WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TMP Worldwide Inc. v. Jennifer L. Potter

Case No. D2000-0536

 

1. The Parties

The Complainant in this administrative proceeding is TMP Worldwide Inc., a corporation organized and existing under the laws of the State of Delaware whose principal place of business is 1633 Broadway, New York, New York 10019. The Respondent is Jennifer Potter, who resides in Murrieta, California.

 

2. The Domain Name and Registrar

The domain names in dispute are as follows: "tmpworldwide.net" and "tmpworldwide.org." The domain names were registered by Respondent with Network Solutions, Inc. on March 8, 2000.

 

3. Procedural Background

On June 1, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, an administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on June 15, 2000.

Respondent, via e-mail dated June 25, 2000, filed a response to the complaint.

In a communication dated July 12, 2000, WIPO informed the parties that the panelist originally appointed was unable to accept the appointment. The instant administrative panel was then appointed, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

 

4. Factual Background

As set forth in the Complaint, Complainant TMP Worldwide Inc. ("TMP") is the leading Yellow Pages advertising agency in the world, serving more than 2,100 clients. TMP coordinates the placement of advertisements in a large number of directories nationally, providing ancillary creative and direct marketing services to its clients. The Yellow Pages advertising division of TMP employs more than 850 people. During 1999, TMPís total fees and commissions from its Yellow Pages advertising business exceeded $100 million.

Continuously since 1992, TMP has used TMP WORLDWIDE as its principal business name and trademark. In April 1998, TMP was issued U.S. Trademark Registration No. 2,150,279 for the mark TMP WORLDWIDE and U.S. Trademark Registration No. 2,151,852 for the mark TMP WORLDWIDE and DESIGN, as used in connection with its advertising agency services. TMP also owns the domain names "tmp.com" and "tmpworldwide.com."

Respondent Jennifer Potter is the principal and sole officer and shareholder of A Silver Spoon Adoptions, Inc. ("Silver Spoon"). Silver Spoon was a client of TMPís Yellow Pages advertising division. On December 22, 1997, TMP filed an Arbitration Demand with the American Arbitration Association seeking payment of $891,667.48 in past due Yellow Pages advertising fees from Potter and Silver Spoon. See Complaint, Annex 4. On September 14, 1998, the arbitrator issued an Award of Arbitration in favor of TMP in the amount of $891,667.48. See Complaint, Annex 5. On December 7, 1998, the Supreme Court of the State of New York entered judgment against Silver Spoon on the Arbitration Award in the sum of $914,513.13. See Complaint, Annex 7. On March 25, 1999, the Superior Court of California entered judgment against Silver Spoon on the Arbitration Award in the sum of $927,382.83. See Complaint, Annex 14.

As noted above, Potter registered the domain names in dispute on March 8, 2000. On or about March 9, 2000, Potter began to distribute via e-mail a letter to Fortune 500 companies entitled "Is TMP an HONEST Company????." In the letter, Potter complained that TMP badly mishandled her Yellow Pages advertising account and noted the devastating impact of the Arbitration Award on her business and on her personally. See Complaint, Annex 9.

On March 10, 2000, Potter telephoned TMPís outside counsel, Joshua Klapper, stating that she had registered the domain names in dispute. Another telephone conversation between the two followed 1. Also on March 10, TMPís outside trademark attorneys wrote Potter a letter demanding that she assign the domain names to TMP. Potter has refused to assign the domain names and has posted on her Web sites, under the heading "Donít be fooled by Tmp Worldwide!," the same letter e-mailed to the Fortune 500 companies. See Complaint, Annex 13.

 

5. Partiesí Contentions

Complainant contends that the domain names registered by Potter are identical and confusingly similar to TMPís federally registered marks.

