WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deskan S/A v. PRQ Inet KB / Internet.bs Corp. / Fundación Private Whois
Case No. D2013-1112
1. The Parties
Complainant is Deskan S/A of Nassau, the Bahamas, represented by Patricia Peck Pinheiro Advogados, Brazil.
Respondent is PRQ Inet KB of Stockholm, Sweden / Internet.bs Corp. of Nassau, the Bahamas / Fundación Private Whois of Panama, Panama.
2. The Domain Names and Registrars
The disputed domain names <bongrille.com> and <franquiabongrille.com> are registered with Internet.bs Corp.
The disputed domain name <franquiabg.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2013. On June 20, 2013, the Center transmitted by email to both registrars a request for registrar verification in connection with the disputed domain names. On June 20, 2013, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 21, 2013, Internet.bs Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 26, 2013 providing the registrant and contact information disclosed by Internet.bs Corp. and inviting Complainant to submit an amendment to the Complaint.
In response both to a notification by the Center that the Complaint was administratively deficient, and the email reflecting the registrant and contact information disclosed by registrar Internet.bs Corp., Complainant filed an amendment to the Complaint on June 29, 2013.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2013.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on August 1, 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
Complainant owns several Brazilian trademark registrations for marks that include the phrase “Bon Grille.” The BON GRILLE service mark registrations are “mixed,” meaning they protect the “words with design,” disclaiming protection for purely nominative use. See, e.g., Brazilian Trademark Office Registration No. 821556479, registered August 12, 1999 in International Class 35.
The disputed domain names were registered on the following dates: both <bongrille.com> and <franquiabongrille.com> on May 1, 2012; and <franquiabg.com> on May 26, 2011. The Portuguese word “franquia” means “franchise” or “franchising” in English.
Both <bongrille.com> and <franquiabongrille.com> route to identical websites that share the same Portuguese-language content, consisting of extensive and harsh criticism of the restaurant franchising business licensed by Complainant under BON GRILLE and other service marks.1 The posted information also extends to criticism of the family of the franchisor’s owners and food suppliers from whom individual franchise restaurant operators obtain supplies under the franchising arrangement. The two websites also allege that many individual operators have been closed down through the unfair and illegal business practices of Complainant.
By clicking through the links on the websites online, and in archives, names of individuals associated with the websites are provided. The sites appear to provide contact information for names of Brazilian attorneys who can be reached by franchisees or others interested in supporting or participating in legal actions against Complainant.
The following chart correlates information respecting registration of the disputed domain names.
Disputed Domain Name
Fundación Private Whois
May 1, 2012
Fundación Private Whois
May 1, 2012
No visible content
PRQ Inet KB
May 26, 2011
Complainant is also registrant of the domain name <bongrille.co.br>.
5. Parties’ Contentions
Complainant avers that it is an investment company managed in Brazil by the Bonfiglioni Family. The company has numerous food and beverage interests, among them a large fast-food chain and franchising business. The business was allegedly established in 1994 and operates using the BON GRILLE marks.
Complainant alleges that it is unaware of the actual identity of the individual holders of the registrations to the three disputed domain names. Complainant seeks a remedy through this single proceeding because all three disputed domain names share identical server names, NS.PRQ.SE and NS2.PRQ.SE. Therefore, Complainant deduces, “all the [disputed] domains were registered by PRQ INET KB”.
Complainant avers that the webpages to which the disputed domain names route “have been used to tarnish the business and the mark BON GRILLE. . . . [T]he websites were created for the exclusive [purpose] of defaming the franchising name and the owners of the business through illegal material and false information. The pages attack the business showing offenses, lies and untrue accusations against the company and its managers, specially the Bonfiglioni family, who are the founders”.
The Complaint presents the following allegations under the Policy:2
(i) Identical or Confusingly Similar
The disputed domain names are confusingly similar to Complainant’s well-known BON GRILLE mark, and Respondent is not licensed or authorized to use the mark. Respondent made use of the mark intending to attract consumers looking for information about the restaurants and the disputed domain names cause confusion among restaurant customers and possible franchising partners.
(ii) Rights or Legitimate Interests
Respondent registered the disputed domain names with awareness that the BON GRILLE mark belongs to Complainant, for the purpose of disrupting Complainant’s franchising business by diverting customers and “to tarnish the service mark at issue. Such a conduct shows clearly [Respondent’s] awareness and bad-faith”.
