WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond
Case No. D2007-1379
1. The Parties
The Complainant is Chelsea and Westminster Hospital NHS Foundation Trust, of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by RadcliffesLeBrasseur, Solicitors, of London, UK.
The Respondent is Frank Redmond of London, UK.
2. The Domain Name and Registrar
The disputed domain name <chelwest.com> (the “Domain Name”) is registered with Tucows (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2007. The Center transmitted its request for registrar verification to the Registrar on September 20, 2007. The Registrar replied on September 21, 2007, acknowledging receipt of the Complaint and confirming that the Domain Name had been placed on Registrar lock, but omitting to provide the other confirmations and information sought by the Center. Following a further request by the Center, the Registrar confirmed on September 26, 2007, that the Respondent was the registrant of the Domain Name in that he was identified as the administrative contact and the registrant field was blank; stated that the registration agreement was in English and contained a submission to the jurisdiction; and provided the full contact details in respect of the registration on its Whois database. On October 1, 2007, the Center drew the Registrar’s attention to the fact that, according to the information available from its website, the registrant was “Contactprivacy.com” and asked the Registrar to re-confirm that the registrant was the Respondent. The Registrar replied the same day, so confirming.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 23, 2007. The Response was filed with the Center on October 23, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 29, 2007. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant operates the Chelsea and Westminster Hospital as part of the National Health Service of the United Kingdom. The Complainant has had a website at “www.chelwest.nhs.uk” since February 2005.
The Respondent is dissatisfied with the treatment of his daughter by the Complainant’s hospital. The Complainant previously brought legal proceedings against the Respondent before the High Court of England and Wales (High Court) and obtained an Order in 2003 restraining the Respondent from entering its premises save in specified circumstances, such as to attend appointments for the treatment of his daughter, and from harassing the Complainant and certain of its personnel.
On August 28, 2007, the Respondent wrote to the Complainant informing it of his intention to launch a new website protesting against the treatment of his daughter at “www.chelwest.com”. On September 17, 2007, the Respondent informed the Complainant that he had updated a website previously at another address and moved it to “www.chelwest.com”.
5. Parties’ Contentions
The Complainant states that its website at “www.chelwest.co.uk” receives around 20,000 visitors each month, that it has used the name “Chelwest” as part of its branding, and that “Chelwest” is commonly used as a shorthand name referring to the Complainant. The Complainant further maintains that the Domain Name is confusingly similar to this name and that confusion could have serious consequences, for example by delaying access to its emergency services or by undermining public confidence in its services. The Complainant asserts that it has received personal enquiries from patients and visitors asking whether the website address for its hospital is “www.chelwest.com”.
The Complainant next submits that the Respondent has no rights or legitimate interests in respect of the Domain Name and that his use of it is part of a course of harassment prohibited by the High Court Order mentioned above. The Complainant refers to various letters to website hosting companies which appear to have resulted in the removal of other websites of the Respondent.
Finally, the Complainant submits that the Respondent registered and is using the Domain Name in bad faith to tarnish the goodwill and reputation of the Complainant as part of a campaign of harassment against the Complainant. The Complainant further submits that the Panel ought to take into account the prejudice to public safety which might result if members of the public are deterred from seeking medical assistance by the Respondent’s website.
The Complainant seeks a decision that the Domain Name be transferred to it.
The Respondent submits that the Complainant has provided no evidence of use of the name “Chelwest” as part of its branding and that the evidence submitted does not support its claim that “Chelwest” is commonly used as a shorthand name for the Complainant.
The Respondent contends that there is no evidence that access to the Complainant’s emergency services would be impeded by his website at “www.chelwest.com”. He maintains that the statements made on his website are true and that they are unlikely to jeopardize public confidence in the Complainant’s hospital, given that his dispute with the Complainant has been going on for twelve years and has been covered in the local press.
The Respondent disputes the Complainant’s allegation that the Complainant has received personal inquiries asking whether its website is at “www.chelwest.com”. The Respondent further maintains that if anyone looking for the Complainant’s website went to “www.chelwest.com”, he/she would immediately realize that it was not the Complainant’s website. The Respondent also points out that the Complainant’s website is listed first in searches on Google or Yahoo on the search terms “Chelsea and Westminster Hospital” or “Chelwest”.
