WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Leonard Cheshire Foundation v. Paul Anthony Darke

Case No. D2001-0131

 

1. The Parties

The Complainant in this administrative proceeding is The Leonard Cheshire Foundation from Millbank, London, United Kingdom.

The Respondent in this proceeding is Paul Anthony Darke whose contact details are Compton, Wolverhampton, West Midlands, United Kingdom

 

2. The Domain Name and Registrar

This dispute concerns the domain name "leonard-cheshire.com".

The registrar with which the domain name is registered is Core Internet Council of Registrars, whose website is located at "www.corenic.net".

The domain was registered by the Respondent on or about October 4, 2000.

 

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on January 24, 2001 and in hardcopy on January 24, 2001. Payment in the required amount to the Center has been made by the Complainant.

On January 29, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the domain name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name. Confirmation was received from the Registrar on January 31 2001. On February 6, 2001, a formal Response was received from the Respondent.

On February 26, 2001, notification of appointment of the administrative Panelists and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the administrative Panel would comprise three Panelists and advised that the decision should be forwarded to WIPO by March 12, 2001.

On March 12, 2001, the Panel requested an extension of time and this was granted by WIPO. Because there have been further delays in making a decision a further extension was granted until April 12, 2001.

 

4. Factual Background and Assertions

The Complaint

The Complaint recounts that the Complainant was founded in 1948 and operates a charity that provides services to disabled people under the indicium Leonard Cheshire. It states that Complainant is the owner of the common law rights in the indicium Leonard Cheshire, as well as a United Kingdom trademark registered in 1998 which incorporates the words Leonard Cheshire. In the registration certificate produced as Annex C to the Complaint, the words Leonard Cheshire are part of a larger design mark, including the representation of a person in a wheelchair and the word "ENABLED". The words "Leonard Cheshire" also appear on Complainantís letterhead, shown in a letter from Complainant to Respondent dated October 19, 2000, and produced as part of Annex E, and appear to the Panel to constitute a trade name and also a trademark use.

The Complaint asserts that Respondent has no rights or legitimate interests in respect of the domain name, that the disputed domain name is confusingly similar to Complainantís name and registered trademark, and further that Respondentís use of the disputed domain name is, a) to force Complainant to buy the domain name for the inflated price of £40,000; b) to bring collateral pressure to bear upon Complainant so as to force it to settle quickly a claim for expenses brought by Respondent, and c) for the purpose of disrupting the legitimate activities of Complainant to raise funds by, inter alia, sponsorship.

The Complaint asserts that the name Leonard Cheshire has become distinctive of Complainant and none other.

The Complaint maintains that registration and use by Respondent of the disputed domain name amounts to a representation to members of the public that the domain name was connected with, or authorized by, Complainant because of the close similarity between the domain name and Complainantís indicium.

The Complaint also asserts that such registration and use by Respondent is calculated to damage, and in reality will damage, the goodwill that resides in the provisions of charitable services under the indicium Leonard Cheshire.

The Complaint asserts that Respondent was formally an employee of Complainant and a member of its Public Affairs Committee and had access to information that was confidential to Complainant, and further that on or about October 4, 2000, while still an employee of Complainant and a member of the said committee, but unknown to Complainant and without its authorization, Respondent registered the disputed domain name.

The Complaint states that Respondentís contract of employment with Complainant expired on or about October 5, 2000, and on or about October 18, 2000, Respondent resigned from the Public Affairs Committee of Complainant.

The Complaint refers to the home page of Respondentís website which, at the time the Complaint was prepared, stated that it "is not the site of Leonard Cheshire Foundation". Despite this disclaimer, Complainant asserts that some visitors to the website might not fully appreciate the effect of the disclaimer and, in any event, there was a realistic chance that some visitors might not read the disclaimer but would go immediately to other pages, on all of which there is no disclaimer.

The Complaint further refers to a page, which has links to Respondentís home page, which states that Respondentís website is a work of art and is for sale at a cost of £40,000, all proceeds from the sale of the site to go towards the creation of a Holocaust Memorial to Disabled People.

