WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The United Grand Lodge of Queensland v. Redacted for Privacy, 1&1 Internet Inc. / Alfred Warburton
Case No. D2018-2862
1. The Parties
The Complainant is The United Grand Lodge of Queensland of Brisbane, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is Redacted for Privacy, 1&1 Internet Inc. of Montabaur, Germany / Alfred Warburton of Manchester, United Kingdom of Great Britain and Northern Ireland (“UK”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <queensland-freemasons.com> (the “Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 27, 2019.
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 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2019. Upon request, an automatic extension of the Response due date was granted until January 31, 2019. The Center received various email communications from a previously named additional respondent in the period between January 18, and 30, 2019. Mr. Warburton filed a Response with the Center on January 29, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 8, 2019. 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.
The Complainant submitted a supplemental filing on February 5, 2019, and the Respondent replied with a supplemental filing on February 11, 2019.
4. Factual Background
The Complainant and its Trademarks
According to the Complaint, the Complainant is an unincorporated association of approximately 230 Freemasons lodges and 6,000 members in the Australian state of Queensland, trading under the names “United Grand Lodge of Queensland” and “Freemasons Queensland”. The Complainant is associated with the international Order of Free and Accepted Masons (commonly termed “Freemasons”), a secular fraternal society dating from the 1700s dedicated to self-improvement, community initiatives, and charitable causes.
The online Australian Business Register “ABN Lookup” database operated by the Australian Government lists the Complainant as an unincorporated entity formally titled “The United Grand Lodge of Antient Free & Accepted Masons of Queensland”, with an ABN status active since March 17, 2000, using the trading name “United Grand Lodge of Queensland” since that date and also operating under that name as its business name since March 14, 2018.
The Complainant does, in fact, hold two Australian trademark registrations for figurative trademarks with the masonic set-square and compass image, one accompanied with the words QUEENSLAND FREEMASONS (Registration Number 707631, registered May 2, 1996) and the other with the words FREEMASONS QUEENSLAND (Registration Number 1274099, registered November 24, 2008). The Complainant applied in June 2018 for registration of FREEMASONS QUEENSLAND and THE CHARITY OF FREEMASONS QUEENSLAND as word marks, but those applications are still under examination.
The Complaint asserts that FREEMASONS QUEENSLAND and QUEENSLAND FREEMASONS also should be deemed common law marks, having acquired distinctiveness in use in advertising and promotional materials as well as in badges and letterhead. Examples are included with the Complaint. These show that a magazine or newsletter was called “The Queensland Mason” in 1928 and in the 1990s and that the QUEENSLAND FREEMASONS figurative trademark mentioned above was reproduced on printed materials in the 1990s and as late as 2001. The record does not show that this trademark was used subsequently. Instead, it appears that it was supplanted by the FREEMASONS QUEENSLAND figurative trademark by the early 2000s.
The Domain Name, the Respondent, and the Website
The Registrar’s WhoIs database entry for the Domain Name was redacted for privacy purposes in 2018 in compliance with the European Union General Data Protection Directive (“GDPR”). Hence, the Complaint named “Redacted for Privacy” as a respondent, with the Registrar listed as the registrant organization.
The Complainant initially named [A] Halton as a respondent. Mr. Halton is a former member of the Complainant organization with whom the Complainant has been engaged in litigation, as discussed further below. Upon the Center’s invitation to reflect the underlying Respondent as revealed by the Registrar in the Complaint, the Complainant submitted an amended Complaint naming Mr. Halton as an additional respondent. The Complainant states that it believes that the Domain Name is in fact controlled by Mr. Halton and that “Alfred Warburton” is the former’s deceased grandfather. After receiving a copy of the original Complaint in this proceeding, Mr. Halton advised the Center as follows by email dated January 30, 2019:
“On review of the document you have supplied this has nothing to do with me other than a continued
legal bullying by the people involved and the entire document is speculation and I hope you see it for what it is worth. […]
Please be advised that I am not interested and the unfounded allegations are now with my solicitor
who will be taking action for the defamatory comments and accusations contained in the document.
I will not be contacting the other party.
When notified of this dispute, the Registrar identified the Respondent Alfred Warburton of Manchester, UK (hereafter the “Respondent”) as the registrant. According to the Registrar, the Respondent Alfred Warburton registered or acquired the Domain Name on June 9, 2017.
