WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC
Case No. D2019-0633
1. The Parties
Complainant is Dover Downs Gaming & Entertainment, Inc. of Wilmington, Delaware, United States of America (“United States”), represented by Caesar Rivise, PC, United States.
Respondent is Harold L. Carter Jr. of Fort Davis, Texas, United States. Respondent is the registered agent of Purlin Pal LLC of Fort Davis, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <doverdownsnews.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 26, 2019. Complainant filed a second amended Complaint on March 29, 2019 to address a discrepancy in the Mutual Jurisdiction section of the amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 April 1, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was April 21, 2019. The Response was filed with the Center on April 11, 2019. Respondent sent an email communication to the Center on April 15, 2019 acknowledging the Center’s receipt confirmation of the Response and accompanying annexes.
The Center appointed David H. Bernstein as the sole panelist in this matter on May 3, 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.
4. Factual Background
Complainant is a Delaware corporation that operates a casino and hotel. Complainant has used the name DOVER DOWNS in connection with its casino and hotel as well as in connection with apparel, horse harness racing, and providing banquet, social, and business meeting facilities. Complainant has registrations in the United States for the following marks:
- DOVER DOWNS (Registration No. 1,708,300), registered August 18, 1992, for apparel;
- DOVER DOWNS (Registration No. 2,697,403), registered March 18, 2003, for facilities for business meetings and providing banquet, convention and social function facilities;
- DOVER DOWNS (Registration No. 2,713,096), registered May 6, 2003, for entertainment in the nature of horse harness track races;
- DOVER DOWNS GAMING & ENTERTAINMENT (Registration No. 2,749,818), registered August 12, 2003, for entertainment in the nature of harness track races and casino services; and
- DOVER DOWNS HOTEL & CASINO (Registration No. 3,218,958), registered March 13, 2007, for hotels and providing social and banquet function facilities for special occasions.
Complainant also operates a website at the domain name <doverdowns.com>.
Respondent was formerly employed by Complainant. As noted above, Respondent is also the registered agent of Purlin Pal LLC, a Texas limited liability company. Purlin Pal LLC is no longer active as a result of tax forfeiture. Respondent registered the Disputed Domain Name on December 16, 2018 and operated a website at that address that was highly critical of the management and workplace practices of Complainant. At some point, the content of the website was removed; as of the drafting of this decision, the Disputed Domain Name resolves to a parked webpage with no substantive content.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is confusingly similar to its registered marks that contain, or are entirely comprised of, the phrase “Dover Downs”. Complainant further alleges that the “slight variation” between Complainant’s domain name, <doverdowns.com>, and the Disputed Domain Name constitutes “typosquatting.”
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name. In support of this contention, Complainant points to the fact that the content that used to be on the website disparaged Complainant and, as such, did not constitute “a bona fide offering of goods or services [or] a legitimate noncommercial or fair use.” To further support its claim that Respondent has no rights or legitimate interests in the Disputed Domain Name, Complainant points out that Respondent’s website included an offer to sell the Disputed Domain Name along with the statement that Respondent “hope[s] [Complainant] might choose to take over this web site and turn it to Dover Downs[’] advantage.”
With respect to bad faith, Complainant contends that Respondent’s criticism website was created “intentionally [to] harm the reputation, and goodwill” of Complainant’s marks and domain name. Complainant also asserts that Respondent provided false contact information by (i) using a privacy and proxy registration service and (ii) providing the name and address of an inactive Texas limited liability company.
Respondent contends that the Disputed Domain Name is not identical or confusingly similar to the Complainant’s marks. In support of this contention, Respondent points to the fact that the Disputed Domain Name contains the word “news” and “correctly refers to news at Dover Downs Hotel & Casino.”
Respondent claims that he made a legitimate noncommercial or fair use of the Disputed Domain Name. Respondent asserts that he initially purchased the Disputed Domain Name to create an interactive website where Complainant’s employees “could share and grow in positive company interests.” According to Respondent, after learning about alleged hazards at Complainant’s facilities, Respondent decided to use the Disputed Domain Name to host a website as a “[p]ublic [s]ervice to warn people about the dangers present at Dover Downs Hotel & Casino.” Respondent states that he sought the advice of the Delaware State Police, who informed him he has a right to establish a website to “warn people of the dangers” of Complainant. Respondent also argues that he offered a literary work to the public—presumably the content of the website—and sought donations to “recoup [the] losses” associated with his experience with Complainant.
