WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi
Case No. D2007-0769
1. The Parties
The Complainant is Chubb Security Australia PTY Limited, of Ashfield, New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Mr. Shahim Tahmasebi, of Ryde New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <chubbsux.com> is registered with NetRegistryPty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2007. On May 26, 2007, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the domain name at issue. On May 28, 2007, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 13, 2007, the Complainant filed with the Center an amendment to the Complaint regarding the remedy sought. 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 June 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2007. The Response was filed with the Center on June 18, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on July 30, 2007. 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 is a company incorporated in Australia and is related to Chubb International Holdings Limited. The Complainant and its predecessors in title have carried on business in Australia under the name “Chubb” since the later 19th century and the Complainant itself has traded under the name “Chubb” for nearly 20 years. The Complainant is in the business of providing security services and it is widely known in that field in Australia and, through its associated companies, overseas.
The Complainant has registered several trademarks in Australia for CHUBB, on occasions together with an associated CHUBB device. Among those trademarks is Registered Trademark Number 914288, registered with IP Australia on May 28, 2002 for the word CHUBB by itself (“the trademark”).
The Complainant has also registered a series on domain names including <chubb.com.au> and it operates a website at “www.chubb.com.au” as well as at other Internet addresses.
The Respondent is a former employee of the Complainant who registered the domain name on May 3, 2007, and who has used it for a website that contains criticism of the Complainant on industrial relations and other matters.
5. Parties’ Contentions
The Complainant alleges that the contentious domain name <chubbsux.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademark CHUBB, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered CHUBB trademark and says that the domain name is identical or confusingly similar to the mark because it consists of the sole word of the trademark, namely CHUBB, to which has been added only the word “sux”, which does not dilute the confusing similarity that is otherwise present.
The Complainant contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show that the Respondent has never been known by the name “Chubb”, or “chubbsux”, has never been given permission by the Complainant to use its trademark in a domain name and has not been using the domain name for a legitimate non-commercial or fair use. Moreover, it is said that although the website to which the domain name resolves purports to disseminate information concerning the employees and management of the Complainant, the website is in substance designed to denigrate the Complainant and damage its reputation.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because it is obvious that the Respondent is motivated by a personal grievance against the Complainant and a desire to extract retribution, which it is argued is itself a form of bad faith. Moreover, it is argued that the composition of the domain name and the contents of the website show an intention by the Respondent to tarnish the Complainant’s business and reputation and to cause it damage and disruption which are also evidence of bad faith.
The Respondent’s Response to the Complaint is contained in a letter, which it sent to the Center dated June 17, 2007, set out below in full.
“Dear Sir, I am writing to you regarding the complaint made by Chubb Security regarding the use of domain name: <chubbsux.com>. This matter is only a local industrial dispute between the employer, Chubb Security, and its employees. As concerned employees over the past few years I made number of complaints to the management regarding the behavior of some of the management staff and the way the employees are treated. In 2005 in a detailed complaint to company I outlined the claims made by the company such as anti-discrimination and Equal Employment Opportunity that are not put into practice despite the company’s claim. Over the years we have witnessed some unfair and unjust behavior by the immediate managers and tried to bring those to the attention of higher management at no avail. Our concerns had fallen to deaf ears. I have attached a readable copy of the website, in it you can see we are asking for is nothing but for a fair go. We asked Chubb not to act like a cowboy and follow the laws of Australia. This matter should not have reached this point, I offered Chubb to solve the problem and there was no need for such website, unfortunately poor and cowboy style management chose to crack the nut with sledge hammer. I worked for Chubb since 2001, for 6 years met hundreds of employees. Yet, I have not met one happy person to praise Chubb and say good thing about the company. I was approached by another unhappy employee and was asked to setup a website and express our views. I spoke to many other unhappy employees and they had an input into the context of the site. As a computer technician I knew how to register the domain name and build the website. The domain name is in fact belonging to another Chubb employee and I am the tool that provided this facility. My terms of employment were terminated by Chubb soon after the publication of the site. All the claims made on the site can be proven in the court of law. Employees that are still unhappy with poor management skills at Chubb are suggesting other domain names to use. Chubb cannot ban the use dictionary. Your action cannot proceed against me alone; all the parties involved should be summoned too. Chubb is using excessive force to shut this matter down instead of addressing the problem. This matter is no different to picketing the company and having placards and signs to display. This matter is a local industrial dispute and should be addressed locally. If all of our concerns were addressed I would be the one to setup a website to praise the company. There were no need for such website if we had a good and professional management. This website is directed at the poor management at Chubb, not the company. The company itself is only a name nothing more; it is the people who make the company. We stand by our claims.”
