WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rodeler Limited v. Domain Admin, Whois Privacy Corp.
Case No. D2017-2316
1. The Parties
The Complainant is Rodeler Limited of Limassol, Cyprus, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <24option-forex.com> (the “Domain Name”), is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2017. On November 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2017, 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 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2017. On December 6, 2017, the Center received email communications from an email address associated with the Respondent and confirmation by email that the emails were to be regarded as the Response. Accordingly, on December 6, 2017, the Center informed the Parties of the commencement of the panel appointment process.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 20, 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
The unchallenged evidence of the Complainant is that it was incorporated in October 3, 2012 and is engaged in the provision of forex and other financial services under the trade mark, 24OPTION.COM, and has since 2012 operated a website connected to its domain name <option24.com> for the provision of many of those services.
It is not in dispute that the Complainant has trade mark rights in respect of 24OPTION.COM, which pre-date registration of the Domain Name.
The Domain Name was registered on August 2, 2017 and is held in the name of a privacy service. The identity of the underlying registrant is unknown to the Panel. For the purposes of this decision the privacy service and the underlying registrant are treated as one and are together referred to as the “Respondent”.
The Domain Name is connected to a Russian language website featuring criticism of the Complainant. The website also features pre-Complaint correspondence between the Complainant’s representative and the Respondent in which the former draws the latter’s attention to the Complainant’s trade mark rights and seeks inter alia transfer of the Domain Name and the latter denies the Complainant’s claims and contends that it is making fair use of the Domain Name for the purpose of alerting interested parties to the criticisms made of the Complainant.
In the course of that correspondence the Complainant makes a without prejudice offer to purchase the Domain Name for USD 200. The Respondent described it as a bribe.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its 24OPTION.COM trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The essence of the Complaint is that the Domain Name impersonates the Complainant, that the content of the Respondent’s website is inaccurate, libelous and in certain respects infringes the Complainant’s copyrights. The website features or at one time featured commercial links. On no basis can the Respondent’s use of the Domain Name be said to be fair.
The Respondent contends that its use of the Domain Name is fair, its website being nothing more than a noncommercial educational criticism site fairly alerting interested parties to criticisms made of the Complainant. It denies that it is impersonating the Complainant, pointing out that any visitor to the site will immediately appreciate that it is a criticism site. It contends that the Complainant, in seeking transfer of the Domain Name is trying to remove from the Internet the important information on the Complainant that needs to remain in the public eye.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Preliminary Point
The Complainant contends that the content of the Respondent’s website is libelous and infringes the Complainant’s copyrights in certain respects. The Complainant also contends that the website is a commercial website in that it features (or at one time featured) commercial advertising links.
The Respondent denies that the content of its website is anything other than noncommercial and fair, the intent being to educate interested parties as to the serious criticisms made of the Complainant.
The Panel finds it unnecessary to resolve these issues in order to decide this case. Specifically, the Panel makes no findings as to whether the criticisms made of the Complainant on the Respondent’s website are libelous or fairly made; nor does the Panel address the issue as to whether or not there is or has been a commercial element to the Respondent’s website.
What is not in dispute is that the Respondent’s website contains very serious criticisms of the Complainant, variously describing the Complainant as crooks and scammers and that the content of the website is intended to warn off people dealing with the Complainant.
C. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark, 24OPTION.COM, with ‘-forex’ intervening between ‘24OPTION’ AND ‘.COM’. The Respondent contends that the presence of ‘forex’ in the Domain Name is sufficient to distinguish the Domain Name from the trade mark. Forex is one of the financial services provided by the Complainant and, in any event, the Complainant’s trade mark is readily recognizable within the Domain Name. As such, for the purposes of paragraph 4(a)(i) of the Policy the Domain Name is confusingly similar to the Complainant’s trade mark and the Panel so finds.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which if found to be proved shall constitute rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent relies upon sub-paragraph (iii) of paragraph 4(c), which provides: “(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Paragraph 4(c)(iii) of the Policy has been analysed in some detail by the learned panelist in Seven Network (Operations) Limited v. Knock Knock WHOIS Not There, LLC / [Name Redacted], WIPO Case No. D2017-0498:
“According to paragraph 4(c)(iii) of the Policy, “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, demonstrates that the respondent has rights or legitimate interests in the domain name. In the Panel’s view, it is clear that the requirements that must be satisfied for a respondent to be able to demonstrate rights or legitimate interests in a domain name under paragraph 4(c)(iii) of the Policy are: (i) the respondent’s use of the domain name must be legitimate; (ii) that legitimate use must be either a noncommercial use or a fair use; and (iii) the effect of that use must not be commercial gain through either misleadingly diverting consumers or tarnishing the complainant’s trademark. In relation to the second requirement, the fact that a “fair use” may be read as an alternative to a “noncommercial use” indicates that use which has a commercial element can nevertheless satisfy the first requirement, so long as it is fair….”