In support of Respondent’s claim that the Disputed Domain Name was not registered or used in bad faith, Respondent contends that (i) the Disputed Domain Name was not registered primarily for the purpose of selling the Disputed Domain Name to Complainant under paragraph 4(b)(i) of the Policy, (ii) the Disputed Domain Name was not registered to prevent Complainant from reflecting the mark in a corresponding domain name under paragraph 4(b)(ii), (iii) Complainant and Respondent are not competitors and the Disputed Domain Name was not registered primarily to disrupt Complainant’s business under paragraph 4(b)(iii), and (iv) the Disputed Domain Name was not registered by Respondent in an intentional attempt to attract for a commercial gain Internet users to Respondent’s website under paragraph 4(b)(iv).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to prevail, Complainant is required to prove each of the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 by Respondent in bad faith.
For the reasons stated below, the Panel finds Complainant has proven each of these elements.
A. Identical or Confusingly Similar
Complainant has clearly established trademark rights in DOVER DOWNS based on its federally registered trademarks. Complainant has three trademark registrations for the term DOVER DOWNS by itself and two others where DOVER DOWNS is the dominant feature of the mark. Respondent does not contest Complaint’s rights in the DOVER DOWNS mark.
The second part of the test under the first UDRP element is whether the Disputed Domain Name is identical or confusingly similar to the DOVER DOWNS mark. Complainant argues that the Disputed Domain Name and DOVER DOWNS mark are confusingly similar for several reasons. First, Complainant argues that Respondent’s intentional imitation and copying of the mark demonstrates the mark is distinctive and has secondary meaning. Complainant cites McCarthy on Trademarks in support of this proposition. See 2 J. Thomas McCarthy, McCarthy on Trademark and Unfair Competition, § 15:38 (4th ed. 2014) (“Evidence that defendant knowingly limited or copied plaintiff’s symbol . . . is  probative of the existence of secondary meaning.”). This argument, though, does not address similarity; this second part of the test considers whether the Disputed Domain Name is similar to the trademark, not whether the trademark has acquired distinctiveness. Complainant’s suggestion that Respondent’s alleged copying of the mark in the Disputed Domain Name proves that the Disputed Domain Name is confusingly similar to the trademark is circular.
Second, Complainant argues that the “slight variation” between the Disputed Domain Name and Complainant’s domain name <doverdowns.com> constitutes typosquatting. This argument reflects a misunderstanding of UDRP cases that address typosquatting. Typosquatting involves the registration of domain names that consist of misspellings of a trademark. Seesection 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (examples of typosquatting include, among other things, use of adjacent keyboard letters, substitution of similar-appearing characters and the inversion of letters and numbers). Appending an additional word to a mark does not reflect what is typically considered typosquatting. Complainant’s reliance on Fuji Photo Film U.S.A., Inc. v. La Porte Holdings, WIPO Case No. D2004-0971, is misplaced for this reason. The disputed domain name in Fuji Photo involved a typo of the complainant’s FUJI trademark in the domain name <fuijfilm.com>, i.e., the inversion of the letters “j” and “i”; it did not include the addition of another word.
Third, Complainant alleges a likelihood of confusion between the mark and the Disputed Domain Name in the traditional trademark infringement sense. This argument misunderstands the nature of the test for the first UDRP element. As explained by the WIPO Overview 3.0, section 1.7: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” That straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue, which renders most of Complainant’s more complex arguments for a finding of confusing similarity unnecessary. The Panel surely does not need to evaluate, in ruling on the first factor, whether there is a likelihood of confusion (which constitutes a separate and more detailed assessment).