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel therefore turns to discuss the various issues that arise for decision.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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 is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel notes that the disputed domain name and the Complainant’s trademark both contain the word “chubb”, giving them one feature in common. Although the domain name contains the additional word “sux”, the dominant meaning of the domain name conveyed to the Internet user is the name of the widely known security company Chubb and its trademark CHUBB.
The question is whether the disputed domain name and the Complainant’s CHUBB trademark are confusingly similar. As stated by the Panel in America Online, Inc v. Jonathan Investments Inc, and AOLNEWS.COM, WIPO Case No. D2001-0918:
“Is it likely therefore that, because of the similarity between the Domain Name on the one hand and the Complainant’s trade mark on the other hand, people will believe that the domain name is associated in some way with the Complainant.”
The question whether a domain name of the type at issue here is confusingly similar to a complainant’s mark has been the subject of a wide ranging debate which is summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions as follows:
“1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant’s trademark? (“sucks cases”)
Majority view: A domain name consisting of a trademark and a negative term is confusingly similar to the complainant’s mark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.
Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale WIPO Case No. D2000-0662, Transfer
A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen WIPO Case No. D2001-0900, Transfer
Berlitz Investment Corp. v. Stefan Tinculescu WIPO Case No. D2003-0465, Transfer
Wachovia Corporation v. Alton Flanders WIPO Case No. D2003-0596 among others, Transfer
Minority view: A domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term.
Lockheed Martin Corporation v. Dan Parisi WIPO Case No. D2000-1015, Denied.
McLane Company, Inc. v. Fred Craig WIPO Case No. D2000-1455, Denied.
America Online, Inc. v. Johuathan Investments, Inc., and Aollnews.com WIPO Case No. D2001-0918, Transfer, Denied in Part.”
The Panel accepts the majority view on this issue as the starting principle, an approach which has been supported in many UDRP decisions.
Thus in Societé Air France v. Virtual Dates, Inc. WIPO Case No. D2005-0168, in holding that the domain name <airfrancesucks.com> was confusingly similar to the AIR FRANCE trademark, the panel said:
“The Panel is fully aware that there is a split among the UDRP decisions regarding whether a “-sucks” domain name is confusingly similar to the trademark to which it is appended. The majority of the decisions have found confusing similarity. In a minority of decisions, and in some dissenting opinions, Panelists have deemed a “-sucks” addition to a well-known trademark to be an obvious indication that the domain name is not affiliated with that trademark owner. This Panel, however, concurs with the notion that every case must be assessed on its own merits, and the Panel agrees with the remarks by the Complainant, and which has also been stated in previous decisions under the UDRP, that far from all international customers are familiar with the pejorative nature of the term “sucks”, and that a large proportion of Internet users therefore are likely to be confused by “-sucks” domain names. See inter alia Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596.”
The majority view has been consistently applied up to and including the recent decision in Deutsche Telekom AG v. AdImagination, WIPO Case No. DWS2006-0001. In that decision, the panel said:
“The Panel believes that the majority view is correct, noting that even when an Internet user is familiar with in all likelihood the meaning of the word “sucks”, it will still be confused as to the association of the domain name with the Complainant, at least initially.”
That decision relied on the decision in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 and accordingly the majority view has been accepted and applied as such for some years. Each case will, of course, depend on its own facts, but in the interests of consistency of decisions and on the facts of the present case, the Panel believes that it should apply that view.
Use of the website
On another issue, the Respondent in his Response submits: “I have attached a readable copy of the website, in it you can see we are asking for is nothing but for a fair go.”
