WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Leaseweb BV v. Rene van Olten, Revolt, René von Olten, ReVolt Multimedia
Case No. D2011-2074
1. The Parties
The Complainant is Leaseweb BV of Haarlem, Netherlands, represented by Boekx Advocaten, Netherlands.
The Respondent is Rene van Olten, Revolt of Haarlem, Netherlands, René von Olten, ReVolt Multimedia of Auxerre, France.
2. The Domain Name and Registrar
The disputed domain name <aboutleaseweb.org> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2011. On November 25, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 28, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 30, 2011.
The Center verified that the Complaint together with the amended 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 December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. The Response was filed with the Center on December 21, 2011.
The Center appointed Alfred Meijboom as the sole panelist in this matter on January 3, 2012. 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 submitted additional annexes on December 16, 2011. The Respondent submitted supplemental filings on December 23, 28 and 30, 2011. On January 16, 2012, the Respondent submitted further supplemental filings.
On January 4, 2012, the Complainant submitted a request to the Center with a supplementary complaint and request for transfer of another domain name which was registered by the Respondent, as well as a response to the Respondent’s supplemental filings of December 23, 28 and 30, 2011.
4. Factual Background
The Complainant was incorporated in 1997 and is a hosting provider. The Complainant and its affiliated companies operate data centers in The Netherlands, Belgium, Germany and the United States of America. The Complainant is the domain name holder of 80 domain names incorporating “Leaseweb”. The Complainant is owner of several International, Community and Benelux registered word marks for LEASEWEB (the “Trademark”).
The Respondent has been using the disputed domain name for its website as of December 2011.
5. Parties’ Contentions
The Complainant alleges that it is one of the largest hosting providers in Europe, specialized in dedicated and collocated hosting, with customers in over 170 countries. In October 2011 the Complainant became aware of the fact that the Respondent had registered the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s well-known domain name <leaseweb.com> and its LEASEWEB trademarks and trade names. The Respondent was aware of the trademarks and trade name of the Complainant. The Complainant was threatened by the Respondent that the disputed domain name would be used for negative and slanderous information which would be shown to the costumers of the Complainant. This would be done, if Complainant failed to make sure that certain websites were no longer hosted by the Complainant. It was the Respondent’s intention that the Complainant would stop hosting certain websites, which allegedly breached the Respondent’s copyright. On October 11, 2011, a Mr. Otten wrote on behalf of the Respondent to the Complainant (in translation from Dutch):
"If my material is still available 48 hours on that site, I go public through www.aboutleaseweb.org and will ensure that this site will come under the eyes of your big neat customers with whom you boast on your own site."
Therefore the Respondent had a commercial aim with the criticism. The Respondent did not use the disputed domain name for genuine, noncommercial fair criticism.
On October 13, 2011, the Complainant asked the Respondent for transfer of the disputed domain name. On November 23, 2011, the Complainant demanded the Respondent to cease the use of the disputed domain name and fully cooperate with the transfer thereof to the Complainant. The Respondent refused to cooperate and threatened to transfer the disputed domain name to a holder in the United States of America.
Although not identical to the trademark, the disputed domain name includes the Trademark, with a simple web-descriptive addition. Therefore, the disputed domain name is identical or confusingly similar to the Complainant’s Trademark and the requirement under section 4(a)(i) of the Policy has been satisfied.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial use of the disputed domain name. The Complainant has not authorized the Respondent to use its Trademark or to register the disputed domain name. The name of the Respondent is not and does not include any part of the disputed domain name. The Respondent has used the disputed domain name for a website which shows nothing more than a blank page and during the course of these proceedings for publishing negative and/or slanderous information about the Complainant, which was in line with the Respondent’s intention to show such information to the customers of the Complainant. In that way the Complainant would be blackmailed. The Respondent is therefore acting unlawful and misleadingly trying to divert consumers and tarnishing the Trademark. Many alternative domain names are current available for the Respondent to establish a website which provides information about the Complainant. Its choice for the disputed domain name is, however, not legitimate, not fair use, and designed to mislead and divert the Complainant’s customers and potential customers to the website under the disputed domain name in order to tarnish and trade off the Complainant’s goodwill in the Trademark.
As the Complainant was threatened with blackmail, the disputed domain name was registered to disrupt the business of Complainant. The disputed domain name should be considered as having been registered and used in bad faith by the Respondent.
The Respondent alleges that the purpose of registering and using the disputed domain is not commercial nor blackmail and it was not registered or used in bad faith. The purpose of the disputed domain name is genuine, noncommercial fair criticism of the Complainant.