For similar reasons, Respondent’s assertion that the addition of the word “news” differentiates the Disputed Domain Name from Complainant’s mark is without merit. The addition of such a word does nothing to distinguish the Disputed Domain Name from Complainant’s trademarks, which are recognizable within the Disputed Domain Name. See, e.g., Alfred Dunhill, Inc. v. Registration Private, Domains by Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209 (<richarddunhill.com> was confusingly similar to DUNHILL and DUNHILL LONDON marks); Covance, Inc. v. The Covance Campaign, WIPO Case No. D2004-0206 (<covancecampaign.com> was confusingly similar to the complainant’s COVANCE mark). The Disputed Domain Name incorporates the entirety of Complainant’s mark and, for that reason, is confusingly similar to the DOVER DOWNS trademark.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating the following:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent primarily argues that he has made a noncommercial or fair use of the Disputed Domain Name by posting legitimate criticism at the website to which the Disputed Domain Name resolves.
Prior to the release of the WIPO Overview 3.0, panels took two divergent approaches to evaluating whether a respondent had a legitimate interest in operating a genuine criticism site using a domain name that was identical or confusingly similar to a complainant’s mark. Under the first view, a respondent’s “right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark.” Paragraph 2.4 of the Second Edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). In contrast, under the second view, a “respondent [would have] a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.” Id.
The second view was informed by United States law, under which genuine criticism sites are routinely protected because (i) such sites are noncommercial, and so the Lanham Act does not apply to them, and (ii) genuine criticism is protected by the First Amendment of the United States Constitution. See, e.g., TMI Inc. v. Maxell, 368 F.3d 433, 440 (5th Cir. 2004) (reversing transfer of <trendmakerhome.info> website used to criticize plaintiff’s TrendMaker Homes houses because defendant’s site was noncommercial and so does not fall within the Lanham Act’s scope); Northland Insurance Cos. v. Blaylock, 115 F. Supp.2d 1108, 1117 (D. Minn. 2000) (observing that defendant had First Amendment interests in genuine criticism and concluding that a preliminary injunction should not issue where defendant hosted a legitimate criticism site at <northlandinsurance.com>). Given that United States law routinely permits the use of trademarks within domain names for genuine criticism sites, this second view was most often applied in cases in which both parties were residents of the United States, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Bridgestone Firestone, Inc. v. Jack Myers, WIPO Case No. D2000-0190; or where the location of mutual jurisdiction was in the United States. See Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
Panels who adopted the second view of WIPO Overview 2.0 were attempting to ensure that their decisions would be consistent with how a United States court would decide the case had the dispute been brought in court rather than through the UDRP (or if the case would be heard by a United States court following the issuance of a UDRP decision). The benefits of this approach were to aim to make the outcome of UDRP proceedings consistent with national law, to prevent forum shopping, and to avoid situations in which national courts would repeatedly overrule UDRP panel decisions, which could undermine the perceived reliability of the UDRP as a fair, reliable forum for resolution of domain name disputes. See Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
Despite these potential benefits, many stakeholders, notably including the majority of panels to consider this issue, criticized the second view as producing results that could create inconsistency across the body of all UDRP decisions. Panels expressing this view noted that, by importing local law based on the location of the parties or the court of mutual jurisdiction, UDRP decisions could become “fragment[ed] into a series of different systems.” 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461. But, as this Panel has noted in other cases, this concern may not justify abandonment of the second view because it is impossible for UDRP decisions to be internally consistent within the body of all UDRP decisions while also being consistent with local law. See Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (observing that, where a registrant posts a legitimate criticism site at a domain name that is identical to a complainant’s mark, the outcome under the first view could be inconsistent with the expected outcome in United States courts). The first view merely prioritizes consistency among UDRP decisions over consistency between the UDRP and local law.
Perhaps a more forceful critique of the second view is that panels are charged with applying the Policy and Rules; they are not necessarily experts on every jurisdiction’s local law, and it can be difficult to know which local law to apply if parties come from or use their websites in different jurisdictions. Moreover, although the location of mutual jurisdiction is one forum in which a domain name dispute may be heard following a UDRP decision, it is not necessarily the only jurisdiction in which such a dispute may be heard. By adopting the first view, panels need not wade into the unfamiliar, and sometimes murky, waters of divining how a court in the location of mutual jurisdiction or the location where the parties are from (made even more complex by the use of privacy services, or even fake user details, which may mask the location of the parties) would apply conflict of laws principles and substantive law. Panels can then remain focused on interpreting and applying the Policy and Rules. At the same time, the parties remain free to submit a dispute to a court of competent jurisdiction, which will apply the appropriate local law, whether or not it is consistent with the UDRP’s Policy and Rules in a manner that aids predictability for the UDRP’s global users.
