WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neste Oil Oyj v. Föreningen Greenpeace-Norden
Case No. D2012-0891
1. The Parties
The Complainant is Neste Oil Oyj of Finland, represented by Krogerus Attorneys Ltd, Finland.
The Respondent is Föreningen Greenpeace - Norden of Stockholm, Sweden, internally represented.
2. The Domain Name and Registrar
The domain dames <nestespoil.com> (the “Domain Name”) and <nestespoilreturns.com> (the “Additional Domain Name”) are registered with Active 24 AS and Enom, Inc., respectively (collectively, the “Disputed Domain Names”).
3. Procedural History
The Complaint in respect of the Domain Name was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 26, 2012. On April 26, 2012, the Center transmitted by email to Active 24 AS a request for registrar verification in connection with the Domain Name. On April 27, 2012, Active 24 AS transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name 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”), 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 on April 30, 2012 (the date of commencement of the proceedings). In accordance with paragraph 5(a) of the Rules, the due date for the Response was May 20, 2012. The Response was filed with the Center on May 20, 2012.
On June 5, 2012, the Complainant filed with the Center an amendment to the Complaint incorporating the Additional Domain Name (the “Amended Complaint”).
The Center appointed Gabriela Kennedy, Nathalie Dreyfus and Frederick M. Abbott as panelists in this matter on June 8, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the paragraph 7 of the Rules.
The Additional Domain Name was registered using a privacy service and its true registrant was therefore not identifiable. In accordance with its powers under paragraph 10 of the Rules, the Panel issued a Panel Order on June 19, 2012 requesting the Center to seek verification of the registrant of the Additional Domain Name from the registrar, Enom, Inc. On June 20, 2012, Enom, Inc. transmitted by email to the Center its verification response confirming that “Greenpeace Norden” is listed as the registrant of the Additional Domain Name.
The Panel issued a Panel Order on June 22, 2012, accepting the Amended Complaint (the considerations of which are discussed in Part 4 below) and requesting the Center to provide the Respondent with 20 days (i.e. until July 12, 2012) to file its response to the Amended Complaint.
The Respondent did not submit a response to the Amended Complaint by July 12, 2012.
5. Factual Background
The Complainant is a Finnish oil refining and marketing company producing transportation fuels and petroleum products. The Complainant is listed on the NASDAQ OMX Helsinki. The Complainant owns more than 45 trade mark applications and registrations for or incorporating NESTE OIL, the first of which is its registration in Finland dating back to September 15, 2005. The Complainant also owns the domain name <nesteoil.com>.
The Respondent is an environmental campaigning organization based in Stockholm, Sweden. On March 19, 2012, the Respondent registered the Domain Name, which previously resolved to the website at “www.nestespoil.com” (the “Nestespoil Website”) containing statements criticising the Complainant for the negative impact that its business has on the environment. Links on the Nestespoil Website automatically redirected Internet users to the Respondent’s “www.greenpeace.fi” website (the “Greenpeace Website”). The Nestespoil Website currently displays the Swedish message “Kontot avstängt. Detta konto är tillfälligt avstängt.”, meaning that the account has been disabled or suspended.
The Additional Domain Name was registered on May 29, 2012, after the Respondent filed its Response on May 20, 2012. As at the date of this Decision, the Additional Domain Name resolved to the website at “www.nestespoilreturns.com” (the “Nestespoil Returns Website”), the homepage of which appears to be the same as the Nestespoil Website but with the addition of the words “THIS PARODY SITE IS BULLIED BY NESTE OIL” inserted prominently over the top of such content. Every link on the Nestespoil Returns Website redirects Internet users to a page of the Respondent’s Greenpeace Website, which contains a parodic version of the Complainant’s annual report titled the “Neste Spoil Annual Report 2011”.
The Nestespoil Website and the Nestespoil Returns Website shall be collectively referred to as “the Websites”.
6. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Names are confusingly similar to a trade mark or service mark in which the Complainant has rights:
(i) the Complainant is the proprietor of a number of trade mark registrations for or incorporating “NESTE OIL”;
(ii) the Disputed Domain Names incorporate the Complainant’s trade mark in its entirety, with the addition of the letters “sp” to the word “oil”, which is not sufficient to remove similarity to the Complainant’s trade mark “NESTE OIL”;
(iii) the likelihood of confusion is made even greater by inserting two letters (namely “sp”) in the middle of each of the Disputed Domain Names because the pejorative term is not instantly recognisable as a separate word in the Disputed Domain Names;
(iv) similarity with the Disputed Domain Name is further strengthened by the logo displayed on the Websites, which is an imitation of the Complainant’s logo;
(v) the Additional Domain Name merely adds the word “returns” to the confusingly similar Domain Name and the word “returns” refers to the fact that the Nestespoil Website has been reactivated; and
(vi) it is evident that the Respondent’s aim is to pass itself off as the Complainant and to misuse the reputation of the Complainant’s trade marks and logos to create an association with the Complainant and its trade marks and logos.
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names:
(i) the Respondent is not known by the Disputed Domain Names and the Complainant has not authorised the Respondent’s use of the Complainant’s trade mark in the Disputed Domain Names;
(ii) the Respondent has a legitimate right to criticise the Complainant’s activities but it has no need to use domain names which are confusingly similar to the Complainant’s trade mark to exercise its right of free speech and expression. The right of free speech does not include the misuse of the Complainant’s trade marks;
(iii) the Respondent uses the Disputed Domain Names for commercial gain in that all links on the Websites point to the Respondent’s Greenpeace Website, where donations are called for from visitors;
(iv) the Respondent used the trade mark “NESTE OIL” as a “Google AdWord” to produce an ad, which leads to the Nestespoil Website; and
(v) the Respondent is not making legitimate noncommercial use of the Disputed Domain Names as it is using them to attract potential donators to the Websites.
(c) The Disputed Domain Names were registered and are being used in bad faith:
(i) the Respondent was aware of the Complainant’s trade mark when registering the Disputed Domain Names because the Respondent is imitating the Complainant’s trade mark and website and the Respondent registered the Additional Domain Name after the Complainant commenced proceedings to recover the Domain Name;
(ii) the Complainant’s website is protected by copyright and the Respondent’s activities constitute a copyright infringement, which is evidence of bad faith;
(iii) the Domain Name was registered for the purpose of disrupting the Complainant’s business and this is evident from the Respondent’s statement that it is “fighting against the unsustainable biofuel produced by Finnish company Neste Oil”;
(iv) the Respondent aims to force the Complainant to stop selling its key product biofuel, which will cause serious disruption and damage to the Complainant’s business;
(v) by using the Websites to attract Internet users to the Respondent’s Greenpeace Website, where visitors can make donations, the Respondent is in essence the Complainant’s competitor (the term “competitor” should not be restricted to a commercial or business competitor but should encompass a person who acts in opposition to another) and is disrupting the Complainant’s business through its diversion of Internet users to the Websites;
(vi) the Respondent’s imitation of the Complainant does not make it immediately apparent to Internet users that the Nestespoil Website is not operated by the Complainant;
(vii) the Respondent’s intention to disrupt the Complainant’s financial reporting is evident as the Domain Name (which resolves to the Nestespoil Website that is presented in the same format as the Complainant’s annual report) was registered on March 19, 2012, shortly after the Complainant launched its website on 29 February 2012 for the purpose of providing financial information before its annual general meeting;
(viii) the Respondent’s registration of the Additional Domain Name and the placing of the Nestespoil Returns Website under such a domain name can be compared to cyberflight, such that the Respondent is misusing the UDRP-system and trying to exhaust the remedies available under the Policy;
(ix) the fact that the Respondent registered the Additional Domain Name during the proceedings to recover the Domain Name is in itself indication of bad faith use and registration of the Additional Domain Name because it illustrates the Respondent’s original intention was indeed to disrupt the Complainant’s business;
(x) the Additional Domain Name has been registered by using a privacy registration service, which indicates, given the circumstances surrounding this case, that the Additional Domain Name has been registered and is used in bad faith; and
(xi) the Respondent has copied in detail the distinctive element of the Complainant’s logo on the Websites.
The Panel gave the Respondent the option to rely on the Response for the Additional Domain Name, mutatis mutandis, and to submit only such supplementary information as might be distinguished from the material submitted in respect of the Domain Name. Given that the Respondent did not submit a response to the Amended Complaint, the Panel shall take this as meaning that the Respondent’s submissions in the Response in respect of the Domain Name are equally applicable to the Additional Domain Name.
The Respondent’s contentions can be summarised as follows:
(a) the Respondent does not dispute that the Complainant is the owner of the NESTE OIL trade mark but it is entitled to exercise its freedom of expression conferred by international law to convey its opinions in the form it deems most suitable, including through parody of a trademarked name.