For a couple of years the Complainant has been participating in the illegal exploitation of videos produced by, inter alia, the Respondent. For years the Complainant did not react to removal requests sent to “email@example.com”. Only after the Respondent registered the disputed domain name and notified the Complainant about this, the Complainant started to remove the Respondent’s infringed materials from its servers on a step by step individual basis. Removing files on such basis is, however, as good as pointless because usually these files are not removed from the server, only the public links are being removed, and new links to the same files will be created and published again the next day already. Therefore the Respondent asked the Complainant to take solid long term action against the destructive piracy activities of its clients, or stop providing services to these clients. Unlike other hosting providers, the Complainant has not provided a proper solution yet and continues hosting piracy websites. According to the Respondent, the Complainant may say that it is not possible to monitor all files being uploaded to forums and file lockers, but that it is the Complainant’s and not the Respondent’s problem.
The purpose of the website under the disputed domain name is to motivate the Complainant to come with solutions. The website under the disputed domain name is not an anti-Complainant site. There is not a single negative word about the Complainant’s service or their server network. The Respondent registered the disputed domain name with the top level domain “.org” because the purpose for the website would not be commercial. The disputed domain name does not suggest that the Complainant is behind said domain name or that the Respondent is in any way linked to the Complainant, nor is the disputed domain name deceptive. The website under the disputed domain name is an independent site about the Complainant, which justifies the use of “leaseweb” as part of the disputed domain name. The Trademark is registered for computers, software and Internet. The disputed domain name is not aimed at any of this but serves a social purpose.
The Respondent further rejects the Complainant’s allegation that it uses the disputed domain name to blackmail the Complainant, because there is nothing the Respondent wants from the Complainant and the Respondent is only gathering information that is already available to anyone connected to the Internet. If the Complainant does not want its customers or the public to know about their participation in illegal activities, it needs to stop participating in such activities. If the Complainant does not do that, the Respondent will continue gathering information about such illegal activities and bring this information under the attention of the public, media and authorities and it will not hesitate to bring it under the attention of the Complainant’s biggest customers.
6. Discussion and Findings
On December 16, 2011, the Complainant filed additional annexes to the Complaint. The Respondent submitted supplemental filings on December 23, 28 and 30, 2011, to which the Complainant responded on January 4, 2012. On January 16, 2012, the Respondent submitted further supplemental filings. No explicit provision is made under the Rules for supplemental filings. It is therefore at the discretion of the Panel whether it will consider such supplemental filings, in accordance with paragraph 10(d) of the Rules.
The Panel considers that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission, that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself (See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Pneus Online Holding SARL (formerly Pneus Online Suisse SARL) v. Delti.com AG, Timon Samusch, WIPO Case No. D2011-1244).
The only purpose of the Complainant’s additional annexes is to show that the website under the disputed domain name started to display content, which only occurred after the Complainant filed its Complaint. The Complainant could therefore not have filed the additional annexes earlier. The annexes were filed before the Respondent filed its Response and the Response discussed the additional annexes.
The Respondent’s supplemental filings on December 23, 28 and 30, 2011, were updates of developments with respect to alleged illegal content on the Complainant’s servers, which was already discussed in the Response.
Taking all this into account, and considering that the purpose of the Policy and the Rules is to provide an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission (The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, and the decisions quoted therein), the Panel accepts the Complainant’s annexes insofar as the Response discussed them and refuses the Respondent’s supplementary filings of December 23, 28 and 30, 2011, and the Complainant’s response thereto as well as the Respondent’s supplemental filings of January 16, 2012.
The supplementary complaint
After appointment of the Panel, the Complainant submitted an additional request for transfer of another domain name registered by the Respondent to the Center and asked that the Panel add this supplementary complaint to the pending procedure. A number of panels have dealt with the question whether domain names can be added to the Complaint.
The Panel agrees with the findings of the panel in Société Air France v. Kristin Hirsch, Hirsch Company, WIPO Case No. D2008-1213. This decision analyzes the case law under the Policy and concludes that, just as in this case:
“[T]he request to add an additional domain name was not made soon after the filing of the Complaint, but (…) after the appointment of the Panel and transmission of the case file and only a few days before issuance of the administrative decision. In the Panel's view, to allow the amendment at this late stage of the proceedings would unduly delay the expeditious and final resolution of the initial domain name dispute. With respect to the additional domain name, filing an amendment in this case would be no faster or more efficient for the Complainant than filing a complaint in a new case, as the Center in either event would be required to recommence the case and repeat for the new domain name all the procedural steps outlined above already taken for the initial domain name claim. Moreover, repeating this process in the instant case would take several weeks of additional work and duplicative costs for the Center without any provision for additional administrative fees, which seems to the Panel unreasonable at this juncture, in view of the Rules' provisions for joinder of domain name claims at the commencement of a UDRP proceeding, the Center's modest fees for its UDRP dispute resolution services, and the substantial overhead it must incur in providing them”.
