WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Howard Jarvis Taxpayers Association v. Paul McCauley
Case No. D2004-0014
1. The Parties
The Complainant is Howard Jarvis Taxpayers Association ("HJTA"), Los Angeles, United States of America, represented by Straw & Gough, United States of America.
The Respondent is Paul McCauley ("McCauley"), Sherman Oaks, United States of America. Respondent proceeds pro se.
2. The Domain Name and Registrar
The domain name at issue is <hjta.com> (the "Domain Name"). The Domain Name is registered with Tucows.com, Inc. (the "Registrar").
3. Procedural Background
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 8, 2004. On January 9, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 16, 2004, Tucows 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 the proceedings commenced on January 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2004. The Response was filed with the Center on February 12, 2004.
The Center appointed David H. Bernstein as the Sole Panelist in this matter on March 2, 2004. 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.
Because the parties did not brief in their submissions the central legal issue raised by this case - whether registration of a "trademark .TLD" domain name strictly for use for bona fide, non-commercial criticism can be a legitimate interest - the Panel, with the assistance of the Center and its index of cases, undertook significant independent research. To accommodate the time required for this research, the Panel extended the target date for decision pursuant to paragraph 10(c) of the Rules.
4. Factual Background
Complainant is a non-profit California corporation organized pursuant to Section 501(c)(4) of the Internal Revenue Code. HJTA is a tax-relief advocacy organization. Prior to 1988, HJTA was known as the California Tax Reduction Movement. HJTA is named after the late Howard Jarvis, a proponent of tax reduction. Complainant's Internet address <hjta.org> was registered on September 25, 1997.
Respondent describes himself as a critic of HJTA. Respondent registered the domain name <hjta.com> on June 3, 2003, and maintains a website at that address that is highly critical of the practices of Complainant and the activities of its management staff.
There is a nearly decade long history of litigation between the parties. In 1990, Respondent filed a lawsuit against Complainant and affiliated parties alleging numerous violations of the California political campaign reporting laws. Respondent prevailed on two counts at the trial level and was awarded a judgment and attorney's fees. Complainant appealed and an appellate court reversed the decision and ordered the trial court to enter judgment in favor of Complainant. See McCauley v. Howard Jarvis Taxpayers Assn., 68 Cal. App. 4th 1255, 80 Cal. Rptr. 2d 900, (Cal. App. 4th Dist. 1998), rehearing denied (January 26, 1999), review denied (March 31, 1999).
5. Parties' Contentions
Complainant claims that it has acquired a common law trademark in the acronym HJTA through continuous use for the last fifteen years. It further asserts that Respondent's domain name "hjta.com" is confusingly similar to its common law trademark HJTA and phonetically and visually identical to its domain name (save for the TLD ".com" instead of ".org"). Complainant submits that Respondent's use of the Domain Name has caused confusion to those attempting to locate the real HJTA website and that Complainant has received complaints to this effect. Complainant therefore asserts that the Domain Name is identical or confusingly similar to a mark in which it has rights for the purposes of paragraph 4(a)(i) of the Policy.
Complainant argues that Respondent has no rights or legitimate interests in the domain name as required by paragraph 4(a)(ii) of the Policy, and states that Respondent does not have "any legitimate commercial purpose justifying the use of the `.com' suffix." Complainant further argues that Respondent "has not been engaged in any of the activities conducted by HJTA . . . has never been an officer or director of HJTA and is not authorized to act on behalf or [sic], of represent in any way, HJTA."
Finally, the Complainant submits that the domain name has been registered in bad faith under paragraph 4(b)(iii) because it was registered "primarily for the purpose of disrupting the business of a competitor." Complainant supports this contention by claiming that Respondent uses the Domain Name in "a bad faith attempt to: 1) mislead the public into thinking McCauley won his lawsuit against HJTA when if fact he lost each and every claim; [and] 2) disrupt the ongoing activities of HJTA and persuade HJTA members to change their memberships to a different organization." Complainant claims that Respondent posts "untrue" statements about Complainant on the <hjta.com> website and distributes "vitriolic, libelous" email about the Complainant. Complainant also argues that Respondent registered and used the Domain Name in bad faith under paragraph 4(b)(iv) because Respondent "is attempting to attract commercial gain for himself by asking visitors to donate $20,000 to him to help him disrupt HJTA's operation by convincing its members to transfer to another organization."
