WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ryanair Limited v. Michael Coulston

Case No. D2006-1194

 

1. The Parties

The Complainant is Ryanair Limited, of Dublin, Ireland, represented by Howrey LLP, United Kingdom.

The Respondent is Michael Coulston, of London, United Kingdom, appearing pro se.

 

2. The Domain Name and Registrar

The disputed domain name <ryanaircampaign.org> (“Domain Name”) is registered with In2net Network Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2006. On September 19, 2006, the Center transmitted by email to In2net Network Inc. a request for registrar verification in connection with the Domain Name. On September 19, 2006, In2net Network 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 26, 2006. The amendment both rectified the deficiency and added additional evidence and argument in support of the Complaint. Although the Center reserved to the Panel the decision on whether to accept the additional evidence and argument, 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”). The Panel has reviewed that determination and agrees that the Complaint, as amended, satisfies the requirements of the Policy, Rules and 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 September 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2006.

The Respondent did not file a timely Response. On October 19, 2006, however, Respondent attempted to notify the Center that he intended to file a Response later that day. Unfortunately, Respondent sent this email to an incorrect address. When Respondent later resent the email to the proper address, Respondent stated that the reason for his late Response was he did not receive the Complaint, as sent by courier, until October 16, 2006 (presumably because Respondent was not available to accept delivery of the courier package). Respondent also stated that his telephone line had been out of order, although he noted that he did have intermittent Internet access.

Respondent filed his Response five days later, on October 24, 2006. On October 25, 2006, the Center informed Respondent that the Response was late and that whether to accept it would be at the discretion of the Panel.

The Center appointed David H. Bernstein as the Sole Panelist in this matter on November 16, 2006. 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. In light of the complex procedural and substantive issues raised by this matter, pursuant to paragraph 10(c) of the Rules, the Panel set December 15, 2006 as the deadline for submission of its decision.

Before turning to the merits, the Panel must first decide whether to accept and consider Complainant’s amendment to the Complaint and Respondent’s late Response.

The Panel accepts Complainant’s amendments to the Complaint. Given that the amendment was filed before the Center notified Respondent of the Complaint, the acceptance of this amendment does not prejudice Respondent in any way and did not cause any delay in the final resolution of this proceeding. See, e.g., Holmes Place plc v. Holmes Place, WIPO Case No. D2000-0481 (August 1, 2000) (finding, where amendment to complaint was filed on the day notification of the complaint was sent from the Center to the respondent, that the respondent was “not in any way prejudiced by the[] late submissions”); EAuto, Inc. v. E Auto Parts, Inc., WIPO Case No. D2000-0121 (April 13, 2000) (accepting and considering the complainant’s amendment to its complaint because it was filed at the same time the proceeding commenced and the respondent had a fair opportunity to respond to the amendment). If the Panel were to rule otherwise, it would encourage complainants who wish to supplement their complaints to dismiss their matters voluntarily, thus obtaining a refund of most of their filing fees, and then re-filing a new case. See Supplemental Rules, paragraph 5(c) (“Unless the Complainant confirms its intention to re-submit a complaint to the Center following a deemed withdrawal, the Center shall refund the fee paid by the Complainant pursuant to paragraph 19 of the Rules, less a processing fee as set forth in Annex D.”). In any event, the supplemental material Complainant added through the amended complaint addressed only new facts (a new email from the Respondent to the Complainant) that could not have been included in the initial Complaint, and thus constitutes the type of supplemental material regularly accepted by Panels. See, e.g., Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972 (January 7, 2003).

The late-filed Response presents a more difficult issue because, “absent exceptional circumstances supported by good cause, panels should not accept late-filed responses”. Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (February 24, 2006). Here, Respondent claims good cause because he states that he received the Complaint on October 16, 2006 (because of courier delivery problems on his part) and had telephone problems (though he did still have intermittent Internet access).