An individual named James Patrick Alfred Warburton with a postal address in Manchester, UK, filed the Response in this proceeding. Mr. Warburton states that he resides partly in the UK and partly in Australia and that, contrary to allegations in the Complaint, he is neither deceased nor the grandfather of Mr. Halton. Mr. Warburton identifies himself as “an active member of a number of freemason organisations worldwide” who lives part of the year in Queensland.
The Domain Name resolves to a criticism website (the “Respondent’s website”) headed “Queensland Freemasons Interest Group”, with the subheading, “Because Freemasons Queensland No Longer Represents Queensland Freemasons”.
The Respondent’s website consists entirely of posts and messages about the Complainant. There is no commercial advertising. The posts are signed “The Tiler”, a term used for a Masonic office (Mr. Warburton’s emails to the Center also use this pseudonym in the email address). The description under “About This Site” reads, “Had enough of the Lies and Deception from Ann St? Here is the place to say it, anonymously!” (The Complainant’s headquarters is located in Ann Street, Brisbane.) The archived messages date from June 2017, with several posts monthly. The posts challenge statements made by the leadership of the Complainant and frequently object to its handling of funds and management of membership affairs. The posts are highly critical of current leadership; a recent blog, for example, characterizes it as “totalitarian masonry at its finest”.
Believing that Mr. Halton, a disaffected former member, was responsible for the Respondent’s website, the Complainant brought a legal action in the Supreme Court of Queensland against Mr. Halton for defamation and breach of contract in April 2018 (Brisbane Registry No. BS 4136/18). The Statement of Claim, attached to the Complaint in this UDRP proceeding, demanded money damages and also sought an injunction ordering Mr. Halton to “delete” the Respondent’s website and “deregister” the Domain Name. Mr. Halton filed a Statement of Defence in that proceeding, also attached to the UDRP Complaint, denying that he established the Respondent’s website, posted comments on it, or used the pseudonym “The Tiler”. The Response refers to defamation claims by Mr. Halton against the Complainant and a monetary payment by the Complainant in settlement; the Complainant’s Supplemental Filing also refers to Mr. Halton’s defamation claims and a confidential settlement. Neither furnishes documentation. It is not clear whether this refers to a counterclaim or a separate lawsuit. Thus, the Panel cannot ascertain on this record whether any pending judicial proceeding remains in which the Domain Name itself is at issue. In any event, Mr. Halton is not a party in the UDRP proceeding, and the Panel finds no reason to defer this proceeding to determine the narrow issues in dispute between the Complainant and the Respondent under the Policy.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered and common law marks FREEMASONS QUEENSLAND and QUEENSLAND FREEMASONS. The Complainant argues that the Respondent has neither permission nor a legitimate interest to use those marks for the Domain Name and cannot claim fair use for a protest site because the Domain Name and website are misleading as to source or affiliation: the Domain Name itself does not signal criticism and there is no disclaimer of affiliation on the site.
The Complainant contends that the Respondent Mr. Warburton does not exist but is merely a pseudonym for Mr. Halton, “a disgruntled former member” of the Complainant. The Complainant asserts in its Supplemental Filing that it was unable to locate a James or Alfred Warburton in Australia or England with any connection to this dispute, nor any such person recorded as a dues-paying Freemason in Australia, England, or New Zealand, nor such a person residing at the given address in Manchester, UK. The Complainant states that the litigation settlement between the Complainant and Mr. Halton was confidential but is nevertheless referenced in the Response filed by Mr. Warburton. The Complainant also cites a year 2000 posting on an online genealogical site by an “Andy Halton” mentioning that his great-grandfather was “James Alfred Warburton”. The Complainant suggests that the Panel should issue an administrative order to demand more information about the Respondent’s identity.
The Respondent, who is self-represented, points out that the Complainant has registered only figurative trademarks not word marks, and that the organization is known as Freemasons Queensland, not Queensland Freemasons, a descriptive term appropriate for the Respondent’s website.
The Respondent expresses his view that the GDPR protects his privacy and that of others who register their protests against the leadership of the Complainant on the Respondent’s website. The Respondent contends that the Respondent’s website is “a focus of free speech” that exposes legal and financial improprieties and “institutionalized bullying” by the Complainant. As a Freemason and part-time Queensland resident operating a protest site against the Complainant’s leadership, the Respondent claims a legitimate interest and denies bad faith in registering and using the Domain Name for this purpose.
