WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Estťe Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna

Case No. D2000-0869

 

1. The Parties

Complainant is Estťe Lauder Inc., 767 Fifth Avenue, New York, NY 10153, U.S.A. (Estťe Lauder) and is represented by Brendan J. OíRourke, Esq. and Jenifer deWolf Paine, Esq. of Proskauer Rose, LLP, New York, U.S.A.

Respondents are estelauder.com, estelauder.net and Jeff Hanna of the Hanna Law Firm, 223 East Market Street, Warrensburg, MO 64903, U.S.A. (hereinafter collectively referred to as "Hanna Law Firm") and is represented by David J. Loundy, Esq. of DíAncona & Pflaum LLC, Chicago, U.S.A.

 

2. The Domain Names and Registrars

The domain names at issue are:

estelauder.com, estelauder.net

The registrar is Network Solutions, Inc. ("Network Solutions").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Estťe Lauderís complaint on July 25, 2000, by e-mail and a hard copy on July 28, 2000. The Center verified that the complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Estťe Lauder made the required payment to the Center. The formal date of the commencement of this administrative proceeding is August 10, 2000.

On August 1, 2000, the Center transmitted via e-mail to Network Solutions a request for registrar verification in connection with this case. On August 9, 2000, Network Solutions transmitted via e-mail to the Center Network Solutions Verification Response, confirming that the registrant of the domain name estelauder.com is "estelauder.com" and that the registrant of the domain name estelauder.net is "estelauder.net", Jeff Hanna being the administrative contact for both domain names, and that the domain name registrations at issue are in "Active" status.

On August 10, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via e-mail and post/courier to Hanna Law Firm.

On August 11, 2000, the Center received via e-mail, Hanna Law Firmís Answer to the complaint. The response in hard copy was received on August 14, 2000.

On August 21, 2000 Complainant transmitted a request to respond to Respondentís Answer. Respondent transmitted its objection to such supplemental filing.

On August 22, 2000, the Center advised the parties via e-mail that Nicolas C. Ulmer (CH/USA) had been appointed as the sole panelist in this proceeding.

On August 28, 2000, the Panelist transmitted to both parties via e-mail Procedural Order Nį 1 thereby authorizing Complainant to file a Reply no later than September 8, 2000 and Respondent to file a Rebuttal or Response no later than September 19, 2000. Complainantís Reply was timely filed with the Center on September 8, 2000, and thereafter transmitted to the Panelist. Respondentís Response was filed on September 15, 2000.

 

4. Factual Background

A. Description of the Parties

Complainant, Estťe Lauder, is a Delaware, USA, corporation engaged in the manufacture, distribution and sale of personal products and cosmetics such as skin care creams, make-up and perfume. It sells these products in more than 100 countries.

Respondent, Hanna Law Firm, is an American law firm specializing in personal injury and product liability matters.

B. The Trademarks and Name

The Complaint is based on Estťe Lauderís trademark ESTEE LAUDER, which Complainant avers is the subject of four listed U.S. federal registrations and over 100 other registrations worldwide (paragraph 11 of Complaint). Complainant also avers that the name Estťe Lauder serves not only as a trademark but also as the corporate name of the entity under which business is conducted. (Id.), and that Estťe Lauder invests significant sums of money in the promotion of its reputation and marks which have become famous. (Id., paragraph 12.)

Respondent does not contest the existence or validity of Complainantís trademarks or "the fame of Complainantís marks" (Answer, paragraph A.1), but otherwise defends vigorously as indicated below.

C. Further Factual Background

The two domain names at issue lead to two virtually identical "complaint sites" with the heading "Customer Complaints about Este Lauder". Visitors to the sites are invited to post a comment on a form provided, read already posted comments, or make a complaint to the Better Business Bureau through a link that is provided; they are also invited to "Contact Us" by filling in a form with their coordinates. There is no identification of the Respondent as the sponsor of the sites or any reference of any kind to the Respondent at the sites. The sites contain several disclaimers to the effect that they are not affiliated with Estťe Lauder. The sites expressly state that they are non-commercial and non-profit advocacy sites in exercise of rights under the First Amendment (i.e., free speech) of the U.S. Constitution.

It is common ground between the parties that Respondent has registered other domain names similar to well-known trademarks, and established other "complaint sites" at those domain names. Two of those domain names (bartlesandjaymes.com, bartlesandjaymes.net) have been the subject of a recent Administrative Panel Decision by the Center which ordered the transfer of the domain names to the complainant. Gallo v. Hanna Law Firm, Case No. D2000-0615.

