Arbitration and mediation center administrative panel decision
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- A. Identical or Confusingly Similar
- B. Rights or Legitimate Interests
- C. Registered and Used in Bad Faith
ADMINISTRATIVE PANEL DECISIONWhite Ribbon Australia v. Whois Privacy Protection Service, Inc / Erin Pizzey Case No. D2016-1234 1. The Parties The Complainant is White Ribbon Australia of North Sydney, New South Wales, Australia, represented by Gilbert & Tobin Lawyers, Australia. The Respondent is Whois Privacy Protection Service, Inc of Kirkland, Washington, United States of America (“USA”) / Erin Pizzey of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Randazza Legal Group, USA. 2. The Domain Name and Registrar The disputed domain name 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2016. On June 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2016. On July 19, 2016, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date to July 24, 2016. The Response was filed with the Center July 24, 2016. The Center appointed Gabriela Kennedy, Andrew F. Christie and James McNeish Innes as panelists in this matter on August 22, 2016. The Panel finds that it was properly constituted. Each member of 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 The Complainant is an Australian company that is a member of the White Ribbon Campaign, a male-led movement to end violence by men against women. The Complainant owns registered rights in Australia in trade marks that incorporate the word “white ribbon”, including the WHITE RIBBON trade mark, WHITE RIBBON CAMPAIGN trade mark, WHITE RIBBON DAY trade mark, WHITE RIBBON design trade mark, AUSTRALIA’S CAMPAIGN TO STOP VIOLENCE AGAINST WOMEN WHITE RIBBON design trade mark, WHITE RIBBON NIGHT trade mark (“WHITE RIBBON Trade Marks”), the earliest of which was registered on June 7, 2007. The Respondent is an individual involved in researching and publishing articles regarding domestic violence. The Disputed Domain Name was transferred to the Respondent on November 9, 2014. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows: (a) The Complainant holds registered rights in the WHITE RIBBON Trade Marks in Australia, the earliest of which was registered on June 7, 2007. The Disputed Domain Name is identical or confusingly similar to the Complainant’s WHITE RIBBON Trade Marks. (b) The Respondent is not commonly known by the Disputed Domain Name, nor any name corresponding to it. The Respondent does not own any registered trade mark rights in relation to the Disputed Domain Name in Australia, UK or USA or any European Union community mark. The Respondent has not registered any business name in Australia that corresponds to the Disputed Domain Name. The Respondent is not a “reseller” of the Complainant’s services and is not a member of the White Ribbon Campaign. (c) The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trade marks. The Disputed Domain Name resolves to a website that advertises the Respondent’s book, and includes links to a website from which the book can be purchased. Before the Disputed Domain Name was transferred to the Respondent, it was owned by A Voice for Men (“AVfM”) and was used to solicit donations for AVfM. (e) The website to which the Disputed Domain Name resolves (“Respondent’s Website”) seeks to tarnish the reputation of the Complainant and its WHITE RIBBON Trade Marks. The Respondent’s use of the Complainant’s WHITE RIBBON trade mark in the Disputed Domain Name was due to its trade mark value and was intended to confuse users into believing that the Disputed Domain Name is associated with the Complainant. Such cannot amount to a right or legitimate interest in the Disputed Domain Name. (f) The Respondent does not use the Disputed Domain Name as a genuine free speech website to criticize the Complainant or the White Ribbon Campaign. The Disputed Domain Name itself does not include any text which indicates that it is critical of the Complainant (e.g. “sucks”). The Disputed Domain Name corresponds exactly to the Complainant’s WHITE RIBBON trade mark, and the Respondent’s Website impersonates the Complainant’s branding elements (e.g. use of a black and white color scheme and use of a logo that is similar to the Complainant’s looped ribbon logo). It is not immediately apparent from the Respondent’s Website that it is not associated with the Complainant, as the disclaimer is given less prominence then other elements of the website which indicate an affiliation with the Complainant or the White Ribbon Campaign. The right to criticize does not extend to registering a domain name that is identical to the Complainant’s trade mark. (g) The Respondent must have been aware of the Complainant and its WHITE RIBBON Trade Marks at the time she acquired the Disputed Domain Name. The disclaimer on the Respondent’s Website refers to the White Ribbon Campaign, and the Respondent has been involved in the area of domestic violence for many years. (h) AVfM used to own the Disputed Domain Name, and still hosts the Disputed Domain Name. The content on the Respondent’s Website is largely the same as when AVfM owned the Disputed Domain Name. There is an ongoing relationship between AVfM and the Respondent, and so AVfM’s