Notwithstanding this Panel’s belief that the second view of WIPO Overview 2.0 is arguably the correct approach as a matter of law, policy, and fealty to the UDRP, this Panel strongly believes that it is equally important for the UDRP to articulate a consistent view rather than to allow the schism between these views to fester. A consistent approach provides a more reliable system of law where the parties can anticipate a result under the UDRP that will not depend on the panel assigned. For that reason, this Panel supports the position expressed in the WIPO Overview 3.0, which reflects the consensus that has coalesced around a compromise position: “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.” Section 2.6.2 of the WIPO Overview 3.0. The primary focus of the WIPO Overview 3.0 approach is to determine whether the domain name will be perceived by the public as being authorized by or affiliated with the trademark holder (the “impersonation test”).
The Panel is aware that, as noted in section 2.6.2 of the WIPO Overview 3.0, there may still be some specific cases involving United States parties and panelists in which panels may see a noncommercial criticism site as supporting a respondent’s legitimate interests even if the domain name is in the form of <trademark.tld>. But panels who follow that approach would effectively be perpetuating the schism that dogged the UDRP for its first two decades by following the second view of WIPO Decision Overview 2.0. Despite efforts by a number of panels to find a common ground that would support that second view for cases with (only) United States parties and panelists, consensus has not formed around that approach; to the contrary, as noted above, many stakeholders criticized that approach and declined to follow it. For that reason, the time has come to support the developing consensus around the impersonation test, even for cases, like the one here, between United States parties and with a United States panelist and where the location of mutual jurisdiction is in the United States.
Significantly, the WIPO Overview 3.0’s impersonation test does not bar registrants from using a domain name that contains a trademark plus an additional, distinguishing term. Registrants remain free to select such a domain name so long as the domain name makes clear that the registrant is not affiliated with or authorized by the trademark holder. In the context of legitimate, noncommercial criticism websites, the most common examples of such domain names are those that append a derogatory term to the trademark name, e.g., <trademarksucks.tld>. See, e.g., Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (denying transfer for the domain name <dellorussosucks.com>).
In this case, the Panel finds that, under the impersonation test, the Disputed Domain Name would be perceived by the public as being affiliated with or authorized by Complainant. The Disputed Domain Name consists of Complainant’s mark, DOVER DOWNS, and the word “news”. The addition of “news” provides no indication that Respondent’s site is not affiliated with Complainant or that it hosts a website critical of Complainant. Indeed, the addition of the word “news” is likely to create an impression that the website to which the domain name resolves is published by Complainant to provide information or reports of recent events concerning Complainant. Although a visitor to the website likely will realize, once she or he reviews the website, that the website is not affiliated with Complainant, the use of a domain name that impersonates the trademark owner creates, when one is exposed only to the domain name, confusion that violates the UDRP’s impersonation test. See 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 (“It is one thing for a person to stand on a street corner and to voice his . . . criticism of at trademark owner. It is quite another to pretend to passers by that you represent the trademark owner and once you have caught their attention to reveal your true identity and real intentions. The same is so on the Internet.”).
If this case were a pure free speech case – which it is not, as explained below – this Panel acknowledges that a United States court might rule differently. In some cases, a United States court might rule that initial interest confusion created by a domain name does not constitute trademark infringement, such as if the website is clear about the source of the commentary. E.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610, F.3d 1171, 1177 (9th Cir. 2010) (finding nominative fair use protected defendant’s use of plaintiff’s mark in domain name to accurately describe defendant’s commercial services, especially since website was clear that defendant was independent and not affiliated with plaintiff); cf. Multi Time Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930, 937–38 (9th Cir. 2015) (finding initial interest confusion was avoided where an online retailer clearly identified products with the products’ brand names and manufacturers on a search results page). In other cases, a court might decline to find infringement if it concludes that the website is engaged solely in genuine criticism. E.g. ,Northland Insurance Cos., 115 F. Supp.2d at 1117 (D. Minn. 2000) (genuine criticism cite protected by First Amendment).
