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Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign [2004] GENDND 401 (30 April 2004)

1. The Parties

The Complainants are Covance, Inc., Princeton, New Jersey of United States of America, and Covance Laboratories Ltd., Harrogate, North Yorkshire, of United Kingdom of Great Britain and Northern Ireland, represented by Houthoff Buruma, Netherlands.

The Respondent is The Covance Campaign, Harrogate of United Kingdom of Great Britain and Northern Ireland represented by James Davis, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <covancecampaign.com> (the “Disputed Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 18, 2004. On March 18, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the Disputed Domain Name. On March 18, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2004. The Response was filed with the Center on April 6, 2004.

The Center appointed Alistair Payne as the sole panelist in this matter on April 16, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Covance Inc. is one of the world’s largest drug development services companies with 2003 revenues of US$940 million, global operations in 18 countries, and 6,500 employees worldwide.

Covance Laboratories Ltd. is a wholly owned subsidiary of Covance Inc., which operates a laboratory in Harrogate, UK. The company was incorporated in January 1997, but the laboratory has been in business since 1975. Covance Laboratories Ltd. is engaged in the business of undertaking scientific pre-clinical research into products on behalf of customers who are principally engaged in the pharmaceutical, but also the chemical and agrochemical industries.

Covance Inc. is owner of rights in various trade mark registrations in various jurisdictions around the world, including but not limited to the following trade mark registrations:

Community trade mark registration COVANCE, registration number 000381863, application date October 10,1996, registration date October 19, 1998, registered in class 42;

United States trade mark registration COVANCE, registration number 2188319, application date October 2, 1996, registration date September 8, 1998, registered in class 35 and class 42;

United States trade mark registration COVANCE (device), registration number 2209534, application date October 18, 1996, registration date December 8,1998, registered in class 35 and class 42;

Canadian trade mark registration COVANCE, registration number TMA491374, application date December 6,1996, registration date March 13, 1998;

Australian trade mark registration COVANCE, registration number 719918, application date October 17, 1996, registration date November 26, 1997, registered in class 42;

Chili trade mark registration COVANCE, registration number 503033, registration date March 5, 1998, registered in class 42;

Argentina trade mark registration COVANCE, registration number 1655134, registration date January 12, 1998, registered in class 42.

5. Parties’ Contentions

A. Complainant

1. The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

The Disputed Domain Name is confusingly similar (a) to the trade mark COVANCE, for which Covance Inc. owns various trade mark registrations, including a Community trade mark registration that is valid in the United Kingdom, where Respondent is established, and (b) to the trade name “Covance”, in which Covance Laboratories Ltd. has trade name rights in the United Kingdom.

All trade mark registrations referred to above, including the Community trade mark registration COVANCE, were filed and registered before the date of registration of the disputed domain name. The trade mark rights of Complainants therefore predate the registration of the Disputed Domain Name by the Respondent. The Complainants have intensively used the trade mark COVANCE since 1996, in various countries worldwide, including the United Kingdom, the United States of America, Germany, Switzerland, Argentina, Chile and Australia.

The Disputed Domain Name incorporates the entire trade mark COVANCE of the Complainants, with the addition of the descriptive word “campaign” and with the addition of “.com”. The addition of “.com” is an insignificant addition which does not remove the likelihood of confusion between the trade mark and the Domain Name, as it only indicates that the Disputed Domain Name is registered in the “.com” gTLD.

The mere addition of the generic word “campaign” to the Complainants’ trade mark COVANCE does not remove the likelihood of confusion between the trade mark and the Disputed Domain Name (see Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596 and Wal-Mart Stores, Inc. v. Richard Maclead d/b/a For Sale, WIPO Case No. D2000-0662). Further, a domain name is deemed confusingly similar to a trade mark when a search engine query for such trade mark pulls up such domain name (see Wal-mart Stores v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477). The Disputed Domain Name is confusingly similar to the Complainant’s trade mark as the Respondent’s website ranks high in a search engine query for the Complainant’s trade mark. A search for the trade mark COVANCE in the Yahoo search engine shows the Respondent’s website ranked second; a search for the trade mark COVANCE in the AltaVista search engine shows the Respondent’s website ranked third; a search for the trade mark COVANCE in the Google search engine shows the Respondent’s website ranked second.

