. Arb. Forum Mar. 3, 2000) may be thought to take a
differing view, I must, with respect, decline to follow them.
Mr. Lovejoy argues that to use “Monsanto”
to name the Respondent’s site is like using it as the name of a chapter in a
book. It is not. It is more akin to
using the Monsanto mailing address or telephone number. At the very least, the
domain name must make
it clear somehow to internet searchers that the domain is
not that of the other. The Respondent
failed to do this. This is not a case
like New York Press v. New York Press,
FA 94428 (Nat. Arb. Forum May 18, 2000), where the domain name does not
necessarily offer confusion with some of the newspapers
being criticised on the
site.
Mr Lovejoy argued that he made it clear
on the Respondent’s site that it was not the Monsanto site. In my view, reliance on the home page or the
content of the website is only relevant on the question of bad faith. It does
not tell
us the answer to the question whether the use of the name is
legitimate. That is my simple answer to those who would excuse an illegitimate
name whose true purpose is clarified only on the site. Again see North American Wilderness Recovery, Inc.
d/b/a The Wildlands Project v Citizens With Common Sense FA97058 (Nat. Arb.
Forum July 1, 2001).
I find that the Respondent had no
legitimate right or interest in the use of the name of the Complainant in a
domain name without
adequate indication in that domain name that the domain is
something other than that of the Complainant.
Registration and Use in Bad Faith
Having found no legitimate use of the
name, it is somewhat academic to consider the bad faith issue. This is because, now that the Respondent
knows the use is illegitimate, it would indeed be guilty of bad faith in the
future if it
continued that improper use. See Netfolio v Tantalus Investments FA 96684 (Nat. Arb. Forum Mar. 27,
2001)
In any event, where, as here, the Respondent
deliberately employs the name of the
Complainant (unaccompanied by adequate clarification of its use in the domain
name itself) to attract those
looking for the Complainant’s website, it is no
answer to say that there is an adequate disclaimer on the Respondent’s
website. In my view, the UDRP forbids
this particular version of “bait and switch” when it prohibits, in clause
4(b)(iv), intentional efforts
to attract users by creating a likelihood of
confusion. See 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 problem as I have already said is
that some searchers may miss the disclaimer, others may simply tire of the
search. In either event, there has been
an interference with the legitimate commercial activity of the Complainant.
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 commercial mark in terms of source,
sponsorship, affiliation, or endorsement. See
North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v
Citizens With Common Sense FA97058 (Nat. Arb. Forum July 1, 2001).
I find bad faith in the use of this
particular domain name. Because Lovejoy
intended this confusion from the outset, I also find bad faith at registration.
DECISION
I declare and direct that the
name “Monsanto.org” be transferred to the Complainant.
Hon. Roger P. Kerans, Panelist
Dated: June 4, 2002.
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