After reviewing the record and the tracking report provided by the courier, DHL, it appears that the Complaint, which was sent by the Center on September 27, 2006, was not delivered to the Respondent until October 16, 2006. In addition, although the Center emailed the Complaint to Respondent, when the Center tried to email the Complaint annexes to the Respondent, the email “bounced back” to the Center because the attachments were too large for Respondent’s mailbox. Therefore, Respondent appears not to have received the full amended Complaint from the Center until October 16, 2006.

Under these circumstances, even though the delayed delivery of the hard copy version of the Complaint seems to have been within Respondent’s control, the Panel would have been inclined to allow the Respondent some additional time to file a Response. Because Respondent filed its Response eight days after receipt of the Complaint by courier, the Panel will accept Respondent’s late-filed Response.

There are, however, additional deficiencies in Respondent’s Response. Respondent’s certification does not exactly match the language required paragraph 5(b)(viii) of the Rules, and Respondent did not, as required under paragraphs 5(b) and 5(b)(viii), submit a signed hard copy of the Response. Because Respondent is pro se, if the statements in the Response would have made a material difference, the Panel probably would have given the Respondent an opportunity to cure these procedural deficiencies. See Visual Gis Engineering S.L. v. Nitin Tripathi, WIPO Case No. D2006-0079 (March 23, 2006). Here, though, because nothing in the Response would have changed the Panel’s decision in this case, and in order to prevent further delay, the Panel has completed its decision without requiring the Respondent to supplement its Response.

 

4. Factual Background

Complainant Ryanair Limited is a discount airline company incorporated and registered in Ireland with its principal place of business in Dublin. Complainant is the registered owner of a number of trademarks that consist of or incorporate the word RYANAIR. Complainant registered the following European Community Trademarks: RYANAIR (registered on December 5, 2005, registration number E4168721); RYANAIR.COM THE LOW FARES WEBSITE (registered on March 27, 2001, registration number E1493329); RYANAIR THE LOW FARES AIRLINE (registered on January 29, 1999 registration number E446559); RYANAIR (registered on November 17, 1999, registration number E338301); and RYANAIRHOTELS.COM (registered on January 9, 2006, registration number E4187721). Additionally, Complainant registered RYANAIR, LA COMPAGNIE LA MOINS CHÉRE (notification of registration on September 24, 1999, registration number 99 786365) and RYANAIR (notification of registration on June 16, 1995, registration number 99 553045) as French National trademarks.

Respondent registered the Domain Name on July 29, 2006, and appears to maintain a website that is critical of Complainant’s business practices and where Respondent publishes the email addresses of some of Complainant’s employees. Neither party disputes that Respondent’s website (the “Website”) is not used to conduct any commercial activity.

This proceeding follows an earlier domain name dispute between these same parties, involving the domain name <ryanair.org.uk> (the “UK Domain Name”), which was filed with the Nominet UK Dispute Resolution Service. The Nominet Expert, Anna Carboni, transferred the UK Domain Name to the Complainant because she found that the UK Domain Name was an “Abusive Registration”, as that term is defined in paragraph 1 of the Nominet Policy. Ryanair Ltd. v. Michael Coulston, Nominet DRS 3655 at ¶ 7.1 (July 26, 2006). In particular, the Nominet Expert found that the UK Domain Name was identical to the RYANAIR mark in which the Complainant has rights and that, despite the fact that the Respondent probably registered the UK Domain Name to “comment on the Complainant’s customer complaint policies”, the “inherent likelihood of confusion in adopting an essentially identical Domain Name to the mark RYANAIR” required the Expert to find Respondent’s registration to be an Abusive Registration under the Nominet Policy. Id. ¶ 7.24.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademark RYANAIR by virtue of its various trademark registrations and the protection its trademark enjoys in other countries under Article 6bis of the Paris Convention. Complainant alleges that it has used its mark for twenty-one years with respect to its goods and services and has spent significant sums of money on establishing a reputation for its RYANAIR mark. Complainant further alleges that it is well known as RYANAIR and is the only company to associate its services with that name. Complainant argues that the Domain Name is identical or confusingly similar to its RYANAIR mark and that Respondent, in fact, admitted to the existence of actual confusion with respect to the RYAINAIR mark and the similar UK Domain Name.

