Complainant is Worldwide Primates, Inc. of Miami, Florida, United States of America, represented by Lewis & Lin, LLC, United States of America.
Respondent is Oneandone Private Registration of Chesterbrook, Pennsylvania, United States of America / Nicolas Atwood of West Palm Beach, Florida, United States of America, self-represented.
The disputed domain name <worldwideprimates.com> (the "Domain Name") is registered with 1&1 Internet AG (the "Registrar").
The Complaint, concerning the Domain Name and the domain name <wwprimate.com>, was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2015. On August 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with <worldwideprimates.com> and <wwprimate.com>. On August 31, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint, and indicating that the domain name <wwprimate.com> had been cancelled . The Center sent an email communication to Complainant on September 8, 2015 informing it of the cancellation of <wwprimate.com>. Complainant confirmed by email of September 14, 2015 that the domain name <wwprimate.com> was to be dropped from the dispute. The Center sent an email communication to Complainant on September 15, 2015 providing the registrant and contact information disclosed by the Registrar for the disputed domain name, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 18, 2015.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. The Response was filed with the Center on October 9, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 19, 2015. 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.
On October 21, 2015, Complainant sent the Center an unsolicited additional submission. The next day, Respondent objected to the filing of this unsolicited submission.
On November 2, 2015, the Panel issued Administrative Order No. 1 seeking additional information and argumentation from both Parties by November 13, 2015, with an opportunity for each to reply to the other's response by November 20, 2015. Both Parties complied with Administrative Order No. 1.
For the sake of simplicity and whatever brevity can be salvaged in this case, the Panel will strive to limit its discussion to those facts and those arguments which are essential to its decision. Toward that end, various factual assertions and arguments presented by the Parties will not feature in this discussion.
Complainant provides "non-human primate research models for government, university, and pharmaceutical level facilities." Complainant asserts that it has provided such services under the common law mark WORLDWIDE PRIMATES since 1980, and in recent years has spent roughly USD 40,000 per year to advertise its services under that mark. Complainant registered the domain name <wwprimates.com> on August 15, 2005, and has been using that domain name to host a website for its business.
Respondent registered the Domain Name on June 22, 2006. The Domain Name resolves to a rather rudimentary website with the following greeting: "Welcome to worldwide primates, a website dedicated to protecting nonhuman primates around the globe." Immediately below a statement that the website is under construction, the following text appears: "If you arrived at this website looking for the laboratory animal supplier Worldwide Primates, Inc., we recommend visiting SmashHLS.com." By clicking the text "SmashHLS.com", one is redirected to that website. At the bottom of this page is the text "email@example.com". The only other item on this web page is a drawing of a monkey.
The SmashHLS.com website itself is considerably more developed than Respondent's website. According to Complainant, SmashHLS.com is "a website for an animal rights extremist group that has targeted Complainant in the past and has been a party to legal disputes with Complainant as well as numerous arrests stemming from an attack on vehicles operated by Complainant." The SmashHLS.com website yields numerous web pages featuring articles about animal rights issues and about the alleged abusers of animals. Several such articles specifically discuss Complainant or its owners. One such article is entitled "WORLDWIDE PRIMATES PROTEST (OPEN THE CAGES TOUR)." On many, if not most or indeed all of these web pages, there is a box in the upper right-hand corner of the page which states: "DONATE TO SMASH HLS." Below that text is a box to click, labeled "Donate."
Respondent's affiliation with Smash HLS is not altogether clear. Respondent declined to answer this precise query from the Panel, citing "current law enforcement investigations related to protests by animal welfare activists against Worldwide Primates." Respondent added: "I have no financial connection, and enjoy no commercial gain from the <SmashHLS.com> website." Complainant produced a reprinted article from the Miami New Times which identified Respondent "Nick Atwood" as a "member" of Smash HLS.
In Complainant's words, "Respondent Nicholas Atwood has been a prominent animal rights activist" since "at least as early as 1997." Respondent does not quarrel with this characterization. He does, however, quarrel with Complainant. The Parties have waged legal battles over the years. The details of such battles are not germane to the disposition of this dispute.
Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. The overarching points urged by Complainant may be summarized as follows: Respondent has no right to appropriate Complainant's trademark and impersonate Complainant by means of the Domain Name and the misleading website to which it resolves; Respondent is motivated by commercial gain because the SmashHLS.com website solicits donations on nearly every page; Respondent registered several other domain names containing the name of trademarks used by other targets of the animal rights movement; Respondent has tarnished Complainant's mark; and Respondent has been evasive and misleading in its submissions to the Panel.
