WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Priory in New Zealand of the Most Venerable Order of the Hospital of St John of Jerusalem v. 24-7 Ltd / Domains By Proxy, LLC
Case No. D2012-2301
1. The Parties
The Complainant is The Priory in New Zealand of the Most Venerable Order of the Hospital of St John of Jerusalem of Wellington, New Zealand, represented by Kensington Swan, New Zealand.
The Respondent is 24-7 Ltd of Auckland, New Zealand; Domains By Proxy, LLC of Scottsdale, Arizona, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <stjohnnz.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2012, 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 November 27, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent an email communication on the same day regarding the deficiency of the Complaint. The Complainant filed an amended Complaint on November 29, 2012.
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 November 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2012. The Response was filed with the Center on December 3, 2012.
The Center appointed John Katz QC as the sole panelist in this matter on January 3, 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.
By Procedural Order No. 1 on January 25, 2013, the Panel raised a number of issues for consideration by the parties. Further submissions were invited. Those for the Complainant were filed with the Center on February 4, 2013 and those for the Respondent on February 5, 2013.
The date for delivery of the Panel decision was extended to February 15, 2013.
4. Factual Background
The Complainant is part of the Order of St John, a major international charity that provides essential health-related services to communities in over 40 countries, including New Zealand. It traces its origins back to 1070.
The Complainant was established in New Zealand in 1885 as a provider of medical response and health services. It is now New Zealand’s largest national provider of emergency ambulance services, first aid training, event medical services and other medical response and health related services. It employs over 2,400 people in New Zealand and has over 8,500 volunteers and/or members who are active in St John in New Zealand.
The work and services provided by St John in New Zealand are very extensive and targeted towards relieving sickness and injury and enhancing the general health care and wellbeing of all New Zealanders.
The Complainant owns the registered trade mark ST JOHN together with two other registered marks. It claims common law trade mark rights as well by virtue of its use of the mark ST JOHN on and in relation to its provision of goods and services and in particular ambulance services to the New Zealand public over many decades. It says the name ST JOHN is a household name in New Zealand.
The Complainant also owns the domain name <stjohn.org.nz>.
The Respondent is based in New Zealand. The Registrant of the disputed domain name is shown as a company having its registered office in Auckland, New Zealand. It would appear as if all activities on behalf of the Respondent originate from New Zealand.
The Respondent registered the disputed domain name in November 2012. The Respondent uses the associated website to which the disputed domain name defaults for the purposes of providing information to visitors to the website. It does not appear to have any commercial activity associated with it.
The essence of the Respondent’s website is to use it as a vehicle to post and disseminate information in particular about two former employees of the Complainant. It is said that they have been guilty of sexual misconduct whilst in the employ of the Complainant and in relation to children, that the Complainant has failed fully or properly to investigate the allegations or to take steps appropriate as a response to the allegations.
The screens from the website show a number of allegations which can only be described as serious in the extreme. It is not understood that any have resulted in a prosecution. There does not appear to be any other and in particular any commercial or health related service associated with the website of the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant contends it is a highly regarded and reputable provider of health care and health related goods and services, perhaps best epitomized by its St John’s Ambulance service. It claims a substantial reputation and concomitant goodwill in its registered trade mark together with the goodwill at common law, built up over many decades. It says St John is one of the most trusted and reliable brands in New Zealand and one of the top three most reputable not for profit organizations. It says that the disputed domain name would immediately be associated with it and that the dominant feature of it is ST JOHN and the addition of the letters “nz” to the end of the mark ST JOHN do not change the identity of the mark. Moreover, the letters “nz” would simply suggest that the disputed domain name is operated by the Complainant in New Zealand rather than somewhere elsewhere in the world. Thus the additional letters “nz” in fact bring the disputed domain name closer to the Complainant’s trade marks.