(iii) Bad Faith
Respondent is using the disputed domain names intentionally, “primarily for the purpose of disrupting the Complainant business”.
“Although the use of a privacy registration services is not in and of itself an indication of bad faith, in this case, besides of the fact that the Registrant is using a privacy service, all the personal and contact information is omitted.”
“Above all of the arguments, the pages content is the doubtful proof of the bad-faith of the Registrant. The pages are filled with texts, images and videos dedicated to tarnish the service mark ‘BON GRILLE’, lowering its valuation and adding negative concepts to the business.”
“Through the use of the name and mark of the Complainant’s business, the Respondent seeks to divert Internet users to his/her website. Indeed, the pages were developed by Respondent for the purpose of disrupting the Complainant’s franchising and in order to make unproven allegations of criminal activity and potentially defamatory remarks. Person seeking information on Complainant’s activities might be drawn into the Respondent website and be exposed to contrary and critical views.”
The Complaint also contends that registering a domain name using Complainant’s mark is unlawful under the Brazilian Trademark and Unfair Competition Law, and that “[Respondent] has also acted against the international best practices regarding intellectual property, particularly the requirement of paragraph 2 of the UDRP, which states: ‘By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.’”
On the basis of these allegations, Complainant requests transfer of the disputed domain names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Single Proceeding
As a threshold matter, the Panel must determine whether each of the three disputed domain names (and their respective registrants) are connected in some way, making a single proceeding appropriate under the UDRP.
The Panel agrees with Complainant that the individual or entity that ultimately owns or is responsible for the registrations is not immediately discernible based on the information provided by the registrars (although, as noted, contact information for individual persons is provided on the websites themselves). The Panel disagrees, however, with Complainant’s contention that the use of a single common server (or in this instance, two common servers), without more evidence, is sufficient to bundle the registrant or registrants of all three disputed domain names together within a single administrative proceeding under the Policy.
The Panel nonetheless concludes here that it is proper to include the three disputed domain names in a single administrative proceeding. The Panel makes this determination on the basis of grounds other than those advanced by Complainant, as elaborated below. Since the Panel infers from the circumstances listed below that there is, in fact, a single registrant behind all three disputed domain names, the Panel rules that a single proceeding is called for.
First, as can be seen in the chart above, two of the disputed domain names (<bongrille.com> and <franquiabongrille.com>) were registered the same day;
Second, these two names were registered under the same privacy registration service and with the same registrar;
Third, both of these names contain Complainant’s BON GRILLE mark;
Fourth, the remaining disputed domain name <franquiabg.com>, while not sharing the first three characteristics, has identical content to the <bongrille.com> website; and
Fifth, both the websites at <bongrille.com> and <franquiabg.com> in the contact field on the bottom of the home page refer users to the same address, “email@example.com.”
B. Substantive Rules of Decision
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable (Rules, paragraph 15(a)). With respect to each of the disputed domain names, Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements, even if Respondent does not submit a Response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
C. Identical or Confusingly Similar
Although the Complaint alleges that all three disputed domain names are confusingly similar to Complainant’s BON GRILLE “well-known” marks, as explained below, the Panel finds that: (1) the disputed domain name <bongrille.com> is identical to Complainant’s marks; (2) the disputed domain name <franquiabongrille.com> is confusingly similar to Complainant’s marks; and (3) the disputed domain name <franquiabg.com> is neither identical nor confusingly similar to Complainant’s marks.
UDRP panels generally disregard the generic Top Level Domain (“gTLD”) suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
First, without the gTLD suffix, <bongrille.com> consists simply of the words in Complainant’s mixed service mark. The Panel finds that this disputed domain name is therefore identical to the predominant features of Complainant’s BON GRILLE mark.
Second, again disregarding the gTLD suffix, <franquiabongrille.com> consists of the combination of Complainant’s BON GRILLE mark with the added word “franquia,” meaning in English “Bon Grille franchise.” The Panel concludes that the addition of the descriptive term “franquia” does not negate the confusion created by Respondent’s complete inclusion of the BON GRILLE trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629. In fact, since Complainant actively conducts business through its franchise arrangements, the addition of the term “franquia” to Complainant’s trademark in the <franquiabongrille.com> disputed domain name simply increases the confusion that Internet users would experience. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark….”).
