WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Escada AG v. Phil Mitchell
Case No. D2008-0274
1. The Parties
The Complainant is Escada AG, Aschheim, Germany, represented by avocado rechtsanwälte, Germany.
The Respondent is Phil Mitchell, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <escada-campaign.org> (the “Domain Name”) is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2008. On February 25, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name at issue. On the same day, Tucows transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 7, 2008. The Center verified that the Complaint together with the amendment 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 March 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2008. The Response was filed with the Center on March 27, 2008.
The Center appointed Dr. Bernhard F. Meyer-Hauser as sole panelist in this matter on April 4, 2008. The Panel finds that it was properly constituted. The Panel also submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Center received an unsolicited Supplemental Filing by the Complainant on April 4, 2008 by e-mail, which was rejected by the Panel on April 7, 2008.
Parallel to these proceedings, the Complainant filed a claim against the Respondent before the district court of Hamburg in February 2008, requesting cancellation of the disputed domain name.
4. Factual Background
The Complainant is Escada AG. The core ESCADA brand is one of the world’s best known fashion brands in the ladies’ outer wear luxury segment. Besides fashion articles, accessories and perfumes are also sold under the ESCADA brand name.
The Complainant is owner of the following trademarks:
ESCADA, No. 003254067
ESCADA, No. 000890649
ESCADA, No. 1101985
ESCADA, No. 1105366
ESCADA, No. 2010977
ESCADA, No. 30613614.7
ESCADA, No. 30570232.7
ESCADA Cerimonia, No. 30557716.6
ESCADA EDITION, No. 30524043.9
ESCADA COLLECTION, No. 39729881.1
The Respondent, Phil Mitchell, is an animal rights’ campaigner. The domain name <escada-campaign.org> was registered by the Respondent on August 28, 2007. The Respondent operates the website for the purposes of criticizing the fur industry in general and the Complainant’s participation in the fur trade in particular.
5. Parties’ Contentions
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
- The Respondent does not own any trademark ESCADA. The Respondent is neither a licensee of the Complainant nor has he otherwise obtained an authorization to use the Complainant’s trademarks and name under any circumstance.
- There is no disclaimer on the website that the Domain Name is not operated by the Complainant.
Furthermore, the Complainant alleges that the Domain Name was registered and is being used in bad faith by misleading potential clients of the Complainant. The domain name <escada-campaign.org> is deliberately intended to appear to the public as being a business domain of the Complainant.
For these reasons, the Complainant requests that the domain name <escada-campaign.org> be primarily transferred, secondarily cancelled by the Panel.
The Respondent alleges that it has a legitimate interest in the use of the domain name <escada-campaign.org> and denies that it was registered or is being used in bad faith.
The Respondents argues that he is making a legitimate, noncommercial use of the Domain Name, without intent of a commercial gain, and without misleadingly diverting customers or tarnishing the trademark or service mark at issue. The Respondent uses the website for the purposes of criticizing the owner of the trademark, thereby exercising his fundamental right of freedom of expression. The Respondent refers to a previous WIPO case, where an animal rights group was permitted to keep the domain name <covancecampaign.com> despite the existence of the famous trademark COVANCE (Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206).
The Respondent further contends that the content of the website is decisive for determining whether a legitimate interest exists. In his opinion, no Internet user would likely be misled to believe that the website <escada-campaign.org> was run by the Complainant. The disputed website is not designed for the sale of any merchandise. His sole purpose is to criticize the fur industry in general, and specifically to call public attention to Escada’s participation in the fur trade, with the hope to convince Escada to stop selling fur products.
The Respondent sees further evidence for his legitimate intention in the fact that the Domain Name at issue is registered with the top level domain “.org”, widely used by non-profit organizations, whereas commercial entities use “.com” websites.
The Respondent asserts that the website is solely used for fair criticism and, hence, is not tarnishing the Complainant’s trademark. Finally, the Respondent contends that he did not register nor is he using the Domain Name in bad faith, because the Respondent is not seeking to disrupt the Complainant’s business.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent’s 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 Respondent’s Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name <escada-campaign.org> is undisputedly confusingly similar to the trademark ESCADA, for which the Complainant owns various trademark registrations.
All trademark registrations referred to above were filed and registered before the date of registration of the disputed domain name. The trademark rights of the Complainant therefore predate the registration of the disputed domain name by the Respondent.
The disputed domain name incorporates the Complainant’s entire trademark ESCADA plus the descriptive word “campaign” and with the addition of the top level domain (TLD) “.org”. The addition of the TLD “.org” is an insignificant addition which does not remove the likelihood of confusion between the trademark and the Domain Name. It only indicates that the disputed Domain Name is registered in the “.org” group of generic TLDs.
Likewise, the addition of the generic word “campaign” to the Complainant’s trademark ESCADA does not remove the likelihood of confusion between the trademark and the disputed domain name (Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206).
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of a Respondent in a domain name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name.
The Respondent is undisputedly not linked to the Complainant in any way. He has neither been authorized by the Complainant to use the disputed domain name, nor has he been commonly known by the Domain Name.
It is also undisputed that the Respondent registered and is using the Domain Name <escada-campaign.org> as a protest site and that the Respondent’s activities are not commercially motivated. Therefore, this case essentially turns upon the question of whether it is legitimate to choose the name of the entity or organization that is being criticised as domain name for a protest site and, if principally allowable, whether or not the Respondent’s Domain Name choice in the present case constitutes a legitimate non-commercial or fair use of the Domain Name under the Policy.