According to the declaration of Mr. Klapper, during his initial conversation with Ms. Potter, Potter stated as follows: "I have a couple of domain names that your client might be interested in purchasing." Klapper interpreted this as an offer to trade the domain names for the nearly $1 million judgment that TMP obtained against Silver Spoon. See Complaint, Annex 10. TMP urges that this is proof that Potter acted in bad faith and solely to put pressure on TMP to settle the collection dispute by forgiving the indebtedness in exchange for the assignment of the domain names.

TMP contends that Potter has absolutely no legitimate reason for owning the domain names other than to harass TMP, disrupt its business and pressure it into settling the collection dispute. "This is the very type of bad faith conduct which UDRP was meant to redress." See Complaint, paragraph U. TMP also argues that Potterís "diatribe" is littered with falsehoods and libelous statements.

In her response, Potter contends that her Web site contains no falsehoods or libelous statements. She also disputes Mr. Klapperís recollection of their telephone conversations. According to Potter, "NEVER" was there any mention of the word "purchase." She further indicates that, after speaking the first time to Mr. Klapper, she spoke with one of TMPís outside trademark attorneys and told him that "at no time did I nor would I ever offer to sell or trade the domain name, as everyone knows that it is illegal to do so." See Response, paragraph N.

The response further argues that the purpose of the Web site is to exchange valid information with others. According to Potter, "[v]isitors are entitled to know the truth about my experiences with [TMP]." See Response, paragraph S. Since the topic of the Web site is TMP, the response argues, it is fitting that her site "be filed under tmpworldwide.net and .org."

 

6. Discussion and Findings

The Panel determines that Complainant has failed to establish all of the elements required under paragraph 4.a. of the Policy. In particular, the Panel rules that Complainant has failed to establish that Respondent has no rights or legitimate interests in respect to the domain name 2.

The Panel concludes that Respondent is making a noncommercial use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue, within the meaning of paragraph 4.c.(iii) of the Policy. The principal, if not sole, purpose of Respondentís Web site, the Panel holds, appears not to be for commercial gain, but, rather, to exercise her First Amendment right to criticize Complainant and comment on her experiences in dealing with Complainant. As the legislative history surrounding passage of the "Anticybersquatting Consumer Protection Act" indicates, use of a mark in a domain name where the Internet site involves commentary, comparative advertising, criticism, parody, or news reporting is beyond the scope of the law 3. In the Panelís view, it is also beyond the scope of the Policy 4.

The Panelís decision is consistent with decisions reached by other panels. For example, in Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc. and Bridgestone Corp. v. Jack Myers, Case No. D2000-0190, the panel refused to order the transfer of the domain name bridgestone-firestone.net, which was registered by a former Bridgestone employee who used the site to publicize his ongoing dispute with Bridgestone over his pension payments. The panel ruled that such use constituted legitimate noncommercial use and fair use under the Policy.

 

7. Decision

In view of the above, the Panel DENIES Complainantís request for transfer to it of the domain names "tmpworldwide.net" and "tmpworldwide.org."

 


Jeffrey M. Samuels
Panelist

Dated: August 5, 2000

 


Footnotes:

1 As set forth below, beyond the fact that Ms. Potter informed Mr. Klapper of the registration of the domain names, the parties dispute the content of these conversations.

2 As noted in the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, "[i]t should be emphasized that a finding of legitimate right under paragraph 4 (c) means only that the streamlined dispute-resolution procedure is not available and that the dispute is a `legitimateí one that should be decided by the courts. Even though the dispute is legitimate, the domain-name holderís right may not ultimately prevail over a trademark in court." Given the Panelís determination that Complainant has failed to show that Respondent has no legitimate rights and interests in the domain names, it need not address the issue of "bad faith" registration and use.

3 See S. Rep. No. 140, 106th Cong., 1st Sess. 14 (1999). While neither the provisions of the Act nor its legislative history is binding on this panel, they are entitled to be given substantial weight, given the fact that the Act and the Policy focus on the registration and use of Internet domain names.

4 The parties dispute whether the contents of Respondentís criticism are libelous in nature. This issue is beyond the scope of the Panelís jurisdiction. Thus, the Panel refrains from commenting on the question.