As to the third disputed domain name, the Complaint makes no specific allegation or showing that “bg” or “franquiabg” enjoys trademark or brand name status. Therefore, the Panel finds that <franquiabg.com> is neither identical nor confusingly similar to Complainant’s marks, and that the Complaint fails as to this third disputed domain name.
The Panel nonetheless concludes that the first element of paragraph 4(a) of the Policy is established as to the first two disputed domain names, <bongrille.com> and <franquiabongrille.com>.3
D. Rights or Legitimate Interests
The Panel rules that the Complaint fails to fulfil the second element of paragraph 4(a) of the Policy with respect to the <bongrille.com> disputed domain name, as elaborated below. As further explained below, the Panel refrains from ruling on whether paragraph 4(a)(ii) of the Policy is fulfilled with respect to the <franquiabongrille.com> disputed domain name.
The Policy outlines circumstances which, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name. Policy paragraph 4(c). One of those circumstances is when a 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 trademark or service mark at issue.” Id. paragraph 4(c)(iii).
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, after which, if shown, the burden of rebuttal passes to Respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Under the facts presented, the Panel is of the view that the legal question of fair use under Policy paragraph 4(c)(iii) is a significant issue in this proceeding, at least in respect of the disputed domain name <bongrille.com>. The Complaint makes no substantial allegations relevant to the concept of legitimate noncommercial or fair use; it contends only that Respondent uses the disputed domain names to “disrupt,” “tarnish” or to foment mistruths and to make illegal material false statements – potentially to defame Complainant and its founders/managers.
In the discussion that immediately follows, the Panel considers the allegations of tarnishment and the alleged mistruths, material false and potentially defamatory statements. The concept of disruption is considered under the Panel’s discussion of Bad Faith under Policy paragraph 4(a)(iii), in the section following this section on rights and legitimate interests.
i. The <bongrille.com> Disputed Domain Name and Noncommercial Free Speech Right as Fair Use Under the UDRP
Does Respondent’s use of the disputed domain name <bongrille.com> represent protected free speech? Does it therefore constitute fair use, to underpin the existence of rights and legitimate interests on the part of Respondent?
The Complaint does not allege, nor does the record reflect, that Respondent uses the disputed domain names for any commercial purpose. Instead, the record reflects use of <bongrille.com> in connection with a “gripe” site, or forum for criticism and sharing of negative information respecting the business conducted by Complainant under the BON GRILLE marks.
Some UDRP panels recognize a noncommercial free speech right in the use of a website employing a disputed domain name that is identical or confusingly similar to the complainant’s trademark, while others, although acknowledging the existence of the noncommercial free speech fair use defense, have declined to grant the defense in certain cases.
Several UDRP criticism site cases turn on whether the disputed domain name is on the one hand identical or, on the other hand, merely confusingly similar to the complainant’s trademark. Some panels in the former cases (e.g., “<trademark.com>”) have found that the principle of free speech on the Internet does not go so far under the Policy as to permit the initial confusion experienced by Internet users to be dispelled only upon viewing content of a respondent’s webpage containing criticism, protest or parody. In some of the latter cases (e.g., “<trademarksucks.com>”), fair use is found because the panel concludes that a respondent’s choice to add words to the trademark itself alerts Internet users that the respondent’s webpage is not that of the complainant (such as in the so-called <trademarksucks.com> cases). Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No.D2004-0206. Thus in the latter cases, it is sometimes considered that a respondent’s use of the disputed domain name does not obstruct access or confuse the public about the website of the trademark holder.4
The Panel has considered these issues in previous proceedings. The Panel is generally of the view that use of a domain name for a noncommercial purpose is legitimate even if it is identical or confusingly similar to a complainant’s mark, if a respondent’s use does not materially obstruct access by Internet users to the complainant. Equality Charter School, Inc. v. Mona Davids / A Happy DreamHost Customer, WIPO Case No. D2011-1226 (citing, inter alia, Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379).5
Thus, this Panel believes that a flexible, context-based approach to fair use cases is required and that no bright line may be drawn denying the existence of a noncommercial free speech right simply based upon whether a respondent has or has not added words (apart from the gTLD suffix) to a complainant’s mark. See Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No.D2007-1947; Bridgestone Firestone v. Myers, WIPO Case No. D2000-0190; Britannia Building Society v Britannia Fraud Prevention, WIPO Case No. D2001-0505; Satchidananada Ashram - Integral Yoga Institute v. Domain Administrator, NAF Claim No. FA0209000125228; Elm Grove Dodge Chrysler Jeep v Schedule Star, NAF Claim No. FA0410000352423; Invention Technologies v Alliance for American Innovation, NAF Claim No. FA0607000758833; Civic Development Group v John Paul Schaffer, NAF Claim No. FA01090001038; Jenny Solursh v. American European Marketing, NAF Claim No. FA0612000864749; Brahma Kumaris World Spiritual Organization v. John Allan, NAF Claim No. FA0709001075486).