The Complaint asserts that Respondent "specifically raised with the Complainant the possibility of selling the site", and refers to an e-mail transmission of October 25, 2000, from Respondent to Mr. Peter Maple, Director of Public Affairs for Complainant. The Panel notes, from the material available to it, that this was in response to an earlier letter from the said Mr. Peter Maple to Respondent dated October 19, 2000, in which Complainant had raised this issue and requested that Respondent assign the disputed domain name to Complainant in return for reimbursement of Respondentís reasonable expenses.

It appears from both the Complaint and the Response that there was an outstanding issue regarding payment of expenses claimed by Respondent to be due to him by Complainant.

The Complaint quotes an e-mail from Respondent dated November 8, 2000, in which Respondent stated that the payment of his expenses had nothing to do with his future decisions as to what to do with the disputed domain name site, but confirmed he would not discuss it until all links with Complainant, i.e. the payment of his expenses, had been severed.

The Complaint underlines the fact that Respondentís offering of the disputed domain name for sale for the sum of £40,000 is significantly more than the expenses that could be reasonably incurred by the registration and transfer of the said domain name. However, the correspondence cited by Complainant indicates that the potential sale was of the website as a whole, as a work of art, and not merely the disputed domain name.

The Complaint considers that the offer to sell the disputed domain name site could only be directed to Complainant because no other charity or organization could lawfully operate a website under such a domain name.

The Complaint reiterates that one of the reasons why Respondent registered the disputed domain name was to apply pressure to Complainant to force it to settle quickly an outstanding expenses claim submitted by Respondent.

The Complaint refers to statements, which appear under a link entitled "fast facts" as erroneous or likely to give a false impression of Complainant. As an example, Complainant cites the statement that "People in Cheshire Homes, people receiving "Home Helps" from Leonard Cheshire are funded through taxation. They are not objects of Leonard Cheshire Charity". This statement is untrue according to Complainant. The Complaint devotes considerable space to this and similar statements by Respondent, and comments at length on the funding Complainant has received from the National Lottery Charitiesí Board, in order to refute what Complainant considers to be erroneous information.

The Complaint cites the phrase "the evil that is leonard cheshire" appearing on Respondentís website, as evidence of Respondentís bad faith. An additional grievance of Complainant is found in its assertion that some of the information on Respondentís website was confidential to Complainant before its publication on the said website.

The Complaint summarizes its principal arguments concerning Respondentís bad faith, namely, that Respondent registered the disputed domain name in bad faith and has continued to operate it in bad faith, for the purpose of offering to sell the domain name for an inflated price; that Respondentís "collateral purpose" of applying pressure on Complainant to settle quickly Respondentís expenses claim is further evidence of bad faith; that the content of Respondentís website operated under the disputed domain name is designed to disrupt, by means of untruths and misleading statements, the legitimate business activities of Complainant and is further evidence of bad faith; and that Respondentís use of inflammatory language when criticizing Complainant is indicative of malice and hence bad faith.

The Complaint seeks the transfer of the disputed domain name to Complainant.

The Response

The Response states that the site of the domain name in dispute, "www.leonard-cheshire.com", is a "work of political interventionist art" and, "as a work of art Ö is for sale to anybody". These two themes, that the site and its contents are a work of art, and that the site is an act of political freedom of expression, appear throughout the Response.

Respondent states that the Complainant chose, "long before I came along", the domain name of its choice ("www.leonard-cheshire.org"). The Response therefore concludes that Respondent has in no way prevented Complainant from having the domain name of its choice.

Respondent freely admits that "the site is clearly anti-Leonard Cheshire", stating that he feels he has the right to express his views on a site which most aptly frames them in a context of a political debate. He states that he uses Complainantís name, in the essence of the domain name and the site, "as a valid way to draw attention to criticisms of the organization."

Respondent concedes that the site of his domain name is for sale, the proceeds of which would go towards "making a holocaust memorial to disabled people". He maintains that none of the funds received from the sale of the site would be received by himself.

Respondent declares he is a disabled person, and cites four e-mails which he says he has received complimenting him on his site and its criticism of Complainant, which is staffed by non-disabled people and is indicated to be a wealthy organization.

Respondent asserts he does not infringe "in any commercial way" on Complainantís trademark, and that he uses the words, i.e. Complainantís name, "to make clear the aim of the site linked to the practices of Leonard Cheshire only". He maintains that the addition of the dash and the dot com make the domain name in dispute different from Complainantís trademark, and that Complainant had the opportunity to buy all the domain names it wanted.

