The Complainant is Landmark Lofts Limited, of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Collyer-Bristow, United Kingdom.
The Respondent is Anonyousspeech Anonymousspeech of Tokyo, Japan.
The disputed domain name <landmarkloftsreviews.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 10, 2014, the Registrar 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 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2014.
The Center appointed John Swinson as the sole panelist in this matter on November 6, 2014. 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 is Landmark Lofts Limited of the United Kingdom, a building and design company which specializes in loft conversions.
The Complainant claims unregistered trade mark rights in the term “Landmark Lofts”.
The Respondent is Anonyousspeech Anonymousspeech of Japan.
The Respondent did not file a Response, and consequently little additional information is known about the Respondent.
The Respondent registered the Disputed Domain Name on January 15, 2014.
The website at the Disputed Domain Name is currently inactive. On previous occasions, it has displayed a number of negative reviews in relation to the services provided by the Complainant.
The Complainant’s contentions are as follows.
Unregistered trade mark rights:
The Complainant states that its registered company name is “Landmark Lofts Limited”. It currently operates under this name, and has done so for over 7 years. It is also the registrant of the domain name
<landmark-lofts.com>. It submits that it has unregistered trade mark rights in the “Landmark Lofts” name and has acquired substantial goodwill in that name.
Identical or Confusingly Similar:
The Complainant submits that the Disputed Domain Name is confusingly similar to the term “Landmark Lofts” and the Complainant’s registered domain name. The use of the term “reviews” does not adequately distinguish the Disputed Domain Name from the alleged trade mark.
Rights or Legitimate Interests:
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent’s details, which are listed as AnonymousSpeech, appear to be an effort to conceal the Respondent’s identity.
The website previously hosted at the Disputed Domain Name featured solely negative reviews. The Complainant submits that the reviews were not posted by genuine customers.
The Complainant also submits that in using the term “Landmark Lofts” in the Disputed Domain Name, and the Complainant’s logo on the website, the Respondent has attempted to convey an association with the Complainant.
Registered and Used in Bad Faith:
The Disputed Domain Name has been registered in bad faith and continues to be used in bad faith. The Complainant again submits that the reviews were not posted by genuine customers.
The Respondent in these proceedings has been the unsuccessful subject of similar proceedings in respect of a criticism website on a previous occasion (Dar Al-Arkan Real Estate Development Company v. AnonymousSpeech, WIPO Case No. D2012-0692).
The Complainant submits that potential and current customers of the Complainant may be attracted to the Disputed Domain Name because of its similarity with the term “Landmark Lofts”, and that the Respondent’s clear intentions in registering the Disputed Domain Name were to deter people from dealing with the Complainant and to cause damage to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the alleged trade mark.
The Complainant submits that it has unregistered trade mark rights in the term “Landmark Lofts”, and that it has acquired substantial goodwill in that name. In order to successfully assert common law or unregistered trade mark rights, the Complainant must show that this term has become a distinctive identifier associated with the Complainant or its goods or services (i.e., that “Landmark Lofts” has acquired a “secondary meaning”) (see e.g., Play Club by Cipriani, S.L. / Giuseppe Cipriani v. Identity Protection Service / Amir Zeb / Eyhab Jumean, WIPO Case No. D2013-1883).
The Complainant has provided minimal evidence to support its assertion of unregistered trade mark rights. The Panel is under no obligation to conduct independent investigations into a complainant’s use of a trade mark, but it is entitled to do so (see paragraph 10 of the Rules). In this case, the Panel has investigated the Complainant’s use of the term “Landmark Lofts” to cross-check the Complainant’s assertions. The Panel confirms that the Complainant has held its registered business name and domain name, both of which incorporate the term “Landmark Lofts”, since 2008, and that the Complainant operates its business using this term.
It is for the Complainant to provide appropriate evidence to satisfy the Panel that the Complainant holds unregistered trade mark rights in the term “Landmark Lofts”. Although the Panel has been able to verify the evidence presented by the Complainant, it considers this evidence to be insufficient to establish secondary meaning. Detailed evidence of the services provided under the alleged trademark, extensive advertising, consumer surveys and media recognition would have been more compelling (see paragraph 1.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the Panel’s view, the Complainant has failed to establish that it has unregistered trade mark rights in “Landmark Lofts” and as such does not succeed on the first element of the Policy.
In light of the Panel’s finding regarding the first element of the Policy, it is not necessary to assess whether the Respondent has rights or legitimate interests in the Disputed Domain Name. However, for completeness, the Panel wishes to address this element.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complaint raises the issue of whether a Respondent can have rights or legitimate interests in a criticism website. The Complainant has provided as Annex 3 to the Complaint a copy of the content that was previously available at the Disputed Domain Name, which is the subject of this Complaint.
Based on the Panel’s review of that content, the Panel finds the following:
- The Respondent’s website did not include an express disclaimer that the website was not associated with the Complainant.
- The Respondent’s website only contained reviews that were critical of the Complainant, and did not contain any positive reviews.
