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Generic Top Level Domain Name (gTLD) Decisions |
National Alliance for the Mentally Ill
Contra Costa v. Mary Rae Fouts
Claim Number: FA0310000204074
PARTIES
Complainant
is National Alliance for the Mentally
Ill Contra Costa (“Complainant”) represented by Robert B. Hodil of Morrison & Foerster LLP, 101 Ygnacio Valley Road, Suite 450,
Walnut Creek, CA, 94596-8130. Respondent is Mary Rae Fouts, 1547 Palos
Verdes Mall #407, Walnut Creek, CA 94597 (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <namicontracosta.com>
registered with Register.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.
Richard
Hill as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 21, 2003; the Forum received
a hard copy of the
Complaint on October 22, 2003.
On
October 22, 2003, Register.com confirmed by e-mail to the Forum that the domain
name <namicontracosta.com> is
registered with Register.com and that Respondent is the current registrant of
the name. Register.com has verified that Respondent
is bound by the Register.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
October 29, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 18, 2003 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@namicontracosta.com by e-mail.
A
timely Response was received and determined to be complete on November 12, 2003.
Complainant
submitted a timely and complete Additional Submission on November 17, 2003.
On November 21, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Richard Hill
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends that it has been using the “NAMI Contra Costa” name to identify itself
in the community since at least as early
as January 1997, and that it therefore
has rights under the Policy.
Complainant
maintains a website at <www.namicontracosta.org>.
It
alleges that Respondent registered and used the contested domain name in bad
faith in order to publish false and misleading information
about a mental
health facility (the Crestwood Facility) in an effort to defeat the facility’s
attempts to open a site in Pleasant
Hill.
Complainant supports the opening of the Pleasant Hill site (including
through its website <namicontracosta.org>) and thus, it
says, Respondent’s
registration and use of the disputed domain name were undertaken in order to
mislead Internet users into the belief
that Complainant was affiliated with or
endorsed the opinions expressed on Respondent’s <stopcrestwood.com>
website, to which
the disputed domain name was redirected.
Complainant
alleges that Respondent has no legitimate rights in the contested domain name.
B.
Respondent
Respondent
contends that Complainant does not have a trademark for the string
“namicontracosta”.
She
further alleges that all the information that she published on her website
<stopcrestwood.com> (the site to which the disputed
domain name was
redirected for a certain period) was accurate.
Respondent
alleges that she registered the contested domain name so that she could provide social commentary,
related information, and public awareness of what “n-a-m-i” meant
to her. There are many meanings, she says, for “n-a-m-i”.
For example she states, <nami.com> is a Japanese lifestyle and travel
website. She adds that “n-a-m-i” also
refers to Russian automobiles, and her site at the disputed domain name
currently includes references
to SUVs and auto-packed roadways in order, she
says, to encourage people to think about our reliance on the auto in
traffic-jammed
Contra Costa County.
Regarding previous use of the contested
domain name, which was redirected to Respondent’s <stopcrestwood.com>
site, Respondent
alleges that when she purchased the contested domain name, she
did not immediately implement her plans for the site concerning the
use of “n-a-m-i”, because
of other commitments on her time.
During this period, she says, she
preferred that the disputed domain name not lie
fallow. Until she had time to implement
the planned website for “n-a-m-i”, she could use
the disputed domain name as a community service tool to promote increased
public awareness regarding a very public and political
community issue, by
redirecting the disputed domain name to Respondent’s <stopcrestwood.com>
site, the site containing criticism
of the planned opening of the Crestwood
mental health facility.
Respondent
contends that she had no intent to misleadingly divert persons seeking
not-for-profit services and denies that her use
of the contested domain name
was potentially confusing. Furthermore,
she states, Complainant does not provide any evidence of actual confusion.
Furthermore,
Respondent states:
“Complaint
provides no evidence to support its erroneous allegation that my namicontracosta.com activities were
undertaken in bad faith to mislead Internet users into believing Complainant was
affiliated with or endorsed the
opinions on Stopcrestwood.com. As stated
in Complaint’s Exhibit E (see Contact
Information for Stopcrestwood.com),
the Stopcrestwood.com website clearly
and succinctly provided ownership information to all Internet users: ‘This site is owned and maintained by…Mary
Rae Fouts [Respondent]… Unless attributed to someone else, opinions expressed
on this website
are those of Stopcrestwood.com…’ Placing a disclaimer on Stopcrestwood.com that the views were not those of the Complainant
was not only unnecessary, it was never requested by Complainant.”
