The Complainants are Darren Entwistle and Telus Corporation, both of Calgary, Alberta, Canada, represented by Stikeman Elliott LLP, Canada.
The Respondent is Finian Commission of Surrey, British Columbia, Canada, internally represented.
The disputed domain name <darrenentwistle.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2009. On July 17, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 17, 2009, Tucows Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceeding commenced on July 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent submitted its Response on July 22, 2009. On July 23, 2009, the Center, noting that the due date for Response was August 10, 2009, asked the Respondent to confirm that its submission on July 22, 2009 may be regarded by the Center as its complete Response. On July 24, 2009, upon the Respondent's confirmation, its Response was formally acknowledged.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 18, 2009. 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.
Darren Entwistle is a business executive who has served as the President and CEO of Telus Corporation since July 10, 2000. Entwistle is identified as the chief spokesperson for Telus Corporation. Telus Corporation is the second largest telecommunications company in Canada, providing telecommunication goods and services to institutions, businesses and individuals in the Canadian market.
The Respondent registered the disputed domain name on September 7, 2005, and the domain name currently reverts to a website which contains critical and derogatory comments against both Darren Entwistle and Telus Corporation.
The Complainants contend that the disputed domain name <darrenentwistle.com> is confusingly similar to the Complainants' common law trademark DARREN ENTWISTLE.
The Complainants submit that the Darren Entwistle name is closely connected with the goods and services provided by the Complainant Telus Corporation. The Complainants submit that there is compelling evidence establishing that Darren Entwistle's name has been used in connection with Telus Corporation's goods and services for 9 years. As such, the Complainants contend that they have developed sufficient common law rights in the name DARREN ENTWISTLE to support this proceeding.
The Complainants contend that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainants submit that the Respondent is not commonly known by the domain name, and has not been licensed or otherwise permitted to use their trademark or name. The Complainants also contend that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services. The Complainants submit that the Respondent is using the disputed domain name in connection with the operation of website that provides links to third-party websites, and not for any legitimate noncommercial purpose.
The Complainants contend that the disputed domain name was registered and is being used in bad faith based on the following factors: (i) the Respondent was clearly aware of the Complainants' rights in the DARREN ENTWISTLE trademark; (ii) the Respondent is using a confusingly similar domain name in connection with the operation of a website that provides links to third-party sites for the purposes of monetary gain; and (iii) the Respondent registered and is using a domain name that is confusingly similar to the Complainants' trademark for the purpose of criticizing and defaming Darren Entwistle, thereby disrupting the business of the Complainants and interfering with the use and registration of the dispute domain name for the Complainants' own business purposes.
The Respondent submits that Darren Entwistle does not provide any goods or services under his name. The Respondent contends that the business name is not called “Entwistle and Sons Telecommunications Company”, but rather is called “Telus Corporation”. The Respondent submits that there is no connection between Darren Entwistle and the goods and services that Telus Corporation provides. The Respondent contends that this proceeding is an attack on free speech and amounts to censorship. The Respondent submits that the disputed domain name is used in connection with the operation of a website that opposes corporate corruption and off shore call centers.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The threshold issue in this case is whether the Complainants have established common law rights in the name of Darren Entwistle in connection with the goods and services provided by Telus Corporation. If those rights can be established, then the issue of confusing similarity stands to be resolved in favour of the Complainants because the domain name and the name, Darren Entwistle, are virtually identical, except for the addition of the designation “.com”.
In order for the Complainants to establish these common law rights necessary to support this proceeding, the Complainants must submit evidence that convinces the Panel that the name, Darren Entwistle, functions as a trademark in the sense that it is closely associated and connected to the goods and services provided by Telus Corporation, in its marketplace.
The panel in Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 sets out six factors needed to establish a nexus between an individual's name and its use and association in trade and commerce. They are as follows:
1) the extent to which the commercial community identifies the individual with the company;
2) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company;
3) the extent of the personal ownership of the company by the individual;
4) the degree of personal control that the individual exercises over the enterprise;
5) the extent to which the individual is identified with any major achievements of the enterprise; and
6) whether the individual and/or the company has a demonstrable interest in protecting the individual's name for commercial use.
The Complainants have submitted the following evidence to prove the nexus between the Entwistle name and the Telus business:
1) Darren Entwistle's profile and a list of his responsibilities at Telus Corporation;
2) A print-out of the Respondent's website operating under the disputed domain name;
3) Results from a Google Search for “darren entwistle”;
4) Telus Corporation CEO Brand Video, featuring Darren Entwistle;
5) Newspaper Article, TELUS bucking pull-back trend; Commitment to Invest $500 million good news for B.C., The Province, Wednesday, March 18, 2008;
6) Magazine Article, IR Magazine Canada Awards Winners Announced, IR Magazine, February 7, 2008;
7) Book, The Wall Street Journal Guide to the Top Business Schools 2003, Ronald J. Alsop;
8) A print-out from Telus Corporation's website “www.telus.com/community/community_boards/en/volunteerism/index.html”;
9) Telus News Archive, August 21, 2000;
10) List of transactions that Darren Entwistle has been involved with at Telus from 2004 to 2008;
11) Darren Entwistle, Introduction and Keynote Address, The 2004 Canadian Telcom Summit, Toronto – June 16, 2004;
12) Corporate Review 2008 and cover letter to investors;
13) Annual Report, Press releases and information circulars to shareholders;
14) List of domain names Telus owns that contain the words “darren entwistle”.