Respondent's chief contention is that he is entitled to exercise his right to free speech by using the Domain Name and providing a hyperlink to a website where views about animal rights, and sometimes about Complainant's conduct, are expressed. Respondent also argues that his use of the Domain Name and his corresponding website are not misleading. Rather, Respondent asserts, a visitor to his rudimentary website will immediately realize that he has not landed at Complainant's website.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Complainant holds rights, through longstanding use, in the mark WORLDWIDE PRIMATES. Further, the Panel concludes that the Domain Name is identical to that mark.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
For the reasons discussed below in the bad-faith section, the Panel does not need to decide whether Respondent has rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of a Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Before turning to the relevant facts and arguments presented in this case, the Panel must make some preliminary comments.
The Policy is designed to address, expeditiously, clear cases of cybersquatting. It is not intended to serve as a tribunal of general jurisdiction in all disputes which happen to involve a domain name. The Policy does not allow for discovery, nor the presentation and cross-examination of live witnesses. Moreover, the sole remedial scope of the Policy is the binary question of whether the domain name at issue is to remain with the respondent or be transferred (or cancelled). For these reasons, perhaps, decisions under the Policy are entitled to no deference in United States courts under the Federal Arbitration Act (9 U.S.C.), which happens to be the residence of both Parties in this case, in sharp contrast to the extreme deference U.S. courts give to most arbitral awards.
A court of law is better equipped to address the array of issues presented in a case like this one, where the Parties have a long history of animosity and the use to which the disputed domain name is put may transcend mere cybersquatting. For example, a court vested with equitable powers would presumably be better equipped to fashion an appropriately nuanced injunctive remedy and draw reasonable lines between those aspects of Respondent's conduct which are deemed legitimate and those which are not.
For these reasons, this Panel reads the scope of the Policy's bad-faith paragraph narrowly, even while recognizing that the four enumerated indicia of bad faith in paragraph 4(b) are not exhaustive and that conduct perhaps neither possible nor contemplated at the time the Policy was enacted may nevertheless fit comfortably within the Policy's concept of bad faith. Put another way, this Panel prefers a modest reading of the bad-faith paragraph, in keeping with the well-established consensus that the Policy was designed chiefly to deal with clear cases of cybersquatting.
The basic issue in this case – whether a respondent who registers a domain name comprised solely of the complainant's trademark plus a Top-Level Domain (often referred to as a pure "trademark.com" case) and uses the domain name predominantly for purposes of criticizing and even undermining a business or entity with which the respondent holds a strong disagreement is permissible under the Policy – has occasioned differing views not only among panelists, but among courts: there have been decisions in favor of complainant trademark owners and decisions in favor of respondent critics in circumstances where the salient facts appear to be similar.
Indeed, even in those cases where respondents have prevailed, some panels have held that the respondent has a legitimate interest in the domain name (see, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014), while other panels have ruled against the respondent on the "rights or legitimate interests" issue but held that the complainant had failed to prove that the respondent registered and was using the domain name in bad faith (see, e.g., Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693).
The panel in the Sutherland case probably put it best when it said: "Suffice it to say that each of these decisions is context specific."1
In the present case, the Panel prefers to dispose of this very difficult case under the bad-faith head rather than the "rights or legitimate interests" head. Without coming to a conclusion on this issue, the Panel frankly has a hard time acknowledging that Respondent here has a legitimate interest in the Domain Name. This is chiefly because of some perceived legerdemain on Respondent's part in connection with some of his assertions in this case. For example, instead of simply admitting that he was aware of Complainant and its mark at the time of registering the Domain Name, Respondent initially stated in his Response:
"Complainant has provided no evidence supporting a claim that Respondent was aware of Complainant's name and any common law trademark rights in the 'Worldwide Primates' mark at the time Respondent registered the [Domain Name] (June 22, 2006). The news stories and legal matters included in the Complaint's Annexes that reference both Complainant and Respondent are from later dates."
However, in response to the Panel's Administrative Order No. 1, Respondent admitted knowing of Complainant at the time of registering the Domain Name. Such evasiveness in a streamlined proceeding such as this one is hardly welcome, and this particular response and a few others like it undermined Respondent's credibility in this Panel's consideration of the merits of this case.
This difficulty also stems in part from the fact that the website to which the Domain Name resolves contains a hyperlink to another website where donations are solicited. Respondent's explanation of this fact is not altogether satisfactory to the Panel. Finally, the line between genuine criticism and merely "messing with someone" is not always easy to discern, and this case is not one of the easy exceptions. As such, the Panel cannot bring itself to find that Respondent here has a legitimate interest in respect of the Domain Name.
Even so, under the bad-faith prong of the Policy, the balance tips slightly in Respondent's favor. It is obvious that the mere lack of a legitimate interest in the Domain Name cannot, ex proprio vigore, lead inexorably to the conclusion that Respondent registered and used the Domain Name in bad faith. If such were the case, the Policy would consist of two elements, not three.
