WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oxebridge Quality Resources International LLC v. Internet Domain Service BS Corp aka Whois Privacy Corp. and William A. Levinson
Case No. D2018-0106
1. The Parties
The Complainant is Oxebridge Quality Resources International LLC of Tampa, Florida, United States of America ("USA" or "US"), internally represented.
The Respondents are Internet Domain Service BS Corp aka Whois Privacy Corp. of Nassau, Bahamas, and William A. Levinson of Wilkes Barre, Pennsylvania, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <oxebridge.biz> (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 January 19, 2018. On January 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2018, 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 Complainant filed an amended Complaint on January 29, 2018.
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 January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. The Response was filed with the Center on February 1, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 8, 2018. 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 is a limited liability company organized under the laws of the US State of Florida and headquartered in Tampa, Florida, USA. It appears from the Complainant's website that the Complainant is a consultancy that assists clients in implementing ISO and aerospace industry quality management, quality assurance, conformity assessment, and information technology service management standards. The Complainant restructured in 2009 under its current name. The Complainant or its predecessor company, both owned by the same principal, Mr. Paris, has operated a commercial website at "www.oxebridge.com" since 1999.
The Complainant holds US Trademark Registration Number 5353823 for OXEBRIDGE QUALITY RESOURCES INTERNATIONAL as a standard character mark (registered December 12, 2017).
The Complainant also claims common law protection for OXEBRIDGE as an unregistered service mark in use since 1998 or 1999. The Panel notes that a trademark symbol appears on the Complainant's website after the stylized OXEBRIDGE logo.
The Domain Name was created on March 11, 2017 and registered in the name of a domain privacy service established in the Bahamas. The Complainant identified the registrant as the Respondent Mr. Levinson, an individual residing in the State of Pennsylvania, USA. The domain privacy service has expressed no interest in the Domain Name, and Mr. Levinson has filed a Response in this proceeding. Accordingly, Mr. Levinson will be referred to hereafter in the Decision as the Respondent.
The Respondent is an individual who resides in the State of Pennsylvania, USA. From attachments to the Response, it appears that he is also a consultant in the fields of quality management and risk management. It is evident from the Complaint and Response, and from the content formerly posted on the Respondent's website associated with the Domain Name (the "Respondent's former website"), screenshots of which are attached to the Complaint, that the Complainant and the Respondent have long been embroiled in a personal and professional feud. The Respondent himself characterizes the website as a "gripe site", and metadata labelled it, "Christopher Paris/ Oxebridge Quality Resources International LLC Fake News Warning". The Respondent reports that he took down the website "well before April 2017", which means that it was published for less than a month. The Domain Name does not resolve to an active website at the time of this Decision. The Respondent has also filed a defamation lawsuit against the Complainant, based on material that the Complainant published about the Respondent on the Complainant's website and in social media. The parties agree that the Domain Name is not at issue in that litigation.
The screenshots of the Respondent's former website, furnished with the Complaint, show that it was indeed devoted to criticism. The website offered rebuttals to the Complainant's published attacks on the Respondent and made a variety of accusations against the Complainant, often referred to by its initials, "OQR", and its principal Mr. Paris. Website pages were headed with unmistakably critical legends and disclaimers:
"Chris Paris and Oxebridge Call ISO 9001 and AS9100 Scams, but Will Help Implement Them Anyway"
"NOTICE: This Web site does NOT belong to OQR International LLC, and it is NOT controlled by
The screenshots do not expressly identify the Respondent as the website operator or author, although that could have been inferred by linking the very specific rebuttals with the cited portions of the Complainant's website. Instead, the contact information displayed was an email address in a privacy domain.
The Respondent's former website criticized the Complainant's professionalism and ethics. It did not advertise the Respondent's own consulting services, link to the Respondent's professional website or social media pages, or advertise third-party goods or services. There were apparently no pop-up or banner ads. At several points the website listed third-party alternatives to the Complainant's consulting services and even the Complainant's side business, Gourmetours Peru, stressing that these suggestions were not paid advertisements but attempted to list sources that were more "reputable" or better than the Complainant.