The Respondent may mean by this submission that the domain name takes on its full meaning only when it is followed to its website and when it is seen that the website is given over to criticism of the Complainant. The Panel notes that the terms of the Policy itself and many decisions on the issue make it clear that a panel considering confusing similarity should not have regard to the content of the website to which the disputed domain name resolves, for a true comparison can only be made between the actual words of the domain name and those of the trademark. This relates to so-called “initial interest confusion”, where a potential visitor seeking a trademark owner’s website types in a confusingly similar domain name does not immediately reach that site, and may indeed be directed to another site at which point the damage is done. See in this regard, the cases cited in the Overview that support that view: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd. WIPO Case No. D2001-0110, Dixons Group Plc v. Mr. Abu Abdullaah D2001-0843, and AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 and also A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900.
The content of the website is, however, considered below under subsequent elements.
Finally, it is also well established that in deciding the issue of confusing similarity, the generic top-level domain, in the present case “.com”, is not considered as, by definition, all domain names must contain such a suffix which is a functional part of all domain names.
For all of these reasons, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that the Complainant has therefore made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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.”
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
As a starting point in this analysis, the Panel wishes to note that it is now well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do this, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Has the Complainant made out a prima facie case?
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
It is appropriate to make that finding because, first, there is no evidence that the Respondent has been commonly known by or associated with the names “chubb” or “chubbsux”; secondly, he has chosen a domain name containing the Complainant’s trademark and which is confusingly similar to the trademark; thirdly, he has appropriated the Complainant’s name and trademark without permission; and fourthly, the website to which the domain name resolves does not carry a disclaimer to dispel any initial confusion between the domain name and the Complainant and its trademark.
Those factors are sufficient to make out a prima facie case.
Has the Respondent rebutted the prima facie case?
To rebut this prima facie case, the Respondent has made the submission that is set out above.
It is clear from the submission that the Respondent is relying essentially on one ground, namely that within the meaning of paragraph 4(c)(iii) he is making a legitimate noncommercial or fair use of the domain name by using the website as a criticism site. He elaborates on this by saying that he had been engaged in an industrial dispute with the Complainant, his former employer, that his complaints were about management practices and the way that employees were treated, that the Complainant was not complying with anti-discrimination and equal opportunity laws, that employees were generally not happy with the company, that the website had been set up to enable employees to express their views and that he had been dismissed when the website was established.
Other points are made in the submission, but in essence the Respondent’s case is that he has been using the website to engage the Complainant on industrial relations issues.
The question therefore is whether the evidence shows that the Respondent has been using the domain name and the website as a genuine criticism site, as he claims, and if so, whether that gives him a right or legitimate interest in the domain name so as to defeat the claim.
To answer this question, it is necessary to look at the website itself.
At the time of writing, the website seems to have been taken down and the domain name does not presently resolve to an active website. It is of course possible that the website has been taken down since the proceedings were commenced on May 25, 2007. In this regard the Panel has noted that the Respondent has said in his submission that “… employees that are still unhappy with poor management skills at Chubb are suggesting other domain names to use. Chubb cannot ban the use dictionary.”
However, the Complainant has attached to the Complaint Annexure 5, which is “…an extracted copy of the content of the website associated with the disputed domain name as at May 8, 2007…” and Annexure 6 which is “ …an extracted copy of the content of the website … as at May 25, 2007”. As a result of this uncontested submission, we are able to see what was on the website on those dates.
Annexures 5 and 6 to the Complaint show that the website invited comment from “past and present employees” of the Complainant on employment matters, criticized management for creating insecurity for employees, asserted that complaints in the past “have fallen on deaf ears and [been] swept under the carpet”, specified that it is “low level management to the middle level managements” that are at fault, that “mateship and favouritism” are rife in terms of promotion and demanded a series of specified rights and generally better terms and conditions. It also stated that the authors “believe that Chubb is one of the worst managed employers in the country.” It also called for “termination of some managers in the operation.”
The website also had a section entitled “BUYERS BEWARE” which dealt with an apparent sale by the Complainant’s parent company of “Chubb Security and Mobile Patrol” and argued that Chubb is losing contracts and that poor management is turning customers away.
The website also had a section entitled “Clients Beware” which warns clients not to be “ripped-off” and overcharged, but to check their bills and “compare the hours”.
The site does not appear to have had any commercial content.
From this analysis it is apparent that the site has been given over essentially to critical content in line with what seems to have been the Respondent’s intention.
The question then is whether, bearing in mind the content of the site and the Respondent’s intention in setting it up, it gives rise to a right or legitimate interest in the domain name so as to defeat the Complaint.