In its response, the Respondent denied that there was a connection between Darren Entwistle and the goods and services provided by Telus Corporation, but did not challenge the evidence in any substantive way.
For the reasons set out below, the Panel finds in favour of the Complainants on all six factors:
1) The Complainants have submitted sufficient evidence of newspaper articles and releases, magazine articles, book references, and video links, to support the conclusion that the commercial community identifies Darren Entwistle with Telus Corporation.
2) The Complainants have filed extensive evidence of Internet searches, in addition to the newspaper and magazine articles, all of which support the conclusion that the media and the general public identify Darren Entwistle with Telus Corporation.
3) The Complainants have submitted clear evidence that show that Darren Entwistle is the single largest individual shareholder in Telus Corporation.
4) Darren Entwistle is President and CEO of Telus Corporation. The evidence shows that Entwistle is a major spokesperson for the company at annual meetings and major announcements, and has been consistently involved in major deals and negotiations on behalf of Telus Corporation.
5) The Complainants have submitted substantial evidence showing that Darren Entwistle was involved in or personally handled several large transactions for Telus Corporation between the years of 2004 and 2008. The evidence also shows that major announcements are routinely made by Darren Entwistle on behalf of the Telus Corporation. This evidence supports that Darren Entwistle is closely associated with major achievements made by Telus Corporation.
6) The Complainants have submitted evidence that Telus Corporation has registered 14 domain names all containing the words “darren entwistle” with varying designations (i.e., <darrenentwistle.ca>; <darrenentwistle.org>; <darrenentwistle.net>). The Panel therefore finds that the Complainants have clearly taken steps to protect the individual name Darren Entwistle.
As a final point, the Panel notes that the Respondent's own website at the disputed domain name repeatedly links Mr. Entwistle to Telus Corporation, and actually refers to the person and corporation as if they are one entity (e.g., “TELUS/Darren Entwistle”).
Accordingly, the Panel finds that the Complainants have satisfied the criteria set out in the Chung decision, and have established common law rights in the mark DARREN ENTWISTLE in connection with the goods and services provided by Telus Corporation.
The Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the disputed domain name. The Respondent was not known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods and services. In Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, the panel notes that “[p]revious Panel decisions have held that it is not appropriate to use the name of the entity whom one wishes to criticize on the basis of ‘fair use' to divert Internet traffic to the site. See the Monty Roberts case [Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299], above, along with Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 and Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858.” This Panel agrees with the position of a number of previous panels and finds that it is not appropriate to use a complainant's name to create a forum to criticize that individual on the basis of “fair use” and thereby divert Internet traffic to the respondent's site. In any event, the Panel finds that because the website at the disputed domain name also provides links to goods and services of third party entities for the purpose of monetary gain, the Respondent cannot be said to be making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, paragraph 4(c)(iii) of the Policy.
The Panel also accepts that the Complainants never authorized, licensed or permitted the Respondent to use the DARREN ENTWISTLE name or trademark.
Accordingly, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy
The Panel notes that both parties to the present dispute are located in Canada. The Respondent defends its conduct in this matter by relying on notions of free speech, and claiming that the Complainants are engaging in censorship by initiating this proceeding. The Panel rejects the Respondent's arguments, and relies on the reasoning in 3 prior decisions, set out below.
1) Bonneterie Cevenole S.A.R.L. v. Sanyouhuagong, WIPO Case No. D2001-1309, “The content of the website is intended to belittle the Complainant in the eyes of the visitors to the site. In that respect, it is intended to damage the Complainant's reputation”. The panel in Bonneterie then continues to state, “As indicated, the Panel accepts that the Respondent is or may be entitled to voice that criticism, but to do so under and by reference to a domain name which features the Complainant's trade mark (without adornment) is not a fair use, it is an abusive use. Registering a domain with that intent and then using it for that purpose is in the view of the Panel, bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy”.
2) Fadesa Inmobiliaria, S.A. v. Flemming Madsen, WIPO Case No. D2001-0570, where the panel stated that: “registration and use of the domain name in dispute is not justified by the respondent's claim that his sole intention was to exercise his right to freedom of speech and criticism of the complainant given that, in any event, the critical content of the website, the evaluation of which does not correspond to this panel, could have been placed on a website identified by any other domain name that was not identical or confusingly similar to the complainant's trademarks, the renown of which has moreover been sufficiently evidenced by the complainant”.
3) Justice for Children v. R neetso / Robert W. O'Steen, WIPO Case No. D2004-0175, with respect to free speech, the panel stated that the: “decision in this proceeding no way abridges or chills Respondent's free speech rights. He may continue his social and political commentary and attack against Complainant's activities, on the Internet if he wishes, at another website, so long as he does not appropriate the protected mark of another as his web address. Under the Policy the most revered and thoughtful critic or political speaker may not increase his audience by taking advantage of the renown or attraction that attaches to another's protected mark. Respondent is not entitled to use a soapbox or broadcast frequency owned by Complainant to lure Complainant's audience to his harangue”.
In any event, as previously stated, the website at the disputed domain name is not only used to denigrate the Complainants but also contains commercial links, and therefore the Respondent cannot be said to be using the domain name for a genuine criticism site.
For all of these reasons, the Panel finds that the Complainants have satisfied the third requirement of paragraph 4(a) of the Policy.
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 <darrenentwistle.com> be transferred to the Complainants.
Christopher J. Pibus
Dated: September 1, 2009