5. Parties' Contentions
The Complainant asserts that the Domain Name "adopts" the OXEBRIDGE brand name, in which the Respondent has no rights or legitimate interests.
The Complainant argues that the Respondent registered and used the Domain Name in bad faith, for the sole purposes of "defaming and harming" the OXEBRIDGE mark. The Complainant argues that the "domain trades exclusively in the dissemination of intentionally false and disparaging material openly aimed at causing harm" to the Complainant, including publication without permission of personally identifiable information, copyrighted material and trademarks, and materials that were sealed under court order in litigation involving the Complainant and a third party, all in an effort to "disrupt the business and harm the reputation of the Complainant."
The Respondent challenges the Complainant's claim to OXEBRIDGE as an unregistered mark and observes that OXEBRIDGE QUALITY RESOURCES INTERNATIONAL was registered as a mark after the Domain Name was registered and, in fact, after the Respondent's former website was taken down. The Respondent accepts the "trademark status" of the registered mark OXEBRIDGE QUALITY RESOURCES, INC. but relies on its prominent disclaimers of affiliation to argue that it had no intent to misrepresent the Respondent's former website as a website associated with the Complainant.
The Respondent claims a legitimate noncommercial or fair use of the Domain Name, "without intent for commercial gain misleadingly to divert consumers". The Respondent denies directing users to any site in which the Respondent has a financial interest.
According to the Respondent, "[t]he domain was registered for the express purpose of using it as a 'gripe site' whose mission was to discredit the disparaging and defamatory material that Complainant has published about Respondent and others." The Respondent denies any intent to sell the Domain Name and has attempted to cancel it (the Domain Name is locked while this proceeding is pending).
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a 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.
Under paragraph 15(a) of the Rules, "A Panel shall decide a 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
Setting aside the contested claim for common law protection of OXEBRIDGE, the Complainant indisputably holds a registered trademark that includes the distinctive and arbitrary element OXEBRIDGE, which is identical to the Domain Name, disregarding the ".biz" generic top-level domain name that is a necessary functional part of the URL address. The first element of a UDRP complaint "serves essentially as a standing requirement" and entails "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
The Panel concludes under this test that the Domain Name is confusingly similar to the Complainant's mark for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, including this one on which the Respondent relies:
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Respondent's former website did not advertise the Respondent's services or promote commercial interests in which the Respondent had an interest. However, the Respondent was identifiable from the content on the website, and the Respondent appears to be a competitor in the market for certain consulting services, such as those involving the ISO 9001 standard, so the Respondent could conceivably benefit commercially from diverting Internet users to the criticism site and disparaging the Complainant's services. The Panel also notes that the website referred to third-party alternatives to the Complainant.
An intent to "tarnish" the Complainant's mark for commercial gain similarly could be inferred, based on the same competitive posture of the parties, although the Panel subscribes to the analysis of tarnishment found in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505:
"Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001); cf. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (January 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000) (protection for genuine criticism sites is provided by Policy's legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues."
It appears from the record that the Complainant and the Respondent have accused each other of unethical, unprofessional, and even illegal conduct. This UDRP proceeding is not the appropriate forum for testing the truth or falseness of those claims, as would be required in a libel trial.
There are conflicting views on whether a general right to legitimate criticism necessarily extends to registering or using a domain name identical to a trademark, because of the risk of initial confusion, even where such a domain name is used in relation to genuine noncommercial free speech. See WIPO Overview 3.0, section 2.6.2. Here, the Domain Name is identical to the distinctive element of the Complainant's trademark and does not include words that would clearly identify it as unaffiliated with, or critical of, the Complainant, as in the "sucks" cases. See WIPO Overview 3.0, section 2.6.3. Moreover, for the purposes of the Policy, the Panel cannot consider a criticism site entirely "noncommercial" in purpose or effect when it is operated, as in this case, by a competitor and lists third-party alternatives to the Complainant. It is essentially inconsistent with the concept of "fair use" (see id., section 2.5) to make misleading use of a competitor's trademark in a domain name in this manner.