The use of the Disputed Domain Name causes confusion amongst Internet users and (potential) customers and relations of Complainants. The Respondent admits the actual existence of such confusion on its website by stating:

The Respondent is contacted regularly by Internet-users who have the intention to contact the Complainants and who are under the impression that they are doing so through the Respondent’s website, which clearly shows the likelihood of confusion between the trade mark and the Disputed Domain Name.

By using the word “campaign” in combination with the trade mark COVANCE, the Respondent is misleading Internet-users into thinking that the website of Respondent is associated with the Complainants. The public may perceive the use of the word “campaign” in combination with the trade mark COVANCE to be used for a website of the Complainants, for instance used in a marketing campaign or other activity endorsed or organized by the Complainants. The public may also perceive the use of the word “campaign” in combination with the trade mark COVANCE to be used for a website through which the Complainants intend to obtain feedback from its customers. In Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195, the Panel held that “it is not unknown for companies to establish complaint or comment sites or areas of sites to obtain feedback on their products; accordingly, some people might suppose that a website of this nature at the Domain Name was operated by the Complainant”.

In summary, the Complainants contend that the Disputed Domain Name is confusingly similar to the trade mark COVANCE of the Complainants and that the first requirement of the Policy is therefore met.

2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

The Complainants contend that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name for the following reasons.

The Respondent is not affiliated with either Complainant, is not a franchisee or licensee of either Complainant, nor have the Complainants otherwise authorized the Respondent to register the Disputed Domain Name or use any of the Complainants’ trade marks.

The Respondent is an animal rights activists group whose activities are targeted at the Complainants, more specifically at Covance Laboratories Ltd. The Respondent regularly harasses the Complainants and its employees. The Respondent’s administrative contact and technical contact for the Disputed Domain Name, Mr. Paul Le Boutillier, was recently convicted to a five-year jail term for making thousands of harassing phone calls to various parties, including the Complainants and its employees.

The Respondent operates a website under the Disputed Domain Name on which threats against the Complainants and its employees, defamatory remarks about the Complainants and their employees and information which infringes privacy rights are regularly published, and on which the harassment of the Complainant Covance Laboratories Ltd, its employees and its suppliers is advocated, examples of which are provided as evidence by the Complainants, including:

- an article in which defamatory remarks that an employee of the Complainants was compared to “a guard at a Nazi death camp”;

- an article in which the Respondent threatens to publish confidential information consisting of a confidential list of clients of the Complainants as well as confidential and proprietary research reports, which the Complainants say were stolen from the Complainants’ UK facilities in 2003, for the sole purpose of disrupting the Complainants’ business and providing such confidential information to the Complainants’ competitors; and

- an article in which the Respondent advocates the harassment of a supplier of the Complainants by stating: “..our aim is clear: Drop Covance, or we gonna make them freak out! [..] there are people ringing them up day and night, there was a home visit, and they get email spammed by activist almost every day.”

The Respondent does not use, nor has the Respondent made any demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services. The Respondent offers T-shirts for sale on its website which make unauthorized and infringing use of Complainants’ trade mark COVANCE, with texts such as “Covance: Animal Testing Harms People!”. The Respondent further offers posters for sale on its website which make untrue allegations and defamatory remarks about the Complainants, such as a poster which depicts a dead animal with texts as “Covance killed her” and “She was killed to make Covance wealthier”. The Respondent further offers “vivisector gnomes” for sale at its website. The offering of such trade mark-infringing and defamatory goods cannot be deemed to be bona fide.

