WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miltenyi Biotec GmbH v. Rachal A. Liu-Williams
Case No. D2015-1596
1. The Parties
The Complainant is Miltenyi Biotec GmbH of Bergisch Gladbach, Germany, represented by Tigges Rechtsanwälte, Germany.
The Respondent is Rachal A. Liu-Williams of Melbourne, Victoria, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <miltenyibiotec.tel> is registered with Crazy Domains FZ-LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 7, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2015. The Response was filed with the Center on October 4, 2015.
The Center appointed Andrew F. Christie as the sole panelist in this matter on October 14, 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.
4. Factual Background
The Complainant was established in 1989, by its managing director, Mr. Stefan Miltenyi. It is now one of the biggest German companies in the biotechnological industry sector. The Complainant develops and manufactures more than 3,000 products that are used primarily in the field of immunology, stem cell biology, neuroscience and cancer. These products have been used in more than 35,000 clinical treatments to date, and have been cited in many publications by leading immunologists and stem cell researchers.
The Complainant's headquarters are in Germany, and its global business operations take place via 31 subsidiaries in North America, Europe and the Asia Pacific region, employing a multinational team of more than 1,200 biomedical scientists, physicians, engineers and supporting groups. The Complainant works with an extensive distributor network covering another 52 countries, in order to provide its customers around the world with its products for research, clinical and manufacturing needs. Each year there are in excess of one million visitors to the Complainant's websites resolving from 75 domain names.
The Complainant has numerous registrations for the trademarks MILTENYI and MILTENYI BIOTEC in about 40 countries, dating from at least as early as December 17, 2013. These registrations include International Registration number 1220816, for MILTENYI, designating, inter alia, Australia, registered on March 31, 2014.
In 2001 the Complainant started its business expansion into the Asia-Pacific region. Its subsidiary company in Australia is called Miltenyi Biotec Australia Pty Ltd. Since 2003 the Complainant has spent in excess of AUD 1 million on advertising its products and services in different media, and since 2010 it has generated a total of over AUD 18 million in revenue. There has been continuous use of the Australian company name and the trademarks MILTENYI and MILTENYI BIOTEC during the last 14 years in Australia, and each product sold in Australia bears the Complainant's trademarks and name.
The Respondent worked with an Australian company, Technical Solutions Group Pty Ltd ("TSG"), which was a service provider to the Complainant's Australian subsidiary. The business relationship between the TSG and the Complainant's Australian subsidiary was terminated by the Complainant's Australian subsidiary, due to a dispute about the quality of services rendered. The business activities of TSG ended in late 2012, and in early 2013 the Federal Court of Australia ordered that it be wound up as insolvent, resulting in the dismissal of all its employees, including the Respondent.
The disputed domain name was registered on January 30, 2014. It currently resolves to a website in which accusations are made alleging that the Complainant is financially unstable, is unwilling to pay any invoices, and purposely harms smaller businesses.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical to the Complainant's trademarks MILTENYIBIOTEC and MILTENYI, because it consists of those word elements. The domain suffix ".tel" is used and understood as a generic code developed to represent a global contact directory, and can be disregarded as it is merely descriptive and of no distinguishing value. The identity of the disputed domain name causes confusion because Internet users will expect and assume business contact details and information on the Complainant, and could therefore easily misapprehend the disputed domain name to belong, or be connected, to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent does not own any trademark rights in or licenses to use the Complainant's trademarks MILTENYI or MILTENYIBIOTEC; (ii) neither the Respondent nor any other party sought or obtained consent from the Complainant to register the disputed domain name; (iii) the Respondent is not affiliated with the Complainant in any way; (iv) the Respondent is not using, and has not prepared to use, the disputed domain name in connection with a bona fide offering of goods or services; (v) the Respondent is not commonly known by the disputed domain name, and does not use it as part of a legal name, corporate name or any other identifying manner; (vi) the disputed domain name is not used in connection with the services of the Respondent's own business as described under her website at "www.rachal.com.au", which relate to, amongst other things, "business consulting, Voodoo, Black Magic, Life Coaching and Self-Development & Counselling"; (vii) the Respondent cannot claim to have established any publicity or profiling under the disputed domain name; (viii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; (ix) the Respondent is using the disputed domain name for the purpose of accusing the Complainant of being financially unstable, unwilling to pay any invoices, and purposely harming smaller businesses by not paying outstanding invoices, these being unsubstantiated and abusive accusations that are unlawful conduct pursuant to the German law of Torts and the Australian Defamation Act 2005; (x) by adopting the disputed domain name the Respondent is effectively impersonating the Complainant, which cannot be described as "fair" or "legitimate": (xi) a respondent's right to criticize a complainant does not extend to registering a domain name that is identical or confusingly similar to the complainant's trademark or that conveys an association with the mark; (xii) the Respondent registered the disputed domain name deliberately and with the Complainant's rights in mind; (xiii) there is no adequate disclaimer on the website to which the disputed domain name resolves as to the source of the website and/or its content, nor is there a convenient link to the Complainant's actual website for visitors who have mistakenly arrived at the Respondent's ".tel" website looking for the Complainant; (xiv) the information on the website to which the disputed domain name resolves does great harm and damage to the Complainant's reputation; and (xv) the Respondent's selection of the Complainant's name and trademarks for her site allows her to make use of the Complainant's trademarks in a manner that leads an ordinary Internet user initially to believe that the author of the contents on this site was the Complainant or that the Respondent had the Complainant's permission to distribute her messages.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) it was registered primarily for the purpose of disrupting the business or activities of the Complainant; (ii) the Respondent's intention from the outset was to express on the Internet certain views that are vilifying the Complainant's business practices, and deliberately selected the disputed domain name aware that it was identical to the Complainant's corporate and trading name; (iii) the Respondent's registration and continued use of the disputed domain name are undertaken intentionally and expressly to disrupt the Complainant's activities and to expand the audience for her accusations by misleading Internet users as to the source, sponsorship, affiliation or endorsement of her website; and (iv) the Respondent prevents the Complainant from reflecting the trademarks in a corresponding domain name.
