WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Action Instruments, Inc. v. Technology Associates

Case No. D2003-0024

 

1. The Parties

Complainant is Action Instruments, Inc., San Diego, CA 92123, United States of America, represented by Baker & McKenzie.

Respondent is Technology Associates, allegedly of Vader, CA 93702, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <buswaredirect.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the "Center") on January 10, 2003. The same day, the Center transmitted by email to directNIC.com a request for registrar verification in connection with the domain name at issue. DirectNIC.com responded with an email confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was set at February 3, 2003. Respondent did not submit any Response. Accordingly, the Center issued a Notification of Respondent Default on February 4, 2003.

The Center appointed David H. Bernstein as the sole panelist in this matter on February 13, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Because Respondent failed to file a response in this case, the Panel accepts as true all statements of fact made by Complainant in its submissions. EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000); Talk City Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

Complainant, a California corporation, develops, designs, builds, and supports instruments that measure and process temperature, pressure, flow, level and speed signals from machinery. Complainant has been an industry leader in the remote signal condition industry for over twenty-five years. In 1998, Complainant created a Busware Direct corporate division. This division focuses on technology that facilitates communication, interface, and information transfer between computers and peripheral devices for industrial networks and buses, such as I/O modules, serial gateways, displays, modems, Ethernet connections, and imbedded control software.

Complainant subsequently submitted a trademark registration application for the mark "BUSWARE DIRECT" to the U.S. Patent and Trademark Office ("PTO"). The PTO issued Complainant U.S. Registration No. 2,435,654 for this mark on March 13, 2001. The registration covers "computer hardware and software for monitoring and performing data acquisition, data analysis and process control utilizing industrial digital networking technologies for use in the field of industrial automation; mail order services featuring the above-described computer hardware and software."

At some point after the creation of Complainantís Busware Direct division, Complainant registered the domain <buswaredirect.com>. Complainant used this domain for its official Busware Direct corporate division website. This website informed potential and existing customers about the Busware Direct product line. Early in June 2002, Complainantís registration for <buswaredirect.com> expired and Complainant inadvertently failed to renew it.

On June 13, 2002, Respondent registered the <buswaredirect.com> domain name. Respondentís registration application stated the following address and phone number for the registrant, administrative contact, and technical contact: 1412 Darth Ave.; Vader, CA 93702; U.S.; 111-111-1111. California does not have a city named Vader, nor does it have a street named Darth. The zip code 93702 is assigned to an area within the city of Fresno, California. There is no 111 area code in California or the United States.

Respondent subsequently posted a web site at <buswaredirect.com> that, as Complainant alleges, "mocks Complainantís technology and business." Respondent entitles the web page "Bus Specialists," but includes representations of passenger buses, instead of computer buses. The page suggests that the problem of a slow bus can be fixed by using "State of the Art Bus Instrumentation! Embedded Control Software! (e.g., Rufus, the driver.)." The web page shows a picture of an elderly bus driver and then states that he "Makes for Happiness in the Bus!" Finally, the page shows a picture of a passenger bus interior packed with happy passengers and states "Thank you for your visit today. You can leave now." At the bottom of the web page is a disclaimer stating, "This page is obvious satire and is not affiliated in any way with [certain entities related to Complainant,] or any other computer hardware or software firm." Among the listed domain names was Complainantís website, available at "www.actonio.com".

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondentís registration and use of the domain name <buswaredirect.com> violates Complainantís rights in the trademark BUSWARE DIRECT, in which it has rights based on the PTOís registration of this mark. Complainant alleges that <buswaredirect.com> is identical or confusingly similar to its trademark. Complainant also contends that Respondent has no rights to or legitimate interests in the domain name because Respondent is not related to, associated with, or in business with Complainant, and Complainant has not granted Respondent any rights to use the trademark. Complainant argues that Respondentís domain name must have been registered and used in bad faith because Respondent provided false and misleading contact information to the domain name registrar and misleads and confuses Complainantís actual and potential customers by misdirecting them to a web site through which they cannot access Complainant.

B. Respondent

Respondent did not reply to Complainantís contentions.

 

6. Discussion and Findings

Even in the face of a default by Respondent, Complainant bears the burden under paragraph 4(a) of the Policy to prove:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

For the reasons stated below, Complainant fails to meet this burden.

A. Identity or Confusing Similarity

The <buswaredirect.com> domain name is identical to Complainantís BUSWARE DIRECT registered mark. Accordingly, Complainant has satisfied the first element under the Policy.