Respondent asserts that: (a) he is a critic, not a competitor, of HJTA and thus cannot "have registered the domain name primarily for the purpose of disrupting the business of a competitor" under paragraph 4(b) (iii) of the Policy; and (b) he has not used the domain name for commercial gain under paragraph 4(b)(iv) of the Policy because he has not solicited donations for himself but rather he "was and am seeking an individual or organization that was/is willing to expend $20,000 of its funds to assist me in a mailing to HJTA's membership for the purpose of alerting its membership" to his mismanagement claims regarding HJTA. Respondent further argues: "That any person could confuse my web site with HJTA's web site, thinking they are the same, is preposterous . . . my web site details my criticisms of HJTA in such a way that no thinking person would confuse my web site with HJTA's." Respondent also asserts that the Complaint states ". . . that I have sought to disrupt the operations of HJTA. Wrong. I have exercised my lawful and divine right to speak freely and to speak the truth and have used this remarkable new technology, the Internet, to do so."
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark 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 used in bad faith.
A. The Domain Name is Confusingly Similar to Complainant's Mark
The Respondent does not dispute that the Domain Name is identical or confusingly similar to the Complainant's mark. Complainant surely has trademark rights in its acronym on account of its extensive use in commerce, and the domain name is obviously identical to that mark. Accordingly, Complainant has satisfied its burden under the first prong.
B. Respondent Has a Legitimate Interest in Its Criticism Site
This case raises a fundamental - and somewhat unsettled - question of law under the Policy: Can a respondent have a legitimate interest in a domain name consisting solely of the complainant's trademark plus a top-level domain (referred to below as "trademark.TLD") if the website is used solely for bona fide, non-commercial criticism?1
An initial review of UDRP cases involving "trademark.TLD" criticism sites suggests that there is a split among panels on this question. Some panels have held, as this Panelist has in the past, that use of "trademark.TLD" for a bona fide criticism site can give rise to a legitimate interest. See Britannia Building Society v. Britannia Fraud Prevention, Case No. D2001-0505 (WIPO July 6, 2001) (refusing to transfer britanniabuildingsociety.org domain name where domain hosted a true criticism site). Others, though, have disagreed with that conclusion, stating that "the right to use a domain name as a platform for lawful criticism of a trademark owner does not extend to occupying a domain name identical to a sign identifying the owner." Teollisuuden Voima OY v Vastamäki, Case No. D2001-0321 (WIPO May 4, 2001) (expressing the view in dicta that environmental protestors do not have a legitimate interest in using a trademark.TLD domain name for criticism about the disposal of nuclear fuel on Olkiluoto island).
Disagreements of this type between panels creates a challenge for parties, panelists and providers. Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts. Panelists, too, are disadvantaged by these disagreements; they would be able to more efficiently evaluate cases and draft decisions if they knew that they could rely on a shared, consistent set of UDRP principles. If such consistency could be achieved, it also would assist providers, who could assign panelists to cases without any concern that panelist choice may itself inject bias into the system, and would encourage more cost effective decision making as parties could rely on a single panelist rather than having to request a three member panel in order to ensure balance. More generally, because no system of justice can long endure if its decisions are seen as random, consistency will help support the very legitimacy of the UDRP itself.
For these reasons, when policy disagreements do arise, panelists should pause and consider whether a consensus has emerged that might inform which way they should rule on these types of issues. If such a consensus has emerged, panelists should endeavor to follow that consensus and thus promote consistent application of the UDRP. See Koninklijke Philips Electronics N.V. v. Relson Ltd., Case No. DWS2002-0001 (WIPO June 14, 2002); Nikon, Inc. v. Technilab, Inc., Case No. D2000-1774 (WIPO February 26, 2001), n.3.