The Respondent does not dispute that the disputed domain name is identical to a trademark in which the Complainant has rights. However, the Respondent contends: (i) that the website resolving from the disputed domain name exists only to alert others to the Complainant's business practices and does not exist for commercial gain; (ii) that no reasonable observer would believe the website resolving from the disputed domain name is an official website of the Complainant as it would not put up an official website criticizing itself; and (iii) the Complainant has shown no evidence that it actually needs to use the disputed domain name and is instead using this process in an attempt to silence legitimate criticism of the Complainant's business practices.
The Respondent disputes the claim that she is not making a legitimate fair use of the disputed domain name because: (i) the Complainant's argument is based on the incorrect assumption that the statements made on the website resolving from the disputed domain name are false and therefore not fair use; (ii) as the statements on the website are true, they are legitimate criticism of the Complainant's business practices and therefore qualify as fair use; and (iii) no reasonable person would believe that the Complainant would set up a website criticizing itself so there is no need to add a disclaimer.
The Respondent contends that the disputed domain name was not registered and is not being used in bad faith because: (i) the use of the Complainant's name was selected because the Complainant's questionable business practices are the subject of the website; and (ii) the website does not claim to represent the Complainant and no reasonable person would think that the Complainant would put up a website to criticize itself.
6. Discussion and Findings
A. Identical or Confusingly Similar
When the generic Top-Level Domain ("gTLD") identifier ".tel" is ignored, the disputed domain name consists of the Complainant's registered trademark MILTENYI BIOTEC (without the space between the words). Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The disputed domain name is used to resolve to a website making accusations about the Complainant's business practices. The website consists of a single page, the title of which reads: "Stefan Miltenyi - Miltenyi Biotec". Underneath the title is the text: "Miltenyi Biotec has current outstanding invoices against at least one company that is known. Allegedly, they have a reputation and a history of not paying bills. Their's [sic] reputation is not clean. They have caused at least 1 smaller company to close". There follows entries that purport to be contact details for the Complainant. One of these entries is the web address "www.miltenyibiotec.net.au", which resolves to another webpage at which further critical comments about the Complainant are displayed.
This is a clear-cut case of the Respondent using the disputed domain name to resolve to a website at which the Respondent makes comments critical of the Complainant (a "criticism site" or, as it is sometimes called, a "gripe site"). The Respondent appears to be using the disputed domain name solely for this purpose, and not as a pretext for some other purpose, such as to obtain a commercial benefit. In this sense, therefore, the Respondent is using the disputed domain name for "genuine" criticism ("genuine" characterizing the motives, but not necessarily the content, of the criticism).
According to the paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), there are two main views on whether use of a domain name to engage in genuine criticism gives rise to rights or legitimate interests in the domain name: (i) the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark, especially when the domain name consists solely of the trademark (i.e., <trademark.tld>); and (ii) irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial (this being a view generally adopted only in cases involving parties solely from the United States of America ("US") or the selection of a US mutual jurisdiction).
The Panel recognizes that the personal and public values that support an entitlement to speak freely ("free speech") are found, in varying degrees, in most countries. Without a doubt, an entitlement to free speech exists in, and is highly valued by citizens and residents of, Australia – the country in which the Respondent appears to reside. In the Panel's opinion, resolution of a perceived conflict between an entitlement to free speech and an entitlement to a domain name registered in a gTLD is one of the few instances in which considerations specific to the nation in which each party resides should be taken into account in making decisions under the Policy. Thus, the Panel has given careful consideration to the Respondent's contention that she has a right or legitimate interest in the disputed domain name by virtue of using it to resolve to a website at which she ventilates her criticisms of the Complainant.
Having given careful consideration to the matter, the Panel concludes that use of a domain name that consists solely of the complainant's trademark (i.e., <trademark.tld>) for the purposes of engaging in criticism of the complainant does not, of itself, give rise to rights or legitimate interests in the domain name. The reason for this conclusion is that, as was said in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, "the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views". While it is true, as the Respondent says, that it is unlikely that a visitor to the website to which the disputed domain name resolves would think that it is a website belonging to the Complainant once the content has been read, the fact is that prior to landing at the website a visitor would not know that it is not a website belonging to the Complainant. Indeed, the fact that the disputed domain name consists solely of the Complainant's trademark may lead a potential visitor to the website to think otherwise. This use of the Complainant's trademark is not, therefore, a legitimate use.
The Respondent has not asserted – and, on the record currently before the Panel, could not make out – any ground on which she has rights or legitimate interests in the disputed domain name other than the ground of engaging in genuine criticism of the Complainant. For the reasons given above, the Panel has concluded that this ground does not provide the Respondent with rights or legitimate interests in the disputed domain name on the particular facts of this case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
None of the circumstances set out in paragraph 4(b) of the Policy as being evidence of registration and use of a domain name in bad faith appear, according to the facts in the record before the Panel, to apply to this case. However, it has long been recognized by panels that the paragraph 4(b) circumstances are not exhaustive of all the circumstances that constitute registration and use of a domain name in bad faith. Furthermore, previous panels have found that the registration and use of a domain that consists solely of the complainant's trademark for the purposes of criticizing the complaint constitutes registration and use of the domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy – see, e.g., Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776. The Panel agrees with that approach. Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <miltenyibiotec.tel> be transferred to the Complainant.
Andrew F. Christie
Date: October 28, 2015