WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISIONHollenbeck Youth Center, Inc. v. Stephen Rowland
Case No. D2004-0032
1. The Parties
The Complainant is Hollenbeck Youth Center, Inc., Los Angeles, California, United States of America, represented by George Castello, Los Angeles, California, United States of America.
The Respondent is Stephen Rowland, Oyama, British Co of Canada.
2. The Domain Name and Registrar
The disputed domain name is <hollenbeckyouthcenter.org>, registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 16, 2004. On January 16, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On the same day BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 February 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2004.
The Center appointed Jon Lang as the sole panelist in this matter on March 24, 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.
4. Factual Background
The Complainant, Hollenbeck Youth Centre (HYC) is a youth center in East Los Angeles. It was incorporated in 1972, as a non-profit making, tax-exempt corporation in California. It takes its name from an area of East Los Angeles. It is, by the Complainant's account, a significant concern with full time employees, including an executive director and a sports and programming director. It also has volunteers. There are several sports and non-sports programs (e.g. Spanish language parenting classes) and participation is free. Annually the HYC sponsors Thanksgiving and Christmas food and toy giveaways for needy boys and girls and their families in Los Angeles. These events receive wide media coverage. In 1992, the HYC founded a national athletic competition called the Inner City Games which also receives wide media coverage and is associated with HYC.
In 2000, a local webmaster developed a website for HYC and registered <hollenbeckyouthcenter.org>. HYC omitted to reregister the domain name in 2002, and it was then registered by the Respondent. HYC, in 2003, discovered that when accessing <hollenbeckyouthcenter.org>, the domain name resolved to another website, "www.citizensforjustice.org" administered by the Respondent. On that website there are highly critical allegations made against HYC and its director. Whilst it is not necessary here to re-state each and every one of them, their general tone can best be illustrated by the words of the author of one of the articles concerning HYC, who describes his report as `...a story of corruption, incompetence and nepotism courtesy of current president....'. The website "www.citizensforjustice.org" also contains suggestions that the computer room at the HYC was locked most of the time, that there was no or no serious educational programs and that generally the children in the area are not being well served by HYC. Generally the website, "www.citizensforjustice.org" is highly critical of the Complainant and its director.
5. Parties' Contentions
The Complainant states that every allegation against HYC and its director is false, destructive and does irreparable harm to the HYC. It states that the allegations threaten the reputation, good name and ability to raise funds to continue their programming. HYC must raise funds to sustain its programming and name identification and reputation are critically important to HYC's ability to attract sponsors. It states that sponsors and community members were confused and concerned by the allegations on the Citizens for Justice website which they arrived at when visiting "www.hollenbeckyouthcenter.org". Attempts to contact Citizens for Justice and the Respondent failed to produce any response. Certified mail was returned unclaimed.
The Complainant relies on its common law trademark rights in its real name and states that the domain name in issue is identical or confusingly similar to its name; that the Respondent has no legitimate rights in the domain name which is used only to link to his `attack' website "www.citizensforjustice.org" and is not making any proper use of it; and that it has been registered in bad faith for the purposes of disrupting the Complainant's business, to divert sponsors and consumers and to tarnish the good name of HYC.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
i) The Complainant must prove, under Paragraph 4(a) of the Policy that the domain name in dispute 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 rights in respect of the domain name; and
iii) the Respondent's name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Panel finds that the Complainant has trademark rights in its own name Hollenbeck Youth Center and that the disputed domain name <hollenbeckyouthcenter.org> is identical or confusingly similar to it. The trademark does not need to be registered (Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235)
Rights or Legitimate Interests
A Respondent can demonstrate rights in a domain name in various ways. The Respondent has chosen not to participate in these proceedings but nevertheless the Panel must be satisfied that the Complainant has made out its case that the Respondent has no rights or legitimate interest in the domain name. Paragraph 4 (c) of the Policy gives a non exhaustive list of circumstances that can demonstrate rights or legitimate interests in a domain name. The most relevant of these to a genuine protest site is that "you are 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".
The Complainant argues that the Respondent uses the domain name only to link to its `attack' website. The purpose of the Policy is to deal with disputes between registrant and a third party (other than a registrar) over the registration and use of a domain name. The Panel has no power to opine or express views on the merits or otherwise of the allegations made other than to note that many are of a serious nature and potentially disruptive to the Complainant's activities, particularly that of seeking support and sponsorship. To this extent only, does the strength of the allegations made on the Respondent's website matter for present purposes.
Several decisions under the Policy have upheld the use of domain names which resolve to sites critical of a complainant's business e.g. Wal-Mart Stores, Inc v. walmartcanadasucks.com, WIPO Case No. D2000-1104. Free speech is a fundamental right that must be protected. However, a line is often drawn where the domain name in issue resolves to a website that is not only critical of a complainant but seeks to take advantage of the complainant's mark for commercial gain (e.g. PG&E Corporation v. Samuel Anderson, WIPO Case No. D2000-1264, Caixa d'Estalvis y Pensions de Barcelona ("La Caixa") v. Namezero.com WIPO Case No. D2001-0360).