B. Respondent
The Respondent does not take issue with much of the Complainant’s claims regarding its trade marks and the disputed domain name. Instead the Respondent focuses on what it appears to suggest is a lack of distinctiveness. That is because the name St John is one of the 12 apostles who lived around 6 – 100 AD.
The Respondent also says that there are a number of other entities and organizations known as St John and which incorporate St John as part of their name or description. There are towns or cities called St John. There are other websites that incorporate the name St John but which have no association or connection with the Complainant. Some of these include Churchs of St John in New Zealand which have the mark ST JOHN as part of their own domain name.
The Respondent further contends that its website associated with the disputed domain name fulfills an important public function and draws attention to a series of allegations of sexual abuse, cover-ups and abandoned investigations designed to thwart a proper public exposé of the alleged misdeeds of two named former employees.
The Respondent contends that the Complainant is seeking to stifle public debate and provision of information by alleging the statements on the Respondent’s website are defamatory. The Respondent analogizes the attempt by the Complainant to suppress information and debate via the Internet as akin to that of the BBC over the Jimmy Savile matter.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has provided a response.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(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.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
In the Panel’s Procedural Order No. 1 attention was drawn to the question of whether the disputed domain name is identical with a mark in which the Complainant has rights. The parties were referred by the Panel to the opinion of the European Court of Justice in LTJ Diffusion SA v Sardas Vertbaudet SR [2003] FSR 608 at [54]. There the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduces, without any modification or addition, all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer”.
The parties responded with further submissions. These have been helpful. The Panel has considered the original submissions in full and also the supplementary submissions.
Whilst “identical” in paragraph 4(a)(i) of the Policy may suggest literally an exact correspondence between the two marks when compared mark against mark, it is clear the case law does not require exact correspondence. The European Court decision addresses this very point.
The Complainant argues that the Vertbaudet decision, supra applies and in accordance with what was there said the only difference in the present case is the addition to the Complainant’s trade mark of the letters “nz” which are non-distinctive. They would be viewed by an average consumer as simply indicating the geographical location of New Zealand and do not comprise any modification to the trade mark ST JOHN.1 As such, the addition or modification would, in Vertbaudet terms, go unnoticed by the average Internet user. Alternatively put, it would simply imply the disputed domain name is operated by St John in New Zealand and therefore bring the disputed domain name closer to the Complainant.
To this the Respondent asserts that as there are a number of other unassociated uses of the mark or sign ST JOHN in New Zealand (and elsewhere), the addition of “.nz” is not insignificant and would not go unnoticed by the average consumer. Further, because of the many other uses of St John including uses which incorporate geographical abbreviations, one would expect confusion between them and the Complainant, yet there is no evidence of any such confusion.
In the view of the Panel, the application of the Vertbaudet principle requires a judgment to be made as to whether the addition of the suffix “.nz” to the mark ST JOHN would go unnoticed. That requires the following to be addressed:
(a) Are there any modifications or additions. If so,
(b) When viewed as a whole, does the disputed domain name contain differences from the Complainant’s mark. If it does,
(c) Are those differences so insignificant that they may (not would) go unnoticed by an average consumer.
To address and respond to these:
(a) There are clearly alterations best described as additions – the “.nz” suffix.
(b) This addition results in a difference to the Complainant’s trade mark ST JOHN.
(c) The difference is simply a geographical descriptor which the average consumer would likely understand as an abbreviated reference to New Zealand. Given the other uses of St John in New Zealand, none that have been put before the Panel by the Respondent include “.nz” immediately following the mark ST JOHN. In these circumstances the addition “.nz” does bring the disputed domain name closer to the trade marks of the Complainant. It is the Panel’s view that this suffix in context and “when viewed as a whole” is so insignificant that it may go unnoticed by the average consumer. It is to be noted that the European Court said “may [not would] go unnoticed”. The Panel accordingly concludes the Complainant’s mark and the disputed domain name when taken side by side are identical in accordance with the Vertbaudet test.