Before considering whether Respondent’s use of the disputed domain name cannot qualify for fair use because it materially obstructs access to Complainant, however, the Panel must make a threshold finding that protected speech is involved.
Panel approaches often vary depending on whether the panel looks to national law or some source of international law to determine the question of fair use. Policy paragraph 15(a) empowers panels to determine the principles of law they deem applicable. See WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas, WIPO Case No. D2009-1105; Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379; Fundación Calvin Ayre Foundation v. Erik Deutsch, supra.
It is difficult to evaluate the extent of legal free-speech protection for the content of Respondent’s website, particularly without guidance from either Complainant or Respondent. The Panel believes that the national right to free speech vying for application here is enshrined in Article IV of the Brazilian Constitution of 1988, and possibly other sources of national law. Article IV reads “é livre a manifestação do pensamento, sendo vedado o anonimato,” translated to English as “the expression of thought is free, anonymity being forbidden”.
Potential sources of international law supporting freedom of expression that vie for potential application in this proceeding include the Universal Declaration of Human Rights, the European Convention on Human Rights, and the Charter of Fundamental Rights of the European Union (Article 11). Article 19 of the Universal Declaration of Human Rights reads: “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”
The Panel views the right to free speech under the above-mentioned national and international standards guaranteeing freedom of expression to be sufficiently broad to cover the present situation. Respondent’s website comments on Complainant’s business practices, in particular, those affecting other important individual rights, such as the right of individual franchisees to make a living and to avoid allegedly corrupt practices. The website also appears to be inviting the participation of others in organizing or pursuing legal redress for the alleged injuries to franchisees.
For its part, Complainant understandably finds the material appearing on Respondent’s website to be stinging and harsh. The Panel recognizes that Complainant has alleged that the website contains false information. However, in this summary UDRP proceeding, the Panel cannot undertake an evaluation of the veracity of content and whether it is potentially defamatory (and therefore presumably not protected) under Brazilian law.6
For purposes of the present analysis only, the Panel will assume that Respondent’s expression is protected speech under applicable law. Even accepting this assumption, the Panel must then proceed to weigh the question of whether the context here supports fair use. Put otherwise, under the authorities previously discussed, the Panel must examine whether Respondent’s exercise of its right to make comment does not unduly confuse users or obstruct access to complainant’s website, despite the initial confusion that might occur when users directly type <bongrille.com> into their browser address bar or otherwise access Respondent’s website.
The Panel concludes that Respondent’s use of the disputed domain name <bongrille.com> does not materially obstruct access to Complainant. It is true that at least in the case of <bongrille.com> Respondent adopted the words of Complainant’s mixed mark itself as a domain name (a <trademark.com> case), and thus does cause initial confusion among Internet users. Users for the most part would only become aware that they are not visiting Complainant’s website once they arrive to view Respondent’s home page.
Many, if not most, Internet users would employ a search engine to find a website corresponding to a trademark in today’s search-engine based online culture. The Panel has conducted such searches.