Turning to paragraph 4(a)(ii) of the Policy, Complainant alleges that it never authorized Respondent to use the RYANAIR mark and that Respondent, therefore, does not have rights to or a legitimate interest in the Domain Name. Complainant contends that Respondent is not making a legitimate noncommercial fair use of the Domain Name. To support this allegation, Complainant alleges that Respondent has previously threatened to auction the UK Domain Name to the highest bidder (including Complainant’s competitors), boasted that it diverted traffic from Complainant’s website, admitted to attempting to tarnish the RYANAIR mark, and posted email addresses of Complainant’s employees “in breach of the Data Protection Act of 1998”. Complainant further argues:

“Whilst many of the ‘-sucks’ sites have found favour with respondents using such websites to air commonly held (or otherwise) views, it is the case that the doctrine of free speech around which many such defenses are framed does not accord with EU trade mark law – and since both of the parties to these proceedings are EU resident [sic], it is respectfully submitted that the laws applicable in this territory should prevail.”

In the alternative, Complainant argues that Respondent’s Website does not amount to fair and honest criticism because it includes “unfair criticism” and “untrue, misleading and defamatory remarks”.

Finally, Complainant submits that the Domain Name has been registered in bad faith under paragraph 4(b)(iii) of the Policy because “the circumstances and content of the Website indicate that the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant and causing it unfair loss and damage”. In support of this contention, Complainant notes that the “Respondent only commenced registration of the Disputed Domain Name when he realized that Nominet had ordered the transfer of <ryanair.org.uk>”. Complainant also claims that Respondent’s disclaimer, stating that Respondent’s Website is not in any way connected with Complainant, is insufficient because the Domain Name “has been registered and is used to confuse Internet users, at least initially”. Furthermore, Complainant claims that the existence of such confusion “is supported by the fact that the search term ‘ryanair campaign,’ whilst attracting in excess of 584,000 hits courtesy of the search engine at http://www.google.co.uk, actually displays the Respondent’s Website at position No. 1”. Complainant also alleges that, prior to the Nominet proceedings, “correspondence from the Complainant and its legal advisors [went] largely unanswered and requests for the withdrawal of misleading and defamatory statements [were] ignored”. Complainant also avers that Respondent violated the Data Protection Act 1998 “by publishing the individual email addresses of key personnel within the Complainant company with the sole purpose of causing personal harassment and disruption to business”.

B. Respondent

Respondent’s Response denies that customers are misled by Respondent’s Website. Respondent claims that his Website clearly states that it is not Complainant’s website. Further, Respondent claims that he never admitted to the existence of actual confusion; rather, he states that the Website contains a contact email address and that “some requests for information or suggestions are sometimes made through this by people who are well aware that they are not contacting [C]omplainant”. Respondent also claims that he never boasted of diverting traffic from Complainant’s website. Respondent denies previously threatening to auction the UK Domain Name and states that it was “merely a flippant request for suggestions made years ago”.

Respondent also argues that the fact that he moved the content of the website published under the UK Domain Name to the current Website is not evidence of bad faith. Furthermore, Respondent contends that Complainant’s claim that Respondent’s posting of several of Complainant’s email addresses is in violation of the Data Protection Act of 1998 is purely speculative and that “there has been no communication from the Data Protection Commission, even to suggest that a complaint has been received”. Respondent also claims that he posted the email addresses in order to give Complainant’s customers some meaningful access to the company because the only contact information on the Complainant’s website is a telephone number that charges premium rates and has indefinitely long wait times.