(b) The Websites do not include any invitation to make donations and are not intended as a fundraising device.
(c) The Disputed Domain Names are not confusingly similar to a trade mark or service mark in which the Complainant has rights:
(i) existing legal praxis about confusing similarity of domain names is contradictory with regards to domain names for the purposes of hosting protesting websites;
(ii) it is implausible that any person would believe that the Websites are owned or controlled by Neste Oil; and
(iii) the Disputed Domain Names are even more obviously distinct than cases where the term “sucks” had been used as the Complainant’s trade mark “NESTE OIL” does not even appear fully in the Domain Name.
(d) The Respondent has rights or legitimate interests in respect of the Disputed Domain Names:
(i) the Respondent has a legitimate interest in using the trade mark as part of the Disputed Domain Names of a criticism site if such use is fair and noncommercial;
(ii) the Panel should base its decisions not on national law but on the Policy, the Rules and any applicable principles of law, which includes the right to freedom of expression;
(iii) the Respondent, an environmental non-governmental organisation, is not a competitor of the Complainant, an oil refining company, and the Disputed Domain Names are not designed for commercial gain;
(iv) the fact that the Respondent relies on contributions from the public for its campaigns does not mean that any campaign activity therefore has a fundraising objective and can be qualified as a commercial activity; and
(v) the Websites are not intended as a fundraising device and the Disputed Domain Names were registered to be used for genuine criticism and to raise awareness about deforestation caused by the Complainant.
(e) The Disputed Domain Names were not registered and are not being used in bad faith:
(i) the Complainant has failed to prove that the Disputed Domain Names were registered and used in bad faith as the Websites are legitimate protest sites;
(ii) there is no copyright infringement of the Complainant’s website because parody is strongly protected as part of freedom of expression; and
(iii) the Complainant’s argument that the Respondent’s statement of “fighting against the unsustainable biofuel produced by Finnish company Neste Oil” amounts to disruption of the Complainant’s business is unsound because it would mean that criticism would be found to be disrupting another’s business in all cases.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(c) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
A. Preliminary Issue - Identity of the Respondent
In accordance with Rule 3(c) of the Rules, the Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. According to the information provided by the respective registrars, the names of the registrants for the Domain Name (Föreningen Greenpeace – Norden) and the Additional Domain Name (Greenpeace Norden) are slightly different.
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 allowed the consolidation of multiple domain names registered by different registrants because it was evident that the underlying registrants were in fact the same. Paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) (“WIPO Overview 2.0”) states that “if it should come to light after the filing of a complaint that there are additional domain names registered by the same domain name holder which are alleged to be identical or confusingly similar to the invoked trademark, this may constitute grounds for their addition to the complaint where fair and practicable”.
The Panel finds that the facts of this case support a finding that the Disputed Domain Names have been registered by the same entity:
(i) the word “Föreningen” in “Föreningen Greenpeace – Norden” means “association” in Swedish, so the true entity is simply Greenpeace Norden;
(ii) the Nestespoil Returns Website redirects Internet users to the Respondent’s Greenpeace Website, as did the Nestespoil Website before it was taken down;
(iii) the Additional Domain Name was registered on May 29, 2012, shortly after the Complaint was filed for recovery of the Domain Name on April 26, 2012, and the Nestespoil Returns Website contains the statement “This parody site is bullied by Neste Oil”;
(iv) the Nestespoil Returns Website contains a similar lay-out to the Nestespoil Website; and
(v) the registrant address is the same for both of the Disputed Domain Names.
Accordingly, the Panel is of the view that the registrants of the Domain Name and the Additional Domain Name are in fact one entity and accordingly both domain names may be incorporated in a single complaint.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the NESTE OIL trade marks on the basis of the numerous trade mark applications/registrations owned by the Complainant for NESTE OIL.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
There have been numerous panel decisions in which it has been held that the addition of terms with derogatory or negative connotations does not necessarily affect a finding of confusing similarity: see La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan, WIPO Case No. D2007-1660; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647; TRS Quality, Inc. v. Gu Bei, WIPO Case No. D2009-1077; Société Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327. Paragraph 1.3 of the WIPO Overview 2.0 also provides that a domain name consisting of a trade mark and a negative or pejorative term would generally be considered confusingly similar to the complainant’s trade mark and WIPO panels have recognised that the inclusion of a subsidiary word to the dominant feature of a mark typically does not serve to obviate confusion.
