WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Williams Signal v. Priyanka Meena
Case No. D2020-0079
1. The Parties
The Complainant is Williams Signal, United States of America (“United States”), represented by Pierce McCoy, PLLC, United States.
The Respondent is Priyanka Meena, India, self-represented.
2. The Domain Names and Registrar
The disputed domain names <williamssignal.net> and <williamssignal.org> (the “Disputed Domain Names”) are registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 22, 2020.
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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Response was filed with the Center on February 3, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 7, 2020. 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 California corporation. Its main business appears to be arranging the supply of freelance audio-visual technicians in teams to assist with presentation events at venues throughout the United States.
The Respondent is an individual. Both of the Disputed Domain Names were registered on June 30, 2018. Each of the Disputed Domain Names is linked to a website (the “Respondent’s Website”) which contains material which is highly critical of the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
It says it has unregistered trademark rights in the term “williamssignal.com”. It says it has used this term since 2015 as its primary domain name and it is widely recognised and has achieved significant sales under and by reference to this term. This issue is discussed further below.
The Complainant says that each of the Disputed Domain Names is identical or confusingly similar to its “williamssignal.com” unregistered trademark.
The Complainant says the Respondent has no rights or legitimate interests in the term “williamssignal” or “williamssignal.com”.
It also says that the Disputed Domain Names were registered and are being used in bad faith. In this respect, the Complainant says that the Respondent’s Website “serve no lawful purpose other than to harass and disrupt the Complainant and its legitimate business activities” and “[t]he sole purpose of domain names registered by the Respondent is to disparage the goodwill, reputation, and business activity of the Complainant by making libelous remarks”.
The Response is relatively short and rather unstructured but makes the following points. The Respondent says the Complainant has no registered trademarks for “williamssignal” and exhibits searches it has done showing this. It says its activities have not impacted the Complainant’s sales and it is not using the Disputed Domain Names for commercial purposes. It also exhibits some Google search results for “williams signal” and “williamssignal” though the Panel is unclear what point these go to – they appear to confirm what the Complainant said about such results. Finally it concludes by saying “[w]e are doing nothing wrong and hope that you will find in our favor. When Williams Signal asked us to remove their address, we did. That was to be the end of it”.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
For reasons explained below, the Panel finds that the Complainant has unregistered trademark rights in the term “williams signal”. It seems to the Panel somewhat artificial to approach this analysis by looking solely at the Complainant’s own domain name <williamssignal.com> when the evidence in substance concerns how the Complaint uses its name “Williams Signal” and where its domain name is only one aspect of that usage. The Panel will approach its assessment on that broader basis. It appears that “Williams Signal” was adopted as the Complainant’s name with effect from 2015 (see above) and has been used on that basis ever since by the Complainant. There is no evidence of anyone else using that term and the Complainant’s evidence shows that a Google search of that term produces entries which overwhelmingly relate (in at least the first few pages of results) to the Complainant. It has also used the term on social media. The Complainant says it has a substantial turnover – it says that since its first use of the name “Williams Signal” over USD 20 million in sales has been generated, including over USD 7 million in 2019. However no evidence corroborating these figures has been provided.
The Panel agrees with the approach in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) concerning this issue at section 1.3:
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g. consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
As noted in section 1.1.2, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
Also noting the availability of trademark-like protection under certain national legal doctrines (e.g., unfair competition or passing-off) and considerations of parity, where acquired distinctiveness/secondary meaning is demonstrated in a particular UDRP case, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction.
The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.
Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.”
The Panel does not consider the terms “williams signal” to be descriptive. Whilst the Complainant has provided little corroborative evidence as to the size of its business it is clear it has used its name widely on social media and it is overwhelmingly referenced in a Google search for the term “williams signal”. The Panel in particular notes that section 1.3 above relates to the facts of the present case insofar as it states “[t]he fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier”. In the present case the Respondent is clearly targeting the Complainant by its own use of the identical “williamssignal” term. Accordingly, the Panel accepts that the Complainant has unregistered trademark rights in the term “williams signal”. The Panel will refer below to this unregistered trademark as the “WILLIAMS SIGNAL trademark”. The Respondent is correct that the Complainant has no registered trademark rights but that does not matter given the Panel’s finding.
Each of the Disputed Domain Names is confusingly similar to the WILLIAMS SIGNAL trademark. The Panel does not consider that the omission of a space between the words “willliams” and “signal” as a significant difference, noting that in any event spaces cannot appear within domain name strings for technical reasons It is well established that the generic Top-Level Domain (“gTLD”), in this case “.net” and “.org”, is not generally taken into account for the purpose of determining whether a domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademarks. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the WILLIAMS SIGNAL trademark. The Complainant has prior rights in the WILLIAMS SIGNAL trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Response is entirely unclear as to why the Respondent says it has a legitimate interest in the Disputed Domain Names. It appears to assert that the Disputed Domain Names are being used noncommercially and that this suffices to establish a legitimate interest. The Panel accepts that the Respondent’s use is noncommercial but that alone does not establish a legitimate interest – it is necessary to consider how the Disputed Domain Names are used, with the fact that the use is noncommercial being only part of the assessment required. The Respondent’s Website is manifestly a criticism site directed at the Complainant. The Panel has considered this and had regard to the position set out in WIPO Overview 3.0, section 2.6, as follows:
“2.6 Does a criticism site support respondent rights or legitimate interests?
As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as non-commercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.
2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e. <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as ‘fundraising’ to offset registration or hosting costs associated with the domain name and website).”
In the present case, the Panel notes that the Disputed Domain Names are in effect identical to the WILLIAMS SIGNAL trademark. Accordingly the Panel considers that section 2.6.3 does not apply and there exists an “impermissible risk of user confusion” similar to that described in section 2.6.2 of WIPO Overview 3.0 (above). Accordingly, the Panel does not consider that any legitimate interests arise in this respect.
The Panel notes that had the Disputed Domain Names combined the WILLIAMS SIGNAL trademark with a manifestly derogatory term different considerations would have arisen (see section 2.6.3 of WIPO Overview 3.0, above) and the result would not necessarily have been the same.
The Panel therefore finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present case, it was manifestly a deliberate decision by the Respondent to use the WILLIAMS SIGNAL trademark as the main element of each of the Disputed Domain Names. This was clearly part of a deliberate plan to publish material that was critical of the Complainant. The Panel has no means of assessing whether or not any of the allegations contained in the content of the Respondent’s Website are true nor is it the function of the Panel to do so. The Panel does not consider that this matters. Whether or not the Respondent is entitled to criticize the Complainant by publicizing material such as that which is found on the Respondent’s Website is not a matter for the Policy. What however the Policy is directed at is using, as part of this activity, a domain name which is identical or confusingly similar to the Complainant’s trademark and which would be likely to be taken to be that of the Complainant. That is what is happening in the present case and is misleading and likely to attract visitors who are searching for the Complainant’s business. That, in the opinion of the Panel, amounts to bad faith registration and use.
The Panel again notes that had the Disputed Domain Names combined the WILLIAMS SIGNAL trademark with a manifestly derogatory term different considerations would have arisen and the result would not necessarily have been the same.
As a result, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names <williamssignal.net> and <williamssignal.org> be transferred to the Complainant.
Nick J. Gardner
Date: February 21, 2020