The Respondent submits that he has a right or legitimate interest in respect of the Domain Name since his website merely criticizes the Complainant’s care of his daughter and is not involved in any commercial activity. The Respondent refers to the decisions in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, Bridgestone Firestone Inc v. Jack Myers, WIPO Case No. D2000-0190 and Dorset Police v. Gerry Coulter, eResolution Decision No. AF0942.
The Respondent denies that his website constitutes harassment, but points out that, if it does, the Complainant has a remedy provided by the High Court. He also emphasizes that he gave the Complainant advance notice of the material posted on his website and that the Complainant did not identify any specific issue in relation to it. He observes that when giving Judgment in the case brought by the Complainant against him, the High Court stated that he had the right of freedom of speech and expression, including to campaign publicly for restoration of the treatment withdrawn by the Complainant. The Respondent also points out that he has been using Domain Name including the word “Chelwest” since 2001.
The Respondent also submits that the Domain Name has not been registered and is not being used in bad faith, relying on the points made above.
The Respondent asks the Panel to reject the Complaint and to make a finding of reverse domain name hijacking.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove: (a) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (c) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to a Mark in which Complainant has Rights
The Complainant does not have any registered trademark. Therefore, it can only satisfy the first requirement by establishing that it has common law rights in a mark to which the Domain Name is identical or confusingly similar.
It is not suggested that the Domain Name is confusingly similar to “Chelsea and Westminster Hospital”; the Complainant relies solely on its use of the abbreviated name “Chelwest”.
The evidence submitted by the Complainant to establish that it is recognized by this name and has a goodwill under it is exiguous, comprising four rather obscure examples, one of which appears to have been a mistake. On the other hand, the Complainant has maintained a website at “www.chelwest.nhs.uk” since February 2005. Furthermore, so far as the Panel is aware, the name “Chelwest” is not in common use for other purposes, so a relatively limited extent of use of the name would be likely to make it distinctive of the Complainant.
In the circumstances, the Panel considers that on the balance of probabilities the Complainant has established rights in the name “Chelwest”. The Domain Name is clearly identical or confusingly similar to this name. Accordingly, the first requirement of the Policy is satisfied.
This case raises a controversial issue under the Policy on which
there have been differing decisions (albeit that these represent a tiny fraction of cases decided under the Policy). The issue is whether the registrant of a domain name whose second level domain is identical to the Complainant’s mark has a right or legitimate interest for the purpose of the Policy if he has registered and is using it for the purpose of criticizing the Complainant without any intention of commercial gain.
Distinction between US and non-US cases
It has been suggested that a distinction may be drawn between cases governed by United States law and/or involving United States parties on the one hand, and cases governed by other laws and/or involving other parties on the other hand. Some Panels have considered that a difference in approach may reflect, at least partly, a view that freedom of speech is more strongly entrenched in the United States than other countries: See for example Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 and Ryan Air Limited v. Michael Coulston, WIPO Case No. D2006-1194. On this basis, it has been postulated that United States cases of this nature involving identical domain names and non-commercial criticism may be decided in favour of respondents; and cases relating to other jurisdictions in favour of complainants.
This Panel rejects this distinction both as an analysis of decisions to date and as a resolution of the issue going forward. In the first place, there have been non-United States cases where the respondent’s freedom of speech has been preferred (see, for example, Britannia Building Society v Britannia Fraud Prevention, WIPO Case No. D2001-0505); and, conversely, there have been United States cases in favour of complainants in such situations (see, for example, Kirkland & Ellis LLP v. DefaultData.com, American Distribution System, Inc, WIPO Case No. D2004-0136).
Secondly, the Internet is an international medium and uniformity in the international application of the Policy is desirable. The Policy is part of a structure intended to enable registrars throughout the world to compete on an equal footing. That competition is distorted if registrars in the United States can offer registrants of domain names for complaint websites a more favourable treatment under the Policy.