But, in other cases, a United States court may find that the initial interest confusion caused by an impersonating domain name is sufficiently problematic to constitute trademark infringement. Such a finding is more likely if the website is not clear about source, or if one has to invest time before the confusion is dissipated. See, e.g., Brookfïeld Commc'ns, Inc. v. West Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999). In that case, the United States Court of Appeals for the Ninth Circuit found that metatags that copied the plaintiff’s trademark did give rise to a violation even though the initial interest confusion was dissipated at the time of purchase. As the court explained:
“Using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store. Suppose West Coast's competitor (let's call it “Blockbuster”) puts up a billboard on a highway reading-“West Coast Video: 2 miles ahead at Exit 7”-where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill. See Blockbuster [Entertainment Group v. Laylco, Inc.], 869 F.Supp. [505,] at 513 [(E.D.Mich.1994)] (finding trademark infringement where the defendant, a video rental store, attracted customers' initial interest by using a sign confusingly to its competitor's even though confusion would end long before the point of sale or rental).”
Id., at 1064. Similarly, in Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. Mar. 19, 1997), aff’d, 152 F.3d 920 (2nd Cir. 1998), cert denied, 525 U.S. 834 (1998), the court found a violation of the Lanham Act where defendant’s domain name impersonated the plaintiff. In that case, the plaintiff, which provides information related to abortion among other services related to sexual and repdocutive health and family planning, challenged the domain name <www.plannedparenthood.com> that was registered by defendant, a virulent opponent of abortion. Not only did defendant use a domain name that impersonated the plaintiff, but he also impersonated the plaintiff on the home page of his website, which welcomed visitors with the phrase “Welcome to the Planned Parenthood home page.” In finding defendant’s conduct to constitute a violation of the Lanham Act, the court noted that defendant “created a home page that uses plaintiff's mark as its address, conveying the impression to Internet users that plaintiff is the sponsor of defendant's web site.” The court’s decision in that case is partially consistent with the principle behind the WIPO Overview’s impersonation test, at least, as mentioned in Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, in cases where the respondent has “deceptively designed [its website] to lure Internet users in on the false pretense of being the Complainant’s site.”
As these cases show, a court in the United States considering whether a finding of initial interest confusion constitutes a violation of the Lanham Act would need to weigh a number of fact-dependent considerations, such as whether the website is clear about the source of the commentary, whether it takes too long to clear up the initial interest confusion, whether the defendant misappropriated the defendant’s goodwill through the initial interest confusion, whether the criticism is truly genuine, whether the registrant’s use is a fair use, and in whose favor each of the likelihood of confusion factors weighs. See, e.g., Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137, 1148 (9th Cir. 2011) (in keyword advertising case, noting that likelihood of confusion is to be analyzed flexibly and that some factors “may emerge as more illuminating on the question of consumer confusion.”); Brookfïeld Commc'ns, 174 F.3d at 1066 (9th Cir. 1999) (enjoining the defendant’s use of plaintiff’s mark after extensive factual analysis of the likelihood of confusion factors). Although this Panel believes that United States-based panelists are capable of making these determinations, the Panel also recognizes that, given the fact-intensive exercise that must be undertaken to determine whether impersonation or initial interest confusion should take precedence, courts may be in a better position to make this assessment after the parties have had the opportunity to engage in discovery and after the court has had the opportunity to make credibility determinations.
