WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

British Nuclear Fuels plc v. Greenpeace International

Case No. D2001-1318

 

1. The Parties

The Complainant is British Nuclear Fuels plc, whose registered office is at Risley, Warrington, Cheshire WA3 6AS, United Kingdom.

The Respondent is Greenpeace International of Keizergracht 176, 1016 DW Amsterdam, the Netherlands.

 

2. The Domain Name and Registrar

The domain name <britishnuclearfuels.com> is registered with Gandi, 38 Notre-Dame de Nazareth, F-75003, France.

 

3. Procedural History

The Complaint was filed by e-mail on November 1, 2001, and in hardcopy on November 5, 2001. It was notified to the Respondent on November 20, 2001.

The WIPO Arbitration and Mediation Center has stated that:

- the Complaint was filed in accordance with the requirements of the Rules and WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the UDNDRP);

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified to the Respondent in accordance with the Rules, paragraph 2(a);

- a Response to the Complaint was filed on December 7, 2001; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in the UDNDRP.

As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

The date scheduled for issuance of a decision was January 10, 2002.

The language of the proceedings is English.

The Complainant has requested the admission of a Reply by it to the Response. After preparing a draft of this decision I read the Reply, approaching it on the principle that, in order to preserve the rapid and simple nature of the UDNDRP, a Reply should not ordinarily be admitted unless it adds to the Complainant's previous submissions in ways that could not reasonably have been anticipated. I find that the Reply concerns matters of law and of fact which are not relevant to pursue, given my view of the circumstances as initially set forth in the Complaint and Response. I therefore reject the request to admit the Reply as part of the Complainant's case. It follows that I also do not take into account the Respondent's Rejoinder which it has submitted to the Reply.

 

4. Factual Background

The Complainant was incorporated in 1971 as British Nuclear Fuels Ltd, giving the acronym, BNFL. It became a public limited company in 1984 under the corporate name, British Nuclear Fuels plc. It states that it produces and markets nuclear fuel in the United Kingdom and has 51 sites in 16 other countries; that it holds a 12 per cent share of the world's nuclear market; and that its capabilities cover the range of the nuclear fuel cycle from procurement to waste management and decommissioning.

The Complainant is registered proprietor of 17 United Kingdom trade marks which consist of the abbreviated name "BNFL", or comprise that name, in a box, with a logo or the word, "Drumscan" or "Fuelcheck". Five of these, registered in 1992, are for "BNFL" alone. There are also registrations of a Community Trade Mark and national marks in Benelux, Germany, Italy, Spain, Switzerland, Japan and South Korea. The registrations are spread across 18 Classes of the register, the Complainant drawing attention in particular to those in Class 4 (fuels) and Class 9 (apparatus and instruments). In addition, it holds domain registrations for <bnfl.com> and <bnfl.co.uk>, and uses them for associated websites at which it advertises and markets its business on the Internet.

The Respondent is the governing council of the well-known Greenpeace environmental movement, which it states to have been registered as a charity in 1971. It operates as an independent non-profit organisation dedicated to the protection of the environment. It has offices in 39 countries.

The record for the domain name in issue was created on July 4, 2000.

 

5. Partiesí Contentions

A. Complainant

In order to satisfy the requirements of the UDNDRP, the Complainant asserts the following:

As to the trade mark rights of the Complainant and the identity or confusing similarity of the domain name in issue

(1) It owns registered trade mark rights in "BNFL" and has an established commercial reputation arising from use of that mark and use of its trade name, "British Nuclear Fuels", both of which are therefore subject to legal protection. Evidence of its business activities and the goodwill attaching to these names is to be found at the two websites, <www.bnfl.com> and <www.bnfl.co.uk> already mentioned.

(2) The Complainantís reputation is such that the general public would readily connect "British Nuclear fuels" with BNFL. In any event, the Respondent has made this connection clear on the website created by the Respondent at the Domain name in issue, stating in the opening paragraph, "run by British Nuclear Fuels Ltd (BNFL)".

(3) By using both "British Nuclear Fuels" and "BNFL" as metatags at this website, the Respondent has sought to attract Internet users who have searched the Internet by reference to one or other of these tags.