Searching for “Bon Grille” in the popular search engines at “www.yahoo.com” and “www.google.com”, Respondent’s website did not appear in the first five pages of listings; however, the listing of Complainant’s “www.bongrille.com.br” website appeared first in both searches along with several later listings pointing to Complainant’s website. On the www.bing.com search, again, Complainant’s site appeared first; Respondent’s site at “www.bongrille.com” appeared only on the fourth page of listings, following further references to Complainant’s site. The visible material on the Bing browser summary listing also would, in the Panel’s view, alert users to the critical nature of the site’s content and the fact that the listed site was not Complainant’s.7
This Panel believes that a formalistic disclaimer is not indispensible to alerting users that they have reached a website that is not Complainant’s, employing a context-based approach. See, e.g., Fundación Calvin Ayre Foundation v. Erik Deutsch, supra. The Panel finds that the information and tone of the site would alert any reader upon first viewing that the website is not sponsored by Complainant, but is instead boldly critical of Complainant’s business, championing individual franchisees who have allegedly been run out of business by the management of the restaurant franchise.
The Panel believes that although the <bongrille.com> domain name does not add terms to the words of Complainant’s mixed mark, no one viewing the website could reasonably think that the website to which it routes is Complainant’s website. Complainant also owns the registration to a domain name identical to its mark, with the suffix “.com.br”. Thus, the Panel believes under the authorities referenced above that Respondent’s use of the disputed domain name for critical commentary and news does not unfairly mislead users seeking to find Complainant’s website or unreasonably obstruct users from reaching Complainant’s website.
The Panel must also address the Complaint’s allegations that Respondent’s use of the disputed domain names tarnishes Complainant’s mark. If found, tarnishment would also preclude a finding of fair use under Policy paragraph 4(c)(iii).
The Panel notes that it is often the nature of critical commentary to make negative associations with a trademark or trademark holder; nonetheless, critical content on a website using a confusingly similar or identical domain name has been held by panels and courts to be fair use and permissible. As noted by others, it has long been established that tarnishment in the context of the Policy “refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (citing Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (WIPO January 23, 2001). Fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in … libel must be brought in other legal venues. Id.” Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
The Panel has reviewed the record in detail, and finds that “unseemly” conduct such as that classically constituting tarnishment under the Policy, as described above, is absent from this case.
In summary, the Panel finds that the Complaint fails carry the burden to establish a prima facie case, for failure to prove the absence of a fair use right by Respondent to launch critical commentary using the <bongrille.com> domain name.
iii. The <franquiabongrille.com> Disputed Domain Name
The Panel must separately examine the application of Policy paragraph 4(a)(ii) to the disputed domain name <franquiabongrille.com>, because it routes to no publicly visible content and therefore is not associated with critical commentary.
There are no meaningful allegations before the Panel bearing upon whether Respondent has rights or legitimate interests in the <franquiabongrille.com> disputed domain name. There is no record of use of the website since its registration.
In the absence of specific allegations or evidence, therefore, it is also difficult to establish whether the Complaint fulfills Policy paragraph 4(a)(ii) as to <franquiabongrille.com>. However, because the Panel concludes below that the Complaint fails to establish bad faith registration and use, the Panel refrains from ruling on the application of Policy paragraph 4(a)(ii) in relation to the <franquiabongrille.com> disputed domain name.
E. Registered and Used in Bad Faith
The Complaint makes several allegations respecting bad faith. For the sake of analysis, the Panel divides and enumerates these bad-faith allegations in summary as: (1) Respondent is tarnishing Complainant’s marks; (2) Respondent seeks to draw Internet users to Respondent’s website through confusion with Complainant’s marks; (3) Respondent makes negative statements and criticisms about Complainant; and (4) Respondent is disrupting Complainant’s business.
The Panel analyzes in turn each of these alleged grounds for finding bad faith, although the fourth allegation seems most significant.
Paragraph 4(b) of the Policy describes circumstances that may be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name”;
“(ii) [the 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 [the respondent has] engaged in a pattern of such conduct;
“(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”; and
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on your website or location.”
The circumstances listed under paragraphs (iii) and (iv) of Policy paragraph 4(b) seem most germane to this proceeding.8
As for the Complaint’s bad-faith allegation number (1), the Panel reiterates that the record contains no indication of tarnishment in the sense of the Policy.
Bad-faith allegation number (2), confusion, appears to relate to Policy paragraph 4(b)(iv). The Panel rules that this ground for finding bad faith fails because mere confusion is insufficient: the language of the UDRP requires a motivation of commercial gain, which is not alleged, and in any case, absent on the record of this proceeding in connection with both the <bongrille.com> and <franquiabongrille.com> disputed domain names.9
In relation to bad-faith allegation number (3), the Complaint alleges that “Person[s] seeking information on Complainant’s activities might be drawn into the Respondent website and be exposed to contrary and critical views.” Negative commentary is often inherent in the nature of free expression. Again, however, it is well established that free speech may underpin a respondent’s permissible use of domain names incorporating or based on a complainant’s marks, and the encouragement of robust debate and divergent viewpoints often underlies national legal guarantees of freedom of expression.