However, it must follow that even if that was not the case there can be no question but that the Complainant’s mark and the Respondent’s domain name are confusingly similar for the purpose of the Policy. The essence of confusion is that people are caused to wonder, to be puzzled or to be in a state of doubt.2 Moreover, there can be little reasonable question in this case that the Complainant’s ST JOHN trade mark is recognizable as such within the disputed domain name, comprising as it does the first 6 letters of an 8 letter domain name. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, and prior Policy cases cited therein.
The essence of the test is whether a person as proxy for the relevant sector of the public is more probably than not likely to be confused between the mark relied upon and the disputed domain name. That person is not necessarily a reasonable person but is a person drawn from the relevant cross section of the public who are likely visitors to or users of the website associated with the disputed domain name.
The Respondent contends that anyone actually visiting the associated website “www.stjohnnz.com” will immediately realize that the website is not in any way associated with the Complainant. It refers to the details on its website to support this contention.
Moreover, as has been held in a number of Court decisions, confusion once created is not resolved after the initially confused consumer or customer has approached the Respondent and had that initial confusion cleared away. The danger of initial confusion lies in its ability to capture the attention of the viewer of or visitor to the website, at which point any damage is largely done.
As the New Zealand Court of Appeal observed in ASB Bank Limited v.Trust Bank Auckland Limited3 it does not matter if initial confusion is rectified at point of sale. A similar point was made by the panel in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776.
The same analogy applies here, even although the Respondent is not “selling” goods or services. Thus, once the visitor to the Respondent’s website has entered the website it is irrelevant that upon doing so that viewer will no longer or shortly thereafter not be confused. Any initial confusion resulting from similarity is at that point then dispelled. That would also explain why the Respondent uses the Complainant’s trade mark ST JOHN as part of and indeed the dominant part of its disputed domain name. It must be to draw attention to the associated website and capture interested visitors whether that interest is to visit a website of the Complainant or that of the Respondent. A reasonable number of visitors would without doubt assume it is a website associated with the Complainant. That any initial confusion is subsequently dispelled is no answer.
It therefore follows that the disputed domain name must be at the very best confusingly similar if it is not identical.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
The issues that arise under this heading are similar to those that arise under the following heading “Registered and Used in Bad Faith”. The applicable legal principles elide.
It is not proposed in this or the next section of this Panel decision to discuss in any detail the material posted on the Respondent’s website, or its purpose. There is no need to do so. The issues under this and the following section can be addressed at the level of principle.
The Complainant’s contentions here are relatively brief. It says the Respondent has no connection with the Complainant, has no permission from the Complainant to use the trade mark and is not using the website for the purposes of any bona fide offering of goods or services. Nor is the Respondent known by the disputed domain name or associated website. Rather, the Complainant asserts, the Respondent is using the disputed domain to denigrate the Complainant and cause damage to its reputation and goodwill.
For its part, the Respondent raises a claim that broadly qualifies as a free speech defence. It contends it has a legitimate right to publish information relating to [alleged] child sex crimes committed by former employees of the Complainant. It is in the public interest that this information be available on the Respondent’s website. It sets out a number of instances where inquiries have occurred or information has been provided documenting these allegations and outcomes. This has included in New Zealand. There is a substantial quantity of material that the Respondent has put forward, all of which has been considered by the Panel.
As to bringing the Complainant’s trade mark ST JOHN into disrepute the Respondent contends the purpose of the website is not to do this and that any disrepute that may result to the Complainant or its trade mark is due to the [alleged] sexual crimes committed by the Complainant’s employees and the way the Complainant has dealt with these. The Respondent says the purpose of the website is to detail accurately and truthfully the facts.
In the Procedural Order No, 1 the Panel drew to the attention of the parties various decisions of other panels and as summarized in paragraph 2.4 of WIPO Overview 2.0. The Panel also referred to Section 14 New Zealand Bill of Rights Act 1990. That provides:
“14 Freedom of expression
Everyone has the right to freedom of expression, including the freedom to seek, receive, and impart information and opinions of any kind in any form.”
