WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Lubefast Franchising, Inc. v. Chung Rigby
Case No. D2004-0329
1. The Parties
The Complainant is American Lubefast Franchising, Inc., Lawrenceville, Georgia, United States of America, represented by Elizabeth L. Clack-Freeman of the law firm Andersen, Tate, Mahaffey & McGarity, P.C., Lawrenceville, Georgia, United States of America. Complainant will be referred to hereafter as “ALF”.
The Respondent is Chung Rigby, Pensacola, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <americanlubefast.com> is registered with Network Solutions, LLC. It will be referred to hereafter as the “Domain Name”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2004. On May 5, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name at issue. On May 6, 2004, Network Solutions, LLC 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 notified the Complainant on May 24, 2004, that the Complaint was administratively deficient in that it did not specify the service mark on which it is based and did not describe the services for which the mark is used. In response, the Complainant filed an amendment to the Complaint on May 27, 2004, covering these points. On June 4, 2004, the Center verified that the Complaint together with the amendment to 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 June 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2004.
The Center appointed Paul E. Mason as the sole panelist in this matter on July 12, 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
According to Paragraph 14 of the Complaint, ALF does business as American Lubefast and provides services under the AMERICAN LUBEFAST service mark. These services include automotive maintenance and repair services, primarily in the southeastern states of the U.S.
Paragraph 14 of the Amended Complaint states and Annex 7 attached thereto shows that Complainant ALF registered the AMERICAN LUBEFAST service mark and design with the State of Georgia in 1996, and has obtained common law rights to this service mark via regular usage in commerce.
At an undetermined point in time, Respondent was a customer of ALF and found its services to be unsatisfactory. Thereafter he registered the Domain Name and built a website on it used primarily to collect and disseminate customer complaints about ALF’s services – a so-called “gripe site.”
5. Parties’ Contentions
In order to prove its case, a Complainant under the UDRP must prove these three elements: (1) that the Domain Name is identical or confusingly similar to Complainant’s trade or service mark; and (2) that Complainant has rights or legitimate interests in the mark, and Respondent does not; and (3) that Respondent has registered and used the Domain Name in bad faith.
1. Identical or Confusingly Similar: ALF claims that the domain name is identical to its registered service mark.
2. Rights or Legitimate Interests: ALF claims that Respondent has no rights or legitimate interests in the mark.
3. Registered and Used in Bad Faith: ALF asserts that Respondent’s registration and use of the Domain Name to build a “gripe site” includes the posting of “arguably defamatory statements complaining about the alleged inadequacy of the services provided by ALF” (Complaint, paragraphs 17 & 21 and Annex 2 thereof).
ALF further contends that once users are directed to this “gripe site”, they are directed to more sites that deal with Respondent personally, market his own business, and which feature banner advertisements for services including gambling (Complaint, paragraphs 22 & 27 and Annex 3 thereof).
Finally, ALF claims that Respondent offered to sell the Domain Name for $20,000, indicating a motive to profit from the Domain Name at Complainant’s expense (Complaint, paragraph 24 and Annex 4 thereof).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In terms of intellectual property rights, the Panel finds that Complainant ALF has proven its legal rights to the AMERICAN LUBEFAST service mark through use in commerce and state registration. As there is no question or contention here, the Panel further finds that the Domain Name <americanlubefast.com> and Complainant’s service mark AMERICAN LUBEFAST are identical.
B. Rights or Legitimate Interests
The issue to consider is whether registration of the Domain Name and use of the website built on the Domain Name by Respondent as a “gripe site”, constitute a legitimate interest of Respondent for the purposes of Paragraph 4(a)(ii) of the Policy.
From the legal standpoint, it is most appropriate to apply U.S. law in this respect since both Complainant and Respondent are based in the U.S., as are the services which are the subject of Complainant’s service mark and the customer complaints by Respondent.
There are two relevant lines of U.S. law to consider here, as noted in Arnold Clark Automobiles Limited v. Thomas (aka Tam) Coughlan, WIPO Case No. D2002-0909, which also dealt with a “gripe site” launched by a disgruntled automobile customer - that one in the United Kingdom.
(1) Protection of freedom of speech under the First Amendment of the United States Constitution; and
(2) The “fair use” doctrine, as expounded in Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 1161 [D.C. Cal. 1998], a U.S. Federal District Court case.
(1) Freedom of speech: Depending on the specifics of each case, U.S. courts and UDRP Panels have given certain leeway allowing domain name registrants the freedom of speech on the internet in order to identify and criticize products and services. However, it is not absolute and depends on the individual circumstances, as these types of domain names fall into a quasi-commercial speech area, which is typically subject to less constitutional protection than political or other types of social, non-commercial commentary. And freedom of speech is of course limited by defamation.
(2) Fair use: Again, there is a certain traditional tolerance in U.S. jurisprudence allowing for non-commercial use of copyrighted or trademarked materials. This is an easier case to make when the domain name for the critical “gripe site” is not identical to that of the mark of the company the products/services of which are being criticized. As noted at p. 6 of the Arnold Clark WIPO Panel decision cited above, the court in the Bally case referred to therein stated that “…no reasonably prudent Internet user would believe that <ballysucks.com> is the official Bally site or is sponsored by Bally.”
The fact that the Domain Name for the gripe site in this case is precisely identical to Complainant’s service mark, and that the site itself does not contain a prominent disclaimer to the effect that the site is not an official site of ALF, make it somewhat easier for a user to be confused on this issue. On the other hand, it can be argued that the nature of such a gripe site would make it unlikely for it to be the official site of ALF. Indeed, a visit by this Panel on July 12, 2004, to the home page of the website “www.americanlubefast.com” which is built on the Domain Name, prominently indicates that it is a complaint website and that it is established by a dissatisfied customer. The Panel visit to the entire website on July 12, 2004, also revealed a small amount of external advertising by Respondent, mostly for Internet hosting services. However, the primary purpose of the site as stated there is clearly to collect and disseminate customer complaints about ALF’s services. In fact, the site invites satisfied customers to post their opinions as well, some of which appear on the site. The managers and employees of ALF’s stores have also posted letters on the site in support of Complainant. For these reasons the Panel rejects Complainant’s assertion that the website is defamatory.
The Panel, however, finds that Respondent’s rights to free speech and/or fair use do not grant him a legitimate interest, for the purposes of the Policy, to use a domain name that is identical to the Complainant’s service mark, when the Domain Name was registered and used in bad faith as set out below.
C. Registered and Used in Bad Faith
In the present case there is no vindictive or vengeful language on the site, as was apparently the case in which bad faith was found by the Panel in Reg Vardy Plc v. David Wilkinson, WIPO Case No. D2001-0593. There, a dissatisfied automotive customer in the United Kingdom went the extra mile to make it clear that his motive was to inflict harm to the reputation of the Complainant.
However, a very material issue here is that Complainant has alleged that Respondent offered to sell the Domain Name to Complainant for $20,000.
To prove this allegation, Complainant has produced a letter from Respondent’s attorney dated October 26, 2002, in which it asserts Respondent’s right to the Domain Name, and further states that:
“My client is prepared to offer to sell the domain name for $20,000. Please communicate this offer to your client.”
An offer to sell the Domain Name for an amount which far exceeds the costs of registration is one specific example of “bad faith” by a Respondent set forth in Paragraph 4(b)(i) of the Policy. Therefore, this Panel finds that Respondent did register and use the Domain Name in bad faith.
For the immediately foregoing reason, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel must order that the Domain Name be transferred to the Complainant.
Paul E. Mason
Dated: July 26, 2004