The Disputed Domain Names incorporate the Complainant’s NESTE OIL mark in its entirety. The difference between the Disputed Domain Names and the Complainant’s NESTE OIL mark is the addition of the of the letters “sp”, changing the word “oil” into the derogatory term “spoil”, which the Panel finds to be insufficient to negate the confusing similarity with the Complainant’s NESTE OIL trade mark. The Additional Domain Name also incorporates the word “returns” to indicate that the Nestespoil Website has been reactivated after its suspension. It is well-established that in cases where the distinctive and prominent element of a domain name is the complainant’s mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088.
The Panel finds that the Complainant’s trade mark “NESTE OIL” is the distinctive and prominent component of both of the Disputed Domain Names, and the addition of the letters “sp”, turning the word “oil” to “spoil” or the addition of the generic term “returns” is insufficient to distinguish the Disputed Domain Names from the Complainant’s trade mark. The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the NESTE OIL trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is insufficient evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Names. Therefore, the Panel will assess the Respondent’s rights in the Disputed Domain Names (or lack thereof) based on the Respondent’s use of the Disputed Domain Names in accordance with the available evidence.
The Panel accepts that the Complainant has not authorised the Respondent to use the NESTE OIL trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Names.
Accordingly, the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Names for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Names for legitimate noncommercial purposes without intention to misleading divert customers or to tarnish the trade mark at issue or in connection with a bona fide offering of goods or services.
The Respondent does not contend that it has used the Disputed Domain Names in connection with a bona fide offering of goods and services. The Respondent’s arguments concerning rights or legitimate interests mainly revolve around the argument that its use of the Disputed Domain Names to operate websites which criticises the Complainant’s deforestation activities and consequently raises awareness amongst the public constitutes a legitimate non-commercial purpose.
There has been much discussion in previous decisions about whether using a domain name for the purposes of operating a criticism website can constitute a legitimate non-commercial purpose, such that it would confer a right or legitimate interest in the domain name on the complainant. Many of these decisions draw a distinction between cases with a connection with the United States (hereinafter “US”)(e.g., where one or both of the parties reside in the US, where the registrar is located in the US etc.), and those cases with no connection to the US. This distinction appears to have been drawn on the basis that the right of free speech is a constitutional right in the US, which is not the case in other jurisdictions. In the present case, neither the Complainant nor the Respondent have any connections with the US; the only connection with the US being the location of the registrar of the Additional Domain Name.
The Panel finds this to be an artificial distinction and agrees with the decision of the panel in Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379, in which the panel rejects the distinction on the following grounds:
- there have been non-US cases which have preferred the free speech approach, and conversely US cases that have rejected the free speech approach;
- the Internet is an international medium and it is desirable to have uniform implementation of the Policy;
the principle of freedom of speech is not confined to the US. For example, the principle of freedom of expression is enshrined in the European Convention on Human Rights and the Universal Declaration of Human Rights; and
- the Policy should take into account general principles of law that are widely accepted throughout the world and not be dependent on particular national laws.
The previous UDRP decision in Coast Hotels Ltd. v Bill Lewis and UNITE HERE, WIPO Case No. D2009-1295, also approached the distinction between US and non-US cases in a similar fashion, and referred to paragraph 15(a) of the Rules, which states 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.” The Presiding Panelist, in the previous UDRP decision in Nippon Paper Industries Co., Ltd. v. Harriett Swift, WIPO Case No. D2011-0832, also took into account general principles of law which are widely accepted throughout the world and determined that the freedom of expression as conferred by principles of international law should be protected, so long as the respondent is not using the disputed domain names in a way which would otherwise contravene the policy. The Panel agrees with the approach set out in the above cases.
The case of Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693 established the principle that in order to confer rights or legitimate interests, the distinction between parody and original work by the complainant must be sufficiently clear such that the parodist is not merely repacking and selling the original. While the Websites do have a number of similarities with the Complainant’s website (e.g. similar presentation of the parodic annual statement, layout of the webpage, and the use of the term “Neste Oil” in the tab), the Panel finds that Internet users would be able to differentiate the Websites from the Complainant’s business when they see that: (i) the Disputed Domain Names and the logo used on the Websites alter the Complainant’s trade mark such that it becomes the derogatory term “spoil” (and in the case of the Additional Domain Name, the generic term “returns” is also incorporated into the domain name), (ii) the content of the Neste Spoil annual report, displayed on the Websites, contains sarcastic or parodic comments, and (iii) a click on any part of the Websites redirect Internet users to the Greenpeace Website, the website for one of the most well-known environmental organisations in the world. This is even more so the case with the Nestespoil Returns Website given that this website contains a notice: “THIS SITE HAS BEEN BULLIED BY NESTE OIL” prominently displayed across the entire screen.
