WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Women on Waves Foundation v. Chris Hoffman

Case No. D2000-1608

 

1. The Parties

The Complainant is Women on Waves Foundation of PO Box 15683, 1001 ND, Amsterdam, the Netherlands.

The Respondent is Chris Hoffman of 333 Jesus St 930172, Manilla, United States, a fictious address.

 

2. The Domain Name and Registrar

The Domain Name is <womenonwaves.com>.

The Registrar is Gandi.

 

3. Procedural History

The Complaint was filed on November, 20, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2 (a). No Response was filed by the Respondent. The Respondent is in default.

The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was January 29, 2000.

 

4. Factual Background

The Complainant is the owner of a registered trade mark in Benelux for the mark Women On Waves.

 

5. Partiesí Contentions

A. Complainant

This complaint states:

Women on Waves is a nonprofit organization registered in the Netherlands as a charitable organization under Article 24, lid 4 of the Successiewet 1956. It holds a trade mark registered with the Benelux trademark office in the phrase WOMEN ON WAVES. Women on Waves was founded by Dr. Rebecca Gomperts, a Dutch medical doctor. Dr. Gomperts established the organization in response to research showing that 20 million abortions take place every year under unsafe and illegal conditions, resulting in the deaths, each year, of about 100,000 women. To address this crisis, Women on Waves is developing a seagoing reproductive health clinic on board a Dutch ship. Doctors on the ship will be able to offer safe, medically professional and legal first- trimester abortion services to women who request them. In order to ensure safety and minimize the risk of complications, Women on Waves will perform abortions only in the first trimester of pregnancy. See <http://womenonwaves.org/activities.html>. By training local service providers, Women on Waves will ensure that post-abortion care and the other services delivered on board will continue to be available after the ship has left.

Women on Waves hopes to give women the opportunity to have safe abortions, to draw public attention to the consequences of illegal abortion, and to catalyze efforts to liberalize abortion laws. It will inform the general public of medical and social issues concerning unwanted pregnancy and unsafe, illegal abortion. Women on Waves has received grants from organizations including the Global Fund for Women (United States), the Mondrian Foundation (Netherlands), and the Mama Cash Foundation (Netherlands) to support its dissemination of information about, and provision of, abortion and family planning services. It has received extensive media coverage.

In late 1999, Women on Waves registered the domain name <womenonwaves.org>. Its web site at <http://www.womenonwaves.org> contains information about Women on Waves, its mission, and its proposed activities. The site prominently solicits contributions to support the foundation's work. It also provides general information about abortion laws, contraception, and sexually transmitted diseases.

Chris Hoffman registers and sells domain names for profit. Because whois output cuts off after fifty domain names, it is impossible to tell how many domain names Mr. or Ms. Hoffman has registered. An examination of the names returned by a whois request, however, reveals the following: Hoffman has registered more than fifty domain names. The vast majority of them either have no corresponding websites, or resolve to an "auction" website at which Hoffman offers domain names for sale.. At that website, Hoffman has invited the public to "enter [a] bid" for such domain names as <PocketPowerPC.com>, <SoftwareGiant.com>, <SuperPalm.com>, <Palmster.com> and <WorldWeekly.com>. Some of these names are identical to existing trademarks; "palmster," for example, is a registered trademark in two classes of goods in the United States alone. Hoffman has listed one domain name for sale on the GreatDomains site with an asking price of US$75,000.

On May 28, 2000, Chris Hoffman registered the domain name <womenonwaves.com>. He or she supplied obviously false registration information: His or her asserted telephone number was 222-222-2222, and his or her asserted address was "333 Jesus St" in "manilla, PHILIPPINES." Instead of simply attempting to sell the domain name, though, Hoffman caused <http://www.womenonwaves.com> to redirect automatically to <http://www.partialbirthabortions.com/david.html>. That page contains gruesome, stomach-turning pictures that purport to show the body parts of fetuses aborted via partial birth abortions. Web surfers seeking Women on Waves, who type <www.womenonwaves.com> into their browsers, thus find their screens filled with pictures of the asserted remains of partial birth abortions. A page on the same site solicits cash contributions to the U.S.-based organization Operation Rescue West.

The Uniform Domain Dispute Resolution Policy sets out three prerequisites to transfer of a domain. The domain name must be "identical or confusingly similar to a trademark or service mark in which the complainant has rights"; the registrant must have "no rights or legitimate interests in respect of the domain name"; and the domain name must have "been registered, and [must be] being used, in bad faith."

1. The womenonwaves.com domain name is identical to Women on Waves's registered trademark.

2. It is clear, further, that Hoffman has no rights or legitimate interests in the domain name. Hoffman has not used the "Women on Waves" mark in a bona fide manner to identify his or her own goods or services. He or she has never been commonly known by the "Women on Waves" name.

Further, Hoffman is not making "a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." Uniform Dispute Resolution Policy, paragraph 4(c)(iii). By setting up a website at <www.womenonwaves.com> and redirecting the user to <www.partialbirthabortions.com>, Hoffman is doing two things. First, he or she is attempting to confuse the Internet user looking for Women on Waves-supplied literature at the Women on Waves home page and to divert that person to another site the user does not want, so as to get more "hits" for that site, its content, and its appeal for cash contributions. Second, he or she is misleading the public about Women on Waves: Most prominently, by sending the Internet user looking for Women on Waves to a page displaying horrific pictures of purported partial birth abortions, Hoffman is indicating to the public that Women on Waves provides "partial-birth" abortion services. It does not. Such a use by Hoffman of Women on Waves's trademark is neither "legitimate" nor "fair."