B. Rights or Legitimate Interests

Complainant bears the burden of proving that Respondent lacks a legitimate interest in <buswaredirect.com>. Although Respondent has defaulted, the Panel still is obligated to consider whether Respondent has a legitimate interest by virtue of its using the domain name to criticize or comment on Complainantís business.

A threshold question to that inquiry is whether Respondentís site qualifies as a criticism site. Although Respondentís parody website may not be a particularly sophisticated critique of Complainantís businessóindeed, the Panel is hard put to decipher Respondentís critical messageóit undoubtedly expresses a critical perspective on Respondentís business. As one U.S. court has noted, protections afforded free expression "do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed." Yankee Publishing Inc. v. News Am. Publishing, Inc., 809 F. Supp. 267, 280 (S.D.N.Y. 1992); see also Campbell v. Acuff-Rose Music, Inc., 114 S.Ct. 1164, 1173 (1994) ("The threshold question when fair use is raised in defense of parody is whether a parodic character may be reasonably perceived."). In any event, Complainant itself characterizes the website as "mock[ing] Complainantís technology and business," which constitutes a concession that the site is fairly characterized as a criticism site.

Moving to the merits, the Policy states in paragraph 4(c)(iii) that "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" establishes a legitimate interest in the domain name. UDRP panels have stated repeatedly that criticism of a trademark ownerís activities is a fair use, even if the domain name incorporates the Complainantís trademark. See, e.g., Bridgestone Firestone, Inc. v. Myers, WIPO Case No. D2000-0190 (July 6, 2000); Bosley Med. Group v. Kremer, WIPO Case No. D2000-1647 (February 28, 2001); TMP Worldwide Inc. v. Potter, WIPO Case No. D2000-0536 (August 5, 2000); The Am. Natíl Red Cross v. Mafiabusters.com LLC, NAF File No. FA0206000114589 (August 6, 2002); Pensacola Christian College Inc. v. Gage, NAF File No. FA0110000101314 (December 12, 2001); Compusa Mgmt. Co. v. Customized Computer Training, NAF File No. FA0006000095082 (August 17, 2000); Robo Enters., Inc. v. Daringer, NAF File No. FA0101000096375 (February 21, 2001); Savin Corp. v. savinsucks.com, NAF File No. FA0201000103982 (March 5, 2002); Bloomberg L.P. v. Secaucus Group, NAF File No. FA0104000097077 (June 7, 2001); Mayo Found. for Ed. and Research v. Briese, NAF File No. FA0102000096765 (May 4, 2001); Dorset Police v. Coulter, eRes Case No. AF-0942 (October 20, 2001); Carefree Toland Pools, Inc. v. Thomson, eRes Case No. AF-1012 (October 30, 2001); cf. Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000) (stating that criticism can be a legitimate interest, but finding no legitimate interest because the protest site was created only as a pretext for selling the site back to the trademark owner); Becker & Poliakoff, P.A. v. Isabell, eRes Case No. AF-0847 (August 9, 2000) (stating the panel would find criticism to be a legitimate fair use if it had not decided the dispute on other grounds).

The Panel recognizes, however, that a consensus has not yet developed among panels regarding whether an individual can have a legitimate interest in using a domain name in the form <trademark.com> for the purpose of criticizing or commenting on the trademark owner. Compare Bosley Med. Group, WIPO Case No. D2000-1647 (using <trademark.com> to comment on trademark owner is fair use), with Nintendo of Am. v. Jones, WIPO Case No. D2000-0998 (November 17, 2000) ("Insofar as a domain name which is identical to a name or mark is used solely in the context of the product of the owner of the name or mark and the owner objects to the use, it is not legitimate."). In the absence of a consensus, a panel must consider the partiesí arguments and relevant legal authorities and then make a decision consistent with the goals of the Policy and the Rules, as well as general legal principles. See Rules Paragraph 15(a) ("A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.").