Can a criticism site give rise to a right or legitimate interest?
Opinions amongst UDRP panelists are divided on whether a criticism site can give rise to such a right or legitimate interest. The divergence of opinion on this question is accurately stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?
This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain.
See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico WIPO Case No. D2000-0477 among others, Transfer.
In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech web site, there are two main views. There is also some division between proceedings involving US parties and proceedings involving non-US parties, with few non-US panelists adopting the reasoning in View 2.
View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.
Skattedirektoratet v.Eivind Nag WIPO Case No. D2000-1314, Transfer.
Myer Stores Limited v. Mr. David John Singh WIPO Case No. D2001-0763, Transfer.
Triodos Bank NV v. Ashley Dobbs WIPO Case No. D2002-0776, Transfer.
The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez WIPO Case No. D2003-0166, Transfer.
Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc. WIPO Case No. D2004-0136, Transfer.
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.
Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers WIPO Case No. D2000-0190, Denied.
TMP Worldwide Inc. v. Jennifer L. Potter WIPO Case No. D2000-0536, Denied.
Howard Jarvis Taxpayers Association v. Paul McCauley WIPO Case No. D2004-0014, Denied.
Imposing further conditions as to domain name and use:
Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign WIPO Case No. D2004-0206, Denied.”
Although this issue only concerns relatively few UDRP cases, panelists are still faced with this dichotomy of opinion as is seen from the recent decision in Deutsche Telekom AG v. AdImagination (supra) where the disputed domain name was <tmobilesucks.ws>. The panel said:
“The Panel is aware that there are two different views evolving in UDRP Decisions regarding the use of a trademark in the domain name of a site when it is genuinely used as free-speech and non-commercial site. On the one side, some Panelists have maintained that the operation of a web-site for the purposes of criticism can give rise to a legitimate interest within the meaning of the Policy (See Britannia Building Society v. Britanna Fraud Prevention, WIPO Case No. D2001-0505, and Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014). On the other side, some Panelists have concluded that the right to free speech does not translate into a right to register a trademark that is identical or confusingly similar to owner’s trademark or conveys a strong association therewith.”
As the Overview points out, panelists coming from the United States jurisdiction, although by no means unanimously, tend to be more favourably disposed than other panelists towards the notion that a genuine criticism site gives rise to a right or legitimate interest in a domain name. It is not, however, simply because those panelists come from the United States that they tend to come to that decision. It is rather that the principle of free speech is said to be one that in enshrined in the First Amendment to the United States’ constitution and that source of authority is naturally reflected by United States panelists.
A recent statement of the principle by a distinguished panelist in Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070 summarised the development of the principle in recent years when he said (speaking mostly about cases involving US parties):
“UDRP panels have in applicable cases repeatedly stated that a U.S.-based website engaged in noncommercial criticism of a U.S.-based trademark owner’s activities enjoys First Amendment protection, even if the domain name incorporates the complainant’s trademark. See, e.g., Benjamin Ladner v. Ben Wetmore, NAF File No. FA 0407000305190 (October 13, 2004); Howard Jarvis Taxpayers Assoc. v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004); Action Instruments, Inc. v. Technology Assocs., WIPO Case No. D2003-0024 (March 6, 2003); The Am. Nat’l Red Cross v. Mafiabusters.com LLC, NAF File No. FA0206000114589 (August 6, 2002); Bosley Med. Group v. Kremer, WIPO Case No. D2000-1647 (February 28, 2001); Pensacola Christian College Inc. v. Gage, NAF File No. FA0110000010314 (December 12, 2001); Bridgestone Firestone, Inc. v. Jack Myers, WIPO Case No. D2000-0190 (July 6, 2000); Compusa Mgmt. Co. v. Customized Computer Training, NAF File No. FA0006000095082 (August 17, 2000). United States Court of Appeals decisions from several Circuits have similarly held that use of a trademark in a domain name for a bona fide criticism site is a protected fair use. See, e.g., Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004); Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004).”