Bad-faith allegation number (4), disruption of Complainant’s business, appears to be made in reference to Policy paragraph 4(b)(iii). This ground for finding bad faith under the UDRP, by its express terms, requires registration of a disputed domain name “primarily for the purpose of disrupting the business of a competitor.”
Is Respondent a “competitor” for purposes of finding bad faith under the UDRP?
The majority of UDRP decisions that this Panel has found examining the application of Policy paragraph 4(b)(iii), unlike the present proceeding, involve commercial competitors in the ordinary sense. E.g, Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478 (redirection to respondent’s website, which represented his business selling the same products as the complainant’s); Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 (respondent planned to use domain name to sell used cars, in competition with trademark holder).
In support of its allegations of bad faith, Complainant here cites the panel decision in Mission KwaSizabantu v. Rost, WIPO Case No. D2000-0279.10 In that decision the panel ruled, among other things, that a respondent who did not compete with the complainant in respect of goods or services nonetheless acted as "competitor" when he published a criticism web site because "[t]he natural meaning of the word ‘competitor’ is one who acts in opposition to another".
Although this interpretation of “competitor” from the Mission Kwasizabantu decision has been followed by some, see The Toronto-Dominion Bank v. Boris Karpachev WIPO Case No. D2000-1571, this Panel believes that the view expressed in several other UDRP decisions more consistently supports the UDRP’s plain meaning and the theory behind it. For example, the panel in Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 wrote:
“The Panel respectfully disagrees with the theory of Mission KwaSizabantu and similar cases that any form of oppositional interest (such as that between a trademark owner and the publisher of a criticism site) may transform the complainant and respondent into ‘competitors’ as that term is used in Paragraph 4(b)(iii) of the Policy. . . . . Rather, a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner. If Paragraph 4(b)(iii) were given the meaning advanced by Complainant, respondents would be found to have disrupted the business of competitors in far too many cases, and the Policy’s bad faith requirement would be diluted . . . .”
Embracing Tribeca Film Center’s interpretation of “competitors”, the Panel finds that there is no indication that Respondent uses or intends to use the disputed domain names in connection with goods or services in the field of the marks.
The present content on the <bongrille.com> website clearly supports this finding. The Panel infers from the fact that both the <bongrille.com> and <franquiabongrille.com> disputed domain names were registered the same day on Respondent’s behalf that Respondent’s intentions respecting both disputed domain names was similar. In any case, there is no allegation or indication on the record that could support an inference that Respondent intends by using the <franquiabongrille.com> disputed domain name to “offer goods or services that can compete with or rival the goods or services offered by the trademark owner.” The Panel therefore concludes that the Complaint also fails to establish bad faith under Policy paragraph 4(b)(iii).
While it is well established that the listing of bad-faith circumstances in Policy paragraph 4(b) is not exhaustive, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the expressly enumerated criteria of bad faith in Policy paragraph 4(b) reflect the Policy's focus on conduct that takes unfair advantage of trademark owners for commercial purposes. Examining both the enumerated factors and the overall circumstances which reflect no commercial motivation in the use of the disputed domain names, the Panel concludes that the Complaint fails to establish bad faith registration and use as required under the Policy.
It is out of bounds in this summary UDRP proceeding for the Panel to be expected to rule on the Complaint’s allegations that Respondent’s registrations were made in violation of the Brazilian Trademark and Unfair Competition law and other potentially applicable laws. With the exception of making rulings under the UDRP, the Panel respectfully declines counsel’s invitation to do so. Nothing in this decision, however, is intended to affect the ability of the parties to seek recourse under other applicable laws.11
In summary, the Panel concludes that the Complaint fails to fulfill the requirements of Policy paragraph 4(a)(i) with respect to the disputed domain name <franquiabg.com> because the Panel finds that <franquiabg.com> is not confusingly similar to Complainant’s marks.