The Respondent’s Supplemental Filing addresses the Complainant’s challenge to the Respondent’s identity. The Respondent asserts that the Respondent and his business are listed in UK directories and observes that information about the litigation between the Complainant and Mr. Halton, including the settlement mentioned in the Response, has been posted by Mr. Halton on his social media site (this is identified more precisely in the Response as Mr. Halton’s Facebook page). The Respondent rejects the significance of an online posting by “Andy Halton” about a Warburton ancestor, noting more than 180 listings of Haltons with similar names. The Respondent points out as well that there are multiple Freemasonry organizations in Australia and England apart from the Complainant’s organization, arguing that the Complainant’s failure to find a dues-paying “Warburton” reflects an incomplete search of all such organizations. The Respondent contends that “[t]he website is maintained by many users and contributors that have been denied a voice within an organization that they are paying members of”. The Respondent declines to provide more information on privacy grounds and asserts a legitimate interest in maintaining the anonymity of other users to avoid retribution by the Complainant.
The Respondent asks for a finding of reverse domain name hijacking.
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. Supplemental Filings
The Complainant submitted a “Supplemental Filing Regarding Updated Respondent Details” addressing the issue of the Respondent’s identity, and the Respondent submitted a “Response to Supplemental Filing by Complainant”.
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
Here, there has been lingering confusion about the proper Respondent, and the Panel accepts both supplemental filings to address that specific issue.
B. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant holds registered trademarks in which the textual element is, respectively, QUEENSLAND FREEMASONS (identical to the Domain Name save for the hyphen in the latter) and FREEMASONS QUEENSLAND (reversing the order of the same words in the Domain Name). As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
The Panel finds the Domain Name confusingly similar to the Complainant’s registered trademarks for purposes of the first element of the Policy.
C. 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 Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use. This shifts the burden to the Respondent.
There is no evidence that the Respondent has been known by the Domain Name or offered goods or services under that name. Instead, the Respondent asserts that he is a Freemason residing part-time in Queensland and concerned with affairs in the Complainant organization and their impact on the reputation and effectiveness of Freemasonry in the region. As a Queensland Freemason, the Respondent claims a legitimate interest in using a relevant, descriptive domain name to discuss affairs of interest to other Queensland Freemasons. Citing privacy concerns, however, the Respondent offers little information about himself to support these factual assertions. He does not substantiate his claim of part-time Queensland residence or membership in the Complainant or any other relevant Freemason organization, and the Complainant denies that he is a member. While he may thereby protect his privacy, the Respondent also inevitably weakens his argument for using a domain name that, on its face, runs some risk of confusion with the textual elements of the Complainant’s figurative trademarks.
The Respondent’s more compelling argument for a legitimate interest arises from the actual use of the Domain Name for a “criticism” or “protest” website (sometimes called a “gripe site”), which is available for the Panel to review regardless of the Respondent’s particulars and whether Mr. Halton, for example, has ever been involved with the site. The website associated with the Domain Name is in fact noncommercial and devoted wholly to critical commentary about the extent to which the Complainant is currently managed in a way that arguably does not comport with the values and standards of Freemasonry, in the opinion of “The Tiler” and others who contribute to the site. Thus, the Respondent relies implicitly on paragraph 4(c)(iii) of the Policy, asserting in effect that the Respondent is 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.”
UDRP panels weigh several factors in assessing “fair use” in such cases. “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” WIPO Overview 3.0, section 2.5. Domain Names identical to a complainant’s trademark “carry a high risk of implied affiliation”, while others often require “further examination by the panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests.” (Id., sec. 2.5.1)
The Complainant argues that the Domain Name is identical to one of its marks and inherently risks “initial interest confusion”. One of the Complainant’s registered trademarks is indeed a figurative mark that includes the textual element QUEENSLAND FREEMASONS, identical to the Domain Name except for the hyphen between the words in the latter (i.e., Australian trademark registration number 707631). The Panel notes that this is a figurative mark in which the figurative element is a substantial part of the mark (the same is applicable to the Australian trademark with registration number 1274099) and that it does not appear that the Complainant has been using this mark for many years (the last instance that appears in the record is in 2001). The mark is not published on the Complainant’s website, and it is nothing like the domain name used for the Complainant’s website. The Complainant has recently applied for the registration of word marks, but “Queensland Freemasons” is not one of them. The Complainant has applied instead for FREEMASONS QUEENSLAND. The Complaint says that both formulations are used as trading names, but the Australian Government database lists only “Freemasons Queensland” as the trading name for the Complainant, since the year 2000. Similarly, the record does not establish use or public recognition in the 2000s to substantiate common law protection for QUEENSLAND FREEMASONS as a word mark.
