WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Digicel Caribbean Limited v. Domains By Proxy, LLC / Jamie Mcullan
Case No. D2015-1854
1. The Parties
The Complainant is Digicel Caribbean Limited of Saint Lucia, internally represented.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Jamie Mcullan of Lake Worth, Georgia, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <digicelsucks.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2015. On October 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2015, 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 October 20, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 20, 2015. The Center received a pre-commencement communication from the Respondent on October 20, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2015. The Response was filed with the Center on November 2, 2015. The Respondent filed an amended Response on November 3, 2015. The Center received a further communication from the Respondent on November 4, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 16, 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's business was founded in 2001. In broad terms, it provides telecommunications services. It started in Jamaica, but since then has expanded operations, through local operating companies, to 31 countries in the Caribbean, North, South and Central America and the South Pacific.
It has a registered trademark for DIGICEL in a circular device coloured red, registered September 16, 2008 in at least Jamaica, Trademark No. 511116. The trademark is registered for a range of goods and services in International Classes 9, 16, 38 and 41 including, amongst others, mobile and fixed telecommunications services and Internet access services.
According to the Complaint, the Complainant has spent enormous sums of money promoting its trademark in its markets so that it has become well known. These moneys include sponsorships of Olympic and World Champions Usain Bolt since 2004 and since 2008 Shelly-Ann Fraser-Pryce.
The disputed domain name was registered on October 12, 2015. It resolves to a website which essentially consists of comments and links to articles highly derogatory of the Complainant and its services. Many of these comments are expressed in quite intemperate terms.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant says it has a wide trademark portfolio with registration of the trademark Digicel extending globally. As noted in section 4 above, it has provided evidence of one registration in Jamaica. That registered trademark is sufficient for this requirement under the Policy.
The Respondent says the disputed domain name is not confusingly similar to the Complainant's trademark because the addition of the "sucks" element means no-one would be confused into thinking the Complainant was using the disputed domain name.
It appears to be the case that some United States courts have considered that usages of this kind would not give rise to a likelihood of confusion.1 That approach has not been adopted under the Policy, however, which must often deal with disputes between parties in different jurisdictions. Instead, on the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks.2 This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In the context of the Policy, panels have generally focused on the role of this requirement as a threshold requirement of standing designed to ensure that complainants have a legitimate basis for invoking the protections afforded under the Policy. In that connection, panels have generally considered that it is sufficient for the complainant's trademark to be recognizable within the domain name to give rise to a finding of confusing similarity. Thus, generally, the inclusion of a person's trademark in a domain name with some other descriptive term, even a perjorative terms such as in the present case, is not usually sufficient to dispel a finding of confusing similarity.3
In the present case, the term DIGICEL is the only verbal element of the Complainant's trademark. It is an essential feature of that trademark and likely to be a common basis for referring to the Complainant's trademark. That element is incorporated in its entirety within the disputed domain name. The only difference, (disregarding the functional component ".com")4 being the addition in the disputed domain name of the perjorative term "sucks". The verbal element of the Complainant's trademark, therefore, serves as the distinctive component of the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See WIPO Overview 2.0, paragraph 2.1.
In the present case, the Complainant contends that the only visible activity of the website to which the disputed domain name resolves is to disparage the Complainant. The Respondent embraces this and says he is perfectly entitled to register and use the disputed domain name in this way.
In the present case:
(a) it is notable that the disputed domain name is not identical to the Complainant's trademark. While it does include the addition of a common or ordinary English word, "sucks", it is not one which customers and potential customers of the Complainant would expect the Complainant to use in its domain name;
(b) the content of the website consists of articles, links and comments which are highly critical of some aspect or other of the Complainant's services. These comments are often expressed in quite intemperate terms, often of a kind and style seemingly common on Twitter and other "comment" sites;
(c) the Respondent appears to be a customer of the Complainant's services and, from what appears on the website, does not appear to be in competition with the Complainant or seeking to divert customers from the Complainant to his own, or some other, business;
(d) the evidence before the Panel does not provide a basis for concluding that the Respondent's "gripe" with the Complainant is anything other than genuinely held;
(e) it is immediately apparent on arriving at the website which the disputed domain name resolves to that it is not the Complainant's website. Anyone arriving at the website could be under no illusions that the website was the Complainant's website or endorsed by the Complainant;
(f) the Respondent has not "cornered the market" in domain names that the Complainant can use. According to the Complaint, the Complainant does in fact have domain names as part of its portfolio.
In these circumstances, the Panel considers that the Respondent has successfully established that the circumstances outlined in paragraph 4(c)(iii) of the Policy apply. Accordingly, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name and the Complainant has failed to establish the second requirement under the Policy.
C. Registered and Used in Bad Faith
As the Complainant has failed to establish the second requirement under the Policy, its Complaint cannot succeed. Therefore, no good purpose would be served by addressing the third requirement under the Policy.
D. Reverse Domain Name Hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
The Respondent argues that bad faith should be inferred from the Complainant's previous attempt to use the Policy against another domain name, <digicel.com>, and the Complainant's toleration of a number of other domain names that other registrants have held for a number of years. These other domain names include <digicel-barbados.com> and <digicel-jamaica.com>, the latter of which is offered for sale at a price of USD 577.
The Panel notes that the previous decision5 involved an attempt to wrest the domain name from someone who had registered and been using it for several years before the Complainant was even founded. In that case, the Panel did not make a finding of reverse domain name hijacking.
The Complainant has not sought to explain its non-action against the other domain names which the Respondent alleges infringe. The existence of other domain names which might be the subject of complaint is not a consideration relevant to whether or not the disputed domain name contravenes the Policy. Nor is there an obligation on trademark owners to chase down every alleged infringer. It may well be that the other domain names alleged by the Respondent to infringe are not being used or otherwise not causing any real commercial damage to the Complainant up to this point.
The Panel considers there is considerable force in the argument that the Complainant should have realized its prospects against the disputed domain name were very poor, given the disputed domain name itself and the content of the associated website as a "gripe" site. The fact that the Complaint has been unsuccessful, however, is not enough in and of itself to warrant a finding of reverse domain name hijacking. While the matter may be thought narrowly poised, on balance the Panel declines to make the requested order in this case.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: November 26, 2015
1 See, e.g.. Lamparello v. Falwell 420 F 3d 209 (CA4 2005) and Baker v. DeShong 90 F Supp 3d 659 (ND Tex 2014).
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraphs 1.2 and 1.3.