Respondent
takes issue with various communications sent by Complainant’s counsel, in
particular Complainant’s counsel’s letter of
July 9, 2003, about which she
states:
“In MoFo’s [Morrison & Foerster,
Complainant’s counsel] July 9, 2003 letter, Exhibit 20, Complainant reached a
new level of absurdity. Complainant now
wished to ‘avoid’ transfer of namicontracosta.com,
and demanded that I provide my Register.com user name and password or face
legal action and attempted legal cost recovery. My compliance was literally impossible, as it would give
Complainant access to my personal and business e-mail, websites, and credit
cards. Furthermore, as the continued
owner of namicontracosta.com, I would
have remained liable for Complainant’s actions.”
Respondent
requests that the Panel find that Complainant has engaged in Reverse Domain
Name Highjacking (UDRP Rule 1).
C.
Additional Submissions
Complainsnt
contends that it has a registered trademark for NAMI and common law trademark
right for “NAMI Contra Costa”. It
contends that the disputed domain name is confusingly similar to its registered
and common law marks.
It
contends that Respondent’s stated reason for registering the disputed domain
name (namely, to provide generic information on “n-a-m-i”)
is not supported by
the evidence.
It
states:
“…
Respondent’s right to voice opinions contrary to those of NAMI Contra Costa did
not create a legitimate ‘fair use’ for her to misleadingly
use the namicontracosta.com
domain name, which is confusingly similar to NAMI Contra Costa’s namicontracosta.org
domain name, as a platform for those opinions.”
FINDINGS
Complainant has a registered trademark
“NAMI” and, at least since 1997, a common law trademark “NAMI Contra Costa”.
The parties are engaged since early 2003
in a bitter public dispute concerning the planned opening of a mental health
facility (the
Crestwood facility).
In the context of this dispute,
Respondent created in February 2003 a site <stopcrestwood.com> containing
criticism of the planned
opening of the Crestwood facility. This site was operational and regularly
updated through August 2003.
The <stopcrestwood.com> site is
clearly identified as Respondent’s personal site and a disclaimer clearly
states that the opinions
published on the site are those of Respondent. It is also clearly identified as a site
criticizing the planned Crestwood facility and users could not consider that
the site is associated
with Complainant.
Respondent registered the disputed domain
name on April 1, 2003.
From April to June 2003, the disputed
domain name was redirected to the <stopcrestwood.com> site.
On June
11, 2003, counsel for Complainant wrote to Respondent to request that
Respondent immediately abandon any and all use of the
disputed domain name and
any other misleading use of the NAMI or NAMI Contra Costa names or marks. Counsel also requested that Respondent
assign all rights in the disputed domain name to Complainant. As counsel’s letter made clear, however,
Complainant did not wish to
interfere with Respondent’s right to voice her opinions regarding the proposed
Crestwood facility. Rather, Complainant
wanted only to be sure that Internet visitors were not confused by Respondent’s
misleading use of the <namicontracosta.com>
domain name.
From June 2003 on, the website at the
disputed domain name has contained content regarding a Soviet-made automobile, the NAMI-1.
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.
Complainant has provided sufficient
evidence to satisfy its burden of proving that it has at least common law
trademark rights in
a name that is confusingly similar to the disputed domain
name.
Accordingly, this Panel holds that the
disputed domain name is confusingly similar to a mark in which Complainant has
rights.
The question of whether or not Respondent
has rights or legitimate interests in the disputed domain name is inextricably
linked to
the question of whether she registered and is using the disputed
domain name in bad faith.
As Respondent correctly points out, the
registration and redirection of a domain name to an information site is clearly
a bona fide
business activity in the sense of paragraph 4(c)(iii) of the Policy,
absent an intent to misleadingly divert consumers or to tarnish
the trademark
or service mark at issue.