This analysis and conclusion is in line with other decisions under the Policy, more notably Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547. From that case the Panel approvingly quotes the following:
“The decision of a Panel as to whether to allow the amendment of a Complaint to add further domain names must be made in accordance with paragraph 10 of the Policy. In particular the Panel must ensure that its decision respects the procedural rights of the Parties (paragraph 10(b)), and is compatible with the Panel’s obligation to ensure the administrative proceeding takes place with due expedition (paragraph 10(c)).
Respect for the Respondent’s procedural rights means that the addition of another domain name to the Complaint requires re-notification of the Respondent and a new period of twenty days to submit a Response in accordance with paragraph 5 of the Policy. For this reason the procedural economy of hearing two domain name disputes between the same parties together might be outweighed by the Panel’s obligation to determine the original dispute with due expedition (..). [C]ertain circumstances make the addition of a domain name more acceptable, including “if it were made shortly after the domain names were registered, especially if they were registered after the filing of the initial Complaint”. As discussed above this was not the case in this procedure when the request for adding a second domain name to the complaint was files after appointment of the Panel. Further, as the panel in the Department of Management Services, State of Florida case rightly pointed out, allowing an amendment of the claim after a sole panelist has been appointed would be “inconsistent with the Panel’s duty to ensure the Parties are treated with equality. Procedural equality means that each party must have the option of having the dispute determined by a three member panel (..). However, if the amendment to the Complaint were now allowed, and a new domain name added, then the Respondent would have lost the right to have the dispute regarding the additional domain name determined by a three member Panel”.
For these reasons, the Panel denies the Complainant’s request to amend the Complaint in the instant case to add an additional claim for relief with respect to a second domain name and will proceed to the merits of the case with respect to the disputed domain name.
Assessment of the case
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is owner of the trademark LEASEWEB which is undisputedly part of the disputed domain name. In the disputed domain name the Trademark is only preceded by the descriptive word “about”. The Respondent acknowledged that this word “about” is purely descriptive because it was its intention to create a website under the disputed domain name about the Complainant. The Internet user who is looking for information about the Complainant could easily believe that the disputed domain name provides information from the Complainant, so that the Panel is satisfied that disputed domain name is confusingly similar to the Trademark. The descriptive term “about” is therefore insufficient to prevent Internet user confusion, and the top level suffix “.org” can in this case be disregarded in the comparison between the disputed domain name and the Trademark.
The Panel therefore finds that the first requirement of the Policy has been fulfilled.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. According to the consensus view among UDRP panels, this condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests and the Respondent fails to show rights or legitimate interests.
The Respondent did not challenge the Complainant’s claim that the Respondent is not commonly known by the disputed domain name and that the Complainant has not authorized the Respondent to use its Trademark as part of the disputed domain name or to register the disputed domain name. Parties disagree, however, if the Respondent uses the disputed domain name for genuine, noncommercial criticism of the Complainant. If this would be the case, the general view of UDRP panelists is that the Respondent does have a legitimate interest in registering and using the disputed domain name.1
According to the Respondent it had a business dispute with the Complainant about alleged infringement of its copyright by third parties who were (also) customers of the Complainant, and the Complainant’s reluctance to take appropriate action. The Respondent claims that the purpose of the website under the disputed domain name is to motivate the Complainant to come with solutions for said commercial dispute. The Panel is therefore of the opinion that the Respondent registered and used the disputed domain name for commercial reasons so that it does not have rights or legitimate interests in the disputed domain name.
Therefore, the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the second element of paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad Faith
The Respondent admittedly registered and used the disputed domain name to settle a business dispute with the Complainant, while it was well aware of the fact that the disputed domain name includes the Trademark, with which the Respondent was familiar. The Panelist finds that the purpose of such registration and use is to disrupt the Complainant’s business, so that the registration and use of the disputed domain name was in bad faith.
The third and last element of paragraph 4(a) of the Policy has therefore also been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aboutleaseweb.org> be transferred to the Complainant.
Dated: January 17, 2012