The basis for this point of view in UDRP proceedings had been identified at least as early as the year 2000 in Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, WIPO Case No. D2000-1104, in which the panel said:
“…cf. Yankee Publishing Inc. v. News America Publishing, Inc., 809 F.Supp. 267, 280 (SDNY 1992) (Leval, J.) (“First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed”) …Thus whether wallmartcanadasucks is effective criticism of Wal-Mart, whether it is in good taste, whether it focuses on the right issues, all are immaterial; the only question is whether it is criticism or parody rather than free-riding on another’s trade mark.”
Then in McLane Company, Inc. v. Fred Craig, WIPO Case No. D2000-1455, it was observed that: “Protest and commentary are also considered typical fair use under U.S. law relating to domain names. When commenting on the “Anticybersquatting Consumer Protection Act”, the House Judiciary Committee specifically referred to comment and criticism as lawful noncommercial fair use of a mark.”
This was further reflected in the year 2006 in Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627, where the panel considered the domain name <dellorussosucks.com> and it was said that the First Amendment to the United States Constitution applied even when it was the domain name itself that became the expression of opinion by the addition of the word “sucks”.
The extract from the 2007 decision, Xtraplus Corporation v. Flawless Computers (supra), quoted above, also makes it plain that the above view takes into account principles of American law and that it applies only when the parties are American entities and when the criticism in question is contained on a US-based website.
The “American view”, however, has not been followed universally in cases involving American parties. Thus, in KB Home v. RegisterFly.com - Ref# 9565403, 9565404, 9565407 c/o Whois Protection Service ProtectFly.com, NAF Case, FA0505000488510, the Respondent squarely raised the free speech defence where the domain names were “ sucks” cases, namely <mykbhomesucks.com>, <mykbhomesucks.net>, and <mykbhomesucks.org>. The panelist rejected the argument and transferred the domain names, observing:
“Respondent’s “free speech” claim is untenable. The evidence clearly displays a pattern of registering names, which include Complainant’s trademark plus the word “sucks.” There is just no evidence of demonstrable preparations for a business, or of any of the other matters which could assist Respondent under the Policy. See Pepsico, Inc. v. Leeds, FA 117870 (Nat. Arb. Forum September 27, 2002); see also E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615; see also Direct Line Group Ltd. v. Purge I.T., WIPO Case No. D2000-0583; see also Meijer, Inc. v. Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum July 6, 2001).
In connection with the “free speech” argument of Respondent the Panel further notes the reasoning adopted in Monty & Pat Roberts, Inc., v. J. Bartell, WIPO Case No. D2000-0300 concerning the domain name < montyroberts.org>:
“[T]he right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine.”
The Panel finds the Complainant has established this element. The Respondents has no rights or legitimate interests in the disputed domain names.”
Likewise, in CryptoLogic, Inc. v. Internet Billions Domains Inc. NAF Case, Claim Number: FA0408000318925 a panel of three rejected a free speech claim where the parties were Canadian and American and the website was “US based”. In that case, the panel said:
“Respondent is using the domain names as a rather vicious “protest site,” where Respondent makes criticizing and highly inflammatory statements about Complainant. Such use is not a use in connection with a bona fide offering of goods or services, or a legitimate non-commercial or a fair use of the domain name pursuant to Policy ¶ (4)(c)(i) or ¶ 4(c)(iii). Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum April 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant’s DAVID WEEKLEY HOMES mark)… In this case, Respondent’s <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> sites do far more than merely criticize Complainant. The sites accuse Complainant of being the “biggest crooks in the industry,” and being controlled by “gangsters,” the “Mafia” and “heroin traffickers.” Under the circumstances, the Panel finds that the Bridgestone decision and those that follow it are not controlling in this case.”
This case alone suggests that the free speech defence is subject to exceptions and qualifications (possibly even in the United States) because of the trenchant and extreme nature of the criticism in a given case.
Again, in Quilogy, Inc. v. Rodney Ruddick, NAF Case, FA0211000134653, where the domain name at issue was <quilogysucks.com>, it emerged that the domain name was registered by a disgruntled former employee, moving the panel to say:
“Furthermore, Respondent is a former employee of Complainant. Respondent registered the disputed domain name after leaving his employment with Complainant and Complainant sued him for breach of contract. Based on these facts, it can be inferred that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution October 18, 2000) (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark…Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right…this is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).”