Such an approach is particularly appropriate in the context of the Policy. That is because UDRP decisions are not binding and non-appealable; rather, a losing party is free to pursue its claim in local courts. See Policy ¶ 4(k). Moreover, even if the consensus supports a decision that individuals believe to be wrong or bad policy, parties would at least know how such decisions would be decided under the Policy, and could elect instead to pursue their claims in court if they believed the judicial system would provide a more just result. Either way - whether because parties go to court in the first instance or through litigation initiated after a UDRP decision is issued - if the courts of a particular country later determine that the legal principle should be different from how it was resolved in UDRP decisions, panels ruling in future cases (at least in cases involving citizens of that country2) could appropriately follow that judicial decision as creating new precedent that supplants the former consensus view.
In this case, any effort to divine consensus must be sensitive to these local law issues. That is because the United States' robust free speech tradition, which derives from the First Amendment to the United States Constitution, tends to tolerate more criticism than the laws of other countries. Indeed, many of the cases in which trademark.TLD domain names have been transferred, despite claims that the sites were being used for legitimate criticism, involved non-U.S. parties or panelists. E.g., Mission Kwa Sizabantu v. Rost, Case No. D2000-0279 (WIPO June 7, 2000) (rejecting free speech as a valid defense in case involving German and South African parties); Grupo Picking Pack, S.A. v. Prospero Moran, Case No. D2000-1220 (WIPO December 18, 2000) (relying on Spanish case law to reject free speech argument for putative criticism site and support transfer of domain name); Skattedirectoratet v. Eivind Nag, Case No. D2000-1314 (WIPO December 18, 2000) (in case involving Norwegian parties, while "it is, in principle, legitimate to operate a domain name for the purposes of lawful criticism of a trademark owner . . .. this right [does not] extend to occupying a domain name identical to a sign identifying a trademark owner"); Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi, Case No. D2000-1171 (WIPO November 6, 2000) (holding in case involving Swiss parties: "Even if the Panel admitted that the aim of the website was to serve as a discussion forum, it is of the opinion that the exercise of the right of free speech does not require the use of a Domain Name identical to the trademark of the Complainant."); Teollisuuden Voima OY v Vastamäki, Case No. D2001-0321 (WIPO May 4, 2001) (in case involving Finnish parties, indicating agreement with the principal articulated in Skattedirectoratet); British Nuclear Fuels Plc v. Greenpeace International, Case No. D2001-1318 (WIPO January 10, 2002) (right to free speech in order to criticize is different from right to use trademark as domain name - English and Dutch parties); Yüksel Inşaat A.Ş. v. Erdogan Koparal, Case No. D2002-0285 (WIPO May 28, 2002) (holding in Turkish case that, "while the Respondent is entitled to freely express his views . . . such right does not extend to having a right to use the Complainant's trademark as a domain name for the purposes of establishing a website to express such views"); Tridos Bank NV v. Dobbs, Case No. D2002-0776 (WIPO October 3, 2002) (even if English respondent has a genuine grievance, it may not use English complainant's name without adornment as its domain name).