 

5. Partiesí Contentions

The Partiesí contentions may be summarized below.

Complainant alleges that: Respondent has registered domain names virtually identical with Complainantís marks for the purpose of diverting consumers seeking access to information regarding Estťe Lauder and that this creates, and has created, actual confusion, and damage to Complainant; that Respondent has no legitimate rights to the domain names in question; that the slight misspelling of the marks in the domain names is deliberate "typo-piracy" and does not, in any event, dispel the confusion created; that it is "painfully obvious" that one of Respondentís purposes in establishing the sites was to solicit potential plaintiffs who may allege injury by use of one of Complainantís products, and that Respondentís claim that the sites are non-commercial is therefore disingenuous; and that Respondentís registration of like sites concerning other marks is further evidence of bad faith. Whereupon Complainant asserts that Respondentís use of confusingly similar domain names, lack of legitimate rights in such names, and registration and use of the domain names in bad faith is established, and the offending domain names should therefore be transferred to Complainant.

Respondent counters that: the complained of domain names are similar, but not identical, to Complainantís marks, and that there is little or no likelihood of confusion with Complainantís well-known marks or well-established web sites; that its express disclaimers further prevent any confusion with Complainant; that Respondent has a legitimate and constitutionally protected right to the use of the domain names for establishing consumer complaint sites, and has never used them for any other purpose; that it is making a "fair use" of the Complainantís trademark as permitted by U.S. Law; that the Respondentís websites are non-commercial and that none of the examples of bad faith in Paragraph 4(b) of the Policy are present; and, in sum, that Complainant consistently overstates its case and has not established Respondentís absence of rights in the domain names, or that they were registered and are being used in bad faith.

Specific contentions of the Parties, to the extent necessary or relevant to this Decision, are referred to further in the discussion and findings below.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. That:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

These elements are discussed in turn below.

A. Identity or Confusing Similarity in Domain Names

The only differences between Complainantís trademark and Company name and the domain names registered by Respondent are the absence of a second "e" and an accent aigue: "Estťe" as opposed to "Este". Complainant argues that English speakers and American consumers are often unfamiliar with French spelling and pronunciation, and submits considerable, largely unrefuted, evidence of actual confusion, including in the electronic marketplace. Complainant also accuses Respondent of "typo-piracy", in essence a deliberate attempt to attract or divert internet users who make a common error or spelling mistake in their internet search. See e.g. Neuberger Berman Inc. v. Alfred Jacobson, Case Nį D2000-0323. Respondent, unwittingly perhaps, confirms this confusing similarity on its websites which provide both spellings; Respondentís disclaimer, for instance, states "[t]his site is in NO way affiliated with Estee Lauder and/or Este Lauder". Since Respondentís avowed purpose is to create and maintain a "consumer complaint site" concerning the Complainantís products, the domain names used would be of little use to Respondent if they were not of sufficient confusing similarity with Complainantís trade or service marks so as to attract potential complainants. In fact, Respondentís domain names are clearly, and intentionally, confusingly similar to Complainantís marks.

B. Rights or Legitimate Interests in the Domain Names

Respondent does not challenge the existence, validity or "fame" of Complainants trademarks. Respondentís principal contention is that its use, of what it concedes to be names "similar" to Respondentís marks (Answer at paragraph B.2), is for the legitimate "purpose of creating constitutionally protected Consumer Advocacy Free Speech Complaint sites" (Answer at paragraph A.5). More specifically, Respondent invokes the doctrine of "fair use" of a trademark in the context of protected rights of free speech as enshrined in the U.S. Constitution. There is indeed a significant, and it would seem developing, body of law in the United States which seeks to determine and define this "fair use doctrine" and its limits. See e.g. Brookfield Communications, Inc. v. West Coast Entertainment Court 174 F 3d 1036 (9th Cir. 1999); New Kids on the Block v. News America Publishing Inc. 971 F 2d 302 (9th Cir. 1992); see also discussions in Bridgestone Firestone Inc. v. Jack Myers, Case No. D2000-0190; Gallo v. Hanna Law Firm, Case No. D2000-0615; cf. DFO, Inc. v. Christian Williams Case No. D2000-0181 ("fair use" not found to give Respondent legitimate interest in disputed domain names). It may well be that Respondent is making a "fair use" of Complainantís marks in their "consumer complaint" websites and that the contents of those sites are constitutionally protected in the United States. It is, however, neither necessary nor appropriate to make such an evaluation here. The issue to be determined under paragraph 4(a)(ii) of the Policy is more restricted and specific.