An intent to mislead or to tarnish would
be, in the opinion of this Panel, an act of bad faith under the Policy.
Complainant alleges that the information
provided by Respondent is false and misleading, which might indicate an intent
to tarnish. But Respondent alleges that
the information is correct. These
proceedings, conducted under the UDRP, are not the appropriate forum in which
to argue complex question of fact, which facts
might or might not constitute
violations of national laws. National
courts are the appropriate forums in which to argue such violations. Therefore, this Panel will make no attempt
to evaluate the accuracy, or not, of the information posted on the web by
Respondent.
Thus the only question that this Panel
must address is whether there are circumstances that indicate that, in this
particular case,
Respondent registered and used the domain name with an intent
to misleadingly divert Internet users, in which case Respondent’s use
could not
be considered bona fide or legitimate under the Policy.
There can be no doubt that Respondent has
the right to create a website containing criticism of Complainant. Indeed, Complainant recognizes this. However, according to Complainant,
Respondent does not have the right to use Complainant’s mark for the domain
name of the criticism
site, because, says Complainant, that misleads Internet
users and could result in confusion.
The question of whether or not criticism
sites violate the Policy is a controversial issue, with Panels taking opposite
views on the
matter.
Decisions
transferring the domain names of criticism sites include Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l,
<cogema.org> D2001-0376 (WIPO May 14, 2001) (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]”, especially given that the mark was famous);
and Monty & Pat Roberts, Inc. v.
Keith, <montyroberts.net> D2000-0299 (WIPO June 9, 2000) (“[T]he
Panel does not dispute Respondent’s right to establish and maintain
a website
critical of (the Complainant) . . . . However, the panel does not consider that
this gives Respondent the right to identify
itself as Complainant”, especially
given that the mark was famous); and
Compagnie de Saint Gobain v. Com-Union Corp., <saint-gobain.net>
D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly
chose a domain name, identical
to Complainant’s mark, to voice its concerns,
opinions, and criticism about Complainant).
Decisions denying the transfer of the
domain names of criticism sites include Bridgestone
Firestone, Inc. v. Myers, <bridgestone-firestone.net> D2000-0190
(WIPO July 6, 2000) (finding that Respondent has free speech rights in the
domain name
<bridgestone-firestone.net> where Respondent linked the
domain name to a “complaint” website about Complainant’s products and
stating
that as a general proposition: “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 528, 535-536 (E.D. Va. 2000)); Legal & Gen. Group Plc v. Image
Plus, D2002-1019 <legal-and-general.com> (WIPO Dec. 30, 2002) (finding that initial interest confusion is displaced by the
criticism content at Respondent's website, that such a "low level
of
confusion is a price worth paying to preserve the free exchange of ideas via
the Internet, and that “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”); and Britannia Building Society v. Britannia Fraud Prevention,
<britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001).
This Panel takes the view that the goals
of the Policy are limited. Domain name
registrations are basically first-come-first-served, and the purpose of the
Policy is limited to rectifying cases of obvious
cyber-squatting.
The closest equivalent to a legislative
history for the Policy can be found in the 30 April 1999 Final Report of the
WIPO Internet
Domain Name Process, which formed the basis for the ICANN Policy
(available online at: http://wipo2.wipo.int/process1/report/doc/report.doc
). This report states at paragraph
135:
In view of the weight of opinion against
mandatory submission to an administrative procedure in respect of any
intellectual property
dispute arising out of a domain name registration, the
final recommendations of the WIPO Process contain two major changes in respect
of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is
limited so that it is available only in respect of deliberate, bad faith,
abusive, domain name
registrations or “cybersquatting” and is not applicable to
disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive
domain name registration is defined solely by reference to violations of
trademark rights and not
by reference to violations of other intellectual
property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of
abusive registrations (or cybersquatting), as defined below, and would not
be
available for disputes between parties with competing rights acting in good
faith.
And at 166:
The first limitation would confine the availability of the
procedure to cases of deliberate, bad faith abusive registrations.
And at 172:
… Domain name registrations that are justified by legitimate
free speech rights or by legitimate non‑commercial considerations
would
likewise not be considered to be abusive.