In cases involving United States parties and/or panelists, on the other hand, a number of panels have ruled that the First Amendment does protect trademark.TLD domain names when they are used for legitimate criticism sites. See, e.g., Bridgestone Firestone, Inc. v. Myers, Case No. D2000-0190 (WIPO July 6, 2000) (refusing to transfer domain name bridgestone-firestone.net where Respondent's domain hosted a true criticism site); TMP Worldwide Inc. v. Potter, Case No. D2000-0536 (WIPO August 5, 2000) (refusing to transfer tmpworldwide.net and tmpworldwide.org domain names where domains hosted true criticism sites); Bosley Medical Group v. Kremer, Case No. D2000-1647 (WIPO February 28, 2001) (refusing to transfer domain name bosleymedical.com where Respondent had prepared a true criticism site but did not post site pending outcome of UDRP proceedings); Pensacola Christian Coll. v. Gage, Case No. FA101314 (NAF December 12, 2001) (refusing to transfer pensacolachristiancollege.com domain name where domain hosted a true criticism site); Satchidananada Ashram - Integral Yoga Institute v. Domain Administrator, Case No. FA0209000125228 (NAF December 13, 2002) (refusing to transfer domain names where domains hosted true criticism sites); Action Instruments, Inc. v. Technology Associates, Case No. D2003-0024 (WIPO March 6, 2003) (refusing to transfer buswaredirect.com domain name where domain hosted a criticism site). More importantly, this view has prevailed in U.S. court cases that have litigated this issue, including in recent decisions from two different U.S. Courts of Appeals. TMI Inc. v. Maxwell, No. 03-20243 (5th Cir. April 22, 2004) (reversing transfer of trendmakerhome.com website used to criticize plaintiff's TrendMaker Home houses because defendant's non-commercial criticism site is not actionable cybersquatting); Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004) (refusing to order transfer of lucasnursery.com domain where it was used for legitimate criticism site and defendant showed no intent to mislead visitors or commercially profit from use of the domain); see also Northland Insurance Co. v. Blaylock, 115 F. Supp. 2d 1108, 1120 (D.C. Minn. 2000) (refusing to issue preliminary injunction in case involving true criticism site located at "www.northlandinsurance.com"); Bihari v. Gross, 119 F. Supp. 2d 309, 322 (S.D.N.Y. 2000) (refusing to issue preliminary injunction in case involving true criticism sites located at "www.bihari.com" and "www.bihariinteriors.com").
The Panel acknowledges that transfer has been ordered in some trademark.TLD criticism cite UDRP cases involving U.S. parties. Although the panels in those cases generally did not analyze the issue with the level of detail as is being applied in this case, the Panel notes that, in many of those cases, there were indicia of bad faith that tended to suggest that criticism was not the respondent's primary motive. See, e.g., Council of American Survey Research Organizations (CASRO) v. Consumer Information Organization LLC, Case No. D2002-0377 (WIPO July 19, 2002) (ordering transfer of domain name casro.com where criticism site was used to market products, respondent owned over 1200 domain names, and many of respondent's domain names incorporated famous marks); New York Times Co. v. New York Internet Services, Case No. D2000-1072 (WIPO December 5, 2000) (ordering transfer of domain name newyorktimes.com where respondent received financial benefit from advertising on commentary site); Estée Lauder, Inc. v. Estelauder.com, Estelauder.net, and Jeff Hanna, Case No. D2000-0869 (WIPO September 25, 2000) (ordering transfer of <estelauder.com> and <estelauder.net> where domains of complaint sites established by law firm incorporated misspelling of complainant's trademark, complainant submitted considerable evidence of actual confusion, respondent concealed sponsorship of complaint sites by law firm, and respondent reserved other domain names incorporating famous marks); Rollerblade, Inc. v. McCrady, Case No. D2000-0429 (WIPO June 25, 2000) (ordering transfer of domain name rollerblade.net where panel rejected respondent's use of site for rollerblading photos as pre-textual and found respondent made "overtures to be bought off" in order to transfer domain name). Similar issues appear to have informed court decisions that have ruled for plaintiffs in these circumstances. See People for the Ethical Treatment of Animals (PETA) v. Doughney, 263 F.3d 359 (4th Cir. 2001) (ordering transfer of domain name <peta.org> despite use as parody website after finding bad faith intent to profit by registrant); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d Cir. 1998) (finding confusion where criticism site was confusingly designed to look like official Jews For Jesus site and defendant admitted his intent was to deceive consumers about the sponsorship of his website); Planned Parenthood v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) (finding confusion where criticism site was confusingly designed to look like official Planned Parenthood site in order to lure readers into the site before delivering its anti-abortion message), aff'd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998). Nevertheless, in some of these cases, the Panels broadly held that there is no legitimate interest in a trademark.TLD criticism site, and there are other such decisions as well. E.g., Prem Rawat Found. v. Leason, File No. FA0401000231883 (NAF March 27, 2004) (although Panel held that Respondent's site was not a bona fide criticism site, Panel also noted its view that, "while the content of Respondent's website may enjoy First Amendment protection, such protection does not spawn rights or legitimate interests with respect to a domain name which is confusingly similar to another's trademark. Respondent cannot claim rights or legitimate interests in the domain name").