A line is often also drawn where the protest site does not make clear that it is in fact a protest site. In Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372, a majority panel held that "... the deception...is likely to arise by luring members of the public to a website which purports to be that of an airline, only to find that it is in fact a website designed to put pressure on that same airline to refund various tickets issued by its predecessor or another airline. There is nothing in the Domain Names themselves to suggest that users will be directed to a criticism site.
Further, it can be argued that the public has the right to not be misled about who they are dealing with. They are entitled to know, upfront, whether they are contacting the airline and not a pressure group of disgruntled former passengers seeking to criticize and embarrass the airline. This is not a legitimate use of the Domain Names."
Simply using the common protest site suffix `sucks' will not qualify as permissible or fair use of a domain name confusingly similar to a trademark of another if it is not in fact a true protest site e.g. Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596. However, where a respondent has indeed established a protest site and that it is made clear in the domain name itself, fair use under Paragraph 4(c) of the Policy can be established.
This Panel finds the decision in Banque Cantonale de Geneva v. Primatex Group S.A., WIPO Case No. D2001-0477 particularly helpful. Here a unanimous three member Panel stated:
"First, we would like to mention that the Panel believes that protest sites (such as many "...sucks" sites) may reflect a legitimate interest of their owners. The publication of protest on the Internet is the quintessential noncommercial fair use envisioned by the Policy (see WIPO Case No. D2000-1455, McLane Company, Inc. v. Fred Craig). Protest is furthermore an expression of free speech, and free speech deserves protection in any developed legal system. However, the principle of free speech must not be abused by designating a protest site in a misleading manner.
To identify a protest site with a trademark implemented by the formative "...sucks" can be seen as a legitimate noncommercial or fair use of the domain name. However, the question whether names such as "bcgesucks" or " bcge-sucks " would be compatible with the Policy can remain open as in the case at hand no such domain names have been used. Instead, Respondent elected to add the formative "...-connection" to Complainant's trademark, thus creating a bridge function to Respondent, a regionally and internationally well known Geneva bank. 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 that out once they have studied the sites' content.
Under these circumstances, the Panel has difficulties recognizing a legitimate interest of Respondent to keep the domain name which may mislead the public regarding the nature of the attached site. Although the noncommercial nature of Respondent's web site is quite evident and not contested, it is the Panel's belief that protest disseminated through the powerful tools of the Internet is only legitimate if the protest is transparent. Transparency starts with choosing a domain name which reflects the protest as opposed to a domain name which implies an affiliation to the trademark holder. If the protest is reflected in the domain name (for instance by adding the component "...sucks" or a similar element), Internet users have a choice to follow or not to follow the link. Otherwise, they may be misled."
Whether fair use is made out by a protest site depends very much on the individual circumstances of the case. Here, Internet users trying to find HYC on the Internet are very likely to end up at the Respondent's website and see the aggressive criticism made of HYC and its director. Whether these criticisms are justified or not, Internet users should not automatically be transported to them if their intention is to visit HYC's own website. To use terminology from Banque Cantonale de Geneva v. Primatex Group S.A., the Respondent's use of the domain name is not transparent. To this extent the Respondent's use of the domain name is misleading because most if not all Internet users will believe they are visiting the HYC's own website. Only when they arrive at " www.citizensforjustice.org" will they realize they have been sent somewhere they did not intend to go. Protest sites should make clear their nature so that Internet users wanting only "official" sites can make an informed decision whether to visit the protest site or not.
In all the circumstances, this Panel finds that the Respondent has no rights or legitimate interests in the domain name.
Registered and Used in Bad Faith
Paragraph 4 (b) of the Policy sets out a non-exhaustive list of circumstance that evidence registration and use of a domain name in bad faith. The circumstances in this case do not appear in the list. Indeed, a pure protest site, i.e. one confined to criticism rather than commercial gain, is unlikely to fall conveniently into any of the listed circumstances. However, that has not stopped previous panels from finding bad faith. The non-commercial character of a website, the absence of a competitive relationship between complainant and respondent or the absence of an intention to sell the domain name in issue has not prevented panels from finding bad faith. In Banque Cantonale de Geneva v. Primatex Group S.A. for instance, the fact that the complainant's business may be disrupted by the respondent's website, that Internet users were attracted to the site without warning that they were linking to a protest site and likelihood of confusion were found to be indicative of bad faith.
In Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372, the majority were of the view that given their findings on confusion and that the respondent deliberately used the domain to suggest to Internet users a link to the complainant, "we are compelled to find that the Domain Names were registered and are being used in bad faith."
In this case no indication whatsoever is given that the domain name resolves to a protest site rather than that of the Complainant. Internet users are very likely to assume that the domain name resolves to a website of the Complainant. The Respondent's use is not transparent and is misleading. Moreover, the Respondent cannot have been in any doubt at the time of registering the domain name or subsequently, that there would be an adverse effect on HYC as a result of Internet users (including sponsors and potential sponsors) who, wishing to find an HYC presence on the Internet, end up without warning at "www.citizensforjustice.org", a site highly critical of HYC and its director. In all the circumstances this Panel finds, for the purposes of paragraph 4 (b) of the Policy, that the Respondent's registration and use of <hollenbeckyouthcenter.org> was and is in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hollenbeckyouthcenter.org> be transferred to the Complainant.
Dated: April 14, 2004