Hoffman may argue that so long as the use is noncommercial, he or she can claim "rights or legitimate interests" in any and all domain names that exist. That is incorrect. (In any event, it is questionable whether Hoffman's use is noncommercial, since the site to which the page redirects requests cash contributions.) Even a noncommercial actor seeking to criticize a trademark holder has no "rights or legitimate interests" in appropriating that trademark as its domain name, where the only function served by the use of that name is to mislead the Net user looking for the trademark holder's site and to unwillingly divert that user to a different site instead. Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0279.doc>; Lloyds TSB Bank PLC v. Paul Brittain, WIPO Case No. D2000-0231, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0231.doc>; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0299.doc>; see also Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0020.doc>. Hoffman could have chosen to register the domain names <OpposeWomenOnWaves.com> or <WomenOnWavesAreBabyKillers.com>. Those domain names would not confuse the Internet user, and therefore would constitute legitimate fair uses of the Women on Waves trademark. Hoffman's registration of <womenonwaves.com>, by contrast, exploits the Women on Waves mark to mislead the Internet user, and is not a legitimate fair use. Hoffman is free to express opinions about Women on Waves, but not to identify him/herself as Women on Waves. Monty and Pat Roberts, Inc., supra; DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0222.doc>. See generally Planned Parenthood of America v. Bucci, 1997 U.S. Dist. LEXIS 3338 (S.D.N.Y. 1997) (granting the request of Planned Parenthood Federation, a United States reproductive health care organization, to enjoin Bucci's use of <plannedparenthood.com> for an anti-abortion web site), aff'd mem., 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998), available at <http://cyber.law.harvard.edu/property/domain/ppfa.html>; Jews for Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J.), aff'd mem., 159 F.3d 1351 (3d Cir. 1998), available at <http://cyber.law.harvard.edu/property/domain/jfj.html>.

3. Finally, Hoffman registered and used <womenonwaves.com> in bad faith. Paragraph 4(b) of the Uniform Dispute Resolution Policy sets out several examples of registration and use in bad faith. They are merely examples, though, and they do not exhaust the definition: The "relevant issue is . . . whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith," a question that "can only be answered in respect of the particular facts of a specific case." Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-003, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0003.doc>; see also CSA International v. John O. Shannon, WIPO Case No. D2000-0071, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0071.doc>.

The first indicium of bad faith in this case is that Hoffman provided obviously false registration information: that, without more, is evidence of bad faith. Telstra Corp., supra; World Wrestling Federation Entertainment v. Matthew Bessette, WIPO Case No. D2000-0256, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0256.doc>.

Second, Hoffman's plain intention to mislead and divert Internet users looking for Women on Waves, hindering Women on Waves' efforts by sending members of the public looking for it to a different site, constitutes bad faith. SGS Societe Generale de Surveillance S.A. v. Inspectorate, WIPO Case No. D2000-0025, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0025.doc>. One of the concrete examples of registration and use in bad faith supplied by the Uniform Dispute Resolution Policy is that of a person registering a domain name "primarily for the purpose of disrupting the business of a competitor." UDRP para. 4(b)(iii). That example is satisfied here. The word "competitor" in the Policy covers any person "who acts in opposition to another, and the context does not imply or demand any restricted meaning such as a commercial or business competitor." (The word "business" covers any "activities concerning the supply of some goods or services and in respect of which a reputation may be gained.") Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, supra. Hoffman, an opponent of abortion, is for this purpose a competitor of Women on Waves, whose business is the dissemination of information about and the provision of abortion and family planning services. Hoffman's registration and use of the <womenonwaves.com> domain name has had the primary purpose of disrupting the business of Women on Waves by diverting traffic from its site.

To the extent that Hoffman's activities are deemed commercial, they also fit within the UDRP example of "using the domain name [to] intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark." UDRP para. 4(b)(iv). It is not necessary, however, for the panel to find that Hoffman's activities fall within any particular example set out in the Policy. Even if no specific example applied, the totality of those activities -- including the false registration information, the intention to mislead and divert users away from the Women on Waves web site so as to increase traffic on the site Hoffman favors, and (although this is not necessary to the result) the redirection of those users in a way that conveys the false impression that Women on Waves is linked to partial birth abortions -- would be sufficient proof of registration and use in bad faith. See Lloyds TSB Bank PLC v. Paul Brittain, WIPO Case No. D2000-0231, supra; Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, supra; see also CSA International v. John O. Shannon, WIPO Case No. D2000-0071, <http://www.wipo.int/amc/en/domains/decisions/word/d2000-0071.doc>.

B. Respondent

The Respondent has not filed a Response and is in default.

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Domain Dispute Resolution Procedure Policy, the Complainant must prove that:

(i) The 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 domain name; and

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

A Identical or confusing similarity

It is prima facie obvious that the Domain Name is identical to the Complainantís WOMEN ON WAVES mark and, therefore, that they are confusingly similar.

B Rights or Legitimate Interest of the Respondent

The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.

C Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including

"[the Respondent] has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name"; and

"[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor; and

"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainantís mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location."

In the absence of a Response from the Respondent there appears to be no explanation other than that the Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its site, to disrupt the business of the Complainant by causing confusion on the Internet by offering information concerning Inter alia abortion and/or to profit by eventual sale of the name to the Complainant or another third party for profit. I endorse the position of the Complainant that whilst the Respondent is free to express his own opinions about the Complainant and its work he is not free to suggest that he is, in fact, the Complainant or somehow associated with the Complainant through the use to which he has put the Domain Name.

 

7. Decision

In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainantís trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.

Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name <womenonwaves.com> be transferred to the Complainant.

 


 

Dawn Osborne
Sole Panelist

Dated: January 29, 2001