In sum, although there has been a split even in the United States, in this Panel's view, the weight of authority suggests that a consensus is emerging that trademark.TLD domain names, when used for U.S.-based criticism sites, can constitute a legitimate interest, especially if there are not other indicia of bad faith. Given that this appears to be the emerging view in federal courts as well, aligning the decisions under the Policy with decisions emerging from the courts will prevent forum shopping.
Turning to the case at hand, applying the approach described above, the Panel concludes that Complainant has failed to prove that Respondent lacks a legitimate interest in the Domain Name. In particular, it has failed to prove that Respondent is not entitled to the protections of paragraph 4(c)(iii) of the Policy, which provides that Respondent has a legitimate interest if he is "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."
Respondent's website appears to be a classic criticism site. The content is openly critical of the management of the HJTA organization. See, e.g., Bridgestone Firestone, Inc. v. Myers, Case No. D2000-0190 (WIPO July 6, 2000) (use of bridgestone-firestone.net for criticism site is a legitimate interest). There is no evidence in the record to suggest that Respondent's use is not "legitimate," such as use of a criticism site as a mere pretext for cybersquatting. Cf. Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., Case No. D2001-0398 (WIPO July 2, 2001) (Respondent claimed domain name incorporating Rolex mark was used for legitimate discussion site but had admitted in prior court proceedings that he was a "domain name speculator" that acquired famous trademark domain names in order sell them to the trademark owners at a profit). Respondent thus appears to be "making a legitimate noncommercial or fair use of the domain name." Policy ¶ 4(c)(iii).
That, however, is not enough for Respondent to prevail. Complainant can trump this finding if it can show that Respondent's actions evidence an "intent for commercial gain to misleadingly divert consumers" or an "intent for commercial gain . . . to tarnish the trademark or service mark at issue." Id.
Complainant has not made that showing here. For starters, there is no evidence in this record that Respondent is pursuing its actions with any intent for commercial gain.3 Rather, Respondent's activities appear to be directed towards non-commercial speech. To the extent that Respondent solicits contributions or encourages consumers not to join HJTA, he is exercising his free speech right; he is not competing as an alternative tax reform organization.
Moreover, there appears to be neither misleading diversion of consumers nor tarnishment of the mark. Complainant has not established that Respondent is seeking to divert consumers for two separate reasons. First, the concept of "misleadingly diverting consumers" refers to the kind of confusion that arises in a trademark infringement context when a competitor diverts consumers to its site and, potentially, diverts sales. A "competitor" in this context (and also for purposes of paragraph 4(b)(iii) of the Policy), is a person or entity in competition with the Complainant for the provision of goods or services, and not merely any person or entity with an interest oppositional to that of a mark holder. Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, Case No. D2001-0467 (WIPO June 16, 2001) ("declin[ing] to accept the contention of the Complainant that the broad definition of `competitor' will include not only commercial or business competitors, but anyone acting in opposition to another"); Tribeca Film Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772 (WIPO April 10, 2001) ("a respondent can `disrupt the business of a competitor' only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner"). Although Complainant argues that Respondent operates his website and has attempted to raise money to "disrupt" HJTA operations, nowhere in the Complaint does the Complainant argue that Respondent is its "competitor" in the provision of tax reform associational services.
Second, and in any event, there is nothing misleading about the source or sponsorship of Respondent's website. Unlike as in other cases where confusion has been found, for example, Respondent's home page is not designed in a way to confuse consumers into believing it is the official website of HJTA. Cf. Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d Cir. 1998) (finding confusion where criticism site was confusingly designed to look like official Jews For Jesus site and defendant admitted his intent was to deceive consumers about the sponsorship of his website); Planned Parenthood v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) (finding confusion where criticism site was confusingly designed to look like official Planned Parenthood site in order to lure readers into the site before delivering its anti-abortion message), aff'd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S.Ct. 90 (1998).