That case suggests that even applying the United States test, an ex-employee may have difficulty in establishing the free speech ground. The Panel further notes another United States case concerning an ex-employee, The Stop & Shop Supermarket Company v. Ian Anderson, NAF Case, FA0211000133637 where the domain name was <stopandshopsucks.com>. The panel in that case stated that:
“In the present dispute, the Panel infers that Respondent registered the <stopandshopsucks.com> domain name with the ultimate intent of selling the domain name registration to Complainant. Complainant alleges that Respondent designed the website content “to be as offensive as possible in an attempt to coerce Complainant into purchasing the domain name [registration] at a profit to Respondent,” and the Panel agrees. Respondent’s posting of confidential information on its website, inclusion of defamatory statements about employees of Complainant, and the offensive nature of the domain name itself, combined to create a situation where Complainant was compelled to purchase the domain name. While Respondent’s activities alone were enough to deny it the protections of Policy ¶ 4(c)(i) and (iii), its subsequent activities confirm that it is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.”
BRIO Corporation v. Spruce Caboose a/k/a Brio is Overpriced and Arrogant Fascists, NAF Case Claim Number: FA0205000114419, where two of the domain names were <brio-sucks.com> and<briosucks.com> was another United States case where the free speech defence did not defeat the complaint; the panel noted:
“What is significant in this case is that the Respondent goes further than merely criticizing the Complainant (which is not per se objectionable at law). Respondent takes the criticism one step further. It uses, in conjunction with the said “Sucks” sites, its name and logo accompanied by the prominent statement “Don’t waste your money on Brio when there ARE better choices out there”.
The purpose seems clear – criticize the competition and get consumers to switch to the Respondent’s product. In the Panel’s view such conduct is not saved by any of the exemptions in the Policy and is not indicative of a legitimate interest or right.”
In any event, as Kendall/Hunt Publishing Company v. headhunterbob NAF Case FA0111000102247 makes reasonably clear, a non-commercial use will not be a fair use if its purpose is to tarnish the trademark by extreme criticism.
It is, however, certainly permissible for UDRP proceedings involving United States parties to be decided taking into account the free speech defence, for the Rules provide inter alia that:
“15. Panel Decisions
(a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A panel is therefore entitled to deem that any given activity arising for consideration is governed by specific laws and, in the issue in question, by the First Amendment to the Constitution of the United States of America.
However, the website in the present case cannot in any way be described as “U.S.-based”. Nor can it in any way be said to be “engaged in noncommercial criticism of a U.S.-based trademark owner’s activities…”.
Indeed, both parties are based in Australia, the criticism clearly relates to an Australian employer, the Complainant’s website, “www.chubb.com.au” (extracts of which appear in Annexure 4 to the Complaint) refers to the Complainant as an Australian company and the Respondent’s website is introduced by an illustration of the Sydney Harbour Bridge and the Sydney Opera House. Thus, the case has no connection with the United States of America at all and the Panel accordingly does not consider it appropriate to apply United States law.
Accordingly, in the Panel’s view, it cannot be said that the criticism in the present case gives rise to a right or legitimate interest based on principles primarily applied by United States panelists and drawing on United States law.
Despite this, the question is whether there is, nevertheless, a general principle that a criticism site gives rise to a right or legitimate interest in a domain name, irrespective of United States law.
The preponderance of opinion to be found in UDRP decisions, other than the kind of “free speech” United States decisions referred to above, is that where the domain name is identical or confusingly similar to the trademark of the complainant and resolves to a criticism site, this of itself does not necessarily give rise to a right or legitimate interest in the domain name.
This view is seen from an examination of UDRP decisions on this issue.
UDRP decisions on the criticism issue
Thus, in Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, the panel said:
“The Panel accepts that it is, in principle, legitimate to operate a domain name for the purposes of lawful criticism of a trademark owner. The Panel does not, however, believe that this right extends to occupying a domain name identical to a sign identifying a trademark owner. In particular, the Panel believes that anyone wishing to contact a trademark owner, has the right to contact the owner by addressing himself to the owner’s exact identifier, followed by the top level suffix, in this case .com, and to thereby reach the trademark owner, and not a third party, which itself does not have rights in that mark.”
A similar view was expressed in 2001 in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376:
“The Response proceeds to show why the Respondent has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant, but that is a very different thing from having a right or legitimate interest in respect of the Domain Name.”