Previous Panels have, in comparable factual circumstances, taken divergent views as to whether a Respondent may claim a legitimate non-commercial or fair use by incorporating complainant’s trademark into the domain name of a criticism or protest site. The majority approach in cases outside the United States appears to be that a protester has no legitimate right to use a domain name which is identical or confusingly similar to someone else’s trademark for the purpose of criticising the trademark owner. However, a number of cases decided within the United States or where US-based panels rendered decisions, came to the conclusion that a protester’s use of an identical or confusingly similar trademark in a website criticising a trademark owner may be seen as legitimate, provided there are no indicia of bad faith (Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014).
The main line of reasoning of the panellists representing the first view is that the right to express one’s views is not the same as the right to use someone else’s name to identify oneself as source of those views. The use of a domain name should not falsely convey an association with the owner of the trademark leading Internet users to the protester’s website. These panellists qualify such use as illegitimate (Monty & Pat Roberts Inc. v. J.Bartell, WIPO Case No. D2000-0300, Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763)
In Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300, the Panel emphasized that “to constitute a website as a criticism or protest site for present purposes, the domain name itself must normally indicate that the site to which it leads is not an official site of the trademark owner, but a separate site that is given over to criticism of the company, person or organization concerned. In other words, Internet users must normally be warned in advance that if they follow the domain name it will lead to such a site. If that is not done, some Internet users will believe that the contentious domain name is in fact an official domain name of the company or person embodied in the domain name. In other words to be a true criticism or protest site, the domain name and the web address must normally say what it is and not masquerade as an official domain name and site”.
This Panel shares the rationale expressed in the last quoted opinion. The question at issue is whether the domain name <escada-campaign.org> itself sufficiently indicates that it is not leading to an official website of the Complainant, or whether it rather misleads Internet users by creating the impression of an official Escada website. In the latter case, Internet users are taken by surprise when they suddenly find themselves arriving at a protest site.
Domain names consisting of a “name + modifier” do not necessarily create confusion as to the holder of the website. Modifiers with a clear negative connotation such as “-sucks” or “anti-“ for instance, indicate that the website is probably not run by the person or organization who has a right in that name (e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070). On the other hand, a neutral modifier like “about” has no effect of reducing the likelihood of initial confusion (Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248).
In Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206) where the disputed domain name was <covancecampaign.com>, the panel concluded that the modifier “campaign” neither had a negative nor a purely neutral connotation. Although the panel admitted that the disputed domain name imported a degree of initial confusion as to whether or not the site was endorsed by the Complainant, the Panel finally concluded that the Respondent was making a legitimate non-commercial or fair use of the domain name. The <covance> panel based its conclusion on the finding that there was very limited potential for the public to be misled in the actual circumstances. The site showed a bold disclaimer, it was clear on the face of the search engine entries that the site was not run by, associated with, or endorsed by the trademark holder, but was in fact concerned with criticism of the complainant’s activities.
This Panel is unable to follow the bottom-line reasoning of the above mentioned case. The relevant criterion is whether the Domain Name itself reveals that the corresponding website is not linked to or endorsed by the Complainant. It is irrelevant that, once arrived at a webpage, confusion as to the true owner may be resolved. In the interest of truth and elimination of confusion on the Internet, a domain name should not be misleading.
The domain name <escada-campaign.org> does not, in any way, indicate that the site is devoted to criticism of Complainant’s business. Quite to the contrary, the connotation “campaign” at first seems to indicate that the fashion house behind the trademark carries out a fashion campaign. Therefore, visitors arriving at the webpage are taken by surprise finding themselves on a protest site, promoting the trademark against and not for the trademark owner’s business. Such usurpation and turn-around of a trademark appears to be illegitimate to this Panel. The use of the domain name <escada-campaign.org> can not be considered as legitimate for purposes of the Policy even though Respondent’s concern as such may be legitimate. Had Respondent used an “anti-escada” connotation in its domain name, in lieu of a neutral or even positive addition such as “campaign”, this Panel could have decided the question of legitimacy differently.
As outlined in the recent case, 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, the above finding does not curtail the principles of free speech. “What is being curtailed is not free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorised by the trademark owner. It is also an approach that involves no judgment being made on the content of the criticism site. Of course, it may be that, as a consequence of using a different domain name, less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site (…)”.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:
(i) circumstances indicating that the respondent has registered and has 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 the 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, the respondent has 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 its website or location.
As the Respondent’s activities are not commercially motivated and the respondent is not a competitor of the Complainant, the case at issue cannot be said to fall within any of the specific categories identified in paragraph 4(b)(iv). However, as outlined in numerous similar decisions previously, the registration and use of the Domain Name under such circumstances is yet considered as registration and use in bad faith (Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376, Banque Cantonale de Geneva v. Primatex Group S.A., WIPO Case No. D2001-0477, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372, 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).
While this Panel recognizes the Respondent’s right to campaign and thereby making use of the Internet, the use of the domain name <escada-campaign.org> is not necessary for achieving this purpose. The registration of a domain name comprising “escada” and a neutral or positive modifier causes damage to and disrupts the Complainant’s business. Given the fact that the Respondent deliberately chose to register a domain name which is misleading as to its content, the Panel finds that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <escada-campaign.org> be transferred to the Complainant
Date: April 17, 2008