Because these facts are more difficult to assess in the context of the UDRP, which provides expedited proceedings with no opportunity for discovery or cross-examination, there are rational policy reasons for using the impersonation test – which is relatively easy to apply – and leaving these more difficult factual disputes to a court should parties from the United States wish a more robust assessment of their rights under the Lanham Act and under the First Amendment. For example, if Respondent takes issue with the Panel’s decision (which, to be clear, is applying the UDRP, not United States trademark law), Respondent remains free to seek judicial review by filing an action in a state or federal court in the location of mutual jurisdiction (here, Fort Davis, Texas, which is within the jurisdiction of the United States District Court for the Western District of Texas) within ten business days of the Panel’s decision in order to prevent transfer. In any such action, Respondent would be free to argue that his conduct, while possibly violative of the UDRP’s impersonation test, is nevertheless permitted under the Lanham Act because the initial interest confusion here does not violate the Lanham Act, or that his conduct is protected speech under the First Amendment of the United States Constitution. The court would thereafter have the opportunity to weigh all the likelihood of confusion factors in considering how to treat the initial interest confusion in this case, and could balance Respondent’s potential First Amendment interests against Complainant’s concerns that Respondent’s conduct is causing confusion of consumers. Both parties would be afforded the opportunity to engage in discovery and to confront witnesses—procedural mechanisms unavailable in UDRP proceedings.
Ultimately, this case does not provide a good opportunity for resolving the tension between the UDRP’s impersonation test and the United States First Amendment. That is because, regardless of whether Respondent’s website contained criticism, the evidence supports a finding that the Disputed Domain Name was registered and used in bad faith primarily as a pretext for cybersquatting and has not been used for purely noncommercial criticism.
The evidence in this case supports a finding that Respondent registered the Disputed Domain Name not to host an authentic criticism site, but instead in an effort to sell the Disputed Domain Name to Complainant for a profit, in excess of Respondent’s registration costs. Before posting his criticism of Complainant, Respondent shared a draft of the website with Complainant and warned that Complainant could prevent publication by entering into negotiations with Respondent. Then, when the website was published, Respondent included an explicit offer to sell the Disputed Domain Name when he stated, on the website: “I hope [Complainant] might choose to take over this web site and turn it to Dover Downs[’] advantage.” On these facts, the Panel concludes Respondent did not register and use the Disputed Domain Name in good faith to host a legitimate criticism site; rather, Respondent’s criticism site was a pretext to solicit offers from Complainant to purchase the Disputed Domain Name. See Paragraph 2.6.1 of the WIPO Overview 3.0.
Whether under the UDRP or the Lanham Act, a party cannot try to hide its cybersquatting activity by clothing its conduct in an inauthentic criticism site. Panels have had no problem finding cybersquatting when complainants have established that a respondent created a criticism site as a pre-text. See, e.g., Northwestel Inc. v. John Steins, WIPO Case No. D2015-0447 (finding the respondent’s claim that it hosted a legitimate criticism site pretextual based, in part, on the delay between registration of the domain and the creation of the website); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (concluding that respondent’s alleged “change of heart” when he stopped offering the disputed domain name for sale and instead hosted a criticism site was “too little, too late”). Courts have similarly ruled against defendants when their true motivation was cybersquating rather than genuine criticism. See E. & J. Gallo Winery v. Spider Webs, 286 F.3d 270, 275 (5th Cir. 2002) (upholding transfer where defendant registered a domain name identical to plaintiff’s mark and briefly posted critical commentary under the title “Whiney Winery,” but was found to have registered the domain name with the “hope to sell [the] domain name some day” and that, “when they registered the domain name they hoped Gallo would contact them”).
For the foregoing reasons, the Panel finds that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel’s finding under the impersonation test does not itself prove bad faith; all that the impersonation test shows is that Respondent had no rights or legitimate interests in the Disputed Domain Name. Complainant must still come forward with evidence to show that Respondent registered and used the Disputed Domain Name in bad faith.
Complainant offers a number of arguments in support of its contention that Respondent registered and used the Disputed Domain Name in bad faith. First, Complainant argues that Respondent used the Disputed Domain Name to “intentionally harm the reputation, and goodwill represented by Complainant’s mark and domain name.” It is true that Respondent’s website criticized Complainant’s management and operational practices, but that is not by itself bad faith under the UDRP. Non-pretextual criticism (even if one believes the criticism to be unfair) is not prohibited by the Policy. Nor does such criticism amount to “tarnishment” under the Policy. Under the UDRP, tarnishment refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images, or information meant to disparage an otherwise wholesome mark. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (citing Nicole Kidman v. John Zuccarini d/b/a Cupcake party, WIPO Case No. D2000-1415). Respondent did none of these things.