The parties in their supplemental filings have addressed these further matters. The Complainant refers to the two divergent views represented by UDRP panel decisions. The first is that the right to criticize does not necessarily extend to registration and use of a domain name that is identical or confusing similar to a trade mark in which the complainant has rights. The second view is that a respondent does have a legitimate interest in cases where the website contains material critical of the complainant and where that is for a genuine or legitimate purpose to draw attention to matters of public interest or concern. The latter category appears to be exemplified more by UDRP panel decisions from United States panels.
The Respondent relies upon the panel decision in Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No.D2007-1947. It says that decision is the one most relevant as it sets out to clarify the matter of divergent panel views. The Respondent notes that although the Panel Procedural Order identified this amongst other UDRP panel decisions as likely to be relevant, the Complainant in its supplemental filing does not address the Calvin Ayre decision, supra.
The Respondent points out that Calvin Ayre discussed the placement of a notification on the Respondent’s associated website to indicate that the site is not the official site of the Complainant together perhaps with a link to the official site for persons wishing to visit it and who presumably had inadvertently or mistakenly accessed the Respondent’s website. The Respondent has modified its website with a link to the official website of the Complainant. There is also an explanatory statement.
With the greatest of respect to the panel in Calvin Ayre, this Panel does not consider such a mechanism is necessarily adequate to avoid confusion or lessen initial damage. The alteration to the Respondent’s website is exhibited in a screen (Annex 1 to the supplementary filing of the Respondent). This screen proclaims:
“A CLOSER LOOK AT ST JOHN
AMBULANCE NEW ZEALAND
ABOUT
Behind the doors of NZ’s most trusted commercial brand. (Go to ’www.stjohn.org.nz’ for the official website of The Order of St John)”
Read or viewed as a whole, what captures the attention of the viewer is the bolded heading, not the italicized direction to the official St John site. Indeed, if anything, this alteration further compounds the problems arising from initial confusion. Notifications such as these (or disclaimers as they are sometimes called in the ordinary courts) have generally not found favour.
Moreover, the courts have consistently warned that viewers of websites have to be taken as they are found and such viewers include the astute and the gullible, the intelligent and the unintelligent, the cautious and the non-discerning.
In Arsenal Football Club plc v. Reed (No.2)4 Aldous LJ stated that there (in a passing off case) a disclaimer in the nature of a statement that the goods sold were unauthorized, would not suffice. The difficulty of disclaimers or similar banners was also discussed by the High Court of Australia in Parkdale Custom Built Furniture Pty Limited v. Puxu Pty Limited.5
There are a number of other decisions of the ordinary courts that are relevant as there are also decisions of other panels. This is not the place to determine whether any precedence should be given to court decisions over panel decisions or vice versa. It is quite clear that under the Policy, it is the Policy that is to be applied but equally where determined by the Panel to be relevant the decisions of domestic courts are not to be ignored. This must be particularly so when both parties to a disputed domain name complaint reside in the same jurisdiction and there are relevant domestic laws and decisions of the ordinary courts.
It is not necessary to discuss all the factors in the Calvin Ayre decision that lead the panel there to set out criteria that may allow a respondent to rely upon a right or legitimate interest defence. Of the criteria set out there are in any event two that in the view of this Panel are not met or satisfied. The first is that it must be immediately apparent to visitors to the website that it is not a website of the owner of the mark. This point has been addressed in the section above.
The second is that the Respondent has not registered all or most of the obvious domain names suitable for the owner of the mark. Whilst the Respondent in the present case has registered only one domain name and has not garnered all obvious ones, that which it has registered is one of if not the most obvious. That it also has the “.com” suffix is not determinative. As is well-known, corporate entities and individuals not uncommonly use the “.org”, “.com” or “.net” suffix randomly and with little regard to the type of entity using that suffix.
