The Complainant is Clearwire Legacy LLC of Washington, United States of America, represented by Latimer & Mayberry IP Law LP of United States of America.
The Respondent is Mr. Andreas Harris of Georgia, United States of America.
The disputed domain name <clearwimax4u.com> (“Domain Names”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2009. On October 1, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 1, 2009, GoDaddy.com, 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 proceedings commenced on October 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2009. The e-mail communication was received from Respondent on October 1, 2009.
The Center appointed Michael A. Albert as the sole panelist in this matter on October 30, 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.
The Complainant, Clearwire Legacy LLC, is in the business of marketing and selling Internet and Voice over Internet Protocol (VOIP) services. The Complainant holds a trademark registration for CLEAR in the United States with registration number 77/552877, filed on August 21, 2008, and registered on September 15, 2009.
The Respondent, Andreas Harris, registered the Domain Name <clearwimax4u.com> (“Domain Name”) on April 15, 2009.
The Complainant hired the Respondent as an independent contractor on April 8, 2009. The Complainant terminated the Respondent on August 11, 2009. On August 14, 2009, the Complainant requested by email that the Respondent cease and desist using the Complainant's trademark, disable the Domain Name and transfer it to the Complainant.
The Complainant is the owner of 50 trademark registrations and applications for the CLEAR trademark and trademarks which include the CLEAR trademark in the United States and around the world.
The Complainant provides Internet services, including services which utilize WiMAX technology.
According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the three elements mentioned below are met. The Complainant makes the following assertions with respect to these elements:
(i) the Domain Name is identical or confusingly similar to trademarks or service marks to which the Complainant has rights.
The Complainant contends that the Domain Name is confusingly similar to the Complainant's CLEAR trademark and variations thereof.
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent was never authorized to use the CLEAR trademarks and is under an obligation to transfer the Domain Name to the Complainant.
The Complainant further contends the Respondent has posted photos and text which disparage the Complainant and are not fair uses.
(iii) the Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent registered the Domain Name intending to either:
(1) profit from the sale of the Domain Name by selling it to the Complainant;
(2) profit from the sale of the Domain Name by selling it to a competitor of the Complainant so that the competitor could divert sales;
(3) develop its own website(s) using the Complainant's trademark, with the intent to divert customers away from the Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of the Complainant; and/or
(4) prevent the Complainant from registering this Domain Name for its own use in its business.
The Complainant further contends that the Respondent's registration and use of the Complainant's trademark constitute cybersquatting, and that these actions were motivated by greed and vengeance.
The Respondent contends that he currently uses the Domain Name to criticize the Complainant's business in a manner which constitutes fair use.
The Respondent further contends that the Complainant was aware of his registration and use of the Domain Name, and even encouraged him in these actions. In addition, the Respondent argues that his motivation in registering the Domain Name was to sell the Complainant's services while he was working as an independent contractor for the Complainant.
The Respondent further contends that he never offered to sell the Domain Name, but rather that the Complainant offered to buy it.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The disputed Domain Name is <clearwimax4u.com>. The Complainant has registered trademarks in the terms CLEAR and CLEARMAX in the United States. In addition, the Complainant holds registrations for a stylized form of the word “clear” and the word “clear” in combination with other words or logos in numerous countries around the world. The Complainant does not have a trademark registration of the words “wimax”, “clearwimax” or “clearwimax4u”. The disputed Domain Name and the Complainant's trademarks are not identical, and the issue is therefore whether the Domain Name and the Complainant's trademarks are confusingly similar.
The Domain Name combines four elements: (1) Complainant's CLEAR trademark; (2) the term “wimax”, which is the technology and related standard that the Complainant uses to provide Internet access; (3) the generic term “4u” (i.e., “for you”); and (4) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “clearwimax4u”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior WIPO panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR). Moreover, the addition of the term “wimax” as a suffix to the mark does not mitigate the confusing similarity between the disputed Domain Name and the Complainant's CLEAR trademark. Specifically, because the word “wimax” is associated with the Complainant and its business, the suffix strengthens rather than weakens the confusing similarity. See e.g., EarthLink, Inc. v. Keith Blatz, WIPO Case No. D2007-1288 (finding <earthlinkwifi.com> and <earthlinkwifi.net> confusingly similar to EARTHLINK).