The Respondent has not been known by the Disputed Domain Name. The Respondent has been conducting its activities under the name “Covance Campaign” since early 2001, i.e. after the date of registration of the Complainants’ trade marks. On February 14, 2002, Respondent registered the Disputed Domain Name, also after the date of registration of the Complainants’ trade marks. As the Respondent’s activities are directly aimed at the Complainants, more specifically at Covance Laboratories Ltd., the Respondent was aware of the existence of the trade mark COVANCE and the goodwill contained therein. The use of the name “Covance Campaign” and the registration of the Disputed Domain Name by the Respondent without permission infringe the Complainants’ trade mark rights and can therefore not be deemed to be made in good faith.

The Respondent does not make a legitimate non-commercial or fair use of the Disputed Domain Name. The Complainants do not per se object to the operation of a website on which the Respondent publicly and fairly informs the public of criticism it may have with respect to the activities of the Complainants. This does however not grant the Respondent a right to use a domain name which is confusingly similar to the Complainants’ trade mark, especially since it is not clear for the public from domain name itself that Respondent’s website is a complaint site, and the Complainants refer to the decision in MicroFinancial, Inc. v. Glenn Harisson, WIPO Case No. D2003-0396 to support this argument.

The website hosted under the Disputed Domain Name cannot be deemed a legitimate criticism website, as it is clearly aimed at disrupting the Complainants’ business activities, for instance by publishing threats to the Complainants, their employees and suppliers. The nature of the content of the website cannot be derived from the Disputed Domain Name, which clearly shows that the Respondent is not making a legitimate non-commercial use of the Disputed Domain Name.

Even if the Respondent’s website could be deemed to be a legitimate criticism website, which is disputed by the Complainants, this can not qualify as a right to use Complainants’ trade mark in the Domain Name (see The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823).

The exercise of free speech does not grant the Respondent a right to use the Complainants’ trade mark in a domain name, and the Complainants seek to rely on the following cases to support their contention: The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166, Westminster Savings Credit Union v. Hart Industries Inc. And Gregory Hart, WIPO Case No. D2002-0637 and Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018.

By using the Disputed Domain Name to offer for sale T-shirts, other “merchandising” goods and to acquire donations the Respondent tries to obtain commercial gain by misleadingly diverting customers to its website. Further, by using the trade mark COVANCE as a meta-tag in its home page the Respondent misleadingly diverts potential customers of Complainants to its website. The diverting of customers is also shown by the Respondent’s statement that it is regularly contacted by persons trying to contact the Complainants.

The Respondent also uses its website to tarnish the Complainants’ trade mark COVANCE. For instance, on the website, the trade marks of Complainants are regularly referred in a defamatory manner, such as “Scumvance” and “Crapvance”. Tarnishment is also shown by the Respondent adapting the Complainants’ device trade mark.

In summary, the Complainants contend that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The second requirement of the Policy is therefore met.

3. The Disputed Domain Name was registered and is being used in bad faith

The Complainants contend that, for the following reasons, this element of the Policy is also established.

The Respondent was aware of the existence of Complainants and the existence of the Complainants’ trade mark rights at the moment of registration of the domain name. This is clear from the fact that the Respondent’s activities are directly targeted at the Complainants. The Disputed Domain Name was therefore registered in bad faith.

The threats made to Covance Laboratories Ltd, its employees and suppliers, the defamatory remarks on the Complainants and its employees and the misleading of customers, are all aimed at disrupting the business of Complainant, which is clear evidence of bad faith on behalf of the Respondent. The Respondent can be deemed a competitor of Complainants as provided in paragraph 4(b)(iii) of the Policy (the Complainants refer to The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571).

Paragraph 4(b)(iv) of the Policy is also established as the Respondent sells T-shirts and other merchandising goods as well as “vivisector gnomes” through its website, which clearly shows the intent for commercial gain of the Respondent. The Respondent further uses the website to acquire donations, which can also be deemed an intent for commercial gain.

Bad faith can be derived from any circumstances of the matter, including but expressly not limited to the circumstances specified in paragraph 4(b) of the Policy. The bad faith of the Respondent consists amongst other things of the making of threats against the Complainants, publication of personal data of Complainants’ employees, the advocating of harassment of the Complainants, its employees and its suppliers and the publication of defamatory remarks on the Complainants and its employees, as described above. The bad faith of the Respondent can be clearly derived from these actions and circumstances.