lack of legitimate interest in the Disputed Domain Name should be imputed to the Respondent. AVfM offered to transfer the Disputed Domain Name to the Complainant shortly before it was transferred to the Respondent. The Complainant alleges that this shows that neither AVfM nor the Respondent had any legitimate interest in the Disputed Domain Name. (i) Due to the fame of the Complainant’s WHITE RIBBON Trade Marks, it is unlikely that the Respondent was not aware of them at the time she acquired the Disputed Domain Name. The Respondent’s Website includes several articles referring to the Complainant, and which feature a logo and design similar to the Complainant’s. Therefore, the Respondent must have registered the Disputed Domain Name with the Complainant’s WHITE RIBBON Trade Marks in mind in order to confuse users into believing that the Disputed Domain Name is connected to the Complainant. The disclaimer that appears on the Respondent’s Website does not reduce the risk of confusion, as it is not readily visible to users, and it has significantly less prominence then other elements of the website which are confusingly similar to the Complainant’s website. Users will also only see the disclaimer after they visit the Respondent’s Website, by which time the confusion has already occurred. (j) The Disputed Domain Name is being offered for sale via a domain name auction site. The use of a privacy service provider to register the Disputed Domain Name is also evidence of bad faith, as the Respondent sought to conceal her identity. (k) The Respondent had previously been the registrant of four other domain names, each of which corresponded to the Complainant’s White Ribbon Trade Marks (i.e. B. Respondent The Respondent’s contentions can be summarized as follows: (a) The Complainant is the Australian branch of the White Ribbon Campaign, and does not have a right to enforce its rights outside of Australia. The Complainant has not provided evidence that its activities or fame extend beyond Australia. Even if the Complainant’s rights extend beyond Australia, it cannot claim exclusive rights over the term “white ribbon”. “White ribbon” is used by various other advocacy groups to spread awareness regarding their cause (e.g. advocating safe childbirth and advocating against alcohol, drugs, tobacco, gambling and pornography). The Complainant only registered the WHITE RIBBON trade mark on November 21, 2014, which is after the Respondent acquired the Disputed Domain Name. All of the Complainant’s other trade marks which were registered before the Disputed Domain Name contain words in addition to “white ribbon”. The Respondent therefore alleges that the Complainant cannot establish the first element of the Policy. (b) AVfM acquired the Disputed Domain Name from a third party on October 12, 2014. AVfM incorporated content from its official website onto the website to which the Disputed Domain Name resolved. On November 4, 2014, the AVfM received two emails from individuals, which AVfM believes were a bad-faith attempt by the Complainant to manufacture evidence of confusion to be used as evidence in potential future proceedings against AVfM. On November 5, 2014, AVfM’s counsel issued a letter to the Complainant denying any wrongdoing on AVfM’s part and calling the Complaint out on its attempt to gather evidence against it. AVfM also offered to transfer the Disputed Domain Name to the Complainant for free. As the Complainant did not respond, AVfM proceeded to transfer the Disputed Domain Name to the Respondent on November 9, 2014. The Respondent had approached AVfM seeking to acquire the Disputed Domain Name in order to disseminate her research and articles on the subject of domestic abuse, as she had recently lost her previous website located at “www.erinpizzey.com”. The Respondent chose to keep the content provided by AVfM on the Respondent’s Website due to her lack of technical expertise, and AVfM agreed to assist the Respondent with incorporating her additional content onto the website. (c) There is no evidence that the Respondent was aware of the dispute between the Complainant and AVfM before she acquired the Disputed Domain Name. There is no authority in support of the Complainant’s assertion that any alleged lack of rights or legitimate interests on the part of AVfM in the Disputed Domain Name should be attributed to the Respondent. (d) The Respondent has dedicated the majority of her life to fighting domestic abuse against both men and women, and she acquired the Disputed Domain Name as a means of informing the public of this issue, to share her research and to advocate a greater awareness of domestic abuse against all genders. The Respondent uses the Disputed Domain Name to critique organizations like the White Ribbon Campaign which only focus on ending domestic violence against women, rather than all genders. The Respondent does not primarily target the Complainant, but generally criticizes gender-bias in relation to domestic abuse. Even if the Respondent was mainly focused on the activities of the Complainant, the Respondent argues that it would be doing a public service as many people have criticized the Complainant for not providing any valuable service to victims of domestic abuse. (e) The