Furthermore, while there are some cases, such as the present, where it is clear that only one jurisdiction is involved, in many cases, it is not clear at all. One party may be based in the United States; the other not. Both parties may be in the United States, but the registrar and the mutual jurisdiction selected by the complainant may be outside the United States; or vice versa. Parties may be multinational with management, operations and/or ownership in a number of countries; and trade mark rights may be owned by a company in a different country to those where they are used. A distinction based on an undefined connection of the dispute with a particular jurisdiction is liable to be impracticable or unsatisfactory in many cases.
Thirdly, respect for the principle of freedom of speech is not confined to the United States, just as recognition that it cannot be absolute is not unknown within the United States. The principle of freedom of expression is enshrined, for example, in article 10 of the European Convention on Human Rights and article 19 of the Universal Declaration of Human Rights. The latter pertinently states that:
“Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”
On the other hand, article 29(2) of the same Declaration provides that:
“In the exercise of his rights and freedoms, everyone shall be subject only to such limitations as are determined by law solely for the purpose of securing due recognition and respect for the rights and freedoms of others and of meeting the just requirements of morality, public order and the general welfare in a democratic society.”
Fourthly, the Policy operates contractually, and its scope and effect depend in the first instance on the terms of its provisions. These provisions may in places import or refer to principles or rules of national law, and they have to be interpreted in the context of established principles and rules of national and international law. However, the primary basis for determining the application of the Policy must be the terms of the Policy itself.
Relevance of national laws
Paragraph 15(a) of the Rules provides that “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 principles of law that it deems applicable”. In the Panel’s view, this provision does not mean that an issue should be determined on the basis of national law where the applicable provision of the Policy does not import or refer to national law.
The requirement for a complainant to prove that a respondent does not have rights or legitimate interests in respect of the domain name in dispute is specified in paragraphs 4(a)(ii) and 4(c) of the Policy. These provisions do not directly refer to national laws (apart from the reference to “trademark or service mark rights” in paragraph 4(a)(ii)) and they contain concepts such as “legitimate interest”, “legitimate use” and “fair use” which are not defined in many national laws, at any rate in the field of trade marks. Furthermore, by providing that certain specified situations shall demonstrate that a respondent has a right or legitimate interest, paragraph 4(c) of the Policy requires a complaint to be rejected even if a relevant national law does not recognize an entitlement to use a domain name comprising a complainant’s mark in those circumstances.
Paragraph 4(c)(iii) of the Policy provides that “Any of the following circumstances … shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): … you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the Panel’s view, this provision should be ascribed an autonomous meaning based on its terms and context. The meaning should take into account general principles of law which are widely accepted throughout the world, in relation to both freedom of speech and intellectual property rights, but it should not depend on or vary with the particular national law or laws which might be considered relevant in any particular case. A similar conclusion was reached in Covance, Inc v. The Covance Campaign, WIPO Case No. D2004-0206.
Does identity to mark preclude legitimate use?
Paragraph 4(c)(iii) of the Policy applies whether a domain name is identical or confusingly similar to a complainant’s mark. It therefore appears to contemplate that a registrant can make legitimate non-commercial or fair use of a domain name, such as to prevent a complaint succeeding, even though the domain name is identical to a complainant’s mark.
Furthermore, it is illogical to make a rigid distinction for the purpose of this provision between a domain name which is regarded as identical to a complainant’s mark and one which is confusingly similar. If some Internet users seeking the complainant’s website are liable to visit a respondent’s website by mistake, but then to realize that it is not the complainant’s website, it makes no difference whether the initial mistake was induced by the identity or by the confusing similarity of the domain name to the complainant’s mark.
The Panel therefore rejects a view that use of a domain name identical to a complainant’s mark can never be justified under paragraph 4(c)(iii) of the Policy.
In the Panel’s view, the following considerations are relevant in considering what is legitimate or fair. In the first place, removing a particular domain name from a respondent does not prevent him from criticizing a complainant on the internet or otherwise. This consideration has led some panelists to conclude that depriving a respondent of a domain name identical or confusingly similar to a complainant’s mark does not constitute a restraint of freedom of speech at all: see, for example, Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776.