 

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:

(i) The Domain Name 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. Identical or Confusingly Similar

Complainant has definitively proven ownership of trademark rights in the name RYANAIR. Because the Domain Name incorporates that mark in its entirety and adds an additional word (“campaign”), the Domain Name is confusingly similar to Complainant’s trademark for purposes of the Policy. Covance, Inc. v. Covance Campaign, WIPO Case No. D2004-0206 (April 30, 2004). Therefore, the Panel finds that Complainant has carried its burden under the first factor.

B. Rights or Legitimate Interests

Paragraph 4(c)(iii) of the Policy states that a Respondent has a right or legitimate interest in a disputed domain name where the Respondent 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”. It is the Complainant’s burden to prove that Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 8, 2000).

The Panel has reviewed Respondent’s Website, which consists entirely of criticism of and commentary on Complainant and its business practices, without any commerce or other commercial activity. 1 Complainant nevertheless argues that the Website does not qualify as a legitimate noncommercial fair use of the Domain Name. Complainant advances five arguments in support of this position.

First, Complainant argues that Respondent lacks a legitimate interest because Respondent previously threatened to auction the UK Domain Name to the highest bidder. It is true that Respondent made such a threat,2 but a threat to auction a different domain name, while possibly indicative of bad faith with respect to that other domain name, does not shed much light on the question of whether a Respondent has rights or a legitimate interest in this Domain Name.

Second, Complainant states that Respondent boasted that he diverted traffic from Complainant’s website. Again, Respondent does appear to have made such statements, but if the diversion of traffic was not made misleadingly with an intention of realizing some commercial gain, it does not fall under the language of the Policy, which is intended to address commercial diversions. It is undisputed that Respondent’s Website is not commercial. Absent a competitive intention, the diversion of traffic alone (which, after all, is the very intention of a criticism site) cannot serve as the basis for a finding that a Respondent lacks a legitimate interest.3

Third, Complainant states that Respondent admitted to attempting to tarnish the RYANAIR mark. This argument, though, reflects a misunderstanding of the nature of the tarnishment prohibited by the Policy. Tarnishment in this context does not mean criticism. If it did, every website critical of a brand owner could be branded a tarnishing use. Rather, “[t]arnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark”. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001). In the instant case, Respondent’s site criticizes Complainant and its business practices, sometimes in harsh terms, but it does not associate the RYANAIR mark with any unwholesome activity. Accordingly, Complainant has failed to show that Respondent has used the Domain Name to tarnish Complainant’s trademark.

Fourth, Complainant asserts that Respondent posted email addresses of Complainant’s employees “in breach of the Data Protection Act of 1998” and that this proves that Respondent’s use of the Domain Name is not a fair use. If Respondent has violated UK privacy laws, then Complainant presumably can pursue such violations through the appropriate channels. Any such violation, however, is beyond the expertise and jurisdiction of this Panel and is not relevant to the issue of whether Respondent is making a fair use of the Domain Name.

Finally, Complainant argues that Respondent’s Website cannot be deemed a fair use because EU trademark law (which applies to this dispute between two EU residents) does not recognize the concept of free speech and, in any event, Respondent’s Website is not a fair use because it includes “unfair criticism” and “untrue, misleading and defamatory remarks”.

The nature of the UDRP – with its limited submissions and the absence of any live testimony – makes it difficult for the Panel to determine whether Respondent’s criticisms are unfair or not. If Respondent has slandered the Complainant or engaged in false and deceptive advertising, Complainant can pursue those assertions in the appropriate forum. Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001). Such arguments, though, are beyond the scope of the Policy, which addresses only questions of abusive cybersquatting.

Complainant’s other argument, though, raises a more difficult issue, as it requires an assessment of whether Respondent’s Website qualifies as a fair use under the Policy and how that analysis is impacted by the law that applies to the Parties given that they are residents of Ireland and Great Britain, respectively.