B. Respondent

1. The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

The Respondent contends that it is reasonable to use the name ‘Covance’ in the campaign’s title, to clarify who it is and why it is against the Complainants’ policy of vivisecting animals, and its name was chosen as it is relevant to the company or activity it is seeking to address. Further, the results from search engines show the Respondent’s domain alongside a clear disclaimer that it is in no way associated with the Complainants. Seeking to stop any other party from using ‘Covance’ is an infringement of civil liberties.

The meta tags have been changed so that the Respondent’s website will now be found away from the Complainants; website and the title shown for the Respondent’s site is “The Covance Campaign – (not part of covance inc.)”, thereby removing any confusion to web users. The use of the word’covance’ in the Respondent’s meta-tags is necessary so that people know whom it is campaigning about. It is not intended to mislead people - if people wanted to know if there was a anti-animal testing group protesting against the Complainants they would search “animal testing covance” or something to that effect. If ‘covance’ was not included in the meta-tags the Respondent’s site may not appear for many pages and the Respondent would not be acting in internet users’ best interests as the Respondent’s site (or a similar site) would not appear in search results.

Further, the internet search results state that the Respondent’s website is not part of or run by Covance Inc and is the official web site of the Covance Campaign which is against animal testing by the Complainants and the home page of the Respondent’s website states that “This campaign is against the use of animal experiments at Covance, and is not part of Covance Inc.”

The Respondent has only been contacted once and it made it clear that the enquirer ought to look at “www.covance.com” for matters relating to the Complainants. The Respondent ensures that misdirected post is sent back with an explanation of who the Respondent is and where to find the ‘official’ website of the Complainants. Although the Respondent has received emails from individuals wanting to know more about animal experiments and asking the Respondent for its view on the Complainants, it has never received any form of email complaint or otherwise that was meant to go to the Complainants. These people were fully aware that the Respondent’s site was not run by the Complainants and that the Respondent is against the testing on animals.

2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

The Respondent does not encourage any illegal activities nor does it encourage any one to do so on its behalf. Activists that attend regular demonstrations at the Complainants conduct themselves within the law. The number of arrests over the last 8 years has been in total 3. This, says the Respondent, does not constitute ‘regular harassment’ as the Complainants contend.

Mr. Le Boutillier agreed to register the Disputed Domain Name, and any phone calls he may have made were done by him acting alone. Where Mr. Paul Le Boutillier is at present is not important to the Disputed Domain Name, although he does still own the property at which the Disputed Domain Name is registered. The actual content of the Respondent’s website is not what is in question in this Administrative Proceeding. It is only the Disputed Domain Name that is in dispute and therefore the Complainants’ contentions, many of which are taken out of context, are not relevant.

The Respondent responds to each of the examples of articles upon which the Complainants seek to rely to prove this second element of the Policy and in summary asserts its rights in the Disputed Domain Name by hosting a website which fairly and openly criticizes the Complainants and its activities, and offers people the chance to discover the arguments against vivisection. Further, the Respondent submits that all articles are submitted by the public and are therefore the opinion of those people and not necessarily those of the Respondent. As soon as a complaint is made, the Respondent removes the relevant article as long as reasons are given. Any articles are simply written accounts of the activities & procedures that the Complainants engage in against animals and are written to provide an insight into the pharmaceutical industry.

In no part of the ‘vivisector gnomes’ page does it make any reference to the Complainants, these are simply anti vivisection props and were not even made to sell – the price was added to make the parody more real. The Respondent cannot make commercial gains from the name ‘Covance’ as it does not sell a service through its website. The Respondent does not try to fool or mislead people into giving money. If that was the Respondent’s aim the website would be awash with demands for cash donations and would not discuss animal testing. Donations are expected to be given, only if the donor knows what cause they are giving too, as is the case with any organization, group or company.