Respondent agrees that the domain name in dispute is similar to Complainantís domain name, adding "That is the point of the art work; to draw attention to something which has (sic) an artist (and the disability movement) feel to be an abhorrence in the 21st Century: the mass institutionalization of disabled people. A practice which Leonard Cheshire Foundation are the leading providers of in relation to disabled people". Respondent maintains that he did not intend that the site of the disputed domain name would be bought by Complainant, and in fact, has offered it at a very high price specifically to exclude Complainant, which would only destroy its contents. According to Respondent, proceeds of the sale of the site of the disputed domain name would be to fund the building of the Holocaust Memorial. He says that the price of £40-45,000 was based on costs of steel (£35,000) plus land, legal, promotional and insurance costs needed to build this monument.

Respondent admits that the site of his domain name is for the purpose of disrupting Complainantís interests. He states:

"The site is about the Leonard Cheshire Foundation - and all that it represents politically, socially and economically in the lives of disabled people. Thus, the choice of the domain name - it would not be such an effective work of art if it was not about charity as epitomized by the Leonard Cheshire Foundation."

Respondent clearly admits that the aim of his site is to damage Leonard Cheshire Foundation, which he considers to be adverse to the interests of disabled people. He states in his Response "as for damaging Leonard Cheshire Foundation Ė that is the aim of the site as an act of political art in a free society".

Respondent also asserts that he seeks to challenge a large multimillion corporation to stop institutionalizing disabled people.

Respondent refers to the Complaint as "a politically motivated attempt to silence opposition to the practice of institutionalization of disabled people by the largest institutionalizer of disabled people in the U.K."

Respondent states that his site openly dissociated itself from Complainantís trademark. His position is that, since the contents of the site of the disputed domain name are obviously opposed to Complainant, and are very critical of Complainant, the site could not possibly be considered to be the site of Complainant. Respondent concludes:

"How could anyone (any member of the public) have the view that the site - which states it is not and then does its utmost to demolish the idea of Leonard Cheshire Foundation as a "good" thing - think that it was part of, linked to or authorized by the Complainant (Leonard Cheshire Foundation)".

Respondent also asserts that:

"it is obvious (from the prominent denial on the opening page if nothing else) that it is not the site of Leonard Cheshire Foundation."

Respondent concedes that he bought the disputed domain name while on two days of annual leave during his final two days of official employment by Complainant.

Respondent refers to Complainantís linking of Respondentís claim for unpaid expenses to the acquisition of the disputed domain name, and says that he never doubted he would be paid in full, and indicates that his entitlement to payment from Complainant is unrelated to his site for the disputed domain name.

At the beginning of his Response, Respondent categorically states that he will abide in full by WIPOís decision and take no subsequent action over the domain name, and will do with it as dictated by the decisions which WIPO may make. This commitment is repeated at the end of the Response.

 

5. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to the trademark or service mark of the Complainant; and

(ii) The Respondent has no right or legitimate interest in respect of the domain name; and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Domain Name Identical or Confusingly Similar

The Complainant is the owner of a United Kingdom registered trademark in which the words " Leonard Cheshire" are part of a larger design which includes a representation of a person in a wheelchair and the word "ENABLED". The words "Leonard Cheshire" also appear on the Complainantís letterhead which the Panel considers to be use as both a trade name and service mark.

It is clear from the evidence that the Complainant has substantial and long-standing rights in the Leonard Cheshire name. There is no real dispute between the parties that the name Leonard Cheshire is well known and that it was chosen by the Respondent as a domain name because of its repute and the recognition and association it has with the Complainantís organization.

Previous Panel decisions have held that the addition of a generic term or a hyphen is insufficient to remove a finding of confusing similarity.

The disputed domain name is confusing with Complainantís trademark and service mark, and Respondent admits that the name was chosen for the purpose of drawing attention to Complainant. Unlike the case of Lucent Sucks (95, F. Supp. 2d 528), the disclaimer or disavowal or means of advising the reader that Respondentís site is not Complainantís site, does not appear in the domain name itself. The Policy refers to confusing similarity between a trademark and a domain name, by itself. Certainly, people could easily, at least initially, go to Respondentís site thinking they were going to Complainantís site. In the Panel's view, the disclaimers even if effective, are not necessarily determinative given the wording of the Policy.