Put another way, having decided that the record here does not yield sufficient evidence (and reasonable inference) that Respondent is in bad faith under the Policy, this Panel does not and need not conclude that Respondent also has a legitimate interest in the Domain Name.
This all leads, at last, to the Panel's explanation for concluding that Complainant has not carried its burden under the bad-faith prong of the Policy.
First, there is no basis for finding bad faith under Policy paragraph 4(b)(i), since there is no evidence that Respondent has sought to sell or rent the Domain Name for profit.
Second, there is no basis for finding bad faith under Policy paragraph 4(b)(iii), since Complainant and Respondent are not competitors. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001‑0505 (involving criticism site; "To rule [that complainant and respondent are 'competitors'] would render so many parties 'competitors' as to dilute the Policy's bad faith requirement beyond recognition").
Third, with respect to Policy paragraph 4(b)(ii), Complainant notes that Respondent has registered eight other domain names (such as <primate-products.com>, <framestransport.com>, and <americanminkcouncil.org>) "containing trademarks of other companies targeted by his animal rights activism." Although there are cases under the Policy in which a pattern of preclusive registrations under paragraph 4(b)(ii) has been found on the strength of only two domain name registrations (see, e.g., Marx v. The Russian House, WIPO Case No. D2000-1108), the limited evidence in this record is insufficient to conclude that Respondent is guilty of a pattern of preclusive registrations. The limited evidence suggests that Respondent has done little or nothing with these domain names, and there is no evidence he has used them in a misleading or infringing way or for any commercial purpose. Whether any other trademark owners have a legitimate claim against Respondent is another question for another panel on another day. For purposes of this case, there is not enough conclusive evidence that Respondent's conduct vis-à-vis the eight other domain names should be brought to bear on his registration and use of the Domain Name in dispute here.
As respects bad faith under Policy paragraph 4(b)(iv), the Panel cannot conclude on this record that Respondent "has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location." While it is a close call, chiefly because the Domain Name is identical to Complainant's mark, the Panel concludes that an Internet user looking for Complainant's site will probably ultimately realize that he has not landed at Complainant's website. Moreover, this case typifies the sometimes fine line between confusion and criticism (or parody).
With regard to the "for commercial gain" component of Policy paragraph 4(b)(iv), this is also a close call. In the Sutherland case, one of the leading "free speech/trademark.com" cases, the panel observed in a footnote that it did not have to address in that case "whether a request for financial support for a political organization would constitute commercial activity…"
In another leading case in this area, Howard Jarvis Taxpayers Association v. Paul McCauley, supra, the panel was confronted with this issue inasmuch as the respondent, a critic of complainant's tax-policy advocacy group, had solicited at his website a USD 20,000 donation for the express purpose of alerting complainant's members of complainant's alleged misdeeds and otherwise undermining complainant's activities. Despite this express request for money, the panel in Howard Jarvis held that "there is no evidence in this record that Respondent's actions evidence an 'intent for commercial gain to misleadingly divert consumers' or an 'intent for commercial gain to tarnish the trademark or service mark at issue." The panel added: "To the extent that respondent solicits contributions or encourages consumers not to join HJTA, he is exercising his free speech right; he is not competing as an alternative tax reform organization."
Although the foregoing statements from the Howard Jarvis decision were made in the context of the "rights or legitimate interests" issue, they apply with equal vigor here under the "bad faith" head. The only relevant difference in this context between the Howard Jarvis case and this case is the fact that, in Howard Jarvis, the critical commentary and donation solicitation occurred at the respondent's website, whereas in this case Respondent's website linked to a third-party site (SmashHLS.com) where criticism and solicitation occurred. On this record, the Panel sees no reason to distinguish Howard Jarvis on that basis. Respondent here may be said to have outsourced his free-speech criticism to the folks at Smash HLS. It does not appear that this was done merely to "mess with" Complainant in some prankish manner or to solicit a purchase offer of the Domain Name from Complainant; rather, given the Parties' activities and acrimonious history it appears clear that Respondent genuinely harbors critical views toward Complainant and embraces much of what Smash HLS propagates.
Finally, it must be borne in mind that Respondent here has flatly denied having any financial interest in the Smash HLS organization, and nothing in the record gainsays that denial. Accordingly, the Panel concludes that Complainant has failed to prove that Respondent has engaged in bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Whether Complainant has a case against Respondent in a court of law, where discovery is available and remedies are more nuanced and varied than the binary world of the UDRP, is beyond this Panel's remit.
In sum, by a narrow margin and under the limited record of this case, the Panel concludes that Complainant has not established paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: December 2, 2015
1 Because both Parties here are domiciled in the United States, the Panel need not enter the deeper thicket in the "free speech" debate by considering whether the outcome should be any different where one or both Parties reside outside the United States.