The Panel concludes that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy is designed to redress bad faith exploitation of trademarks, and the Complainant's current US trademark registration, while sufficient to provide standing for this UDRP proceeding, was obtained after the Respondent registered the Domain Name. However, as noted above, the Complainant or its predecessor has operated an "Oxebridge" business since 1999 and claims common law rights in OXEBRIDGE as a service mark. The Complainant also held another US registered trademark incorporating the "Oxebridge" name, which was cancelled in 2013 after the Complainant's business was restructured into its current form. The Panel finds little historical evidence in the record extending back to 1998 or 1999 concerning the use of "Oxebridge" as a mark, but the record does indicate that by the time the Respondent registered the Domain Name in 2017 the Complainant was known in the US by the OXEBRIDGE mark for quality standards consulting services and was claiming the name as a common law mark with the appropriate trademark symbol on its website. Certainly, the Respondent itself was well aware of the Complainant and referred to the Complainant in several places on the Respondent's former website by the short form of the Complainant's name corresponding to that mark. Accordingly, the Panel finds that the Complainant has established OXEBRIDGE as a relevant, common law mark for purposes of determining whether the Respondent registered and used the Domain Name in bad faith within the meaning of the Policy.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith". The Complainant cites none of these explicitly but refers to an inferred intent on the part of the Respondent to "disrupt the business and harm the reputation of the Complainant", which could be viewed as consistent with paragraph 4(b)(iii), "you have registered the domain name primarily for the purpose of disrupting the business of a competitor", as it appears that the Respondent and the Complainant have consulted in the same field. The list in paragraph 4(b) is not exclusive, however, and the Complainant also argues that the Respondent demonstrated bad faith by displaying without permission on the Respondent's former website the Complainant's trademarks, copyrighted material, and personal information, as well as by making false and defamatory statements and reproducing material that was under seal in a court proceeding.
The latter allegations are not as persuasive, and the Respondent makes a case for copyright fair use and for reproducing materials that are actually in the public domain. The content of the Respondent's former website is not misleading as to source or affiliation, judging from the screenshots provided with the Complaint, as it is plainly critical and replete with disclaimers of affiliation.
However, for essentially the same reasons that the Panel rejects the Respondent's claim of fair use under the second element of the Complaint, the Panel finds bad faith within the meaning of the Policy, in the sense of an intent to disrupt the business of a competitor. The Panel does not doubt that the Respondent was affronted by the Complainant's attacks and sincerely questioned the Complainant's merits. But the Complainant is a competitor, and the Respondent's own words, both in the Response and on the pages of the Respondent's former website, manifest a desire to diminish the Complainant's business. The Policy and US law recognize that the Respondent has rights of free expression to criticize the Complainant, bounded by defamation law that can be applied to the facts in another forum. The UDRP, however, does not permit the Respondent to appropriate a competitor's trademark in order to misdirect Internet users to the site criticizing the competitor and include references to third-party alternatives to the Complainant's services.
The Respondent argues that the Domain Name was not registered "primarily" to disrupt the Complainant's business; he chiefly wanted to defend himself from the Complainant's false and defamatory statements. That is certainly a major theme of the Respondent's former website, but the headers and much of the content in the screenshots concern the Complainant's consulting business and its principal's perceived errors. The Panel finds it inconsistent with good faith, within the meaning of the Policy, to use a domain name misleadingly similar to a competitor's trademark for a website largely devoted to disparaging the competitor's business.
The Panel concludes that the third element of the Complaint, bad faith, has been established.
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, <oxebridge.biz>, be transferred to the Complainant.
W. Scott Blackmer
Date: February 22, 2018