This Panel agrees with the case law cited
by the Panel in Bridgestone Firestone,
Inc. v. Myers, <bridgestone-firestone.net> D2000-0190 (WIPO July 6,
2000), but mutatis mutanda, in the sense that Complainant in the present
case would not be expected to have a domain name under “.com” (see discussion
on that
point at the end of this section):
The
"fair use doctrine applies in cyberspace as it does in the real
world." See Brookfield Communications, Inc. v. West Coast Entertainment
Corp., [1999] USCA9 225; 174 F.3d 1036, 1065 (9th Cir. 1999). In Brookfield, a
trademark infringement case, the court found that the domain name in question,
which was used for a commercial website, infringed
on the plaintiff’s
trademark, after an extensive factual analysis of several factors on the issue
of likelihood of confusion, including
in particular the relatedness of the
products and services offered. The Brookfield court cited a number of
cases for the proposition that fair use could include the use of a trademark to
identify the trademark holder’s
products in certain circumstances, but rejected
the defendant’s fair use defense, noting that the trademark was being used in
the
domain name to describe the domain name holder’s products and not simply to
identify the trademarked products. The court also noted
that the domain name
utilized the <.com> top level domain, "signifying the commercial nature
of the site", and pointed
out that "web users often assume, as a rule
of thumb, that the domain name of a particular company will be the company name
followed by ‘.com’". Id. at 1044-1045.
In
this case, the Respondent is not using the website for commercial purposes and
has not appropriated the <.com> domain, which
the Complainants have
themselves registered and are using for a commercial website. This case is more
closely analogous to the facts
in Bally Total Fitness Holding Corp. v. Faber,
29 F.Supp.2d 1161 (C.D. Cal. 1998), one of the cases cited approvingly by the
Ninth Circuit Court of Appeals in Brookfield on the fair use issue. In Bally,
the court held that the defendant’s use of a trademark in an Internet site for
purposes of consumer commentary and criticism did
not infringe or dilute the
plaintiff’s mark. The court held that the defendant was "exercising his
right to publish critical
commentary about Bally" and that he could not do
so without making reference to Bally:
Faber
is using Bally’s mark in the context of a consumer commentary to say that Bally
engages in business practices, which Faber finds
distasteful or unsatisfactory.
This is speech protected by the First Amendment...As such; [sic] Faber can use
Bally’s mark to identify
the source of the goods or services of which he is
complaining. This use is necessary to maintain broad opportunities for
expression.
Id. at 1165, 1167.
The
court in Bally thus recognized both fair use and free speech as defenses
to trademark infringement and dilution in the Internet context. In Bally,
the defendant was not using the trademark in the domain name itself, however,
but on the website, which prominently stated, inter alia, "Bally
sucks." The Bally court distinguished cybersquatting cases like Panavision
International v. Toeppen, [1998] USCA9 991; 141 F.3d 1316 (9th Cir. 1998)
on the grounds that the use of the trademark in domain names in those cases
created a high likelihood of consumer confusion, i.e., that reasonably
prudent consumers would believe that the site using the appropriated name was
the trademark owner’s site. However,
the court pointed out that "no
reasonably prudent Internet user would believe that "Ballysucks.com"
is the official
Bally site or is sponsored by Bally." Bally at
1163-1164.
The
Panel sees no reason to require domain name registrants to utilize
circumlocutions like <trademarksucks.com> to designate
a website for
criticism or consumer commentary. "We must be acutely aware of excessive
rigidity when applying the law in the
Internet context; emerging technologies
require a flexible approach." Brookfield, supra, 174 F.3d at 1054.
In the cybersquatting cases, the domain names in question generally were
<trademark.com> domain names, which
prevented the trademark holder from
utilizing the customary commercial domain name for its "official"
site. See, e.g., Panavision International v. Toeppen, supra.
Here, however, the domain name registrant has not usurped the <.com>
domain but has utilized only the <.net> domain,
has posted disclaimers on
the website homepage, and has included criticism and commentary on the site so
that a reasonably prudent
Internet user can tell that the site is not the
trademark holder’s "official" site. See Western Hay Company v.