When the Respondent’s website was launched some 2 years ago none of its participants were aware that the name ‘Covance’ was a registered trade mark.

3. The Disputed Domain Name was registered and is being used in bad faith

The Respondent contends that there is no commercial gain in attracting visitors to a website that does not actually offer services for financial reward.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name to the Complainant Covance Inc.), the Complainant must prove that each of the three following elements are present:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element of the Policy requires the Complainant to prove (a) that it has rights in a trade mark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trade mark or service mark.

The Complainant, Covance, Inc., has provided sufficient evidence that it has registered trade mark rights in the mark COVANCE. No supporting evidence is provided of Covance Laboratories Limited’s common law rights to the name “Covance” in the UK. The issue for the Panel to consider is therefore whether the Disputed Domain Name is confusingly similar to the registered COVANCE trade marks.

The Disputed Domain Name incorporates the Complainant’s COVANCE trade mark in its entirety with the only other difference (excluding the generic top level “.com” suffix which is of no significance for the purposes of this part of the Policy) being the addition of the word “campaign”.

The addition of this descriptive word “campaign” does nothing to distinguish the Disputed Domain Name from the Complainant’s registered mark, and the only distinctive feature of the Disputed Domain Name is the Complainant’s COVANCE trade mark. In the Panel’s opinion, there is a real likelihood that a person who views the Disputed Domain Name on its own, and who has not viewed any of the content of the website to which the Disputed Domain Name resolves to, is likely to be confused into believing that the Disputed Domain Name is in some way connected with the Complainants – for example, as the Complainants contend, that person may think that the Disputed Domain Name should resolve to a website containing information on a marketing or other campaign specifically run by the Complainants.

The Respondent appears to contend that the use of a disclaimer on its website removes any confusion for the purpose of this element of the Policy. The Panel’s view is that the use of disclaimers is only relevant when considering the second and third elements of the Policy (i.e. whether the Respondent has rights or legitimate interests in the Disputed Domain Name and whether the Respondent has registered and is using the Disputed Domain Name in bad faith) and is not relevant when considering confusing similarity under this first element of the Policy.

The Panel finds that the Disputed Domain Name is confusingly similar to the trade mark COVANCE in which the Complainant, Covance, Inc., has rights and accordingly the Complainants have established this first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the 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 trade mark or service mark at issue.

The Complainant’s contentions in relation to this element of the Policy are numerous and appear to this Panel to center around the Respondent operating a website that (a) threatens, contains defamatory material about, and encourages harassment of, the Complainants and their employees, (b) contains and offers for sale trade mark infringing goods, (c) disrupts the Complainants’ business activities, (d) is found at a domain name that incorporates the Complainants’ trade mark or name, without prior permission being given by either of the Complainants, (e) purports to be a criticism website but offers products for sale thereby proving that the Respondent has intent for commercial gain, and (f) tarnishes the COVANCE trade mark by referring to their trade marks in a defamatory manner and adapts their trade marks in a derogatory manner.

The Respondent appears to contend that it does have rights or legitimate interests in the Disputed Domain Name for the purposes of the Policy as (a) it provides a disclaimer on its site that it is not attached in any way to the Complainants, (b) it does not encourage any illegal activity as the Complainant contends, (c) it removes articles if a valid complaint is made against that article, (d) the threats that the Complainants refer to were taken out of context and its service is to provide for the expression of free speech relating to vivisection, (e) it uses the Complainants’ “Covance” “name” to refer to the Complainants and not in a trade mark sense, (f) at the time of registration of the Disputed Domain Name, none of the Respondent’s members were aware that COVANCE was a registered trade mark, (g) it does not make a commercial gain from the website that the Disputed Domain Name resolves to, (h) it does not tarnish the COVANCE trade mark as it simply publishes information concerning the activities of the Complainants, and (i) the use of meta-tags is justified as internet users searching for information on the Complainants should be entitled to find the Respondent’s website.