Similarly, Respondent's site cannot be characterized as evidencing an intent to "tarnish the trademark or service mark at issue." Respondent's site does not appear to be classic "tarnishment," in the sense of associating the mark with unwholesome concepts such as drugs, violence or sexual activity. Cf. American Express Co. v. Vibra Approved Labs. Corp., 10 U.S.P.Q. 2d 2006 (S.D.N.Y. 1989) (mark DON'T LEAVE HOME WITHOUT IT tarnished by condoms sold under the slogan "Never Leave Home Without It'); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996) (adult entertainment site at domain name candyland.com is tarnishment of CANDYLAND trademark for children's games); Kidman v. Zuccarini, Case No. D2000-1415 (WIPO January 23, 2001) (tarnishing to link actress's name to website selling adult entertainment). Moreover, under Section 43(c) of the Lanham Act, there is no cause of action for trademark dilution (which encompasses both blurring and tarnishment) if a party is making a "[n]oncommercial use of a mark," 15 U.S.C. § 1125(c)(4)B), which is the case if the site is a legitimate gripe site. Bally Total Fitness Holding Corp. v. Farber, 1998 WL 897335 (C.D. Cal. December 21, 1998) (no dilution where "Bally Sucks," used for criticism site); Northland Insurance Co. v. Blaylock, 115 F. Supp. 2d 1108 (D.C. Minn. 2000) (criticism site at "www.northlandinsurance.com" is protected speech and, because the website was non-commercial commentary, it could not generate initial interest confusion and did not constitute dilution); see also L.L. Bean v. Drake Publishers Inc., 811 F.2d 26 (1st Cir.) (First Amendment is defense to dilution tarnishment claim when use is noncommercial parody); cert. denied, 483 U.S. 1013 (1987); Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1574 (S.D. Cal. 1996) (parody not dilution because use was non-commercial), aff'd, 109 F.3d 1394 (9th Cir. 1997). That is true even if the gripes may be untrue - the proper cause of action in that circumstance is one for defamation, not dilution or cybersquatting. Brittania Building Society v. Brittania Fraud Prevention, Case No. D2001-0505 (WIPO July 6, 2001).
Finally, Complainant argues that Respondent lacks a legitimate interest because Respondent's website makes untrue and misleading statements regarding HJTA, and Respondent makes "vitriolic, libelous" statements about HJTA in email correspondence. To be clear, the Panel has not considered the truthfulness of Respondent's website content - it may be true that Respondent's statements are libelous under United States law. Indeed, given the long history of litigation between the parties, the important free speech U.S. law interests implicated by this dispute, and the complexity of the underlying facts, this may well be a case more appropriate for resolution in a U.S. court than in this administrative proceeding, which provides no discovery, a limited evidentiary record, no live testimony at which credibility determinations can be made, and very tight deadlines for submissions and decision. Cf. Thread.Com, LLC v. Poploff, Case No. D2000-1470 (WIPO January 5, 2001). Nevertheless, this Panel is required to rule as best it can on this record, Bootie Brewing Co. v. Ward, Case No. D2003-0185 (WIPO May 28, 2003), and has concluded that fair use criticism like Respondent's, even if libelous, is not prohibited by the Policy, as interpreted in the United States. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO September 19, 2000) (protection for genuine criticism sites is provided by Policy's legitimate interest and bad faith prongs).
The Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites. Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.