The Panel adopts the above analysis. In this case, as indicated in 6B above, the Panel has not sought to address the legitimacy of the content of the Respondent’s website; nor has the Panel sought to address the issue as to whether or not the Respondent’s website has a commercial aspect. Accordingly, for present purposes, the Panel is only concerned to assess whether or not the Respondent’s use of the Domain Name has been fair.
Is it fair to adopt a trade mark of another for a domain name knowing that it is the name of that other and with the object of causing damage to that other? It can be fair if the domain name flags up to the visitor from the outset that it is not a domain name likely to be one of or authorized by the trade mark owner.
Thus, in the case of Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly, WIPO Case No. D2014-0780 (“Vedovi”), another panel was faced with a similar situation, namely someone with a grievance against the complainant registering domain names featuring the complainant’s name/trade mark and using them to connect to a website highly critical of the complainant. Two of the domain names, <vedovi-gallery.com> and <willemvedovi.com> were condemned on the basis that they were deceptive, effectively impersonating the complainant, unfairly luring in visitors looking for the complainant. However, as to the third domain name, <thetruthaboutwillemvedovi.com>, the panel took the view that that was not an inappropriate domain name for the respondent’s purpose in that it flagged up to the visitor what the visitor was likely to be visiting.
Back in 2002 the Panel addressed the issue in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 (“Triodos”), a case involving the domain name, <triodos-bank.com>. The respondent had a grievance against the complainant and registered the name of the bank as a domain name to which he connected a website drawing visitors’ attention to what he perceived to be the complainant’s wrongdoing. He argued that he had a right of free speech and that the domain name was not deceptive because as soon as visitors reached the website they would immediately appreciate that the website was not a website of the complainant. In taking the view that this was not a fair use of the domain name, this Panel stated:
“The fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done. It does not lie in the mouth of the Respondent to deny that damage will be done to the Complainant, because that is precisely what he is setting out to achieve. He admits that he is seeking to warn off customers and/or would-be customers of the Complainant before they have any dealings or further dealings with the Complainant. The fact that that damage might in the Respondent’s view represent the Complainant’s just deserts is of no consequence.”
and later on:
“In the Panel’s view a deceptive use of another’s trade mark as part of a domain name is rarely if ever likely to give rise to a right or legitimate interest in respect of a domain name.”
The Panel remains of that view. In this case the Domain Name is the Complainant’s name and trade mark with its area of business “forex” slipped in the middle. It is intended to attract visitors looking for a website of or authorized by the Complainant. The website to which it is connected is intended to warn off customers and would-be customers of the Complainant. There is nothing about the Domain Name, which fairly alerts visitors that the website to which it is connected will not be a website of or authorized by the Complainant. It is deceptive and is intended to be deceptive.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
This approach is consistent with the approach described in section 2.6.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition:
“Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.”1
E. Registered and Used in Bad Faith
In both Vedovi and Triodos the panels took the view that to register deceptive domain names with a view to luring in visitors looking for the complainants and with a view to causing damage to the complainants as the criticism on those websites was bound to do, constituted registration and use of those domain names in bad faith.
In the more recent case of Bernardelli Cesarina v. Paola Ferrario, Ferrario Photography, WIPO Case No. D2017-0091 the panel put it in these terms:
“Clearly, the registration and use of the disputed domain names was intended to disrupt the Complainant’s business by taking advantage of the fact that Internet users seeking the Complainant’s site are likely to go to the address of the disputed domain names. The Respondent’s primary purpose appears to be harassing the Complainant, diverting his clients to websites that disparage and defame the Complainant, and interfering with the Complainant’s business; all these factors are evidence of the Respondent’s bad faith…”
The Panel adopts the same approach and finds that the Respondent’s adoption and use of the Domain Name for the purpose to which it has been put constitutes registration and use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <24option-forex.com>, be transferred to the Complainant.
Date: January 3, 2018
1 Neither of the parties in this case are from the United States of America.