The Respondent has clearly not put forward circumstances or provided evidence to demonstrate that it has legitimate rights in the Disputed Domain Name under paragraph 4(c)(i) or 4(c)(ii) of the Policy. The question for this Panel is therefore under paragraph 4(c)(iii) whether the 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 Complainant’s trade mark.

There are two elements to the test under paragraph 4(c)(iii) – firstly whether the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name and secondly whether there is intent by the Respondent to misleadingly divert consumers or to tarnish the Complainant’s mark.

Is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name?

At the outset the Panel accepts that the Respondent in this Administrative Proceeding is clearly using the website that the Disputed Domain Name resolves to for the purpose of commenting on and criticizing the Complainants’ activities. As discussed in the subsequent section below the Panel does not consider based on the evidence that the Respondent’s activities are commercially motivated.

Previous Panels have in similar factual circumstances taken divergent views as to whether a Respondent could ever be making a legitimate non-commercial or fair use of a domain name which is identical or confusingly similar to the complainant’s trade mark. The apparent trend in these cases is conveniently set out in a very recent decision by sole panelist David H. Bernstein in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.

The consensus approach in cases where a criticism site is based outside the United States appears to be that a Respondent has no right to use a domain name which is identical or confusingly similar to a Complainant’s trade mark for the purposes of lawful criticism of the Complainant. However where a criticism site is based in the United States, or where a case is decided by US-based Panels, a number of Panels have held that the Respondents use of an identical or confusingly similar trade mark as its domain name may give rise to a legitimate interest provided that there are no indicia of bad faith. Mr. Bernstein suggests that the discrepancy in approach between Panels arises from US legal principles and the robust approach to free speech derived from the First Amendment to the US Constitution and that this approach is mirrored by recent decisions of the US Federal Courts.

As a matter of principle, this Panel would not have thought that it was appropriate to import unique national legal principles into the interpretation of paragraph 4(c) of the Policy. This is so even if the effect of doing so is desirable in aligning decisions under the Policy with those emerging from the relevant courts and thus avoiding instances of forum shopping.

The overriding purpose of the Policy is to prevent cybersquatting in favour of legitimate trade mark owners but in doing so paragraph 4(c)(iii) of the policy clearly seeks to balance the trade mark owner’s right against the rights of a domain name owner in circumstances where use of the trade mark as part of the domain name is truly for the purposes of criticism and the domain name owner in no way seeks to make a commercial use of the trade mark or to tarnish it. Nowhere is it expressly anticipated by the Policy that this paragraph may not operate if the domain name at issue is found to be identical or confusingly similar to the Complainant’s trade mark.

However where the relevant criticism site is not based in the United States, the effect, as noted by Mr. Bernstein, of following the consensus Panel view is that once a Panel has found a domain name to be identical or confusingly similar to the Complainant’s trade mark the domain name necessarily cannot qualify as being used for “legitimate” or “fair use” purposes. No matter that the Respondent’s website may be truly a criticism site which in no way uses the trade mark in a trade mark sense, or seeks to divert custom from, or tarnish the Complainant. The Respondent will not succeed under paragraph 4(c)(iii).

The rationale for this approach appears to be that the Policy does not countenance any type of ‘initial confusion’ of the sort which occurs when a member of the public sees the disputed domain name and thinks that it may lead to a website associated with the Complainant. Even where there is a very clear disclaimer on the website which disabuses any notion that the website is endorsed by the Complainant, the consensus view is that the requirement of the Policy that the Respondent makes a “legitimate noncommercial or fair use of the domain name” prohibits any type of initial confusion from being created. On this view the Respondent could just as easily have exercised its right to freedom of expression by choosing a domain name which was not identical or confusingly similar to the Complainant’s trade mark [see for example Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; Myer Stores Limited v Mr. David John Singh, WIPO Case No. D2001-0763; The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823].

