WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. med. Andreas Frei v. Domain Discreet Privacy Service/ John Smith

Case No. D2013-0560

1. The Parties

The Complainant is Dr. med. Andreas Frei of Lucerne, Switzerland, represented by Reto Fanger, Switzerland.

The Respondent is Domain Discreet Privacy Service of West Jacksonville, Florida, United States of America /John Smith of New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <andreasfrei.net> (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on March 22, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 27, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 28, 2013.

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” 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 April 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 23, 2013.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 30, 2013. 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.

4. Factual Background

The Complainant has been practicing psychiatry under his personal name Dr. med. Andreas Frei. He is the Chief Psychiatrist of Forensic Psychiatric Services, a government body in Canton Lucerne, Switzerland and also has his own private psychiatric practice.

The Respondent, as disclosed by the Registrar, is John Smith. He registered the Disputed Domain Name through a proxy service called Domain Discreet Privacy Service on November 20, 2012.

The website at the Disputed Domain Name displays information related to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant's contentions can be summarized as follows:

(a) The Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark or service mark, in which the Complainant has rights:

The Complainant is a psychiatrist practicing under his personal name and under the domain name <andreasfrei.xy>. The Complainant states that he is protected by name and personality rights under Swiss law. While the Complainant notes that his personal name is not trade marked, he contends that the UDRP may protect personal names in situations where it is being used for trade and commerce.

The Complainant submits that, as the Chief Psychiatrist of Forensic Psychiatric Services in Canton Lucerne in Switzerland practicing under his personal name, it has become a distinct identifier of the psychiatric services he offers.

The Complainant further states that the Disputed Domain Name is identical to the name of Dr. med. Andreas Frei.

(b) Respondent does not have rights or legitimate interests in the Disputed Domain Name:

There is no evidence that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name. The Complainant also states that there is no evidence that the Respondent is using the name “Andreas Frei” or is commonly known by the name “Andreas Frei”. The Disputed Domain Name is not being used for a bone fide offering of goods or services, or for legitimate fair purposes.

(c) The Disputed Domain Name has been registered and used in bad faith:

The only purpose of the website at the Disputed Domain Name is to damage the Complainant’s name and disrupt his business. The Respondent is acting with false and unprofessional accusations.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) Disputed Domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

While the Complainant's personal name has not been registered as a trade mark, it is a well-established rule among UDRP panels that in situations where a personal name unregistered as a trade mark is being used for trade or commerce, a complainant may be able to establish common law or unregistered trade mark rights in that name (see Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874). In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required.

The Panel accepts that the Complainant has established common law rights in respect of his “Andreas Frei” name on the basis that he is practicing psychiatry under that name. As a result of such use, his personal name has become an indication of the services he supplies.

It is a well-established rule that in making an enquiry as to whether a mark is identical or confusingly similar to a domain name, the Generic Top-Level domain extension, in this case “.net”, should be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant's personal name in which he has rights, and that paragraph 4(a)i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“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 a 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 accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s “Andreas Frei” name. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of an “Andreas Frei” trade mark anywhere in the world nor any evidence that he has become commonly known by the Disputed Domain Name (paragraph 4(c)ii) of the Policy). Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

As demonstrated by the Complainant's evidence, the Disputed Domain Name is used for the purposes of criticizing the Complainant's psychiatric practice. In situations where a domain name, identical or confusingly similar to a mark, is being used for a genuine noncommercial free speech website, there are two main views. The first view, which is adopted for criticism websites based outside the United States, appears to be that a respondent has no right to use a domain name which is identical or confusingly similar to a complainant’s trade mark for the purposes of lawful criticism of the complainant. This is especially the case if the respondent is using the mark alone as the domain name (i.e, <trademark.tld>) as that may be understood by Internet users as impersonating the trade mark owner (“View One”). The second view is that where a criticism website is based in the United States with American parties, or where a case is decided by United States-based UDRP panels, a number of these panels have held that the respondent's use of an identical or confusingly similar trade mark as its domain name may give rise to a legitimate interest provided that there are no indicia of bad faith such as the use of the criticism website for commercial gain (“View Two”). The discrepancy in approach between the UDRP panels within and outside the United States arises from United States legal principles and the robust approach to free speech derived from the First Amendment to the United States Constitution (Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206).

The Respondent initially registered the Disputed Domain Name under a proxy service, and it was later revealed that the true identity of the Respondent is John Smith from New York. Apart from a name and generic United States address provided, no other information regarding the Respondent was given to satisfy the Panel that the Disputed Domain Name is based in the United States. On the contrary, the website at the Disputed Domain Name (the “Website”) appears to contain content from Switzerland primarily in German, with rough English translations.

The Panel is aware of the Respondent's right to freedom of speech. However, the Panel finds that there is a clear distinction between a right to express critical views and a right or legitimate interest in respect of a domain name. The Respondent's right of free speech can be exercised by using a domain name which suggests very clearly to visitors the contents and import of the website it point to and thereby obviate any risk of deception. Given the above, the Panel adopts View One in assessing whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name.

In this case, the Disputed Domain Name resolves to a website containing articles and quotations from the Complainant's interviews that shed a negative light on the Complainant. As a result, the Panel finds that the Respondent is using the Disputed Domain Name, which adopts the Complainant's personal name in its entirety, falsely conveying an association with the Complainant to lead Internet users to the Website. The Respondent, through the Website, is thus illegitimately identifying himself as the Complainant and attracting visitors to his Website by trading off the Complainant’s name and goodwill in his name. By the time Internet users reach the Website, they have already been exposed to the misrepresentation inherent in the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists the circumstances which shall be evidence that a respondent has registered and used a domain name in bad faith. The Panel notes that in this case, the Respondent's actions, namely setting up a criticism site targeting the Complainant without evidence of intent for commercial gain, does not fall under one of the circumstances listed under paragraph 4(b) of the Policy.

Nonetheless, the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In assessing “bad faith” for the purpose of the Policy, the motivation of the Respondent is significant. In this case, the motivation is clear. The Respondent was registered for the purpose of criticizing the Complainant and his services. By posting negative content regarding the Complainant, the Respondent appears to have only one motivation in mind, which is to defame and disrupt the business of the Complainant. This is clear evidence of bad faith on behalf of the Respondent.

Additionally, as evidenced by the Respondent's activities that directly target the Complainant, the Respondent was clearly aware of the existence of Complainant and the existence of the Complainant's use of his personal name as a mark to his services at the time of registering the Disputed Domain Name.

In view of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)iii) of the Policy.

7. Decision

For 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 be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: May 14, 2013