(4) The domain name in issue is identical with "British Nuclear Fuels" and is confusingly similar to "BNFL", this being the acronym of the Complainantís original company name.

As to any Right or Legitimate Interest of the Respondent

(1) The Respondent lacks any right or legitimate interest in the domain name in issue, since it has no licence, permission or other relationship with the Complainant; nor is it commonly known as, or has any trade mark rights in, "British Nuclear Fuels".

(2) The respondent operates a site, < www.greenpeace.org>, from which it conducts its campaigns and has no need for the domain name in issue, in particular to exercise its right of free speech and expression in accordance with the European Convention on Human Rights, Article 10. The Complainant, indeed, has a link to the Respondentís site and to similar sites critical of its operations.

As to the Respondentís bad faith

(1) The content of the Respondentís website for which the domain name in issue is the address demonstrates its intention to use the domain name to damage the Complainantís reputation, in that the content accuses the Complainant of disreputable secrecy, and of running a business which threatens millions of people, yet involves massive cost overruns and poor performance, which cause it to be shunned by potential customers;

(2) That content is also couched in terms which suggest that it is being supplied by the Complainant itself;

(3) The domain name was registered for the purpose of criticising the Complainant and thereby causing serious disruption and damage to its business, in particular by attracting Internet users looking for the Complainantís official website to the Respondentís site, thereby creating confusion as to the origin of the website. Attention is drawn to the similar findings to this effect in WIPO Case D2001-0376, COGEMA v. Greenpeace International.

B. Respondent

The Respondent answers the allegations in the Complaint as follows:

As to the Complainantís rights and the identity or confusing similarity of the domain name

(1) It refuses to accept without proof the Complainantís statement of the scope of its business operations.

(2) While acknowledging that the Complainant is the registered proprietor of the trade marks and holds the domain names referred to in Paragraph 4(2) above, it avers that only five of the marks are for BNFL alone in capitals and that all the marks are registered only for the United Kingdom.

(3) It avers that the initials BNFL mean different things to different people, relies on the absence of any evidence of their association with the Complainant and denies that they trigger an automatic response with the Complainantís corporate name or lead to an association with the registered BNFL marks; and questions how BNFL can be regarded as the acronym of a company which has become British Nuclear Fuels plc.

(4) It denies that British Nuclear Fuels can constitute a trade name, primarily because it is generic; and relies on the absence of any proof of a trading reputation in the phrase.

(5) It denies that its website uses the phrase "run by British Nuclear Fuels (BNFL)" and objects to the misleading allegation being made by the Complainant; and it denies that the use of British Nuclear Fuels and BNFL as metatags for its website is unlawful, deceptive or otherwise inappropriate.

(6) While admitting that the domain name at issue is identical with the Complainantís corporate name, it denies that the domain name is confusingly similar to the Complainantís registered mark, BNFL.

As to its Right or Legitimate Interest

(1) The Respondent claims that it has a legitimate interest in the domain name in issue as part of its right freely to criticise the Complainantís operations and conduct and that it is entitled to maintain a separate website for this purpose. It denies that it does not require the domain name in issue in order to conduct its campaigns.

(2) Despite its assertions, the Complainant is seeking to restrain the dissemination about itself of embarrassing facts. If the Complainant has any grievance against the Respondent it must lie in an action for defamation, not in proceedings for transfer of a domain name.

(3) The Respondentís use of any trade mark is purely descriptive and noncommercial, and it is necessary in order for it to provide identifiable information to those who desire to receive it.

(4) The Respondent has not registered a domain name which consists of or includes the Complainantís trade or service marks; nor has the Complainant established any protectable interest in generic words in which it does not or would not appear to trade.

As to its Lack of Bad Faith

(1) The Respondent registered the domain name in issue not for the purpose of disrupting the Complainantís business but for the purposes of commentary and criticism. In any case the Respondentís registration is justified by its right of free speech; any issue amounts to a claim of unlawful interference with contractual relations which cannot be dealt with in these proceedings.

(2) The contents of the Respondentís website constitute legitimate commentary and criticism of the Complainant. They are not unlawful in any sense and have not been made the subject of civil or criminal proceedings, actual or threatened. It is by such means that any legal objection to the contents should be pursued and not by these proceedings.