On the other hand, preventing a respondent from using a domain name which is identical or confusingly similar to a mark of the person criticized is liable to make his criticism less readily accessible to members of the public. Indeed, since members of the public will often be unaware that any criticism is being made of the person in question, the use of such a domain name may be one of the relatively few ways in which he can disseminate his message effectively.
The use of an identical or confusingly similar domain name for a complaint website can in some ways be likened to conducting a protest outside the physical premises of the organization against which the protest is directed, thereby ensuring that those visiting the premises will see the protest.
These considerations suggest that the registration and use of a domain name for bona fide, non-commercial use is legitimate, even if it is identical or confusingly similar to a complainant’s mark, if it does not materially obstruct access by Internet users to the complainant.
Access to the complainant is materially obstructed if it is not immediately apparent to Internet users on visiting the respondent’s website that it is not connected or associated with the complainant. It is therefore an essential condition of legitimate use of such a domain name for the purpose of this provision that the respondent makes it very clear, whether by a disclaimer or other content or both, in the first field of vision of a person visiting his/her/its website, that it is independent of the complainant. This point has been made in many cases: see, for example, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.
Access may also be obstructed if the respondent registers all or most of the obvious domain names suitable for the complainant or the brand in question. This may prevent or unduly interfere with the complainant’s provision of convenient access to its website.
A further restriction on access may occur if the respondent registers an obvious domain name suitable for the complainant and fails to provide a convenient link to the complainant’s website, so that a bemused Internet user who has realized that he/she has come to the wrong site, but does not understand why, can readily correct his/her mistake. This consideration may underlie the significance attached in the Britannia Building Society and other cases to the respondent’s provision of such a link. The same point may apply where the respondent registers an obvious domain name for the complainant varied by a typographical error. The link must be appropriate to facilitate access to the complainant’s website by Internet users who were seeking to reach it and should comply with any reasonable request of the Complainant, including its removal if the Complainant so wishes.
The registration and use of a domain name identical or confusingly similar to a party’s mark can also obstruct access to that party by email, as illustrated by the decision under the Nominet Dispute Resolution Policy in Bernard Matthews plc v. Jason McCluskey, Case No. DRS 0936, and by Global Project Management v. Citigroup  FSR 39 in the High Court of England and Wales. Where there is a likelihood that email intended for the complainant will be sent using the domain name in issue, it is necessary for a registrant to ensure that senders are immediately alerted in an appropriate way that they have misaddressed their email. Abusive responses to email, as in the Bernard Matthews case, are not compatible with legitimate or fair use within the meaning of paragraph 4(c)(iii) of the Policy. Again, where the domain name is an obvious one for the complainant to use, the respondent may have a responsibility to provide a correct email address of the complainant to the sender.
In addition to these requirements, the use of a website for criticism is not fair if the registrant knows that the criticism is unfounded. On the other hand, if the registrant does believe that the criticism is well-founded, the fact that it is trenchant does not delegitimise it. That is an incident of free speech: see Meat and Livestock Commission v David Pearce, WIPO Case No. D2003-0645.
Finally, it is an express condition of paragraph 4(c)(iii) that there must be no intent for commercial gain. Panels should be alert to the possibility that criticism may be used as a cover for commercial use or straightforward cyber-squatting. On the other hand, if there is no intent for commercial gain, the application of paragraph 4(c)(iii) is not precluded by the fact that there is initial confusion which could be characterized as “misleading diversion” or criticism which might be said to “tarnish” the mark. The references to both of these concepts in paragraph 4(c)(iii) are governed by the phrase “without intent for commercial gain”: see Ryanair Limited v. Michael Coulston, WIPO Case No. D2006-1194.
Summary of the approach
In summary, and without necessarily seeking to set in stone or limit consideration of what may be future developments in this area, this Panel considers that a registrant of a domain name has a right or legitimate interest in a domain name which is identical or confusingly similar to a mark of another party in accordance with paragraph 4(c)(iii) of the Policy if:
(a) the domain name has been registered and is being used genuinely for the purpose of criticising the owner of the mark;
(b) the registrant believes the criticism to be well-founded;
(c) the registrant has no intent for commercial gain;
(d) it is immediately apparent to Internet users visiting the website at the domain name that it is not a website of the owner of the mark;
(e) the respondent has not registered all or most of the obvious domain names suitable for the owner of the mark;
(f) where the domain name is one of the obvious domain names suitable for the owner of the mark, a prominent and appropriate link is provided to the latter’s website (if any);
(g) where there is a likelihood that email intended for the complainant will be sent using the domain name in issue, senders are immediately alerted in an appropriate way that their emails have been misaddressed.