- It would be apparent to some users that the Respondent’s website was not controlled or authorized by the Complainant; but due to the Respondent’s use of the Complainant’s logo, other users may believe the website was associated with the Complainant.
- It does not appear that the Respondent was making a commercial gain from the website. There were no advertisements or commercial links on the website.
- The reviews posted on the website at the Disputed Domain Name appear to be screen shots of actual reviews posted on various other review websites.
Panels have expressed two main views in relation to criticism websites (see WIPO Overview 2.0 paragraph 2.4). View 1 is that “[t]he right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner.” This line of cases tends to disapprove of the use of a domain name for criticism in particular where the domain name is identical to the trademark. Additionally, in some cases, panels disapprove of the use of a domain name for criticism where another term is added, including where the criticism is apparent from the domain name itself (e.g., <trademarksucks.tld>), notwithstanding the critical content of the site (see, e.g.,. Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136; Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416; and Dar Al-Arkan Real Estate Development Company v. AnonymousSpeech, WIPO Case No. D2012-0692 (to which the Complainant refers)).
The other view, to which this Panel subscribes, tends to look past whether the domain name alone connotes criticism, but focuses on the content at the website located at the domain name. If the website is a genuine noncommercial criticism site, then paragraph 4(c)(iii) of the Policy may be satisfied (see e.g., Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019; and Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693).
The Complainant submitted that the Respondent does not have rights or legitimate interests in the website hosted at the Disputed Domain Name because it is not a “genuine reviews website” which allows customers to post both positive and negative reviews. However, “balance” is not a requirement of paragraph 4(c)(iii) of the Policy, provided the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Here, the Respondent’s website appears on the record before the Panel to be noncommercial and the use of the Disputed Domain Name similarly appears to be noncommercial. The website does not contain an express disclaimer that it is not associated with the Complainant. It also features the Complainant’s logo, along with screen shots and copies of reviews posted by users at other websites. These aspects of the website raise issues under copyright law. Previous panels have found that the use of another’s copyright on the website associated with a domain name is not necessarily determinative of whether or not a respondent has rights or legitimate interests in that domain name. Rather, the issue “is the impression that is conveyed by the use of that image and other material on the Respondent’s site” (High Tech Computer Corporation v. LCD Electronic Systems SRL, WIPO Case No. DRO2008-0011; see also Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260). The Panel agrees with this view, and finds that, while the Respondent has used the Complainant’s logo on the website without the Complainant’s permission, this does not prevent a finding of noncommercial fair use.
While this lack of a disclaimer and use of the Complainant’s logo could potentially lead to user confusion, the Panel is of the view that the content of the website is not misleading, and that it would be clear to users that the website was not controlled or authorized by the Complainant (and was a third party criticism website). Thus, the Panel concludes that the lack of a disclaimer and the use of the Complainant’s logo does not in the circumstances of this case result in a finding that the Respondent’s use of the Disputed Domain Name is not legitimate or is unfair.
This Panel considers the preservation of the free exchange of ideas via the Internet to be of significant importance, as reflected in paragraph 4(c)(iii) of the Policy. This paragraph must be given real meaning. The Panel is of the view that any initial confusion experienced by users (due to the fact that the Disputed Domain Name does not disclose that the associated website is a criticism site, and due to the use of the Complainant’s logo at the top of the website) would be immediately dispelled upon arrival at the website and a brief perusal of its contents. As a final point, there is no evidence that the Respondent is promoting the Disputed Domain Name, or using the Disputed Domain Name other than on the associated website.
The Panel notes the Complainant’s submissions regarding the authenticity of the reviews. Although the Complainant has provided a sworn complaint that it believes the reviews to be false, it has not provided any evidence which supports this assertion. The Respondent has not provided a response and therefore makes no rebuttal in relation to the authenticity of the reviews. It is up to the Panel to determine the weight and admissibility of the evidence provided to it (see paragraph 10(d) of the Rules). In these circumstances, the Panel makes its judgment based on its own review of the website content, as provided by the Complainant. From this, the Panel cannot draw the conclusion that the reviews have been fabricated by the Respondent or any other party.
The Panel finds that the Complainant has failed to make out a prima facie case, and does not succeed in establishing the second element of the Policy.
As a final point, the Panel wishes to address the Complainant’s submission that the Respondent’s use of false personal information in registering the Disputed Domain Name indicates a lack of rights or legitimate interests. There is an argument to be made that the owner of a criticism website may have legitimate reasons to withhold their identity, for example, to protect themselves against harassment by supporters of the organization that is the subject of their criticism. However, the Panel notes that providing false information to a registrar is a breach of ICANN’s Domain Name Registrants’ Responsibilities policy, which is incorporated into all registration agreements. The Panel is of the view that this issue is relevant to a finding of registration and use in bad faith, and is not relevant to whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name for the purpose of paragraph 4(c)(iii) of the Policy. The identity of the registrant is not directly relevant to paragraph 4(c)(iii). However, as the Complainant has not succeeded in establishing the first or second elements of the Policy, a finding of bad faith on the part of the Respondent would not change the outcome of this Complaint.
For the foregoing reasons, the Complaint is denied.
Date: November 20, 2014