disclaimer on the Respondent’s Website is located at the top of the page, before any substantive content, and immediately dispels any possible confusion that it is related to the Complainant. (f) “White ribbon” is a descriptive term, commonly used by advocacy organizations to further their campaign. There is no evidence to show that the Respondent registered the Disputed Domain Name with the Complainant and its WHITE RIBBON Trade Marks in mind. The Respondent argues that there are no notable similarities between the Respondent’s Website and the Complainant’s website. The depiction of a white ribbon is generic. (g) The Respondent is not using the Disputed Domain Name for a commercial purpose. The only evidence presented by the Complainant to this effect is a screenshot of the Respondent’s Website showing a link to a book written by the Respondent. The use of the Disputed Domain Name to solicit donations for AVfM is irrelevant, as this was prior to the acquisition of the Disputed Domain Name by the Respondent. The Respondent’s use of the Disputed Domain Name to combat the viewpoint that domestic violence is gender specific, and the ubiquitous nature of the term “white ribbon” in advocacy organizations, creates a right or legitimate interest in the Disputed Domain Name. (h) There is no evidence to show that the Respondent had the Complainant’s registered WHITE RIBBON Trade Marks in mind when she registered the Disputed Domain Name. The Respondent is a UK citizen, and the Complainant has not shown any registered or common law rights in “white ribbon” in the UK. The Respondent also claims that there is no likelihood of confusion, as the alleged similarities between the Respondent’s Website and the Complainant’s website are insignificant. The Respondent’s Website also includes a disclaimer displayed at the top of the website. (i) The fact that content on the Respondent’s Website may criticize the Complainant and the fact that some of the content was not provided by the Respondent do not constitute bad faith. (j) Simply because the Disputed Domain Name is listed as being for sale on a domain name auction site does not amount to bad faith. The Respondent did not list the Disputed Domain Name for sale and has no intention of selling it. Even if the Respondent had advertised the Disputed Domain Name for sale, this would not amount to bad faith without there having been an actual offer with monetary terms in excess of registration costs. The Complainant has not demonstrated that the Respondent was motivated by bad faith in its registration and use of the Disputed Domain Name. (k) AVfM had offered the Disputed Domain Name to the Complainant for free on November 5, 2014, but the Complainant did not respond to AVfM’s offer for over six months. (l) These proceedings are allegedly part of a larger dispute between the Complainant and AVfM, and the Complainant has been trying to build a case against AVfM. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements: (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 by the Respondent in bad faith. A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in the WHITE RIBBON Trade Marks, based on its Australian trade mark registrations. The Disputed Domain Name incorporates the Complainant’s WHITE RIBBON trade mark in its entirety, and is therefore identical to the Complainant’s trade mark. The Respondent argues that the Complainant’s WHITE RIBBON trade mark was only registered on November 21, 2014, after the date in which the Respondent acquired the Disputed Domain Name (i.e. November 9, 2014). However, it is well established that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identical or confusing similarity under the first element of the UDRP (see paragraph 1.4 of the WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Either way, the Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s WHITE RIBBON CAMPAIGN trade mark, WHITE RIBBON DAY trade mark, WHITE RIBBON design trade mark and WHITE RIBBON NIGHT trade mark, which were all registered prior to the Respondent’s registration of the Disputed Domain Name. It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case “.org”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006 0762). The Panel is therefore satisfied that paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate InterestsParagraph 2.1 of the WIPO Overview 2.0 states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Panel accepts that the Complainant has registered rights in the WHITE RIBBON Trade Marks and that it has never authorised the Respondent to use its WHITE RIBBON Trade Marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to her of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the Disputed Domain Name, even if she has acquired no trade mark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Panel accepts that the Respondent has not provided any evidence to demonstrate that she has become commonly known by the Disputed Domain Name, or a name corresponding to it. The Respondent’s Website has content that deals with a substantially similar topic to that of the Complainant’s own website, i.e. campaigning to end domestic violence. The main difference in the campaign message is that the Complainant’s website refers to