Complainant argues, in its discussion of bad faith, that criticism of a trademark ownerís business is not a fair use of a domain name if the website confuses and misleads the trademark ownerís active and potential customers. As Complainant notes, several panels have found that, if the domain name does not itself describe the critical nature of the website by including a phrase such as "sucks," the use of the domain name may be misleading and thus ineligible for protection as a fair use. See, e.g., Leonard Cheshire Found. v. Darke, WIPO Case No. D2001-0131 (April 12, 2001); Council of Am. Survey Research Orgs. v. Consumer Info. Org., LLC., WIPO Case No. D2002-0377 (July 19, 2002). Other panels have rejected the requirement that domain name registrants seeking to criticize a trademark owner must use circumlocutions like <trademarksucks.com> to designate a website for commentary or criticism. See, e.g., Bridgestone Firestone, Inc. v. Myers, WIPO Case No. D2000-0190 (July 6, 2000); Bosley Med. Group v. Kremer, WIPO Case No. D2000-1647 (February 28, 2001); Carefree Toland Pools, Inc. v. Thomson, eRes Case No. AF-1012 (October 30, 2001); cf. Becker & Poliakoff, P.A. v. Isabell, eRes Case No. AF-0847 (August 9, 2000) (refusing to transfer a domain name registered in the form of <trademark.com> and used for commentary without explicitly discussing the argument that these domain names should include criticism identifiers in the domain name itself); Dorset Police v. Coulter, eRes Case No. AF-0942 (October 20, 2001) (same).

This Panel previously considered this issue in Britannia Bldg. Socíy v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001). In that case, the Panel found use of the <britanniabuildingsociety.org> domain name for a criticism site to be a fair use because the Policyís goals "do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. Use of the Policy to provide such insulation would radically undermine freedom of discourse on the internet and would undercut the free and orderly exchange of ideas that the Policy seeks to promote." Nothing in Complainantís arguments, or in the decisions it has cited, persuades the Panel that this conclusion is no longer correct.

Nor is the Panel persuaded by Complainantís argument that the confusion caused by Respondentís use of <buswaredirect.com> prevents Respondentís use of the domain name from being deemed fair. It is readily apparent to any visitor that Respondentís website is not affiliated with Complainant. The occasional visitor who is confused by the parodic content of the website will quickly discover the explicit disclaimer at the bottom of the website. Complainant is free to post information about its Busware Direct products in another domain, such as the domain <actionio.com> identified in Respondentís disclaimer. The minimal confusion suffered by Complainantís potential customers is a price well worth paying to preserve the free exchange of ideas via the Internet.

Having found that Respondentís use of <buswaredirect.com> to criticize Complainantís business activities through parody is fair use, and given the absence of any evidence that Respondent was pursuing commercial gain or other actions that might undermine this finding of legitimacy, the Panel finds that, on this record, under paragraph 4(c)(iii) of the Policy, Respondent has a legitimate interest in the <buswaredirect.com> domain name.

C. Registration and Use in Bad Faith

Respondent has provided false contact information to the Registrar. Respondent apparently used the Darth Vader character from Star Wars movies as the source of the street, Darth, and city, Vader, in its listed address. This is strong evidence that Respondentís submission of false information was intentional, rather than a mere typographical error.

The use of false contact information in Respondentís initial registration application is evidence that Respondent registered in bad faith. Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155 (April 24, 2002); Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (April 11, 2000). Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it "made in [its] Registration Agreement are complete and accurate." Maintaining that false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration. For example, permitting registrants to mask their identity makes it difficult for trademark owners to determine whether the registrant "registered the domain name primarily for the purpose of disrupting the business of a competitor," Policy paragraph 4(b)(iii), or whether the registrant "engaged in a pattern" of registering domain names "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name," Policy paragraph 4(b)(ii). Under the U.S. Anticybersquatting Consumer Protection Act, moreover, "provision of material and misleading false contact information when applying for the registration of the domain name" is itself evidence of bad faith. 15 U.S.C. 1125(d)(1)(B)(VII).

Based on these legal principles, the Panel finds that Complainant has made a prima facie case that Respondentís registration and use of the domain name was in bad faith. Respondent has failed to rebut this showing or otherwise present evidence of good faith. Cf. Advance Magazine Publishers, Inc. v. Models USA Inc., WIPO Case No. D2002-0907 (December 19, 2002) ("By its default, Respondent has failed to rebut the reasonable inferences [of bad faith] that can be drawn from the combination of circumstances.") Accordingly, the Panel finds, on this record, that Respondent has registered and used the domain name in bad faith.

 

7. Decision

Although Complainant has established that the domain name <buswaredirect.com> is identical to its trademark and that Respondent registered and is using that domain name in bad faith, the Panel denies the Complaint because Complainant has not proved that Respondent has no rights or legitimate interests in the domain name.

 


 

David H. Bernstein
Sole Panelist

Dated: March 6, 2003