Paragraph 4(a)(ii) of the Policy requires this Panel to determine if the "Respondent has no rights or legitimate interests in respect of the domain name" (emphasis added). It is not for this Panel to determine whether Respondent has a legitimate or protected interest in the contents of its websites, or, more generally, in its establishment of fora to air complaints against certain companies. This is all the more the case since, as set forth in Section 6C below, this Panel has also found that Respondent has registered and used the domain names in bad faith in violation of the Policy, and paragraph 4(b)(iii) thereof.

Respondent has frequently cited the disclaimers on its websites as bolstering the legitimacy of the sites, and the parties have devoted significant energy to argument as to the holdings of a number of U.S. Federal cases on the effect of disclaimers. Here also a distinction must be drawn between the domain name itself and the contents of the site which is reached through the domain name. Respondent has not denied, and cannot credibly deny, that its use of the domain names at issue was to attract internet users desirous of criticizing the Complainant or its products, and therefore likely divert them from legitimate sites authorized by Complainant. The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion. Accord, Gallo v. Hanna Law Firm, Case No. D2000-0615; DFO, Inc. v. Christian Williams Case No. D2000-0181.

Once again, Respondent may well, and likely does, have extensive rights of free speech to provide a platform to criticize Complainant and a right to the fair use of Complainantís marks in so doing. The contents of Respondentís websites may also be a perfectly legitimate use of those rights. But Respondent could well have chosen to use a domain name that was not confusingly similar to Complainantís and/or in which Complainant had no rights; it intentionally chose not to do so. See Gallo, supra, Brandon Dunes L.P. v. Default Data.com Case No. D2000-0431; Compagnie de Saint Gobain v. Com-Union Corp. Case No. D2000-0020. Respondentís free expression rights do not here give it a right or legitimate interest in the domain names at issue.

C. Registration and Use in Bad Faith

Although the Policy lists the elements of paragraph 4(a) separately, findings as to the first two elements are often pertinent to bad faith use and registration under the third element, and vice versa. This is particularly the case in the more complex and contested cases where inferences must often be drawn from a number of circumstances and findings to weigh issues of bad faith.

The above findings that the Respondent intentionally registered domain names with a slight, but knowingly confusing, spelling difference are pertinent to determining whether Respondent has acted in good faith. Accord, General Electric Company v. Fisher Zvieli, Case No. D2000-0377. The fact that this was done with the intent to attract or divert internet users interested in Complainant is also pertinent. The fact that Respondent registered both "net" and "com" domain names for the "Estelauder" is also evidence of its desire to divert as many potential internet users as possible towards its complaint sites. Cf. Bridgestone Firestone Inc. v. Jack Myers, Case No. D2000-0190. (Respondentís registration of the "net" domain name only was found to be indicia of an absence of bad faith). On the other hand, Respondentís avowed assertion that its purpose in establishing and maintaining the sites is a legitimate exercise of free speech is also pertinent to refuting allegations of Respondentís bad faith. Finally, this Panel is aware, as were many previous panels, that the examples of bad faith set forth in paragraph 4(b) of the Policy are expressly non-exclusive. They are illustrative situations setting forth some typical or anticipated scenarios, and must be interpreted and applied to the facts of the specific case at hand.

Respondent, however, argues strongly that none of the examples set forth in paragraph 4(b) of the Policy are here proved, and is correct in all but one instance. There is no evidence that Respondent has acquired the domain names for lucrative resale. Although Respondent is alleged to be a "cybersquatter", and admits to having registered "a small number of domain names that match or are similar to other trademarks" (Answer, paragraph A.2), it does not appear that this was done in order to prevent the owner of the marks from reflecting them in a corresponding domain name.

The issue of whether Respondent falls within the example in paragraph 4(b)(iv) of the Policy is more difficult. This Panel does find that Respondent has intentionally attempted to attract internet users to its websites by creating a likelihood of confusion with Complainantís mark. The key question is whether this was done for "commercial gain". Complainant maintains that the site is clearly and obviously commercial in that it is evident that one of Respondentís purposes is to identify and solicit potential plaintiffs for its personal injury practice. Respondent does not expressly refute this, but makes the specific denial that "[n]either Respondent, nor anyone else to the best of Respondentís knowledge, has ever contacted anyone who has submitted a complaint to the websites, and no evidence has been offered by Complainant to the contrary" (Response, paragraph 8). Respondent also points out that there is no indication that the sites are sponsored by the Hanna Law Firm, or are in any way offering legal services. While this last point may be consistent with a lack of commercial motives, it would also be consistent with a desire to conceal an eventual commercial intent under the guise of "complaint site", and concealment may itself be evidence of bad faith. See Hunton & Williams v. American Distribution System, Inc. Case No. D2000-0501. The conscious concealment of the Hanna Law Firmís sponsorship of the sites is, moreover, somewhat inconsistent with Respondentís declarations that it "is a strong believer in public exposition of complaints against certain corporations ... and established complaint sites at those domain names to further this belief (Answer, paragraph 5). It also bears noting that Respondent chose to register a "com", i.e. "commercial", site although this fact is not here dispositive in proving the commercial nature of the site. But see, Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F 3d 1036, 1044-45 (9th Cir. 1999). In conclusion, while the indicia of Respondentís possible commercial purpose is intriguing, it is not conclusive and Complainantís allegations of the same are, in light of Respondentís denials, unproven. Complainant has failed to meet its burden of proof of this issue and this Panel does not find the sites to be commercial within the meaning of paragraph 4(b)(iv) of the Policy.