Similarly without merit is Complainant’s argument that Respondent’s bad faith is evidenced by the fact that he registered the Disputed Domain Name in the name of Domains By Proxy, LLC to conceal his identity from WhoIs. The use of proxy services may be indicative of bad faith if such services are used to hide cybersquatting conduct—for example, by preventing a complainant from determining whether a respondent is guilty of a pattern of registering domain names in order to prevent the owner of the trademark from reflecting its mark in a domain name or hiding the date on which a respondent acquired the domain name. See, e.g., Halle Berry and Bellah Brand Inc. v. Alberta Hot Rods, WIPO Case No. 2016-0256. The use of proxy or privacy services does not, however, constitute bad faith where a respondent has a legitimate reason for such use, such as if a respondent seeks to protect his identity as a whistleblower or critic who may be fearful of reprisals. Ustream.TV,Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 (observing that “privacy shields might be legitimate in some cases—such as protecting the identity of a critic against reprisal”); see also E. Remy Martin & C° v. J Pepin – Emedia Development LTD, WIPO Case No. D2013-1751 (concluding the respondent’s use of a privacy service was not bad faith where there was insufficient evidence to show the respondent “attempted to game the UDRP process”). Moreover, it strains credulity that Complainant did not know the registrant’s identity; Respondent’s name, picture and prior employment history was evident on the face of the website, and Respondent provided a draft of the website’s content to Complainant prior to its being published on the Internet.
Although Complainant’s arguments in support of a finding of bad faith are largely without merit, the Panel still finds that Respondent registered and used the Disputed Domain Name in bad faith because Respondent offered the Disputed Domain Name for sale and because Respondent specifically stated his hope that Complainant would “take over” the site. This is indicative of bad faith under paragraph 4(b)(i) of the Policy. See Bernardelli Cesarina v. Paola Ferrario, Ferrario Photography, WIPO Case No. D2017-0091 (finding bad faith where the respondent offered to sell the disputed domain names to the complainant); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (finding bad faith where the respondent offered the domain name for sale on his own website). It also constitutes bad faith under the E. & J. Gallo Winery case discussed above, which was decided by the Fifth Circuit (in which the court of mutual jurisdiction for this UDRP proceeding is located).
To the extent Respondent claims he acted in good faith by seeking advice from the Delaware State Police, that argument cannot be accepted. Any advice he obtained from the State Police concerned his right to publish a website genuinely critical of Complainant; it did not address whether Respondent had a right to try to sell the Disputed Domain Name to Complainant as part of a scheme to offer to remove the critical commentary.
Although the Panel is ruling for Complainant, the Panel has concerns about the arguments made by Complainant in this proceeding. A number of the arguments Complainant advanced are unsupported by consensus positions in the WIPO Overview 3.0. Moreover, Complainant did not address at all the central issue in this dispute, which is whether Respondent’s criticism site was authentic or pretextual. Instead, Complainant tried to argue for bad faith based solely on the fact that Respondent posted an unwanted criticism site—which is speech that is classically protected by the First Amendment. When parties advance baseless arguments, fail to address critical legal issues, or fail to disclose key facts, those parties will harm their credibility before the Panel. Such behavior also runs contrary to the Policy and Rules, which necessarily rely on the good faith participation of the parties in order to ensure that the UDRP provides both fair and cost‑efficient dispute resolution.
In sum, although Respondent is free to publish legitimate criticism of Complainant (and, indeed, remains free to do so through a website that uses a domain name that is not confusingly similar to Complainant’s marks, e.g., <doverdownssucks.tld>), it is cybersquatting to use such a website as a pretext for selling the domain name at issue to a brand owner for a profit. Should Respondent post such a website in the future, and should Complainant believe the criticism to be libelous, Complainant is equally free to challenge that criticism, but claims for defamation must be brought in other legal venues. See Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
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, <doverdownsnews.com>, be transferred to Complainant.
David H. Bernstein
Date: May 22, 2019