No Right or Legitimate Interest

The Respondent has no rights or legitimate interests in the disputed domain name because he adopted it after he was well aware of the Complainantís name, trademark and service mark, and had no intention of using the domain name otherwise than as a reference to the Complainant. The suffix ".com" does not give him proprietary rights.

Even if the Respondent were making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, his intent was, as he admitted, to damage the Leonard Cheshire Foundation. Since this is equivalent to an intent to tarnish the trademark and service mark at issue, the Respondent cannot claim he has rights or legitimate interests to the domain name under the provisions of paragraph 4(c)(iii) of the Policy.

Registered and Used in Bad Faith

It is clear from the evidence that the Complainant is a large organization that receives public funding for its activities. It also appears that the Complainant does extensive lobbying and spends considerable amounts of money on public relations to effect political decisions and public perceptions with a view to gaining their money and trust. This is all quite proper. While it has no doubt been successful in doing so, as the Respondent asserts, this also makes it a legitimate target for those who may disagree with some of its activities and wish to question them.

A number of the assertions made by the Respondent about his site being a manifestation of so-called political interventionist art and that the site itself is a work of art seem far fetched. Likewise, the assertion that the site was offered for sale for between £40-45,000 being the costs of constructing a memorial and/or priced at that level to exclude the Complainant from purchasing it is disingenuous and difficult to accept.

Certain of the Respondentís statements seem inflammatory and their factual basis is strongly disputed by the Complainant. Furthermore, questions arise as to how the Respondent came into possession of certain allegedly confidential information and how he intends to use such information.

While these issues may raise legitimate concerns, they are not directly relevant to this particular dispute. The merits of the respective partiesí positions, the way in which the Respondent acquired information and how he uses it is not an issue the Panel is able to determine. Likewise, even if the Panel had serious reservations about the accuracy, propriety and purpose of the Respondentís website or the manner in which he has attacked the Complainant, it is not the Panel's role to arbitrate on how appropriate this is or whether it should cease. This is an issue which can only be addressed by the courts in the United Kingdom.

The question for this Panel to answer is whether Respondent registered and used the domain name in bad faith. It seems clear that whatever one might think of the Respondentís views, he is attempting in his own way, to criticize the Complainant and the way it operates. The question is whether the Respondent is entitled to register and use the domain name to achieve these ends.

A number of factors need to be taken into account:

(a) The Respondentís website makes it clear on the front page that it is not the authentic Leonard Cheshire website Ė It says, "Welcome to "www. Leonard Cheshire.com" This in not the site of the Leonard Cheshire Foundation"

(b) There is also the prominent statement " Just say no to Leonard Cheshire"

(c) On page two there is a statement "Disabled by Leonard Cheshire". It does not take much to work out that this is not the Foundation site.

(d) There is no evidence of actual confusion. The single instance of alleged confusion makes it clear that the person concerned knew the difference between the authentic Leonard Cheshire site and the website of the Respondents.

(e) The Complainant and the Respondent are not in competition.

One approach may be to ask whether it would be evident to a reasonable member of the public that the website originated with the Complainant.

The situation with regard to "Sucks" sites is instructive. It is now well accepted that "Sucks" has entered the vernacular as a word loaded with criticism. There is reference to this in the "wallmartcanadasucks.com" case (Wall-Mart Stores, Inc, v. "wallmartcandasucks.com" and Kenneth J Harvey (Case no D2000-1104) There was also the Panelist's comment, when looking at the legitimacy of the Respondentís site:

"Thus whether wallmartcanadasucks is effective criticism of Wall-Mart, whether it is in good taste, whether it focuses on the right issues, all are immaterial; the only question is whether it is criticism or parody rather than free-riding on anotherís trademark".

The American Restatement (Third - Unfair Competition) recognizes the balance that needs to be struck between the right of criticism and the rights of a trademark owner:

"One who uses a designation that resembles the trademark, trade name, collective mark or certification mark of another, not in a manner that is likely to associate the otherís mark with the goods, services, or business of the actor, but rather to comment on, criticize, ridicule, parody, or disparage the other or the otherís goods, services business, or mark, is subject to liability without proof of the likelihood of confusion only if the actorís conduct meets the requirements of a cause of action for defamation, invasion of privacy, or injurious falsehood".