With respect to the applicable law, Complainant relies solely on the Nominet Expert’s decision to support its assertion that a registrant may not use a domain name consisting of a trademark plus an additional word for a criticism site. As discussed above, although that decision does hold that an identical domain name (i.e., trademark.domain) cannot fairly be used for a criticism site, it does not also hold that a confusingly similar domain name (i.e., trademarkplus.domain) can never fairly be used for a criticism site. To the contrary, the Nominet Expert’s decision seemed to rest on the fact that the use of an identical domain name made confusion likely. As the Expert held, despite that Respondent’s “initial purpose in registering the [Nominet] Domain Name was to … comment on the Complainant’s customer complaint policies”, because confusion was likely, the use could not be considered fair Ryanair Limited v. Michael Coulston, Nominet DRS 3655 (July 26, 2006), ¶ 7.24.

In the absence of other controlling authority, the Panel has reviewed the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”).4 The WIPO Decision Overview acknowledges that there is a split among Panels on the question of whether a criticism cite can qualify as a legitimate or fair use when it is located at a domain name that is identical to the Complainant’s trademark (e.g., ryanair.co.uk). See WIPO Decision Overview, § 2.4, available at http://www.wipo.int/amc/en/domains/search/overview/index.html#24. Compare Kirkland & Ellis LLP v. DefaultData.com, WIPO Case No. D2004-0136 (April 2, 2004); Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 (October 3, 2002); and Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1214 (December 18, 2000) with Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001); and Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc v. Jack Myers, WIPO Case No. D2000-0190 (July 6, 2000). This Panelist has suggested that the split between these two lines of decisions may reflect a difference in approach between cases involving U.S. parties and cases involving non-U.S. parties. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004).

Where the disputed domain name is not identical to the trademark at issue (i.e., trademark.domain), but rather includes other words (i.e., trademarkplus.domain), it is not yet clear whether the same split applies. Indeed, Covance, Inc. v. Covance Campaign, WIPO Case No. D2004-0206 (April 30, 2004), which was decided by Ireland-based panelist Alistair Payne and involved European parties, stands for the proposition that certain domain names deemed confusingly similar under the UDRP may be fairly used for noncommercial criticism sites.

Covance involved a domain name (<covancecampaign.com>) that was used for a noncommercial criticism site that combined the complainant’s trademark (COVANCE) with the word “campaign” (presumably to indicate that the website was a campaign of some sort related to the COVANCE mark, company, products or services). The panel expressed its agreement with the “view that a domain name which is identical to the Complainant’s trade mark should necessarily not qualify as a ‘legitimate noncommercial or fair use’ … regardless of website content”. Id. Where, though, the domain name is not identical to a complainant’s mark, the panel indicated that a more searching inquiry is required. Given that the Policy contemplates some protection for legitimate noncommercial or fair uses of a trademark in a domain name, the panel held that the relevant inquiry is a balance between the interests of the Respondent in disseminating its criticism and the extent to which the site was actually confusing consumers. In that case, because “Respondent’s site … is in fact concerned with criticism of Complainant’s activities” and a “bold disclaimer makes it clear from the very outset that this site has no connection with the Complainant”, the panel held that Respondent’s criticism site was a legitimate noncommercial or fair use.5

The Covance decision appears also to be consistent with the history of the Policy’s creation and adoption. Paragraph 4(c)(iii), which provides that a Respondent has a right or legitimate interest in a disputed domain name if the Respondent 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”, appears to have been intended to protect at least some free expression where it conflicts with a complainant’s rights in a particular mark: “Domain name registrations that are justified by legitimate free speech rights or by legitimate noncommercial considerations would likewise not be considered to be abusive.” The Management of Internet Names and Addresses: Intellectual Property Issues: Final Report of the WIPO Internet Domain Name Process (April 30, 1999), ¶ 172, available at http://www.wipo.int/amc/en/processes/process1/report/finalreport.html (“WIPO Report”). Although this passage leaves open the question of whether identical domain names used for criticisms sites can be “justified by legitimate free speech rights”, it may be read to imply that domain names that consist of a trademark and an appropriate modifier should be permitted for criticism sites, so long as there are not other factors that make such sites illegitimate. Otherwise, paragraph 4(c)(iii), which envisions that at least some domain names that are identical or confusingly similar to the complainant’s trademark should be protected as “legitimate noncommercial or fair use[s]”, would be rendered meaningless.