For the all of the foregoing reasons, this Panel finds that the Domain Name <clearwimax4u.com> is confusingly similar to the Complainant's CLEAR trademark, in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), a respondent's rights or legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Complainant contends that the Respondent has no rights to use the CLEAR trademark or any variations thereof. The Respondent suggests that he is making a legitimate noncommercial or fair use of the Domain Name by posting criticism and complaints against the Complainant on <clearwimax4u.com>.
Prior WIPO panels have recognized that two views have developed regarding noncommercial fair use under paragraph 4(c)(iii) of the Policy. These views and supporting WIPO cases are summarized at paragraph 2.4 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”.
The first view holds that 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. See Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136; 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; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314.
The second view holds that 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 genuinely fair and genuinely noncommercial. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536; Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190.
Much of the difference between the two views can be explained by whether the parties are United States-based persons or entities. “That is because the United States' robust free speech tradition, which derives from the First Amendment to the United States Constitution, tends to tolerate more criticism than the laws of other countries.” Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014. In four of the five cases the Overview cites in support of the first view, neither party is United States-based. In all three of the cases the Overview cites in support of the second view, both parties are United States-based.
After thoroughly reviewing WIPO cases and recent United States cases regarding fair use of trademarks in domain names (i.e., trademark.TLD), the Howard Jarvis panel concluded that “the weight of authority suggests that a consensus is emerging that trademark. gTLD domain names, when used for United States-based criticism sites, can constitute a legitimate interest, especially if there are not other indicia of bad faith.” This Panel will follow the second view, as United States law is in the Panel's view relevant where both parties are based in the United States.
Based on screenshots from <clearwimax4u.com> as of September 16, 2009, provided by the Complainant in Annex F, the Respondent's use appears to this Panel to be genuinely noncommercial. Moreover, the first sentence visible on the home page states: “This website does not promote, sell or distribute ANY Clearwire products or services.” The statement goes on to explain that the website is for purposes of collecting criticisms of the Complainant. This disclaimer reduces the likelihood that consumers would mistakenly believe that Clearwire supplies or endorses the website's content.
Although there are “other indicia of bad faith”, as discussed more fully below, the Respondent's criticism (as it appeared on the website at the disputed Domain Name on September 17, 2009) appears to fall within the fair use exception that many panelists have adopted in cases involving American parties.1 Given that the Complainant bears the burden of proving, by a preponderance of the evidence, that the Respondent lacks rights or legitimate interests in the domain name, Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598, the Complainant has failed on the record in the present case to meet its burden of proof.2
For all of the foregoing reasons, this Panel finds that the Complainant has not proven on the present record that the Respondent lacks rights to, or legitimate interests in, the disputed Domain Name.
Although the Complainant has failed on the present record to meet the second element of paragraph 4(a), this Panel analyzes the third element, bad faith, for completeness.
The third element of paragraph 4(a) requires proof of two facts: (1) that the Respondent registered the domain name in bad faith; and (2) that the Respondent is using the domain name in bad faith. Guildline Instruments Limited v. Anthony Anderson, WIPO Case No. D2006-0157.
The Complainant contends that Respondent has “attempted to hold the domain name hostage” and has offered to sell the Domain Name. Two emails from the Respondent, sent on August 24 and September 7, 2009, support the Complainant's contention. In addition, the Complainant contends that the Respondent's website has caused actual confusion in at least one instance. Presumably the Complainant is referring to a letter from a customer, Foster Brown, sent to the Complainant on July 30, 2009. Taken together, this evidence could conceivably establish the second factual predicate of the third element: that the Respondent is using the domain name in bad faith.
The Complainant, however, must also establish the first factual predicate of the third element: that the Respondent has registered the domain name in bad faith. The time at which bad faith must be established is the date on which the domain name was registered. Thus, in this case, the Complainant must prove that the Respondent acted in bad faith when he registered the domain name on April 15, 2009. Complicating this analysis is the fact that the parties were in a contractual relationship at the time of registration. As Schneider Electronics GmbH v. Schneider UK Ltd., WIPO Case No. D2006-1039, recognized:
“[W]here the parties have entered into and maintained a long-standing commercial relationship, Panels tend to impose on the Complainant a heavier burden of proof for bad faith, generally requiring more comprehensive evidence than that which may be necessary in the typical dispute between unrelated adversaries. At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise. Allegations of bad faith aimed at a former distributor or licensee can only be properly understood in the full context of their prior history”.