preventing violence against women by men, whereas the Respondent’s website states that it is aimed at ending violence against any person irrespective of gender. The Respondent’s Website is, in essence, being used by the Respondent as a criticism site. As stated by the Respondent in the Response, she is using the Disputed Domain Name “as an information portal, and as a direct critique of organisations such as the International White Ribbon campaign.” The Respondent’s Website criticises both the Complainant’s ethos as well as their operations. Although the Respondent’s Website is essentially noncommercial, and the Respondent’s criticism may be genuinely intended, this does not automatically grant the Respondent a right or legitimate interest in the Disputed Domain Name. The Panel, while acknowledging that the Respondent has the right to freedom of speech, is of the view that there is a clear distinction between a right to express critical views and freedom of speech, and a right or legitimate interest in respect of a domain name which is identical to a complainant’s trademark. The Respondent’s right of free speech can be exercised by using a domain name which suggests very clearly to visitors the content and intent of the website thereby obviating any risk of deception. The Disputed Domain Name consists solely of the Complainant’s WHITE RIBBON trade mark. The Respondent’s Website also features a white looped ribbon against a black background, which is similar to the Complainant’s WHITE RIBBON design trade mark, and the looped white ribbon on the Complainant’s website. Both the Respondent’s Website and the Complainant’s website have a similar black and white design. Therefore, the Panel finds that the Disputed Domain Name has been used in a manner that misleads Internet users into believing that the Disputed Domain Name is associated with the Complainant – the misrepresentation is even inherent in the Disputed Domain Name itself. For this reason, the Panel is of the view that while the Respondent’s use of the Disputed Domain Name may be a noncommercial use, it is not a legitimate or fair use. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad FaithThe Panel accepts that the Respondent registered and has been using the Disputed Domain Name in bad faith, based on the following: (i) the website in which the Disputed Domain Name resolves deals largely with the same issue/campaign as the Complainant (the main difference being that the Complainant is aimed at stopping violence against men, whilst the Respondent’s website aims to be more gender inclusive); (ii) the Disputed Domain Name is identical to the Complainant’s trade mark; (iii) the Respondent’s website has a similar look and feel to the Complainant (utilizing the same logo and color scheme). Based on the above, the Panel finds that the Respondent registered and has been using the Disputed Domain Name with the intention of confusing Internet users into believing that the Disputed Domain Name is associated with the Complainant. Whilst the Respondent’s Website states that “WhiteRibbon.org is owned by Erin Pizzey, hosted by A Voice for Men, and is not affiliated with any other White Ribbon organization”, it is well established that the existence of a disclaimer does not in itself eliminate bad faith (paragraph 3.5 of WIPO Overview). The disclaimer in fact demonstrates that the Respondent was well aware of the Complainant, and does not sufficiently distinguish the Respondent’s Website from the Complainant and its operations. Either way, the Panel finds that it is irrelevant that users may subsequently realize that the Disputed Domain Name is not associated with the Complainant once they land on the Respondent’s website. As stated in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364:
“it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page… The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives…that it then becomes clear that the website is unconnected with the trade mark holder.” Lastly, the Respondent was previously the registrant of four other domain names, which corresponded to the Complainant’s WHITE RIBBON CAMPAIGN trade mark or WHITE RIBBON DAY trade mark (i.e. The Respondent is therefore clearly targeting the Complainant and its WHITE RIBBON Trade Marks. The Panel notes that any alleged dispute between the Complainant and AVfM is not relevant for the purposes of these proceedings, as these proceedings only concern the Complainant and the Respondent. The Panel determines that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, Gabriela Kennedy Presiding Panelist Andrew F. Christie Panelist
James McNeish Innes Panelist
Date: September 5, 2016 Directory: amc amc -> Administrative panel decision amc -> Wipo arbitration and Mediation Center amc -> Arbitration and mediation center administrative panel decision amc -> Eumetsat eum/sir/agn/13/730723, v1 Draft 11 November 2013 amc -> Wipo arbitration and Mediation Center amc -> Arbitraj şi mediere centru amc -> Wipo arbitration and Mediation Center amc -> Administrative panel decision amc -> Amcv1550 Methods in Public Humanities, Spring 2009 amc -> Administrative panel decision Download 44.13 Kb. Share with your friends:
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