While the Panel finds that the remaining disputed domain names <bongrille.com> and <franquiabongrille.com> are confusingly similar to Complainant’s marks under paragraph 4(a)(i), as also explained above, the Complaint fails to fulfill the further requirements of Policy paragraph 4(a)(ii) with respect to <bongrille.com>.
Finally, the Panel finds that the Complaint fails to fulfill the requirements of Policy paragraph 4(a)(iii) with respect to both <bongrille.com> and <franquiabongrille.com>.
For the foregoing reasons, the Complaint is denied.
Jeffrey D. Steinhardt
Date: August 28, 2013
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See paragraph No. 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). The Panel has also viewed historical web page images at “www.archive.org”.
2 Although the order and categorization of legal allegations in the Complaint do not correspond to the structure of the Policy, this Decision is made on the basis of all credible allegations, regardless of the manner in which they are presented.
3 Whether or not the marks are well known would not, in the Panel’s view, affect the outcome of this proceeding. In any case, the Complaint provides little evidence upon which the Panel could make a finding on whether Complainant’s marks are well known, as alleged.
5 The Panel in Chelsea wrote:
“Access to the complainant is materially obstructed if it is not immediately apparent to Internet users on visiting the respondent’s website that it is not connected or associated with the complainant. It is therefore an essential condition of legitimate use of such a domain name for the purpose of this provision that the respondent makes it very clear, whether by a disclaimer or other content or both, in the first field of vision of a person visiting his/her/its website, that it is independent of the complainant.
“Access may also be obstructed if the respondent registers all or most of the obvious domain names suitable for the complainant or the brand in question. This may prevent or unduly interfere with the complainant’s provision of convenient access to its website.”
6 The Complaint did not address the issue of fair use or free speech although it is an important issue in this proceeding – in fact the Complaint did not provide exhibits or excerpts from Respondent’s websites, but provided only the general descriptions set forth above.
Complainant avers that it is unaware of the identity of those behind the disputed domain names, therefore, Complainant might have taken the position that the expression on the websites is unprotected “anonymous” expression under the Brazilian Constitution. On this record, the Panel is reluctant to delve into interpretations of Brazilian national law, however the Panel notes that the website apparently identifies several attorneys presumably connected with the website’s content. The Complaint omitted this fact.
7 The Bing listing reproduces language from the top of Respondent’s webpage. The listing begins, (translated from Portuguese): “How many stores of the Bon Grille network remain? 34 were closed . . . .”
8 There is no evidence supporting the application of Policy paragraphs 4(b)(i) and (ii). In the interests of completeness, however, the Panel notes that there is no allegation relevant to paragraph (i); respecting paragraph (ii), Complainant could not successfully make allegations that it is being prevented from reflecting its mark in a corresponding domain name, since Complainant is registrant of <bongrille.com.br> and makes no allegations that Respondent has engaged in a pattern of conduct, as required in paragraph (ii).
9 To the extent that the invitation to contact specific attorneys displayed on a screen of Respondent’s website might suggest a commercial motive supporting bad faith, the Panel notes that criticism cases have acknowledged that de minimis economic activity ancillary to the primary thrust of such websites may be permissible. E.g., Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (“The Complainant contends that by offering for sale t-shirts and other ‘merchandise’ and by acquiring financial donations the Respondent is making commercial gain. On the evidence, these are activities that are merely ancillary to the Respondent’s main purpose which is to criticize the Complainants’ activities . . . .”); Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.
10 Citation to this decision is the Complaint’s only scant recognition that there might be a free-speech/fair use issue involved in the current proceeding.
In its discussion of bad faith, the Complaint also cites the decision in Merck KGaA v. c/o whoisproxy.com Ltd/Galib Gahramanov, G Domains, WIPO Case No. D2011-1271, attributing to that decision a lengthy quotation set forth in the Complaint. The Panel has reviewed that brief decision which involved transfer by consent, and finds that the quoted language appears nowhere in the cited decision; the decision contains no information or discussion about bad faith whatsoever.
11 The Complaint also cites a statute from the United States of America, but provides no explanation of that law’s relevance to the present proceeding. This proceeding has aspects that touch Brazil, The Bahamas, Sweden and Panama. Other than the U.S. location of the headquarters of eNOM, the registrar for one of the disputed domain names, this proceeding has no aspect or contact touching the U.S. any more than any other nation in the world.