The theme thus emerging was developed further, as is seen from this Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763:
“It is, of course, legitimate to provide information about the Complainant or its parent to Internet users. The issue, however, is whether the Respondent has a legitimate interest in the disputed domain name.
In Monty & Pat Roberts Inc. v. J.Bartell, WIPO Case No. D2000-0300, the learned panelist, considering the domain name <montyroberts.org>, which led to a website containing criticisms of the Complainant, Mr. Monty Roberts, said:
“ ….. the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine.”
Here the Respondent is using a domain name which falsely conveys an association with the Complainant to lead Internet users to his website. He is thus illegitimately identifying himself as the Complainant and attracting visitors to his site by trading off the Complainant’s goodwill in its MYER trademark. By the time users reach the disclaimers on the website they have already been exposed to the misrepresentation inherent in the disputed domain name.”
The principle emerging from the above-cited decisions has also been applied in a series of cases that are now known as the “sucks” cases. Thus, in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lope, WIPO Case No. D2003-0166 where the disputed domain name was <natwestbanksucks.com>, the panel said:
“The Panel concurs with the views expressed by the Panel deciding the prior case filed by the same Complainants against the same Respondent, The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez (WIPO Case No. D2002-0823) ‘while one must concede that criticism per se is not a commercial use and that a criticism site may well be entirely legitimate, an argument can be made that a non controlled use can be anti-commercial when it has the effect of driving regular customers away from one’s business. Having said that, the Panel also noted that the Respondents have used domain names that are identical and substantially similar to Complainants’ trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants’ trademarks. Respondents’ can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants’ marks. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression’”.
The present Panel notes that, in order to fully exercise free speech rights, it is not indispensable to use someone else’s identical or confusingly similar trademark. The same reasoning was followed inter alia in Westminster Savings Credit Union v. Hart Industries Inc. And Gregory Hart, WIPO Case No. D2002-0637 and in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018 holding: “For these reasons, whilst the Panel accepts that the Respondent may be free publicly to comment on the Complainant’s workmanship on the Internet, the Panel does not consider that such freedom confers a right or legitimate interest in the use of a domain name which is identical to the Complainant’s trade-mark.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain name, according to paragraph 4(a)(ii) of the Policy.”
The Panel’s view is that the same reasoning applies in the present case.
The Panel accepts that the Respondent’s intention has been to engage in criticism of the Complainant and in particular on industrial relations issues. This is of course legitimate, but as has been pointed out, it is not in this Panel’s view legitimate to use the Complainant’s own trademark as a platform for criticizing the Complainant itself. As has also been pointed out in other decisions, there is nothing to prevent the Respondent from choosing a domain name that more accurately states its purpose as a criticism site and is not identical or confusingly similar to the Complainant’s trademark.
Thus the present case has those features that have encouraged many previous panels to find that the particular use of a domain name which wholly incorporates a trademark for criticism has not given rise to a right or legitimate interest in the domain name. The Respondent is using a domain name which conveys an association with the Complainant and its CHUBB mark; that conveyed association is as noted not diluted by adding the word “sux”; Respondent is not currently associated with the Complainant; and the Respondent is using it to direct Internet users to his website where the Complainant is criticised.
The Panel is also concerned about some additional matters that tilt the balance against a decision in favour of the Respondent on this issue.
It appears from Annexures 5 and 6 that there is no disclaimer on the website to make it plain that the website has no connection with the Complainant. Naturally it may be said against this that a mere reading of the site should make it clear to any reader that it is not an official Chubb website. That may be true, but by that time the damage is done and the Complainant has been disparaged by means of a domain name that makes use of the Complainant’s trademark.
The Panel also notes that some of the content of the website, under the heading “Buyers Beware”, claims that the parent company “has put Chubb Security and Mobile Patrol up for sale”, but that it is not “viable and profitable”. Indeed, on the home page of the website are the words “A Failed UTC Fire & Security Company.” Under another heading “Clients Beware”, appear the words “Don’t get ripped-off and overcharged, check your bills and compare the hours.”
The Panel reaches no concluded view on whether such criticism is, within the meaning of paragraph 4(c), ‘legitimate’ or ‘fair use’ of the domain name. The Panel’s conclusion is simply that it is not satisfied on the balance of probabilities that these matters rebut the prima facie finding that the Respondent has no right or legitimate interest in the domain name.
