WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Delaire Country Club, Inc. v. Perfect Privacy, LLC / Manfred Brecker
Case No. D2017-1547
1. The Parties
Complainant is Delaire Country Club, Inc. of Delray Beach, Florida, United States of America ("United States"), represented by Boyd Richards Parker & Colonnelli, P.L., United States.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Manfred Brecker of Delray Beach, Florida, United States, represented by Paula Bennardo Levine, LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <delairegovernance.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 9, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2017. On September 6, 2017, Respondent filed the Response with the Center via an external URL. On September 8, 2017, the Center notified Respondent that the Center does not accept filings made via external URL. On September 9, 2017, in an email communication, Respondent notified the Center that due to office closures prompted by inclement weather the re-sending of the Response would be delayed. On September 12, 2017, Respondent resent the Response. The Response was considered filed with the Center on September 6, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 18, 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. Factual Background
Complainant is a non-profit corporation that operates a private membership country club, called Delaire Country Club, and associated residential community (collectively referred to here as "the Club"). The Club was founded in 1978 and has been known as Delaire Country Club since that time. Since 1978, Complainant has used the name Delaire in advertising, marketing, and promoting the Club's services.
Respondent is a member of the Club and a resident of the associated community. In 2015, Respondent filed a law suit against Complainant over, among other things, Complainant's voting procedures as they pertain to the governance of the Club. On March 7, 2017, Respondent registered the disputed domain name <delairegovernance.com>, which he uses to post statements about the governance of the Club.
5. Parties' Contentions
Complainant asserts common law rights to the Delaire service mark as it relates to the operation of the Club. According to Complainant, it has continuously used the Delaire name in commerce, including in the advertising, marketing, and promotion of the Club and on Club signage and merchandise, since 1978. Complainant argues that Respondent's use of the name Delaire in the disputed domain name renders it identical or confusingly similar to Complainant's service mark and the similarity is not dispelled by the addition of the word "governance."
Complainant maintains that it has not granted Respondent the right to use the Delaire name and that Respondent has no independent rights or legitimate interest in the use of that name. According to Complainant, Respondent does not use the name Delaire for a bona fide offering of goods or services and is not commonly known by that name. In addition, Complainant argues that Respondent is not making a legitimate noncommercial fair use of the Delaire name because Respondent has used the disputed domain name to create a website that he uses to (1) tarnish Complainant through defamatory and malicious statements, (2) to divert consumers to other competing country clubs in the area, (3) to further his commercial interests in the financial value of his property to potential buyers, and (4) to increase his bargaining power in his campaign to withdraw from the Club's mandatory membership requirement.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent registered the disputed domain name with full awareness of Complainant's superior rights to the Delaire name and is using it with the object of disrupting the business of a competitor. Complainant argues that Respondent is a competitor because he is acting in opposition to Complainant for commercial gain and is tarnishing Complainant's name and disrupting its business.
Respondent argues that Complainant has no rights in the Delaire name as Complainant has not registered a trademark for that name and as the name is not a distinctive identifier associated with Complainant. Moreover, Respondent maintains that the addition of the word "governance" in the disputed domain name is sufficient to differentiate it from Complainant's use of the name Delaire.
Respondent asserts that he has rights and legitimate interest with respect to the disputed domain name because he uses the associated website for the purposes of posting his legitimate noncommercial criticisms of Complainant's governance practices and ""www.delairegovernance.com" bears no resemblance to Complainant's website. Further, Respondent states that he does not use the disputed domain name to divert consumers to other competing country clubs as his website provides no direct links. Rather, Respondent's website presents a comparison of home sales between Complainant and other country clubs.
Respondent also argues that he is not using the disputed domain name in bad faith because he is not disrupting the business of a competitor, does not profit from the associated website, and does not advertise on the website.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant shows that it has used the Delaire name in commerce since 1978 for goods and services in association with the Club. Complainant has provided evidence to support a finding that it has common law rights in Delaire as a service mark for Complainant's services in Delray, Florida. Although in some respects this evidence is borderline, in view of Complainant's failure to satisfy the second element of the Policy, the Panel will assume that Complainant has proved rights to sufficient to confer standing under the first element.