For this Panel, issues involving freedom of speech can be engaged in two ways – first generally under the Policy, paragraph 4(a)(ii) and also under Section 14 New Zealand Bill of Rights Act 1990 given that both parties here are from New Zealand. It is useful to address these issues under this section of this decision although what is said equally applies to the findings in the next section of this decision.
It is essential on this point to state what the UDRP Procedure and Policy is not about. It is not a vehicle or forum for determining, let alone expressing, any views on questions of fact that are strongly contested and not verified. This is particularly so in a case such as the present where none of the evidence put before the Panel has been put forward by the parties in the form of sworn statements. In other panel decisions the Panel has noted that evidence in such a form has been provided.
Nevertheless, the procedure under the Policy is a papers-only one with no requirement for verified evidence or in-person cross-examination. Even less it is any function of a panel to decide matters of truth and in the present case whether the allegations of sexual misconduct are true or whether the statements on the website are defamatory or not. As the Panel said in the Procedural Order No.1, other more appropriate channels exist for these purposes.
To this, the Complainant contends that denying the Respondent the disputed domain name will not impede access by the Respondent to appropriate mechanisms including on-line sites through which it can disseminate its concerns. The Complainant says it is concerned with the misuse of the trade mark ST JOHN by the Respondent by its adoption of the primary and only distinctive component of the disputed domain name. The Complainant also relies on Sections 4 and 5 New Zealand Bill of Rights Act 1990 which provide:
“4 Other enactments not affected
No court shall, in relation to any enactment (whether passed or made before or after the commencement of this Bill of Rights),—
(a) Hold any provision of the enactment to be impliedly repealed or revoked, or to be in any way invalid or ineffective; or
(b) Decline to apply any provision of the enactment—
by reason only that the provision is inconsistent with any provision of this Bill of Rights.
5 Justified limitations
Subject to section 4 of this Bill of Rights, the rights and freedoms contained in this Bill of Rights may be subject only to such reasonable limits prescribed by law as can be demonstrably justified in a free and democratic society.”
The Complainant says its trade mark rights trump any right the Respondent has to use (or misuse) the trade marks under the guise of free speech.
The Respondent relies by way of reply heavily on the Calvin Ayre case. The Panel has already set out its view of the Calvin Ayre decision and its applicability to the facts of the present domain name dispute.
The Respondent also says that the present dispute is one over a disputed domain name and is not a trade mark case or a Bill of Rights case before a New Zealand court. That of course is so. But the fact remains that both Complainant and Respondent “reside” in New Zealand and the website of the Respondent would be primarily directed at New Zealanders – as the banner on the new screen (Annex 1 to the supplementary filing of the Respondent) and the italicized disclaimer or explanatory note set out above indicate. The activities of the Respondent are to be determined in accordance with UDRP Policy but that does not require ignoring domestic laws of New Zealand.
In the case of registered trade marks in New Zealand they coincide with the international obligations New Zealand has under various treaties including TRIPs. The New Zealand Bill of Rights was enacted, as its long title states:
“An Act—
(a) To affirm, protect, and promote human rights and fundamental freedoms in New Zealand; and (b) To affirm New Zealand's commitment to the International Covenant on Civil and Political Rights”.
Thus, the relevant provisions of New Zealand domestic law are in harmony with international obligations and the Panel is able to take these into account in deciding a disputed between New Zealand parties under the UDRP policy. There is no conflict.
The Respondent also relies upon the actions of the two men identified as the cause of any harm or damage to the Complainant and its trade mark rather than the actions of the Respondent itself. It draws attention to statements of support it has received from third parties and that the website contains legitimate criticism and comment.