(3) The Respondent did not register the domain name for purposes of public deception; nor is the content its website reasonably capable of being understood as being provided by the Complainant.

(4) The decision in WIPO Case D2001-0376 (Cogema) falls to be distinguished on its facts.

(5) In relation to the instances of bad faith specified in the UDNDRP, Paragraph 4(b):

- there are no circumstances or evidence to suggest that the Respondent registered the domain name in issue for the purpose of transferring it to the Complainant or any other person (4(b)(i));

- the Respondent did not register the domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name, since British Nuclear Fuels is not the Complainantís trade or service mark and the Complainant reflects its mark, BNFL, in the domain names which it holds; it follows that there can have been no pattern of such conduct (4(b)(ii));

- the primary reason for registering the domain name in issue was not to disrupt the Complainantís business but to comment upon and criticize its activities (4(b)(iii)); and

- the Respondent has not, intentionally or otherwise, attempted to attract for commercial or other gain, Internet users to its website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website, since it does not compete with the Complainant, profit from its website, use the Complainantís trade or service mark, makes it plain that there exists no connection between the two, it being shown by the Complainantís own link to the Respondentís general website that the Complainant is content that a "moron in a hurry" might conceivably consider there to be some connection between them (4(b)(iv)).

 

6. Grounds for Decision

According to Paragraph 4(a) of the UDNDRP, the Complainant must establish each of the three following elements:

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

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

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

Complainantís mark and its Relation to the Domain Name in Issue

A major element in the Response in this case arises from the claim that "british nuclear fuels" is not the Complainantís trade mark because it is inherently a descriptive phrase. The trade marks which the Complainant has registered in the United Kingdom are for "BNFL" which is evidently an acronym taken from the Complainantís original corporate name. According to the Respondent, it is in that acronym alone that the Complainant can claim rights. Because of its generic character ĎBritish nuclear fuelsí cannot be regarded as a name identifying the Complainant as a business entity either in its own right or through an association in the public mind with "BNFL". This position seems a remarkable one for the Respondent to take, given its admitted role as an environmental activist dedicated to exposing the activities of the Complainant and other nuclear energy producers which it regards as utterly unacceptable. Thus on its website at <www.british nuclearfuels.com>, where the Respondent launches into a mordant attack on the Complainant and its Chief Executive, it at once identifies the Complainant as "British Nuclear Fuels, the operators of the Sellafield nuclear site in the North-west of England." Then without further explanation it refers to the Complainant repeatedly as "BNFL".

Certainly the Complainantís only registered trade marks are for "BNFL". It may perhaps be that it would face difficulties in registering "British Nuclear Fuels" as a trade mark in the UK and elsewhere because it would have to make out sufficient distinctiveness to show that the relevant public no longer treated the phrase as descriptive. Nonetheless in common law systems through the action against passing off, and in many civil law jurisdictions through unfair competition proceedings, a trader may protect the name in which it has a trading reputation and associated goodwill.

In stating its case, the Complainant does not produce evidence to support the brief description of itself as a leading producer of nuclear energy or to demonstrate the extent to which it is known as "British Nuclear Fuels" as well as "BNFL" -- a matter of which the Respondent seeks to make great play. Instead the Complainant relies on the content of the Respondentís website just referred to, in order to show that the Respondent, as a major detractor, uses both of these indicators as ready means to identify the Complainant in its war of words, without showing any need to elucidate their connection. The obvious inference is that both are widely recognized as referring to the Complainant. In these summary proceedings, in which the statement of complaint is to be kept brief, the Complainant may expect to have such an inference drawn from the Respondentís conduct without having to produce extensive evidence of reputation. I accordingly find that the Complainant has rights in "British Nuclear Fuels" which fall within the phrase "trade mark or service mark" in the UDNDRP as that phrase has been repeatedly interpreted.

The Respondent has objected strongly to a passage in the Complaint which claims that the opening paragraph of its website attack contains the phrase, "run by British Nuclear Fuels Ltd (BNFL)", when actually (as Annex D of the Complaint itself shows) there is no reference at this point to "(BNFL)". In my view, nothing turns on this apparent slip, since the material on the website simply refers to the Complainant in succeeding paragraphs as "BNFL". That it thinks it unnecessary first to explain that the two are associated names for the enterprise which it is criticising only makes it the more obvious that the two names are indicators of the Complainant which will be known to a great many of those who visit the site.