The disputed domain name is confusingly similar to the name in which Complainant has common law service mark rights because it incorporates the name Delaire in its entirety. The inclusion of the word "governance" does not avoid this finding.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent uses the Delaire name for noncommercial criticism of Complainant's actions. Complainant argues that Respondent's website is commercial because Respondent uses the website to express concerns about the diminished financial value of his property and falling property values in the club in general, both which he attributes to bad "governance" by Complainant. This is not, strictly speaking, "commercial gain" under the Policy. Respondent's website contains no advertisements that generate revenue. Respondent does not redirect or link visitors to Complainant's competitors. Instead, he publishes facts that he has collected about the relative value of properties of comparable clubs in the area, including Complainant's Club. For all that appears, Respondent undermines the value of his own property as much as he hurts Complainant's. Protesting about one's commercial loss caused by another is not the sort of commercial activity that would disqualify Respondent from asserting fair use.
Complainant argues that Respondent uses his website to promote false information to defame and tarnish Complainant. It is clear from Respondent's website (and the complaint) that the parties have a deep-seated acrimonious history and Respondent uses the website to express his passionate disapproval of Complainant. But this is not tarnishment within the meaning of the Policy. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (<sermosucks.com>; tarnishment in Policy refers inter alia to association with "unwholesome" drugs, violence, illicit sexual activity). Complainant has presented no evidence to show that Respondent's website contains false information, and, in any event, the Policy is not suitable for resolving the type of broader dispute presently between the parties. Thus, overall, the record supports the finding that Respondent is using the Delaire name for the exercise of noncommercial free speech.
Complainant contends that Respondent may not claim the benefit of fair use because the disputed domain name contains Complainant's entire mark. Respondent's domain name is not identical to Complainant's mark – it also contains the word "governance." See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.6.2. Where a domain name is in the form <trademark.tld>, most cases hold that the corresponding website cannot be considered a legitimate criticism site, while others – notably those involving only United States parties – may find fair use.1 On the other hand, many other cases find that the addition of another obviously critical word, such as "sucks," supports a finding of legitimate criticism because the negative word tells Internet users before they click that the website is not sponsored by the complainant. Yellowstone Mountain Club LLC v. Offshore Limited D and PCI., WIPO Case No. D2013-0097 (<yellowstoneclubscandal.com> not transferred as it alerts Internet users that site is critical of the complainant); Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains by Proxy, LLC / Jane Kelly, WIPO Case No. D2014-0780 (no fair use because disputed domain names "do not include any additional word or term that may identify themselves as resolving to criticism website.").
Here the extra word "governance" is not obviously derogatory. Nonetheless, many cases have found domain names in the form <trademark+neutral term> to indicate legitimate criticism sites and refused transfer. Towers on the Park Condominium v. Paul Adao, WIPO Case No. D2012-1054 (<towersonthe park.com> transfer denied; condominium owner had right to criticize of "governance of condominium"); Amylin Pharmaceuticals, Inc. v. Watts Guerra Craft LLP, WIPO Case No. D2012-0486 (<byettacancer.com>; no transfer); Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399 (<lipitorinfo.com>; no transfer; always some degree of confusion). This result is appropriate here. As discussed, the content of the website reflects legitimate noncommercial criticism. The only question is whether a website's critical nature must be apparent in the domain name itself, i.e., whether a domain name must include a derogatory term.
Where, as here, the disputed domain name includes a neutral term, the content of the website should be considered and a fair use defense should not be denied without doing so. Rejecting the fair use defense without considering the website content risks collapsing the Policy elements because a finding under the first element that the disputed domain name is identical or likely to be confused with Complainant's mark would in many or most cases lead to a rejection of fair use under the second element, unless the content of the website is considered. Moreover, "[t]he content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element… Such content will often bear on the assessment of the second and third elements…"). WIPO Overview 3.0, section 1.15; see also Wal-Mart Stores, Inc. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (<walmartsucks.com> is "identical or confusingly similar," noting that the "legitimate interest" and "bad faith" factors should adequately insulate true protest sites from vulnerability under the Policy…") Because consideration of the website content is not part of the evaluation of the first element, there is greater need to consider the content under the second element, especially because a rejection of a fair use defense will in many cases go hand-in-hand with a finding of bad faith registration and use.
For these reasons, it is necessary on these facts to consider the content of Respondent's site. The Panel finds that the content reflects legitimate criticism and, accordingly, that Complainant has not satisfied Policy element 4(c).
Accordingly, Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Because Complainant did not satisfy the second element, there is no need to address the third element. For completeness, the Panel notes that Complainant would be unlikely to satisfy the third element based on the record in this case.
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Date: October 5, 2017
1 "[E]ven if a <trademark.TLD> domain name might initially divert consumers, and even if that diversion might be misleading because the domain name does not, on its own, communicate that the website is not operated by the trademark owner, the exception of paragraph 4(c)(iii) cannot apply because there is no intent for commercial gain, and that phrase is a critical component of paragraph 4(c)(iii)." Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (Panelist Bernstein, dissenting in part).