WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MicroFinancial, Inc. v. Glenn Harrison

Case No. D2003-0396

 

1. The Parties

The Complainant is MicroFinancial, Inc., a corporation organized under the laws of the Commonwealth of Massachusetts with its principal office in Woburn, Massachusetts, the United States of America. The Complainant is represented in this proceeding by Donna M. Greenspan, Esq. of Edwards & Angell, LLP, West Palm Beach, Florida, the United States of America.

The Respondent is Glenn Harrison, an individual resident in Montgomery, Alabama, the United States of America. The Respondent is represented by Thomas J. Doherty, Esq. of Doherty & Demissie, Cambridge, Massachusetts, the United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <leasecomm.org>.

The registrar for the disputed domain name is Network Solutions, Inc. of Herndon, Virginia, the United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2003. On May 26, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the disputed domain name. On May 29, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the 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 (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on June 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2003; and in fact the Response was filed with the Center on June 24, 2003.

The Center appointed Dennis A. Foster as the sole panelist in this matter on June 30, 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.

This Decision is due on July 14, 2003.

 

4. Factual Background

The Complainant describes itself as a "financial intermediary specializing in financing for products in the U.S. $500 to $10,000 range." The Respondent states he was a customer of the Complainant in 1999. The Respondent was so dissatisfied with the Complainantís services that he now uses the disputed domain name web site to criticize those services and as a broadcast point at which the Complainantís other clients may take the Complainant to task for its services.

The Respondent registered the disputed domain name, <leasecomm.org>, on February 11, 2003. Leasecomm is the Complainantís lease-purchase affiliate for business equipment.

 

5. The Partiesí Contentions

A. Complainant

The Complainant uses the trademark "LEASECOMM", which is specifically known to the consuming public as identifying the lease-purchase of business equipment, bankcard terminals, business signs, communications and security devices.

The Complainant has used the trademark "LEASECOMM" in commerce since 1985. The Complainant also is the registered owner of the trademarks "LEASECOMM 2000" and "LEASECOMM Direct" (Complaint Annex 3).

The Complainant is the registered owner of the domain names <leasecomm.com> and <leasecomm.net> (Complaint Annex 4).

The disputed domain name <leasecomm.org> is confusingly similar to the Complainantís trademark "LEASECOMM."

Entering the domain name <leasecomm.org> brings the reader to a web site that has the name "LEASECOMM" with a logo confusingly similar to the "LEASECOMM" logo. This confusion is further exacerbated by the banner appearing at the top of Respondentís website: "Leasecomm a wholly owned subsidiary and cash generator for Micro Financial Inc." (Complaint Annex 6).

Respondent has no rights or legitimate interest in the disputed domain name. The name is not being used in connection with any bona fide offering of goods or services.

The Respondent has registered the disputed domain name for the sole purpose of disrupting the business of the Complainant and its subsidiary, Leasecomm.

The fact that the domain name was registered and is being used in bad faith is clearly evident from the content posted on the website, which includes baseless and outrageous statements such as: "Leasecomm/MFI has been described by victims as ĎThe Company from Hellí" (Complaint Annex 6).

The disputed domain name should be turned over to the Complainant.

B. Respondent

Any review of the disputed domain name web site makes it clear that it is devoted to factually-based complaints about the Complainant, as well as information regarding victimís rights and legal remedies.

The sole purpose of the web site with the IP address of <leasecomm.org> is to express information and opinion about the Complainant, Leasecomm Corporation (Response Annex 1).

The Respondent is not a competitor of the Complainant, nor does he make sales or profits from his website.

The Respondent and the other individuals with anti-Leasecomm websites believe they have been wronged by the Complainantís unfair business practices, and formed an informal, ad-hoc organization in opposition to the Complainantís business practices. The Respondent and others shared information about legal and political defenses to the Complainantís collection and litigation tactics. The Respondent chose the top-level domain designation of .org for his website, a part of this ad-hoc organization devoted to attacking the unfair and deceptive business practices of the Complainant and its officers.

It is fair to say that the mark "LEASECOMM" has been widely vilified on the Internet and elsewhere. A search on any internet search engine for the term "LEASECOMM" will find many negative references to Leasecomm Corporation and the Complainant. These negative references are Complainantís own fault: unfair, deceptive and predatory business practices cause a reaction.

The Respondent acknowledges that the disputed domain name contains a trademark of the Complainant. Using the top level domain designation ".org" distinguishes it as a use of an ad-hoc organization arrayed against Leasecomm. (See Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1162, n.1, 1998 U.S. Dist Lexis 21459 (C.D.Cal 1998).

There is no danger of confusion with the Complainantís use of the mark, however. Respondentís website clearly and emphatically discloses its attitude toward the Complainant on its initial page. The Complainant is described as "Organized Crime" at the top of the page.

The Complainant has made little showing of the strength of its mark. The Complainantís mark "LEASECOMM" has no value, in that it has acquired almost nothing but bad will.

The Respondentís use of "LEASECOMM" obviously is a fair use in good faith. This is not a commercial use of the mark. This is not "cybersquatting". This is factual information in the public interest, commentary and parody about the manifestly unfair business practices of the Complainant.

Application of the Uniform Domain Dispute Resolution Policy through the World Intellectual Property Organization to take a domain name from a good faith, fair user of a mark such as Mr. Harrison, to suppress critical commentary in a case as compellingly in the public interest as this would again raise the question of whether these fora and mechanisms are compatible with the First Amendment to the United States Constitution.

The disputed domain name should remain registered to the Respondent.

 

6. Discussion and Findings

In order for the Complainant to win transfer of the disputed domain name, it must prove the following (the Policy, paragraphs 4(a)(i) through (iii):

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant has shown that it has registered the service mark "LEASECOMM 2000" on the principal register of the United States of America, registration no. 2318662 dated February 15, 2000 (Complaint Annex 3).