The Domain Name in issue bundles the very phrase, "britishnuclearfuels", adding to it, significantly, the generic suffix, <.com>, rather than the <.org> which, as a charity, it uses for its general website. This essential identity of mark and domain name means that the Complainant has made out the first limb of its case.

Respondentís Right or Legitimate Interest

In WIPO Case D2001-0376, already referred to, the leading French nuclear producer, COGEMA, obtained a decision that the domain name, <cogema.org>, be transferred by the present Respondent to it. The Panelist could find no acceptable justification for the Respondent asserting a right or legitimate interest in that name. The Respondentís refutation consisted of reliance upon its "right to free speech and a legitimate interest in criticizing the activities of organisations like the Complainant, but that is a very different thing from having a right or legitimate interest in respect of the Domain Name". In the present proceedings, the Response is couched in similar terms on this point and I adopt the same conclusion as the Panelist in that Case.

The Respondent's Bad Faith

In WIPO Case D2001-0376, the Panelist agreed with the Respondentís contentions that its activities did not fall within any of the instances of bad faith specified in the UDNDRP, Paragraph 4(b), principally because it does not itself engage in nuclear production but exists to expound the terrible consequences (as it sees them) of such trade and other threats to the environment. However, he pointed out that the Paragraph 4(b) instances are only illustrative of what may amount to bad faith and proceeded to find for the Complainant on this issue. The principal thrust of the Respondentís argument on the point in that case was that it obtained the domain name in order to criticize the Complainantís activities. This was justified by its right of free speech, and so its purpose was not to cause the Complainant disruption or damage. The Panelist refused to accept that any such dichotomy made sense:

"In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainantís website."

I reach the same conclusion in the present case, which indeed is in one respect perhaps stronger. In COGEMA, the Respondent had made no use of the domain name in a website address, but in this case it has. On the site using the domain name in issue, as already noted, the Respondent first identifies the Complainant as British Nuclear Fuels Ė with the obvious inference that the domain name was chosen to attract Internet users to the site to learn about the Complainant, many visitors doubtless expecting the site to be the Complainantís. Then it attacks the Complainant "for producing thousands of kilograms of weapons-usable plutonium" and as having "obvious reasons to reveal as little as possible about its operations. However, in a new spirit of openness, www.britishnuclearfuels.com would like to provide the public a view into the dirty and dangerous world of international plutonium trafficking. We at <www.britishnuclearfuels.com> feel that not only should our customers have the details about how bad things really are at the Sellafield site Ė but you too, the global public, who receive radiation doses from BNFLís activities also deserve to know." There are three further references to "we here at <www.britishnuclearfuels.com>".

A careful reader who is attuned to heavy irony as practised in the English language will have no difficulty in understanding that these phrases, in the context of the whole denunciation, come from a critic of the Complainant. Nowhere, however, does the introductory material on the site identify the content provider as Greenpeace, which is mentioned only as taking High Court proceedings in conjunction with Friends of the Earth. Among those of the global public who do not have this background, many will doubtless be puzzled about who www.britishnuclear.fuels.com are, especially as they are said to have "customers" (which the Respondent claims to be a "somewhat whimsical" reference to users of the website). I would suspect that the Respondent used the phrases in the hope of prolonging these uncertainties and of suggesting to the more naïve that the Complainant was in some measure involved in providing the content of the site. My finding of bad faith does not turn on this suspicion, but the circumlocutory use of the domain name, rather than the Respondentís own name, increases my sense that the finding is quite as justified here as it was in the COGEMA case. A vigorous but straightforward critic of the Complainant has all the freedom of speech guaranteed by the European Human Rights Convention without needing to engage in the adoption and manipulation of the Complainantís name as a domain name which has occurred here.

 

7. Decision

For these reasons, the Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, paragraph 4(i) and Rules, paragraph 15, that the domain name <britishnuclearfuels.com> should be transferred forthwith to the Complainant.

 


 

William R Cornish
Sole Panelist

Dated: January 10, 2002