Carl Forester, ICANN Case No. FA0001000093466 (Internet user who arrived at
respondent’s "discussion forum" website would not be confused).
The
Panel is aware of the line of trademark infringement cases holding that
<trademarksucks.com> domain names may be protected
as free speech because
of their "communicative content" while <trademark.com> domain
names serve merely as "source
identifiers" and are thus unprotected. See,
e.g., OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y.
2000), cited by Complainants. The Panel declines, however, to adopt that distinction
for purposes of analysis of the Policy’s
requirements and notes that the Second
Circuit Court of Appeals has recently expressly rejected this distinction
because "the
nature of the domain names is not susceptible to such a
uniform, monolithic characterization," in view of the "lightning
speed development" and "extraordinary plasticity" of both the
Internet and the domain name system. See Name.Space, Inc. v. Network
Solutions Inc. [2000] USCA2 17; 202 F.3d 573, 585 (2d Cir. 2000). With respect to free
speech, the Second Circuit held in Name.Space that "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."
Id. In Avery Dennison Corp. v. Sumpton, [1999] USCA9 436; 189 F.3d 868
(9th Cir. 1999), a trademark dilution case, the Ninth Circuit Court of Appeals
noted that the use of a <trademark.net> domain
name rather than a
<trademark.com> domain name raised genuine issues of material fact on
virtually every element of the dilution
claim, including whether such use
constituted "commercial use". 189 F.3d at 879-880. The Court noted
that "<.net>
applies to networks and <.com> applies to
commercial entities," and that "a fact-finder could infer that
dilution
does not occur with a <trademark.net> registration." Id.
at 880-881. Such fact-intensive analyses on issues of trademark
infringement and dilution are beyond the scope of this administrative
proceeding and are better carried out by arbitrators or courts.
As noted above, the disputed domain name
was redirected to a criticism site, but the site was clearly identified as
criticizing the
planned Crestwood facility and users would not be confused into
believing that the site was associated with Complainant.
This Panel also agrees with Britannia
Building Society v. Britannia Fraud Prevention,
<britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001):
Complainant
has failed to prove that Respondent lacks a legitimate interest in the Domain
Name. In particular, it has failed to prove
that Respondent is not entitled to
the protections of paragraph 4(c)(iii) of the Policy, which provides that a
Respondent has a legitimate
interest if it 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".
The
Panel concludes that Respondent is making a legitimate noncommercial use of the
domain name because Respondent maintains its website
as a site critical of the
policies of the management of Britannia Building Society. See Bridgestone
Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone
Corporation v. Jack Myers, Case No. D2000-0190 (WIPO July 6, 2000); Compusa
Management Co. v. Customized Computer Training, Case No. FA0006000095082
(NAF Aug. 17, 2000). Although Complainant does allege that Respondent has
registered and used the Domain
Name misleadingly to divert customers to its
highly critical site, with the probable intent of tarnishing the mark at issue,
such
allegations fail to undermine the legitimacy of Respondent’s use.
The
Respondent’s actions cannot be characterized as consistent with an "intent
for commercial gain to misleadingly divert consumers."
That phrase refers
to the kind of confusion that arises in a trademark infringement context, when
a competitor diverts consumers
to its site and, potentially, diverts sales. See
Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416
(WIPO June 29, 2000); Houghton Mifflin Company v. The Weathermen, Inc.,
Case No. D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion "for
commercial gain" and thus no loss of legitimacy. That some internet users might
initially
be confused into thinking that, because of the use of the mark in the
Domain Name, <britanniabuildingsociety.org> is Complainant’s
official web
site is of no moment. First, any such confusion would immediately be dispelled
by Respondent’s prominent disclaimer
and the link that is displayed to
Complainant’s official site. Second, and in any event, such a low level of
confusion is a price
worth paying to preserve the free exchange of ideas via
the internet. A user who misleadingly stumbles upon Respondent’s site while
looking for Complainant’s official site need only click the "back"
button to return to her search, or the link helpfully
provided by Respondent.
In the present case, Respondent’s
criticism site clearly states that the views are Respondent’s own personal
views, so a user would
not be confused into thinking that he or she had
accessed information provided by Complainant.
Complainant is promoting the Crestwood facility and its name is associated
with information regarding the facility.