Accordingly, under the Policy and consistent with the decision in Covance, even where the parties are European, if a domain name used for a criticism site combines the trademark with appropriate other elements (as contrasted with a domain name that is identical to the trademark), a legitimate interest may be found if the Respondent has used the domain name in ways designed to avoid deception and undue confusion. That is the case here. As in Covance, even if there is some initial interest confusion when a consumer first sees the Domain Name <ryanaircampaign.org> (which, unlike an alternative formulation like <ryanairsucks.org>, does not immediately indicate whether it is a campaign for or against Ryanair), that confusion is immediately dispelled as soon as the consumer reaches the Website. The Website does not look like the Ryanair website6 (cf. 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)), is an obvious criticism site that is unrelated to Complainant, and includes a prominent disclaimer on the site. Any consumers who mistakenly stumble on this site while looking for Complainant’s website will no doubt immediately realize their error, and need only click on the “back” button to return to their search results (where, they will find, Ryanair is the very first result if they searched for “Ryanair”).7

For the foregoing reasons, the Panel finds that Complainant has failed to sustain its burden of proving that the Respondent lacks rights or a legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent] intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location

Complainant claims that Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iii) of the Policy – that is, that Respondent “registered the domain name primarily for the purpose of disrupting the business of a competitor”. For purposes of the Policy, though, a competitor “is a person or entity in competition with a complainant for the provision of goods or services, and not merely a person or entity with an interest oppositional to that of a mark holder”. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001); see also Covance, Inc. v. Covance Campaign, WIPO Case No. D2004-0206 (April 30, 2004); Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004); Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network, WIPO Case No. D2001-0467 (June 16, 2001); Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 20, 2001). Complainant does not contend that Respondent is its “competitor” in the provision of airline services, and thus, however disrupting Complainant may find Respondent’s conduct, it is not bad faith under paragraph 4(b)(iii) of the Policy.

Complainant articulates a number of other facts that, it believes, reflect Respondent’s bad faith. Because the list of circumstances that are evidence of bad faith provided in paragraph 4(b) is not intended to be exclusive, the Panel has reviewed each of Complainant’s additional allegations of Respondent’s bad faith.

First, Complainant states that “[p]rima facie evidence of bad faith can be seen in the fact that the Respondent only commenced registration of the Disputed Domain Name when he realized that Nominet had ordered the transfer of <ryanair.org.uk> to the Complainant”. Complainant is correct about the timing of Respondent’s Website, but that timing is not proof of bad faith. The Nominet Expert found that use of the <ryanair.co.uk> domain name for a criticism site was an abusive registration, but did not also indicate that use of a different domain name (especially one that avoids the confusion identified by the Nominet Expert by use of a domain name that is not identical to the trademark) would also be bad faith. Whether registration and use of this Domain Name was in bad faith for purposes of the Policy (which, it should be noted, has different standards from the Nominet DRS process) needs to be assessed separately, on the specific facts of this case which includes the Domain Name itself.

Second, Complainant states that, prior to the Nominet proceeding, Complainant’s letters to Respondent were “largely unanswered and requests for the withdrawal of misleading and defamatory statements … [were] ignored”. In some circumstances, a defendant’s failure to reply to correspondence concerning trademark rights in a domain name may give rise to certain inferences. In the present case, though, given the nature of this noncommercial criticism site (which, as noted above, gave rise to a legitimate interest), Respondent’s decision to ignore Complainant’s letters is not itself proof of bad faith.