In this Panel’s assessment, the issues and matters the Respondent identifies on its website are serious in the extreme. Sexual misconduct is an evil, all too prevalent in all countries. It takes on a particularly insidious aspect in New Zealand where it appears child sexual abuse is far too common. It is appropriate that legitimate concerns about such evils be addressed and that no steps should ever be taken to curtail legitimate and measured public airing of such matters. There is a public interest in doing so which is paramount. There is nothing in any of the submissions that would make it appropriate for the Panel to form any view at all however on the allegations, beyond noting that they are allegations.
The question then descends to whether or not in all the circumstances the Respondent is making legitimate use of the Complainant’s trade mark, under paragraph 4(a)(ii) of the Policy. In the view of this Panel, it is not.
The Respondent is perfectly entitled to express the views and publish the material it has on its website. But what it cannot do is use the Complainant’s trade mark ST JOHN for that purpose if in doing so it is causing confusion with and damage to that trade mark in an improper or inappropriate manner.
It is not as if the Respondent needs the trade mark of the Complainant for that purpose of dissemination. Nor is the subject matter of the material on the Respondent’s website to be taken as indicative of any greater or pervading evil. There is no analogy whatever with those websites that seek to draw attention to organizations that are pervasively wrongdoers or involved in criminal activity or which generally appear to have a bad reputation.6 The Respondent’s website involves allegations against two men allegedly guilty of criminal activity, notwithstanding that the activities of the Complainant are vastly more extensive than anything to do with the two individuals.
The Panel has been at pains to describe the activities of the two men as set out in the Respondent’s website as “alleged” or as constituting “allegations”, for that is what they are. It must be emphasized that the UDRP procedure cannot and must not be used to form or express views on alleged criminal activity or defamation where no ability exists to prove and establish contested facts. Moreover, the two individuals concerned are not parties to this process and it would be wrong indeed to express views contrary to their interests without them being heard. This is a fundamental principle of natural justice.
A reading of the facts in Calvin Ayre and the issues raised by the Respondent on its website in that case show that it was far removed factually from the present case.
Further, this Panel respectively departs from the view of the Panel in Calvin Ayre where it is stated in paragraphs 6.25 and 6.26 as follows:
“6.25 In this Panel’s view, the drawing of absolute conclusions from these arguments is inconsistent with the terms of the Policy. Paragraph 4(c) of the Policy provides that:
“Any of the following circumstances [….] if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name […]”
“(iii) you 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”.
6.26 The Panel considers that this provision applies where a domain name is identical or confusingly similar to a complainant’s mark and, where the specified circumstance is found, mandates a finding in favour of a respondent despite the confusion entailed by the use of such a domain name. If so, a view which precludes a finding in favour of a respondent because the domain name is identical to the complainant’s mark contradicts this provision.”
In the view of this Panel, it is inappropriate to draw hard and fast rules. Each complaint must be looked at and determined according to its own particular facts. What may qualify as a legitimate right or interest in the dissemination of information, even highly critical information (as, potentially, in the Calvin Ayre case, although there the Respondent failed) may not qualify in another case. Analogies in this area are fraught with difficulty.
In paragraph 6.35 the panel in Calvin Ayre said:
“6.35 The use of a domain name identical to a complainant’s mark does afford the registrant a greater opportunity of communicating information to those interested in the complainant; and conversely, it makes it easier for Internet users to obtain alternative information about the complainant. Indeed, since members of the public may be unaware that any criticism is being made of the person in question, the use of such a domain name may be one way in which he can disseminate his message effectively. Denial of the use of such a domain name by a party other than the complainant does inhibit freedom to impart and receive information about the complainant to a non-insignificant extent.”
The choice of a domain name that in some way enables interested persons to find it by reference to the subject matter and identity of the entity the object of the criticism or comment can be achieved in a number of ways, including ones that incorporate part or even all of a trade mark, in certain circumstances.
In this case however the taking of the exact trade mark and the addition of the “.nz” suffix is not something which can be accepted as a legitimate right or interest in conveying information about two alleged child sex offenders.