Thus, Respondent has, prima facie, a legitimate interest in using
a variation of Complainant’s name in order to publicize her own views
concerning the Crestwood facility.
However, Respondent’s use of the disputed
domain name would not be legitimate (and would be in bad faith) if, as
Complainant alleges, she registered and used the site deliberately to mislead
or
to confuse Internet users.
Complainant has not presented any
evidence to show that users were indeed mislead or confused. Nor has Complainant presented convincing
evidence that Respondent acted with an intent to mislead or to confuse.
Furthermore, there is no reason to
suppose that Internet users would tend to look for information on Complainant
within the top level
domain “.com”.
Complainant is a non-profit organization. The types of organizations that should be registered in the
several top-level domain names are defined in IETF RFC 1591, clause 2
of which
states:
“COM - This domain is intended for
commercial entities, that is companies. … ”
Thus, Complainant could be expected to
have registered a domain name in a domain other than “.com”, which is in fact
the case, since
Complainant’s website is in the top level domain “.org”.
The Panel finds that Complainant has
failed to satisfy its burden of proving that Respondent registered and used the
site deliberately
to mislead or to confuse Internet users.
Complainant has not alleged, much less
provided evidence to prove, that Respondent committed some other act of bad
faith when she
registered and used the contested domain name.
As noted above, the provision of
information regarding a matter in which Complainant is active is a legitimate
use of the contested
domain name, absent other factors that would make the use
illegitimate.
As a consequence, this Panel holds that
Respondent does have legitimate interests in the contested domain name.
For the reasons stated above, this Panel
finds that Complainant has not satisfied its burden of proving that Respondent
acted in bad
faith.
Furthermore, the condition of 4(a)(iii)
of the Policy is “that the domain name has been registered and is being used
in bad faith.” Respondent’s current use
of the disputed domain name is clearly permissible, since the disputed domain
name now merely points to a
website containing information on the Russian
automobile called NAMI. Such use is
clearly not in bad faith. On this count
also, the Complaint fails.
Paragraph 1 of the Rules defines Reverse Domain
Name Hijacking:
Reverse Domain Name
Hijacking means using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.
Respondent
invokes this provision when it requests the Panel to find that Complainant is
using the Policy in a bad faith attempt to
deprive a registered domain name
holder of a domain name.
The general conditions for a finding of
bad faith on the part of Complainant are well stated in Smart Design LLC v.
Carolyn Hughes, <smartdesign.com> D2000-0993 (WIPO, Oct. 18, 2000):
Clearly, the launching of an
unjustifiable Complaint with malice aforethought qualifies, as would the
pursuit of a Complaint after
the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline
International, Inc. v. Gold Line, <goldline.com> D2000-1151 (WIPO,
Jan. 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, <sydneyoperahouse.net>
D2000-1224 (WIPO, Oct. 31, 2000) (where the condition is stated as “the
respondent must show knowledge
on the part of the complainant of the
respondent’s right or legitimate interest in the disputed domain name and
evidence of harassment
or similar conduct by the complainant in the face of
such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, <planexpress.com>
D2000-0565 (WIPO, July 17, 2000).
There is nothing in the record to
indicate malice on the part of Complainant and nothing to indicate that
Complainant knew that its
case was insupportable.
Respondent’s request is ill founded. As noted above, Panels have consistently
been split on the question of whether or not criticism sites violate the
Policy. Respondent’s response shows
great familiarity with the Policy and the case law under the Policy. Indeed, Respondent goes so far as to cite the
travaux preparatoires, which is not commonly done by the parties.
Given her deep knowledge of the UDRP,
Respondent should have known that many Panels take a view on criticism sites
that is the opposite
of the view taken by this Panel in the present case and
that, therefore, the Complaint could well have succeed if it had been evaluated
by a different Panel.
Thus, Respondent should have known that
her claim of Reverse Domain Name Highjacking is unfounded to the point of being
frivolous.
DECISION
Having
considered all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
The Complaint is DISMISSED.
Respondent’s request for a finding of
Reverse Domain Name Highjacking is DENIED.
Richard Hill, Panelist
Dated: December 6, 2003
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