C. Respondent Has Not Registered and Used the Domain Name in Bad Faith
In light of the Panel's finding under the legitimate interest factor, the Panel need not consider in detail Complainant's assertions that Respondent registered the domain name in bad faith for the purpose of disrupting Complainant's business, Policy ¶ 4(b)(iii), and that Respondent is making a bad faith effort to attract Internet users to its website by creating a likelihood of confusion as to its source, Policy ¶ 4(b)(iv). Briefly, because the Panel has found that Respondent is not a competitor of Complainant's, Complainant cannot prevail under paragraph 4(b)(iii). See Britannia Building Society v. Britannia Fraud Prevention, Case No. D2001-0505 (WIPO July 6, 2001) ("To rule otherwise would render so many parties "competitors" as to dilute the Policy's bad faith requirement beyond recognition"). Similarly, Complainant has not established a bad faith effort by Respondent intentionally to divert Internet users to its website by creating a likelihood of confusion with Complainant's mark. To the contrary, as noted above, it is unlikely that anyone could confuse the source of the Respondent's website once they arrive at Respondent's home page.
D. Complainant Is Not Guilty of Reverse Domain Name Hijacking
For all the reasons discussed above, the Panel holds that Complainant has failed to satisfy its burden under the Policy. That does not, however, end the Panel's inquiry. Under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking. Rule 15(e). That is true notwithstanding that Respondent has not requested such a finding because the Rules specifically put the burden on the Panel to determine whether a complainant has tried to use the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. Id. ("If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."); see also Rodale, Inc. v. Cambridge, Case No. DBIZ2002-00153 (WIPO June 28, 2003).
The Complaint in this case made only conclusory allegations regarding Respondent's alleged lack of any legitimate interest, and failed to discuss at all whether the use of this domain name for a criticism site constitutes a legitimate interest under the Policy. Moreover, the use of the Policy in an effort to suppress protected speech rather than to address legitimate concerns of cybersquatting may well rise to the level of bad faith conduct by a complainant in the United States.
The Panel has nevertheless concluded that a finding of Reverse Domain Name Hijacking is not warranted in this case. As discussed above, there has been a split among panels in considering "trademark.TLD" criticism cite cases. Even though this Panelist believes a consensus is emerging in U.S. cases where there is no other indicia of bad faith, some recent cases have gone the other way, and there has been sufficient uncertainty in this area that Complainant may well have believed that it was bringing this challenge in good faith to advance a legitimate claim under the Policy. In these circumstances, it would be unfair to enter a finding of bad faith. Putative complainants should be on notice, though, that, if this consensus solidifies, future panels in U.S. cases may well find bad faith in similar circumstances. Church in Houston v. Moran, Case No. D2001-0683 (WIPO August 2, 2001).
Because Complainant has failed to prove that Respondent lacks a legitimate interest or has registered and used the domain name in bad faith, the Panel declines to order transfer of the Domain Name.
David H. Bernstein
Dated: April 22, 2004
1 This inquiry should be distinguished from the more common circumstance in criticism site cases where the domain name also includes verbiage indicating that it is a criticism site. E.g., Compusa Management Co. v. Customized Computer Training, Case No. FA0006000095082 (NAF August 17, 2000) (use of stopcompusa.com and bancompusa.com for a criticism site is a legitimate interest).
2 It is generally accepted that, when both parties in a UDRP proceeding are from the same country, it is appropriate to consider and apply that country's legal principles in evaluating the parties' rights and conduct. Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000) at n.2 (applying U.S. law); Grupo Picking Pack, S.A. v. Prospero Moran, Case No. D2000-1220 (WIPO December 18, 2000) (applying Spanish law). The Policy does create a set of basic standards for determining whether a respondent has been guilty of cybersquatting conduct that justifies transfer, but those standards do not replace local law. Rather, in the event of a conflict between the Policy and local law, the Policy makes it clear that local law, as interpreted by national courts, would ultimately govern any issues of domain name transfer. Policy ¶ 4(k).
3 It is, of course, possible that Respondent does have some commercial motive, but that has not been shown on this (albeit limited) record. Should Complainant elect to pursue this matter in court, it certainly could explore that issue in discovery. Cf. Lopez v. Irish Realty Corp., File No. 94906 (NAF August 8, 2000) (refusing to transfer domain name rockcity.com where facts were in dispute and noting that the courts provide fact finding tools, such as discovery, that are unavailable in truncated UDRP proceedings).