Under paragraph 4(b)(iii) of the Policy, a finding by the Panel that Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" is evidence of registration and use in bad faith. Respondent argues that that paragraph of the Policy is not applicable because Complainant and Respondent are not "competitors". This is true in the sense that the parties do not sell competing products, but the definition of competitors is not so restricted in the Policy. This Panel adopts and agrees with the broader meaning that was assigned to the word "competitor" in Mission Kwa Sizabantu v. Benjamin Rost, Case No. D2000-0279 (" Ďcompetitorí is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor"); Accord, Gallo v. Hanna Law Firm, Case No. D2000-0615. The fact that the terms of paragraph 4(b)(iii) of the Policy, unlike those of paragraph 4(b)(iv), do not require that a party be motivated by "commercial gain", further supports the fact that the genre of competition referred to need not be commercial. Respondent is, moreover, clearly competing with Complainant for the attention of internet users, which it hopes to divert to its sites. Given Respondentís avowed "dislike" of Complainant (and other corporations), and the exclusively "complaint" purpose of its sites, the Panel also concludes that Respondent registered the domain names primarily for the purpose of disrupting Complainantís business. Respondent therefore does fall within the example set forth in paragraph 4(b)(iii) of the Policy. This finding, and the other findings above, satisfy the third element of paragraph 4(a) of the Policy: Respondent has registered and used the domain names in bad faith.

Respondent, in support of its position that its establishment of complaint sites is here legitimate (and, presumably, in application of paragraph 4(c)(iii) of the Policy), places significant reliance on Bridgestone Firestone Inc. v. Jack Myers, Case No. D2000-0190, as approbating its conduct. In Bridgestone a Panel ruling on a partially analogous "complaint site" situation came to a well-reasoned decision not to transfer the website. One salient difference with the case at hand is that in Bridgestone the Respondent had registered the "net" domain name only, and this was an important factor in the Panel conclusion that, inter alia, Respondent was not misleadingly diverting internet users to his site. Here, Respondent has registered and linked both the "net" and "com" versions of a name confusingly similar to that of Complainantís marks in order to enhance the possibilities of diversion. For the rest, the other evidence and circumstances in Bridgestone were such that the Panel was able to conclude that Respondent had legitimate rights to the domain name it had registered, and that it had registered and used it in good faith. The same cannot be said here. Respondent also asserts a fallback argument that, in application of Bridgestone, only its "com", and not its "net" domain name can be transferred. On the facts of this case, it is not at all clear that this Panel would have reached different conclusions had the Respondent registered the "net" domain name only, but it is not necessary to decide that hypothetical question. What is clear, is that Respondentís fallback argument is stillborn where, as here, this very twin registration is part of the bad faith finding against Respondent.

 

7. Decision

For all the foregoing reasons, the Panel decides that: (a) the domain names Estelauder.com and Estelauder.net are confusingly similar to the marks of Estťe Lauder; (b) that Hanna Law Firm has no rights or legitimate interest in those domain names; and (c) that Hanna Law Firm registered and used those domain names in bad faith.

Therefore the Panel, pursuant to paragraph 4(i) of the Policy, orders that the above domain names be transferred to Complainant, Estťe Lauder.

 


 

Nicolas C. Ulmer
Sole Panelist

Dated: September 25, 2000


 

Footnotes:

1. Neither party cited this recent decision. While the Gallo decision presents many common issues with the case at hand, the instant cases involve somewhat different facts and allegations which have merited, and received, an independent detailed analysis, albeit with a substantially consistent result.

2. Except to the extent that Respondentís motives in establishing and using their websites are pertinent to the bad faith analysis in Section 6C of this Decision.