Looking to circumstances beyond the Domain Name itself (see WIPO Overview 3.0, section 2.5.2), the Complainant points out correctly that the website header, “Queensland Freemasons Interest Group”, is ambiguous, and there is no disclaimer of affiliation published on the Respondent’s website. However, immediately below that header are words that no site visitor would likely attribute to the Complainant: “Because Freemasons Queensland No Longer Represents Queensland Freemasons”. That phrase also clearly draws a distinction between the descriptive term “Queensland Freemasons”, as used in the Domain Name, and “Freemasons Queensland”, the business and trading name of the Complainant. The header and sub-header appear at the top of every current and archived page on the site. In addition, the top right frame of every page bears this “About This Site” language: “Had enough of the Lies and Deception from Ann St? Here is the place to say it, anonymously!” In short, a cursory glance at the site, even without reading the critical content of the blog posts and messages, would quickly inform a site visitor that this is not a website sponsored by the Complainant.
There is no commercial advertising on the Respondent’s website, nor are there commercial links. There is no evidence in the record that the site is set up as a pretext for commercial gain, or that it has attracted emails or messages from users who have been misdirected and not referred to the Complainant. The Respondent acknowledges that some of those contributing to the site have made angry and “colourful” comments. But as the Respondent observes, these comments appear to reflect authentic beliefs and are often supported by newspaper articles, public filings, audit reports, and findings of internal Masonic proceedings over such matters as suspension of membership, some of which have been attached to the record in this proceeding.
The Complainant argues that “[t]he defamatory statements on the Website carry imputations that the management of the Complainant sympathize with and support sex offenders and that they are untrustworthy, dishonest and deceitful. This goes further than a criticism website as it is intended to tarnish the Trade Mark and associate the Trade Mark with unwholesome concepts”, citing Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (hereinafter referred to as “Sermo”).
Specifically, the Complainant cites the following posts on the Respondent’s website as instances of defamation and tarnishment:
“This is the management of Freemasons Queensland, supporters of sexual offenders, liars, frivolous legal actions and slow degradation of Freemasonary in Queensland.”
“Now it appears the Management Board at the time of the lease also lied to us including the Grand Master with a little back up from his then deputy. It would seem that this lying and protecting extends to sexual offenders.”
“When you employ from the ranks the likes of thieves, liars, drunks, sexual deviants, sycophants and other such creatures then you open yourself to some level of ridicule and judgment.”
“This is today’s face of Queensland Freemasonry, a scared and timid Grand Master controlled by an egotistical Board President who believes he is the leader of the craft throwing out orders and brethren akimbo, a Machiavellian DGM who is counting the days until he can manipulate the craft to his elitist vision, a convicted criminal as Treasurer with a record that speaks for itself, a gormless Grand Secretary who is nothing but a patsy in waiting taking his orders from the Board President.”
The Panel finds that the content of the Respondent’s website is consistent with criticism rather than tarnishment, consistent with the analysis in Sermo, cited by the Complainant, and other decisions found in WIPO Overview 3.0, section 2.6. In Sermo the panel denied a complaint seeking transfer of a domain name used for a criticism site. The panel rejected the argument that the website aimed at “tarnishing” the complainant’s trademark, observing that it did not amount to “classic ‘tarnishment’, in the sense of associating the mark with unwholesome concepts such as drugs, violence or sexual activity”, as in UDRP and trademark cybersquatting cases where domain names based on well-known marks were used for pornography websites.
Here, the Domain Name is not used for unrelated and distasteful purposes but to protest actions of the Complainant’s leadership, including employing or appointing to positions of responsibility individuals who allegedly have a criminal history. These statements might be deemed defamatory and may well be actionable if they are untrue. But their truth or falsity cannot be determined definitively in the limited scope of a UDRP proceeding. It suffices for these purposes to conclude that the Respondent’s website has all the indicia of a genuine forum for criticism and invites users to offer not only opinions but factual substantiation. Indeed, far from a motivation to tarnish the Complainant’s marks, contributors to the site appear from their comments to evince an interest in promoting Masonic values and the Complainant’s charitable works. They typically vent their ire at particular persons in current leadership positions, rather than at the organization itself.