Based on the content of the Websites and the nature of the Respondent’s operations throughout the world, the Panel is convinced that the Respondent was not operating the Websites with an intent for commercial gain. The links/buttons on the Nestespoil Returns Website automatically redirect Internet users to a page of the Respondent’s Greenpeace Website dedicated to its “Nestespoil” campaign, rather than the separate webpage where donations are solicited. The webpage that Internet users are redirected to when clicking links on the Nestespoil Returns Website does not contain any links to the Respondent’s webpage where donations are solicited. While the Nestespoil Website is no longer active, evidence provided by the Complainant suggests this was also the case with the Nestespoil Website. The Panel considers that a finding that Internet users being redirected to a page of a website which solicits donations on a different page of the website, with the webpage to which Internet users are redirected containing no links to the webpage where donations are solicited, amounts to commercial gain would be too remote. The Panel is convinced that the Respondent registered and is using the Disputed Domain Names with a view to voicing its concerns about the environmental impacts of the Complainant’s business (in which it genuinely believes), as opposed to obtaining commercial gain or for any other dishonest purpose.
The Panel also finds that the Respondent has not registered and is not using the Disputed Domain Names with a view to mislead or divert Internet users to its Greenpeace Website. As stated in the decision of the panel in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (hereinafter “Britannia”), the phrase “misleadingly diverting customers” refers to “the kind of confusion that arises in a trade mark context, when a competitor diverts consumers to its site and, potentially diverts sales”. The Panel has accepted above that there is no such diversion for commercial gain in the present case. The fact that neither the Nestespoil Website nor the Nestespoil Returns Website contained any advertisements, sponsored links or direct calls for donations further precludes a finding that the Respondent registered or is operating the Disputed Domain Names with a view to mislead or divert Internet users to its website.
In addition, the Panel does not consider that the Respondent is operating the Websites to tarnish the Complainant’s trade mark. As stated in the Britannia case discussed above, tarnishment “refers to such unseemly conduct as linking unrelated pornographic violent or drug related images of information to an otherwise wholesome mark [..] in contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting”.
Accordingly, the Panel finds that the Respondent is using the Disputed Domain Names for legitimate, noncommercial purposes, and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names.
D. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Complaint thus fails and the Panel does not need to consider the third requirement under paragraph 4 (a) (iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: July 23, 2012
With due respect to my distinguished fellow Panelists, I must dissent from virtually all but one conclusions they reached pertaining to the Disputed Domain Names.
Identical or Confusingly Similar:
The Dissenting Panelist agrees that there is a risk of confusion between the Disputed Domain Names and the trade marks in which the Complainant clearly proved it has rights. The mere adjunction of the letters “sp” was for the sole purpose to transform the Complainant’s trademark into a derogatory sign while creating a play on words. The adjunction of the generic term “returns” implies that the Domain Name <nestespoil.com> was reactivated as relevantly spotted by the Majority opinion. Obviously, the adjunction of the said generic word cannot circumvent the finding of confusing similarity between the Complainant’s trademarks and the Additional Domain Name <nestespoilsreturn.com>.
Consequently, the Dissenting Panelist’s opinion is that the Disputed Domain Names are identical or confusingly similar to the NESTE OIL trade mark in which the Complainant clearly proved it has rights.
Rights or Legitimate Interests:
As far as the Respondent’s rights or legitimate interests are concerned, the Dissenting Panelist disagrees with the Majority Opinion. The Majority Opinion focused on the use of the Disputed Domain Names which would give raise to a legitimate interest. Nonetheless, the Dissenting Panelist is of the view that the Respondent has no rights or legitimate interests in the Disputed Domain Names. Firstly, the Respondent has not been endorsed by the Complainant to register the Disputed Domain Names, which reproduced registered trade marks, in which it does not have any rights, and the Respondent is not known under the sign NESTE OIL. The Complainant is correct when it claims that the adjunction of the letters “sp” which creates the word “spoil” is of the same nature of the cases where registrants add words like “suck” in order to create derogatory websites (,Vanguard Trademark Holdings USA, LLC v European Travel Network, WIPO Case No. D2008-1325 ; Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253).