There is in this Panel’s opinion merit in the view that a domain name which is identical to the Complainant’s trade mark should necessarily not qualify as a “legitimate noncommercial or fair use” under paragraph 4(c)(iii) regardless of website content. This is because there is an immediate potential for false association with the trade mark owner and a degree of initial confusion which is at the top end of the spectrum. To hold otherwise may also prevent a trade mark owner from validly acquiring an identical domain name which it would otherwise be entitled to in accordance with the Policy’s aim of preventing cybersquatting, minimising confusion with established trade marks and helping to assure bona fide trade mark owners’ rights. It is worth mentioning that the vast majority of cases decided to date by panels under the “initial confusion” type rationale appear to concern domain names falling into this identical ‘trade mark.com’ category.

Where however a domain name is not “identical” but is “confusingly similar” to a Complainant’s trade mark in the ‘trade mark + modifier.com’ or ‘modifier + trade mark.com’ format then the degree of initial confusion may differ markedly in the particular factual circumstances of the case. In this Panel’s view this spectrum of confusion is not susceptible of some kind of brightline analysis or automatic rule for legitimacy. The potential degree of initial confusion needs to be considered in the particular factual circumstances of the case while keeping in mind the Policy’s aims.

The spectrum of possible modifiers and consequent degree of initial confusion will vary from examples which a Panel may consider to be borderline “confusingly similar” such as certain examples in the “sucks” type cases and with a negative implication such that the likely degree of initial confusion is extremely low, through to neutral modifiers such as the word “about” in the domain name <aboutsrichinmoy.com> [Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248] which has no possible effect in reducing the likely degree of initial confusion experienced by a member of the public when this domain name comes up in a list of search engine results concerning the yogi Sri Chinmoy.

Where the degree of initial confusion is at the lower end of the spectrum, because by way of example only, the modifier element imports a negative connotation such that people would be much less likely to assume that there is some connection between the Respondent’s domain name and the Complainant’s trade mark then it would seem to be an unreasonable extension of the trade mark owner’s rights under the Policy to automatically find that the Respondent does not have legitimate rights in the domain name under paragraph 4(c)(iii). Where on the other hand the modifier is purely neutral and subject to the particular factual circumstances is likely to have no effect in reducing the degree of initial confusion, then it would seem appropriate to find that the Respondent does not have legitimate rights in the domain name for the purposes of paragraph 4(c)(iii). The results from this type of analysis appear to broadly mirror the actual Panel findings in this class of case, other than those which have been clearly influenced by a consideration of US legal principles.

What then of a case such as the instant one in which the Respondent uses a modifier word which neither imports a negative connotation nor has a purely neutral effect? The modifier word “campaign” in <covancecampaign.com> is in this Panel’s view one of that class of terms which might be termed “innominate” in that it has neither a negative nor a purely neutral connotation, but does have some function as a distinguisher from the Complainant’s trade mark COVANCE and website at “www.covance.com”. The implication is of a campaign by the Complainant or in the alternative concerning the Complainant. Undoubtedly the Disputed Domain Name including the modifier in this form imports a degree of initial confusion as to whether the site it resolves to is endorsed by the Complainant, or whether it is an independent site concerning the Complainant’s activities. In this Panel’s opinion this degree of initial confusion is near the middle of the scale, but would have been immediately reduced had the Respondent sought to detract from the emphasis on Covance by inverting the modifier, as for example in <campaigncovance.com>, or had it chosen a more descriptive modifier with a negative connotation.

However it is also relevant in this Panel’s view to take into consideration the circumstances of the case and the actual real life effect of the Disputed Domain Name in relation to initial confusion. It is worth noting that paragraph 4( c)(iii) of the Policy does not seek to restrict the analysis of a “legitimate non-commercial” or “fair” use to an assessment on a narrow comparison of trade mark type basis. Use of these terms suggests that the Policy intends here a rather more holistic approach which balances the interests of trade mark owners against those of the public to enable reasonably free use of domain names so as to effectively facilitate freedom of expression.

A number of previous Panels have considered that “initial confusion” should be considered without reference to any website disclaimer or distinguishing factors at the site itself [for example MicroFinancial, Inc. v Glenn Harrison, WIPO Case No D2003-0396; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763]. This view appears to be on the basis that members of the public should not be confused for even a moment as to the source of the website to which the domain name at issue resolves.