The Panel declines to read the reference to “tarnishment” in the Policy, paragraph 4(c)(iii) so broadly as to apply to a genuine criticism website that discusses alleged misconduct by the relevant trademark-holding organization, its officials, or employees. Determining whether the criticism is accurate or defamatory is generally beyond the scope of the UDRP, which must focus instead on fair use and the likelihood of false association with the trademark holder. The tarnishment clause more clearly applies, by contrast, when a disputed domain name is associated with unrelated and generally offensive content, typically for commercial gain or to discredit a competitor or an organization that is the object of the respondent’s animosity for some reason. That is not the case here.
The Panel finds that in this particular case the Domain Name represents a legitimate, noncommercial fair use of a string that is not identical to any word mark used by the Complainant based on the evidence of record. The Domain Name is somewhat similar to the textual elements of two of the Complainant’s registered figurative trademarks and to the Complainant’s trading name, “Freemasons Queensland” (which likely has acquired distinctiveness under common law) in that it uses them in the reverse order. In other words, the Respondent is not using a domain name that is identical to a mark in which the Complainant has demonstrated rights in this proceeding. Beyond that, the content of the Respondent’s website is clearly critical, and language prominently displayed on each page plainly signals that the website is meant to be a “protest” site inviting criticism of the Complainant’s current leadership. In addition, the Respondent also appears to be using the Domain Name in a manner related to the descriptive meaning of the terms “Queensland Freemasons” (even if it is for criticism, see WIPO Overview 3.0, section 2.10) arguably having little to do with the Complainant’s trademark but with decisions of the organization’s current leaders. Accordingly, the Panel finds that the Domain Name, in this specific context, is limited to a descriptive fair use and is not misleading or aimed at commercial gain or tarnishment.
The Panel concludes that the Respondent has a legitimate interest in the Domain Name and that the Complainant fails on the second element of the Complaint.
D. Registered and Used in Bad Faith
Although the Panel’s conclusion on the second element is dispositive of the Complaint, the Panel will briefly address the third element, bad faith.
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”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor […]”
The Complainant does not establish that the Respondent is a “competitor” in any commercial sense but argues that the Respondent nonetheless seeks to defame the Complainant and disrupt its operations. The Complainant cites as examples of defamation the posts quoted above on the Respondent’s website. As discussed previously in connection with the second element of the Complaint, a UDRP panel is not in a position to make definitive rulings on allegations of defamation. Many UDRP panels have recognized that, under appropriate circumstances, respondents may make fair, nominative use of a domain name including or similar to a trademark for a genuine criticism website. Lacking other indicia of bad faith, this is not considered bad faith for Policy purposes. See, e.g., Sermo.
The Complainant further charges that labelling the Respondent’s website as the “Queensland Freemasons Interest Group” misleadingly suggests an association with the Complainant, a misimpression that is not dispelled on the site because there is no disclaimer of affiliation. As discussed above, this misimpression is offset by the plain statements of purpose at the head of each page of the Respondent’s website.
The Complainant also argues that the Panel should infer bad faith from the fact that the Respondent allowed the Registrar to obscure registrant details for privacy reasons. However, this appears to have been done routinely in the wake of GDPR enforcement across the European Union, and the Respondent has in fact communicated with the Center and submitted a Response.
The Panel does not find persuasive evidence of bad faith conduct by the Respondent. Opinions may differ as to whether the Complainant is a well-managed organization, but the fact that the Respondent is critical does not mean that the Respondent must be acting in bad faith by putting up a criticism site addressed to “Queensland Freemasons”. If the Respondent is using the site to publish defamatory remarks, the remedies lie outside the UDRP.
The Panel concludes that the third element of the Complaint has not been established.
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, 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 (“RDNH”) 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”. The Respondent has requested such a finding here.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).
The Complainant did not prevail in this instance, but the Complaint adduced evidence and arguments for all three elements of the Complaint. The questions of relying on textual elements of figurative marks, establishing common law marks, and balancing fair use against trademark claims in the context of criticism websites are complex and fact-bound. It cannot be said that the Complainant “should have recognized that it could not succeed”. And despite the rather contentious recent history surrounding the organization and the Respondent’s website, the Panel does not find on this record that the Complainant likely brought the Complaint “primarily to harass the domain-name holder”.
Accordingly, the Panel declines to enter a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: March 14, 2019