There are a number of ways in which the Respondent can provide the information to the general public that it seeks to do including ways which somehow use or draw attention to the identity of the Complainant but which do not involve any wrongful use of the Complainant’s registered trade mark or marks.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
This section raises as many difficult issues as the previous one. It requires for present purposes an assessment of the purpose for which the disputed domain name was registered. The fact that the Respondent, perhaps after having had its attention drawn to the Calvin Ayers and other panel decisions, has chosen to post a screen as depicted in Annex 1, does not resolve the question of whether the registration was in bad faith.
The Complainant contends that the registration (which was in November 2012) was for the purposes of tarnishing the image of the Complainant and damaging its reputation. The Complainant draws attention to the style of writing on the website, including the use of inflammatory language. The Respondent replies in much the same way as it does under paragraph 4(a)(ii) of the Policy. It relies heavily on assertions that the statements are true. It seeks to draw the Panel in to making assessments of the truth or veracity of the allegations. For example, it says in paragraph 15 of its original response:
“[15] The Respondent’s website criticizes certain employees of the Complainant. However this criticism is not defamatory because all statements are true. Only false statements can be defamatory. Some of the evidence indicating the statements are true is on the website itself and linked from the website. Additional evidence is in the possession of the Respondents.”
For its part, the Complainant similarly seeks to draw the Panel in to making findings or determinations of accuracy and correctness. The Panel can only repeat that it is no part of the function of this Panel to make such determinations. The truth or otherwise of the allegations is for another forum. The “additional evidence” is not before the Panel.
It is unnecessary to prolong this already lengthy decision. For the reasons under the section above and having regard to the manner of disseminating the information and allegations it is difficult to see how registration was in good faith. It was not necessary to register as the integral part of the disputed domain name what has been found to be an exact taking of the Complainant’s registered trade mark to address, voice and publicize what the Respondent sees as legitimate issues.
The Panel accordingly concludes that the disputed domain name was registered in bad faith.
That does not dispose of the matter. The Complainant must also establish use in bad faith.
The Complainant in its supplemental submission draws attention to material on the Respondent’s website that is derogatory of the Complainant’s solicitors. There are also links to the solicitors’ website, and, so it is said, unauthorized use of photographs of the solicitors acting, together with comments. The Complainant says these:
“demonstrate the general tenor of the website and make it clear that its purpose is not to provide the public with accurate information, or even to voice legitimate criticism of the Complainant. Rather, the Complainant submits that the website is calculated to damage its reputation, through innuendo, misleading and false accusations made anonymously, derogatory remarks and rhetorical questions. This is likely to cause very serious damage to the Complainant, which relies on its reputation in attracting funding and voluntary assistance from members of the public”.
To this the Respondent made no comment in its supplemental submission.
Taking this together with the matters set out above, the Panel finds that the disputed domain name is being used in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
7. Post Script
As a post script it is necessary to add a final comment. The Respondent should not be under any illusion that its right to freedom of speech and freedom of expression and the conveying of relevant information is in any way under attack. That most valuable of rights is to be preserved. But in any civilized society that recognizes such rights, there are concomitant obligations, as other Panel decisions have shown. The Respondent has its avenues available to it whereby it may communicate and disseminate the information it seeks to provide. This disputed domain name is not, on the facts of this matter, that avenue.
8. Decision
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 <stjohnnz.com> be transferred to the Complainant.
John Katz QC
Sole Panelist
Date: February 15, 2013
1 In fact the addition is “.nz” not “nz”, but nothing turns on this.
2 Klissers Farmhouse Bakeries Limited v. Harvest Bakeries Limited ,[1985] NZLR 143.
3 ASB Bank Limited v. Trust Bank Auckland Limited, (1989) 3 TCLR 77.
4 Arsenal Football Club plc v. Reed (No.2) [2003] RPC 39.
5 Parkdale Custom Built Furniture Pty Limited v. Puxu Pty Limited [1982] 149 CLR 191.
6 The ABsucks.com websites are a typical example.