The Respondent is entitled to a degree of personal freedom of expression, provided it is otherwise lawful and subject of course to the Complainantís legal right to seek to restrain such expression by other means. Once again however, we have to focus on the domain name issue and the wording of the Policy. As stated in the Wal-Mart case (supra) "In domain name disputes it is critical whether the accused domain itself signifies parodic or critical purposes, as opposed to imitation of trademark."

In the "Sucks" type situations it is important to note that the domain name itself indicates that the domain name and the site resolved to is, in all probability, a criticism site. In the present case the domain name offers no such indication and purports on its face, to be a legitimate name/site.

Further, it is hard to justify the Respondentís attempt to sell the domain name to the Complainant for an amount well in excess of its cost to the Respondent.The argument that the website amounts to a work of disability art which itself justifies a value of £40,000 to £45,000 is not one the Panel regards as credible.

Among the circumstances that may lead to evidence of bad faith are that the domain name has been registered or acquired by a Respondent primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondentís out of pocket costs. There is certainly evidence for the Panel to draw the inference that the offer for sale of the domain name to the Complainant was a factor in the Respondentís thinking. It is also possible to infer that acquiring a considerable amount of money may have been one of the reasons for registering the domain name. The question is however whether this was the primary purpose for registering the domain name.

If the Respondent was less virulent and sustained in his attack on the Complainant it may be possible to readily infer that the real purpose was to embarrass the Complainant into submission so it would buy the domain name back. However, the evidence and response led the Panel to conclude, on the balance of probabilities, that whatever the merits of the Respondentís campaign may be, he is genuinely committed to his cause. Accordingly the Panel concludes that the Respondentís primary purpose in registering the name was as part of his campaign seeking to criticize the policies and activities of the Complainant.

The circumstances of this case do not fall under any of the illustrative examples of bad faith in paragraph 4(b) of the Policy. However these examples are not limitative (being described in the Policy as being "in particular but without limitation").

In the Panel's view the registration and use of an identical or confusingly similar domain name for the purpose of damaging the owner of the trademark to which it is confusingly similar or to which it is identical (and where the domain name does not itself indicate that it signifies parodic or critical purposes) constitutes bad faith within the meaning of the Policy.

An issue that has arisen is the extent to which "likelihood of confusion" has to be taken into account when considering paragraph 4(a) i Ė iii of the Policy. As indicated above, we regard the primary consideration to be in relation to the domain name itself. That is, regardless of the manner in which it is actually used on site or potentially may be used. We are in agreement that in relation to paragraph 4(a)i the only issue is whether there will be confusion between the domain name itself (not its site) and a trademark or service mark.

Where we differ is whether and to what extent likelihood of confusion generally i.e. in relation to the manner of actual or potential use has to be considered. Two members of the Panel think that it is applicable under paragraph 4 (a) iii. One member of the Panel is of the view that it is probably also applicable under paragraph 4(a) ii.

Having said this, the issue does not call for a decision in this case as the Panel is of the unanimous view that the Respondent's conduct in registering and using a domain name which is in substance a version of the Complainant's name or mark, without any wording which indicates that it relates to a criticism or parody use, amounts to bad faith.

In the particular facts of this case we so hold because:

a) the domain name itself is confusingly similar to the Complainant's trademark or service mark; and

b) even if the wider issue of likelihood of confusion is applied, the domain name remains confusingly similar generally as it is still likely to attract hits by misrepresenting that the site is an authentic one - even if once so attracted some Internet users might be able to ascertain the true nature of the site.

We regard the particular use in this case as improper and caught by the criteria laid out in the Policy. We accept however that there may be other instances where a different view might be taken.

 

6. Conclusion

The Panel concludes:

  1. The disputed domain name is confusingly similar to the Complainantís trademark and service mark;
  2. The Respondent has no rights or legitimate interests in the domain name; and
  3. The domain name was registered and is being used in bad faith.

In the Panel's view the domain name should be transferred to the Complainant.

 

7. Decision

The domain name should be transferred to the Complainant.

 


 

Mr Clive Elliott
Presiding Panelist

Mr Nick Gardner
Panelist

Ms Joan Clark QC
Panelist

Dated: April 12, 2001