Some other Panels have suggested that “it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade mark or service mark with a view to misleadingly attracting visitors to a website linked to that name” [Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No D2003-0248]. Of course the assessment as to whether the Respondent has an intention to misleadingly attract visitors to a website linked to the Disputed Domain Name requires consideration of the manner in which visitors may potentially arrive at that site.

In general terms the potential for initial confusion is most apparent at the search engine stage when people such as in the instant case enter the name “Covance” and bring up a list of sites containing that name. In this case the Panel is satisfied that even where the reference to the Respondent’s site comes up underneath the entry for the Complainant’s site it is clear on the face of the search engine entries that the Respondent’s site at “www.covancecompaign.com” is not in any way run by, associated with or endorsed by the Complainant and is in fact concerned with criticism of the Complainant’s activities. Further on reaching the Respondent’s website a bold disclaimer makes it clear from the very outset that this site has no connection with the Complainant and is against the use of animal testing by the Complainant. In these circumstances it is extremely difficult to see how members of the public could be misled into thinking that the site is associated with, or has any connection with the Complainant.

Accordingly, upon consideration of the degree of initial confusion arising from use of the Disputed Domain Name coupled with the very limited potential for the public to be misled in the actual circumstances of use, the Panel finds that the Respondent is making a legitimate non-commercial or fair use of the Domain Name for the purposes of the first limb of paragraph 4(c)(iii) of the Policy.

Is there intent for commercial gain to misleadingly divert consumers or to tarnish the COVANCE trade mark?

The Complainant contends that by offering for sale t-shirts and other “merchandise” and by acquiring financial donations the Respondent is making commercial gain. On the evidence, these are activities that are merely ancillary to the Respondent’s main purpose which is to criticize the Complainants’ activities, and the Complainants have not provided any evidence that the Panel could consider as actually or potentially diverting the Complainants’ business to the Respondent.

Further, the fact that some internet users may be confused into visiting the Disputed Domain Name under the mistaken belief that it is in some way connected with the Complainant is of no benefit to the Complainant for this part of the Policy, as the Respondent has provided evidence that its disclaimer is clear and is prominently positioned on its website and accordingly such users, who are likely to be few and far between, will immediately realise that they are not at a website connected with either of the Complainants and any such confusion is immediately dispelled.

With regard to the issue of whether the Respondent is tarnishing the Complainant’s trade mark, the Panel, in finding that no such tarnishment has been established for the purpose of paragraph 4(c)(iii) of the Policy in this case, refers to the decision in the case of Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, in which the learned Panelist stated:

For the above reasons, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

As the Panel has noted above, the Complainant is required to establish that each of the three elements of the Policy are present to succeed with its Complaint. The Complainant has failed to establish the second element of the Policy and accordingly it is not strictly necessary for the Panel to consider this third element of the Policy. However, for the record, the Panel finds that the Complainant has also failed to establish this third element of the Policy.

The Panel takes the view that the Respondent cannot be said to be a “competitor” of the Complainants for the purposes of paragraph 4(b)(iii). It is an organization that protests against their activities and nothing in the evidence suggests that it seeks to disrupt the Complainants’ business by diverting actual or potential customers of either of the Complainants to it. The sale of t-shirts and other “protest items” from a website purely in the context of a bona fide campaign of criticism does not satisfy the commercial gain provision contained in paragraph 4(b)(iv) of the Policy, which is concerned with commercial gain resulting from confusion with the Complainant’s mark as to sponsorship, affiliation, or endorsement of the Respondent’s website or of products advertised on its website.

Any remedy that the Complainants may have for defamation or the posting of so-called “threats” by the Respondent on its website fall outside of the scope of this Policy. The Panel confers with the Panel’s decision in the case of Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, where the learned Panel stated:

Accordingly, the Panel finds that the Complainant has failed to establish this third element of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alistair Payne

Sole Panelist
Date: April 30, 2004