The Complainant acknowledges that the Respondent was authorized to act as an independent contractor for the Complainant's CLEAR services beginning on April 8, 2009. However, there is conflicting evidence whether the Respondent was authorized to use or register a domain name that included the Complainant's trademarks. The Complainant contends that the Respondent was never entitled to secure, use or register any domain name that included the Complainant's trademarks. The Respondent contends that the Complainant was aware of the Respondent's use of the disputed domain name and encouraged the Respondent to use the website.
Neither party has provided sufficient evidence to corroborate their conflicting accounts regarding the Respondent's authority to use the disputed Domain Name. The Respondent claims he can produce emails proving the Complainant's awareness of his use of the Domain Name, but the Respondent has not done so. Nevertheless, the chronology of events supports a reasonable inference that the Complainant may have acquiesced in the Respondent's use of the disputed Domain Name. The Complainant hired the Respondent on April 8, 2009; the Respondent registered the domain name on April 15, 2009; the Complainant terminated the Respondent on August 11, 2009; and the Complainant sent the Respondent a cease and desist email on August 14, 2009. The basis for inferring acquiescence is the fact that: (1) the Respondent was an agent of the Complainant at the time of registration; and (2) the Complainant did not oppose the Respondent's use and registration of the Domain Name until shortly after the Complainant terminated their contractual relationship.
While it is possible that the Complainant was unaware of the Respondent's use of the Domain Name from April 15 until August 14, the chronology also supports the inference that the Complainant acquiesced in the Respondent's use of the Domain Name while the Respondent was an independent contractor. Moreover, “mere registration without express authorization cannot be considered bad faith per se, since implied authorization may exist.” Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals, WIPO Case No. D2003-1029.
Although the Complainant produced the independent contractor agreement (Annex E), the document is only partially legible, and therefore of limited usefulness in determining the scope of the Respondent's authority. Based on the legible portions of the agreement, this Panel was unable to identify an express prohibition upon the Respondent's use of the Complainant's trademarks in a domain name.
Taking all of the above evidence into consideration, this Panel finds that the Complainant has failed to establish that the Respondent acted in bad faith on April 15, 2009, when he registered the disputed Domain Name. Although the Complainant has provided some evidence that the Respondent recently began using the Domain Name in bad faith, this alone is insufficient to satisfy the third element under paragraph 4(a).
In closing, this Panel notes that “the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.” The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470. Here, there is a dispute over whether an independent contractor was contractually permitted to register a domain name which includes its principal's trademark. Prior panels have held that such disputes exceed the scope of the Policy and preclude a finding of bad faith registration. Celebrity Signatures International, Inc. v. Hera's Incorporated Iris Linder, WIPO Case No. D2002-0936; Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006.
Therefore, this Panel concludes that the Complainant has failed to establish either the second or third elements under paragraph 4(a).
For the foregoing reasons, the Complainant's request to transfer the Domain Name is denied.
Michael A. Albert
Dated: November 20, 2009
1 The Panel has noted that, at a time around (or shortly after) the filing of the Complaint, the content of the website at the disputed Domain Name appeared to change. In particular the content of the website appears to have been taken down, and replaced with a GoDaddy parking page. Noting the Panel's finding above as to the previous use of the website for what appeared to be genuine non-commercial criticism of Complainant immediately prior to the filing of the present Complaint the current use of the disputed Domain Name does little to assist Complainant's case.
2 On November 20, 2009, Complainant submitted a document characterized as a “Supplement” to the Complaint. This document alleged (and provided some evidence) that Respondent had engaged in further bad-faith conduct. On the same date, Respondent submitted a response, by email, which denied the new allegations. It is questionable whether the Supplement is proper or timely. As to Respondent's reply, it includes inappropriate ad hominem remarks that might have consequences if this proceeding were taking place in a court of law. In any event, both the Supplement and the reply thereto have been considered by the Panel, but they are moot in light of the above analysis, since conduct post-dating the registration does not, at least under the facts and circumstances of this case, affect the question of bad-faith registration in this Panel's view. Hence, even if Complainant had been able to persuade the Panel that the Respondent's conduct or current use of the domain name was such as to deprive it of present rights or legitimate interests in the Domain Name, it would have availed Complainant little due to the inherent difficulty in this particular case of showing initial bad faith registration of the Domain Name.