The Respondent concedes that the disputed domain name <leasecomm.org> contains a distinctive part of the Complainantís service mark. However, the Respondent contends that his disputed domain name nonetheless is distinctive from the Complainantís mark because his top-level domain indicator, "org", indicates "an ad-hoc organization arrayed against the Complainant." The Respondent cites the Bally case supra in support of this contention but the Panel believes the Respondent is being deliberately misleading: at note 1 the Court in Bally gave a thumbnail sketch of how the internet works and stated that the gTLD ".org" is for organizations, ".com" for businesses and so on. But the Panel can not believe the Respondent thought the Court was making a ruling on this point.

On the contrary, the Panel finds that one of the most widely followed precepts under the Policy is that the top level indicator should not be considered when determining whether the Respondentís mark is identical or confusingly similar to a domain name in which the Complainant has rights. Therefore, disregarding the top-level indicator ".org", the Panel finds that the disputed domain name, <leasecomm.org>, is confusingly similar to the Complainantís "LEASECOMM 2000" service mark. (See e.g., Pharmacia & Upjohn Company v. Xanax Advocates, WIPO Case No. D2000-0817 (September 10, 2000), in which the panel stated the gTLD "is without legal significance" for determining identicality or confusing similarity.)

At one point the Respondent alleges that the Complainantís business reputation has been so besmirched by its shoddy business practices that the Complainantís service mark in the disputed domain name has negative value. Even assuming this were true, this does not change the fact that the Complainant has a valid registered service mark confusingly similar to the disputed domain name, and this satisfies the trade or service mark interest requirement of the Policy at paragraph 4(a)(i).

Legitimate Rights or Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. For his part, the Respondent argues that he has legitimate rights and interests that are provided by the Policy at paragraph 4(c)(iii): "you are making a legitimate noncommercial use 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."

The Panel agrees with the Respondent that he has the right to publicly criticize the Complainantís services and tell the world just what he thinks. However, it is now clearly the majority view under the Policy that the Respondent may not use a domain name identical or confusingly similar to the Complainantís service mark for this purpose. The nature of the Internet is such that, on viewing the disputed domain name, the public will think it leads to a web site endorsed by the Complainant. As the Respondent counters, it certainly is true that, upon arriving at the Respondentís web site, the public would realize that this is instead a protest site devoted to exposing what the Respondent and others feel are the Complainantís shortcomings. The Policy however does not countenance this "initial confusion". The same is true for the public that types in the disputed domain name looking for the Complainant: they have a right to expect to find the Complainant at a web site whose name is so close to the Complainantís service mark.

As the panel in Banque Cantonale de Geneve v. Primatex Group S.A., WIPO Case No. D2001-0477 (June 21, 2001), well stated: "The true nature of the site, being a protest site of a very aggressive character, is not reflected in the domain name itself. As a consequence, Internet users following the link or finding the link through search engines will not be aware that they end up on a protest site. They will only find out once they have studied the sitesí content."

The Respondent cites the Bally case supra as authority allowing him to run the disputed domain name web site but the Panel finds that case does not support the Respondentís position at all. In Bally, the Respondent had adopted a domain name, compupix.com/ballysucks, that the court found clearly signaled to the public that his was a protest site critical of the Complainant Bally and its health clubs.

The Respondent is free to set up a web site that criticizes the Complainantís business practices. But in using a domain name confusingly similar to the Complainantís service mark, the Respondent must signal his protest intent in the domain name itself rather than initially deceiving the public into believing that the web site is endorsed by the Complainant. Therefore, the Panel finds the Respondent does not have legitimate rights or interests in the disputed domain name per the Policy at paragraph 4(a)(iii).

Bad Faith Registration and Use

The Complainant contends that the Respondent registered the disputed domain "for the sole purpose of disrupting the business of Microfinancial and its subsidiary." If true, this would contravene the Policy at paragraph 4(b)(iii). The Complainant contends that the Respondentís choice of language on his web site, which includes characterizing the Complainant as "The Company from Hell" is probative of the Respondentís intent to disrupt the Complainantís business.

The Respondent retorts that his web site is "fair use in good faith" and that the information on his web site about the Company is "factual." The Respondent as much as warns the Panel that to find him in bad faith would be tantamount to suppressing criticism.

The Panel has already found in the Legitimate Rights and Interests section above that the Respondent was not making a fair use of the Complainantís service mark in the disputed domain name. In this section, the Panel believes it only logical to find that the Respondent chose a domain name confusingly similar to the Complainantís service mark so that the Complainantís customers would arrive at the Respondentís web site to read just what the Respondent thinks of the Complainant. The Respondent hopes to drive away the Complainantís customers. In the Panelís view, this violates the Policy at paragraph 4(b)(iii).

The Panel does not at all believe that this decision deprives the Respondent of his right to criticize the Complainant at an appropriately named web site: it is not the Respondentís web content per se that the Panel is ruling againstóit is instead the Respondentís use of the Complainantís service mark that leads to the web site.

 

7. Decision

The Panel finds that the disputed domain name, <leasecomm.org>, is confusingly similar to the Complainantís "LEASECOMM 2000" service mark. Contrary to the Respondentís contention, the Panel finds the Respondent is not making a fair use of the disputed domain name and thus has no legitimate rights or interests in it. Finally, the Panel finds the Respondent registered the disputed domain name with the primary intent of disrupting the Complainantís business. Therefore, based on paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, <leasecomm.org>, be transferred from the Respondent, Glenn Harrison, to the Complainant, MicroFinancial, Inc.

 


 

Dennis A. Foster
Sole Panelist

Dated: July 14, 2003