Third, Complainant alleges that Respondent’s Website is causing confusion, or at least initial interest confusion, among Internet users searching for Complainant’s site. These allegations would be relevant to an analysis of whether Respondent’s conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy if Respondent “intentionally attempted to attract” Internet users “for commercial gain”, but that is not the case here. Rather, as noted above, the Website is noncommercial.

Finally, Complainant contends that Respondent acted in bad faith when he published some of Complainant’s employees’ business email addresses. (There is no allegation that Respondent published any personal email addresses of Respondent’s employees.) Even if that were a bad faith violation of UK privacy laws (an issue that is beyond the scope of this proceeding), that is not what the Policy requires. Rather, the question is whether Respondent registered and used the Domain Name in bad faith. Although the Panel understands that publication of employees’ professional email addresses may be somewhat disruptive and undesirable to the business, in the context of a criticism site that specifically criticizes Complainant for how difficult Respondent alleges it is to reach key customer service individuals, the Panel concludes that the publication of these domain names does not support a finding of bad faith use and registration of the Domain Name.

For these reasons, the Panel finds that Respondent did not register and use the Domain Name in bad faith.

 

7. Decision

For the foregoing reasons, the Complaint is denied.


David H. Bernstein
Sole Panelist

Dated: December 12, 2006


1 It is well accepted that the Panel can conduct its own factual research such as review of the parties’ websites. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004); Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070 (April 2, 2002).

2 The Nominet Expert held that, “[h]aving reviewed the email of 15 February 2005 in which the alleged threat was made, I do not regard this as a serious threat. The Respondent was simply making rather flippant suggestions as to what he could theoretically do if prevented from using the Domain Name for the purpose of his criticism site. There is no evidence that he has ever take steps to sell the Domain Name”. Ryanair Ltd. v. Michael Coulston, Nominet DRS 3655 at ¶ 7.12 (July 26, 2006).

3 By contrast, it would not be a fair use for a competitor to deceive consumers as to its relationship with a complainant or as to the nature of its wares. See Chanel, Inc. v. Estco Tech. Group, WIPO Case No. D2000-0413 (September 18, 2000) (“While it might be fair use for Respondent to mention [Complainant’s mark] in giving out information in the public domain, the Panel disagrees that it is fair use for Respondent to use Complainant’s famous trademark in order to attract the public to [its for-profit] web site.”).

4 As this Panel has previously noted, “[a]lthough the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP”. Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 at n.3 (March 21, 2005). It is, therefore, in the best interests of the Policy and of parties to UDRP proceedings for panels to follow the consensus once a consensus position has been identified. See id; Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004).

5 The Panel is aware of at least one decision, cited in the WIPO Decision Overview, that reached an opposite result. In Royal Bank of Scotland Group plc v. Personal and Pedro Lopez, WIPO Case No. D2003-0166 (May 9, 2003), the panel transferred a series domain names consisting of trademarks plus the word “sucks” to complainants despite that the domain names were used for noncommercial criticism sites. Because this Panel believes that Royal Bank of Scotland Group (which was issued a year prior to Covance) is inconsistent with the text and history of the Policy, the Panel declines to follow that decision.

6 The parties do not dispute this point. A March 11, 2005 letter from Complainant to Respondent (which was attached to the Complaint as Exhibit 10) states: “We note that you have now … changed the colour scheme of your website so it is less readily identifiable with Ryanair’s own website.” Although this letter referred to changes made in a previous version of Respondent’s Website (associated with the UK Domain Name), the Panel finds, as a result of its independent review of Respondent’s current Website, that Respondent’s current Website continues to use a non-confusing color scheme.

7 Complainant asserts that Respondent’s Website is the first listed result when one searches for “Ryanair Campaign”. The Panel has confirmed that Complainant is correct, but it is not surprising since a search on that phrase is likely to provide as a top result a website with those words in its domain name. Either way, though, it is unlikely that consumers interested in learning about Ryanair or booking tickets for travel on Ryanair would search for “Ryanair Campaign” through a search engine.