Further support for this approach may be derived by analogy with the near-consensus which has developed on the issue of whether the registrant has a right or legitimate interest under paragraph 4(c)(i) of the Policy in a domain name used for the resale of products placed on the market under the mark in question by the complainant. There has been widespread acceptance of the principle and criteria identified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As summarised in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”,
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
It may also be noted that the approach set out above appears to be consistent with national trademark laws (including that of the UK which would apply to any legal proceedings in this case), even though (in the Panel’s view) national laws do not determine the correct interpretation of the Policy.
Non-commercial use does not normally infringe registered trademarks, since it is not use in the course of trade. While unfair competition laws, such as the UK law of passing off, may extend to non-commercial use (see Burge v Haycock  RPC 28), initial interest confusion which is immediately disabused is not normally sufficient to give rise to liability, at any rate where the use is non-commercial: see Cadbury-Schweppes v Pub-Squash  RPC 429, BP Amoco plc v. John Kelly Ltd  FSR 5, Lamparello v. Falwell CA4, August 24, 2005.
Application to the facts of this case
It is necessary now to apply the criteria identified above to the facts of this case.
(a) It seems clear that the Domain Name <chelwest.com> was registered and is being used by the Respondent genuinely for the purpose of criticizing the Complainant. There is nothing to suggest any other motive.
(b) The Panel is not satisfied that the Respondent does not honestly believe the content on his website. Although the criticisms are strongly worded, this does not mean that they are dishonest. The Complainant contends that they are in breach of a High Court injunction restraining the Respondent from harassing the Complainant and certain of its personnel. If so, the Complainant should bring this to the notice of the Court.
(c) It seems clear that the Respondent has no intention of making any commercial gain from the website.
(d) Although the Respondent’s website does not contain any specific disclaimer, the Panel considers that it is immediately apparent to Internet users who visit it that it is not a website of the Complainant. No one could suppose that a website starting with the headlines “TESS REDMOND /A story of deception and harassment at the hands of the Chief Executive and Medical Director of Chelsea and Westminster Hospital London” was the Complainant’s website.
(e) There is no evidence that the Respondent has registered any corresponding domain name.
(f) The Respondent has provided a prominent link on his home page to the Complainant’s website. In any case, in view of paucity of evidence of use by the Complainant of the name “Chelwest” apart from in the Url “www.chelwest.nhs.uk”, the Panel is not satisfied that the Domain Name is an obvious domain name for the Complainant.
(g) The Panel is not satisfied that there is a likelihood that email intended for the Complainant will be sent using the Domain Name. The Complainant states that it has received personal enquiries from patients and visitors asking whether the website address for the hospital is “www.chelwest.com”, but has provided no evidence or specific details of these inquiries. In any case, there is no evidence of any use or likelihood of use of the Domain Name for email intended for the Complainant and in the Panel’s view, this is unlikely on the basis of the limited evidence of use of the name “Chelwest” other than for the website at “www.chelwest.nhs.uk”.
The Panel concludes that the Complainant has not shown that the Respondent does not have a right or legitimate interest in respect of the Domain Name pursuant to paragraph 4(c)(iii) of the Policy. The second requirement of a successful complaint under the Policy has not been met.
C. Registered and Used in Bad Faith
In view of the Panel’s conclusion regarding the second requirement of the Policy, it is not necessary to address the third.
D. Reverse Domain Name Hijacking
Reverse domain name hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Although the Panel rejects the Complaint, the Panel is not satisfied that it was brought in bad faith. As mentioned above, there have been differing decisions on the key issue in this case. A finding of reverse domain name hijacking, as defined in the Rules, is not justified.
For all the foregoing reasons, the Complaint is denied.
Dated: November 14, 2007