WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EKOSPOL a.s. v. Anonymous Speech / ARCIS s.r.o.
Case No. D2016-2413
1. The Parties
The Complainant is EKOSPOL a.s. of Prague, Czechia, represented by PRK Partners s.r.o., Czechia.
The Respondent is AnonymousSpeech of Tokyo, Japan / ARCIS s.r.o. of Prague, Czechia.
2. The Domain Name and Registrar
The disputed domain name <ekospol.info> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2016. On November 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2016, 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 December 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2017.
On December 14, 2016, the previous holder of the disputed domain name, ARCIS s.r.o., whose contact information was included in the Complaint, submitted an email to the Center making certain representations.
The Center informed the Parties of the commencement of the panel appointment on January 3, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on January 5, 2017. 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. Identity of Respondent
The email dated December 14, 2016 referred to above stated that ARCIS s.r.o. was the previous owner of the disputed domain name and had transferred the same to the Respondent AnonymousSpeech on September 23, 2013. It denied that ARCIS s.r.o. had any ongoing responsibility for the disputed domain name. However, the Complainant submits, and the Panel accepts, that the Respondent AnonymousSpeech is a provider of online privacy services. Further, despite disclaiming ownership of the disputed domain name, the email from ARCIS s.r.o. contained substantive argument as to why the disputed domain name should not be transferred to the Complainant. In the light of these circumstances, the Panel finds it more likely than not that the Respondent ARCIS s.r.o. retains some interests in the disputed domain name and that ARCIS s.r.o. is therefore a proper Respondent in this proceeding in addition to the Respondent AnonymousSpeech. The Panel will refer collectively to those parties as the Respondent in the remainder of this Decision.
5. Factual Background
The Complainant is a company registered in Czechia. According to information filed in conjunction with the Complaint, the Complainant is a developer of real estate.
The Complainant is the owner of Czechia trademark number 201616 for a stylized character mark EKOSPOL, registered on July 28, 1997 in Classes 6, 19, 36 and 37.
The disputed domain name was registered on December 8, 2009.
The Complainant submits, and the Respondent does not deny, that the disputed domain name has been used for the purposes of a website at “www.ekospol.info” which contains material critical of the Complainant.
6. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant refers to the registered trademark EKOSPOL referred to above, which it contends is well known in the real estate sector. The Complainant submits that the disputed domain name is the same as its trademark EKOSPOL.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the Respondent AnonymousSpeech can have no such rights or legitimate interests since it is merely an anonymous registration service. With regard to the Respondent ARCIS s.r.o., the Complainant submits evidence of an application by that entity to register a Czechia trademark for a device including the words EKOSPOL.INFO that was “negatively terminated after publication” in 2014, which the Complainant states was on account of its prior rights in the name EKOSPOL. The Complainant also submits evidence of a 2014 ruling of the Municipal Court in Prague, Czechia, to the effect that ARICS s.r.o. must refrain from using the trademark EKOSPOL.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant alleges in particular that the disputed domain name was registered and has been used as a platform for publishing defamatory information concerning the Complainant. The Complainant states that the disputed domain name is in itself misleading in that Internet users are likely to assume it is operated by the Complainant. The Complainant also alleges that the Respondent uses the Complainant’s stylized character trademark on its website attacking the Complainant in a further attempt to mislead Internet users.
The Complainant requests the transfer of the disputed domain name
The Respondent did not formally reply to the Complainant’s contentions. However, the Panel determines that the email from ARCIS s.r.o. dated December 14, 2016 shall be treated as the Response in this proceeding.
The Respondent argues that the Complainant has no trademark registration for online content and that it was therefore legitimate for the Respondent ARCIS s.r.o. to attempt to register the trademark EKOSPOL.INFO corresponding to the disputed domain name. The Respondent further submits that the Complainant has no trademark rights outside of Czechia.
The Respondent further argues that the content of the website at “www.ekospol.info” was not and is not misleading, as has (in its submission) been determined by final Court judgments. The Respondent submits that it would be unfair to “block” the disputed domain name as this would amount to censorship of Internet content contrary to the public interest.
7. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights for a stylized character trademark containing the term “EKOSPOL”. The disputed domain name is effectively identical to that trademark but for the generic Top-Level Domain (“gTLD”) “.info” which is typically to be disregarded for the purposes of UDRP comparison. The Panel therefore finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Based on the submissions of the Complainant, which the Respondent does not dispute, the Panel finds that the Respondent registered and has used the disputed domain name for the purpose of a website which contains content critical and possibly defamatory of the Complainant. There is no evidence that the Respondent has any independent rights in any trademark that corresponds to the disputed domain name or that it has ever commonly been known by the disputed domain name.
The disputed domain name comprises the Complainant’s trademark in an unadorned form. In the view of the Panel, the disputed domain name therefore constitutes an impersonation of the Complainant in that Internet users are likely to assume that it is owned or operated by or with the approval of the Complainant. While there is evidence that the Respondent has used the disputed domain name for the purposes of some kind of a criticism website, the Panel does not consider that the Respondent may fairly and legitimately do so where the domain name chosen for that purpose is itself misleading and inherently confusing. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Similar considerations apply to the issue of bad faith. While a registrant may in certain limited circumstances refer to a trademark in a domain name which is used for the purposes of criticism of the trademark owner, these circumstances cannot in the view of the Panel extend to the registration and use of an identical and thus inherently misleading domain name (see e.g. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698). Furthermore, the Panel accepts the Complainant’s evidence that the Respondent has reproduced the Complainant’s stylized character mark on its website, thereby adding to the likelihood of confusion.
The Panel notes the Respondent’s argument that the content of its website constitutes free speech and that its right to free speech should not be interfered with. The Panel therefore makes clear that it makes no finding as to the truth or accuracy of the content of the website in question or as to whether the Respondent’s criticism of the Complainant is justified. What the Respondent may not legitimately do, however, is to mislead the public by representing by its choice and its use of the disputed domain name that the domain name used for the purposes of that criticism is owned, operated or approved by the Complainant.
The Panel finds in the circumstances that, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website (paragraph 4(b)(iv) of the Policy). The Panel does not consider it significant whether or not the Respondent derives direct “commercial gain” from its website in circumstances where the website is, in the view of the Panel, designed to cause commercial damage to the Complainant.
The Panel therefore finds that the disputed domain name has been registered and is being used 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 <ekospol.info> be transferred to the Complainant.
Steven A. Maier
Date: January 17, 2017