Moreover, the Dissenting Panelist finds it will be hard for Internet users to distinguish between the Respondent’s Websites and Complainant’s website. Given the time spent by Internet users on a dedicate webpage, this Panelist finds it likely that they will think that the Respondent’s Websites are owned or authorized by the Complainant in light of the common features shared by the Respondent and the Complainant’s website. One cannot but think of the layout of the webpage, the similar tabs and the similar presentation of the Complainant’s annual report. The tabs available on the Complainant’s website are all reproduced in the Respondent’s Websites, furthermore, the tab entitled “Neste Oil” remained unchanged as the Respondent did not add the letters “sp” in this tab and as a result it can increase the risk of confusion for Internet users. Further, there is a chance that the Respondent’s website will mislead Internet users as only a deeper insight and the careful reading of the website content helps to distinguish the Respondent from the Complainant. At first glance, the source of the Websites is not straightforward, the presence of a link towards what appears to be the Complainant’s annual report of 2011 is highly misleading for Internet users. Moreover, there is a small paragraph and a hyperlink headed “read more” on both website and the typology of the texts looks similar, even the arrow on the right corner of the page is the same. Given the features of the Respondent Websites, the Dissenting Panelist does not think that this case falls within the ambit of the parody exception.
The Complainant tried to contact the Respondent amicably and the latter did not take any steps to create a gripe site more respectful of the Complainant’s trade mark rights. The Complainant acknowledges that the Respondent is entitled to raise public awareness on whichever global warming issues he deems suitable but in a more explicit way. In the Dissenting Panelist’s view, criticizing activities, whichever they are, may be legitimate provided it is overtly done, and freedom of speech does not confer of itself a legitimate right to reproduce a registered trademark in a domain name (Compagnie Générale des Matières Nucléaires v. Greenpeace International, WIPO Case No. D2001-0376). Had the Respondent inserted its name under the Greenpeace logo directly on the homepage, it would have been less confusing, but in this case it is only after clicking on links that Internet users can understand who the entity behind the website is.
Freedom of speech is a deeply-rooted right which is carved in many juridical systems, but in cases like the present, a balance must be found between freedom of speech and trademark rights. In the light of the particular features of the Websites in this case trade mark rights protection supersedes freedom of speech. The Dissenting Panelist is of the view that the Respondent can use its free speech right to criticize the Complainant and run another domain name which implies parody in a clearer way. The Dissenting Panelist’s opinion in this matter is similar that of the Panel in Aspis Liv Föräkrings AB v. Neon Network LLC, WIPO Case No. D2008-0387, which stated “this conclusion involves no real curtailment of the principles of free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorized 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” (Aspis Liv Föräkrings AB v. Neon Network LLC, supra).
The resilience of the Respondent, which registered the Additional Domain Name <nestespoilreturns.com> right after the filing of a response to the Complaint is another feature which helps to infer that the Respondent lacks legitimate interests in the Disputed Domain Names.
Thus, the Dissenting Panelist’s opinion is that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Majority Opinion decided not to deal with the bad faith issue as it deems it was not necessary.
The Dissenting Panelist thinks that the Respondent registered the Disputed Domain Names in bad faith.
This assertion is particularly true for the Additional Domain Name <nestespoilreturns.com> which was registered in the aftermath of the filing of a response by the Respondent. The Respondent cannot pretend that it was not aware of the Complainant as it reproduced its trade marks in their entirety.
Moreover, the Respondent used the Disputed Domain Names in bad faith. The Respondent derives economic profit from the risk of confusion it is creating. Even if an association cannot make benefits, there is no denying that for running the whole architecture donations are of utmost importance. While adducing itself as being the Complainant with an unclear parody, the Respondent is free-riding on the Complainant’s fame in order to bait Internet users and increase the traffic on its website and donations accordingly. The registration made by the Respondent of the trade mark NESTE OIL as keywords via “Google AdWords”, made it clear that the Respondent passes himself off as the Complainant to derive economic gains.
Therefore, the Dissenting Panelist is of the view that the Respondent adduced sufficient evidences to prove that the Disputed Domain Names have been registered and used in bad faith.
Consequently, the Dissenting Panelist considers that the Disputed Domain Names should have been ordered transferred to the Complainant.
Dated: July 23, 2012