In any event, they amount to tarnishing the Complainant’s trademark within the meaning of paragraph 4(c)(iii) of the Policy. See in this regard The Leonard Cheshire Foundation v. Paul Anthony Darke, WIPO Case No. D2001-0131:
“Even if the Respondent were making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, his intent was, as he admitted, to damage the Leonard Cheshire Foundation. Since this is equivalent to an intent to tarnish the trademark and service mark at issue, the Respondent cannot claim he has rights or legitimate interests to the domain name under the provisions of paragraph 4(c)(iii) of the Policy.”
The Respondent has also argued in his Response that: “This matter is no different to picketing the company and having placards and signs to display.” That is not so, for the matter is very different. In the present case, the Respondent is putting the equivalent of his placards and signs on a platform that implies a clear risk of at least initial interest confusion with the Complainant itself. As an example of the consequences of this, an Internet user seeking to locate the Complainant on the Internet by typing in the CHUBB name and mark may well very well be presented with options including the disputed domain name.
For all of these reasons, the Panel’s conclusion is that the Complainant has made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainants must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(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 the respondent’s 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 Respondent 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 site or location.”
The Complainant relies on the general notion of bad faith in registering and using the domain name and argues that the Respondent is motivated by personal grievance, has made offensive and slanderous allegations about the Complainant and has evinced an intention to tarnish the Complainant’s business and reputation and to damage and disrupt its business.
The main submissions by the Respondent under this heading are that his conduct has been “no different to picketing the company and having placards and signs to display”, that if the employees’ concerns were addressed, the website would praise the company, that the “website is directed at the poor management at Chubb, not the company” and that he did not want to damage the Complainant’s reputation.
The Panel takes the view that the evidence shows that the Respondent has acted in bad faith both in the registration and use of the domain name.
The reasons why this is so are, first, that the Respondent has taken the Complainant’s name and trademark and taken aim at the Complainant with the apparent intention of mounting as strong a case as possible against it. Pivotal to that case must have been the desire to get the attention of at least some Internet users who may be initially confused and/or assume that the domain name may lead or have some relevance to an official Chubb website. As the Respondent clearly knew of the Complainant’s name and trademark at the time of registration, this is itself evidence of bad faith in the registration of the domain name.
The Panel agrees with the submission of the Complainant that it is hard to accept the Respondent’s claim on the website that “Damaging Chubb’s reputation is the last thing we want” when virtually the whole of the website seems to be given over to achieving that objective.
Moreover, there is some basis for the Complainant’s allegation that the content on the website shows “an intention to tarnish the Complainant’s business and reputation and damage and disrupt its business”. In particular, some would find that the “Buyers Beware” and “Clients Beware” sections of the website, in particular, go beyond the industrial relations issues that are said to be the basis of the criticism site as a whole and seem designed to damage the company in the eyes of its customers and prospective buyers.
As the Respondent is representing himself, the Panel wishes to say that what seems to be at the root of the Respondent’s case is expressed in his submission that his conduct has been “no different to picketing the company and having placards and signs to display”. The fact is that there is a substantial difference; the Respondent has every right to promote his lawful views about the Complainant, but not via a website that carries the name of the Complainant and does so against its will.
As noted by the panel in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lope, (supra):
“The Panel acknowledges the importance of freedom of speech and recognizes in some instances the legitimacy of a criticism site claimed by the Respondent; however, the Panel is also convinced, as held in other “sucks” cases, that Respondent can continue expressing themselves through the registration of a domain name other than the ones that may cause confusion or mislead the public…”
In the present case, in choosing the Complainant’s name and the CHUBB trademark as the dominant feature of the domain name, the Respondent has created a situation where at least some users will be attracted to the site because of its name and will then be subjected to a strong attack on the Complainant, including allegations that it is corrupt and in breach of the law and other allegations clearly designed to damage the Complainant in the eyes of its customers and potential buyers as well as in the eyes of the public.
In the opinion of the Panel, that conduct amounts to bad faith both with respect to registering the domain name and using it in the website.
The Complainant has therefore made out the third of the three elements that it must establish.
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 <chubbsux.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: August 13, 2007