WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Terrence M. Wyles v. FlokiNET Ltd WhoisProtection, FlokiNET Ltd

Case No. D2020-0947

1. The Parties

The Complainant is Terrence M. Wyles, United States of America (“United States”), represented by Ventola Law, United States.

The Respondent is FlokiNET Ltd WhoisProtection, FlokiNET Ltd, Seychelles.

2. The Domain Name and Registrar

The disputed domain name <terrywyles.info> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 17, 2020, 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 the Complainant on April 20, 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 April 27, 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 April 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2020.

The Center appointed John Swinson as the sole panelist in this matter on May 25, 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 Terrence M. Wyles, an individual of the United States. According to the Complainant, the Complainant is a licensed attorney at law and the founder and owner of Startup IP Law, LLC. The Complainant states that he regularly trades on his nick name “Terry Wyles”, and has been using it as a common law trade mark for the provision of legal services, particularly intellectual property and small business law, since 2007. The Complainant’s website “www.startupiplaw.com” refers to the Complainant as either “Terrence Wyles”, “Terrence M. Wyles”, or “Terry Wyles”, and the Complainant’s professional email address includes his name as “Terry.Wyles”.

The Respondent is FlokiNET Ltd WhoisProtection, FlokiNET Ltd, Seychelles. No formal response was received by the Respondent and therefore little information is known about the Respondent, but it appears that the Respondent is a domain registration and web hosting company that also provides WhoIs privacy services. The Respondent registered the Disputed Domain Name on November 4, 2019. The Disputed Domain Name resolves to an active website that contains allegations against the Complainant of a personal nature. The Complainant says that all of the information is false and defamatory.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant is a licensed attorney at law and the founder and owner of Startup IP Law, LLC. The Complainant regularly trades on his nick name “Terry Wyles”, and has been using it as a common law trade mark for the provision of legal services, particularly intellectual property and small business law, since 2007. The Complainant’s domain name <startupiplaw.com> refers to the Complainant as either “Terrence Wyles”, “Terrence M. Wyles”, or “Terry Wyles”, and the Complainant’s professional email address includes “Terry.Wyles”.

Rights or legitimate interests

A Google search of “Terry Wyles” shows the Complainant listed multiple times. The only other references are a Wikipedia reference to a “Terry Wiles”, which is not the Complainant, and the Respondents’ website at the Disputed Domain Name. None of the Respondents have a right to the Disputed Domain Name. The Respondents are not making a bona fide offering of goods or services from the website at the Disputed Domain Name. The Respondents use / host the website in breach of the Acceptable Use Policy.

Registered and used in bad faith

None of the Respondents have a right to the Disputed Domain Name. The Respondents are not making a bona fide offering of goods or services from the website at the Disputed Domain Name. A Google search of “Terry Wyles” shows the Complainant listed multiple times. The only other references are a Wikipedia reference to a “Terry Wiles”, which is not the Complainant, and the Respondents’ website at the Disputed Domain Name. The Respondents continued use of the Disputed Domain Name is solely to confuse the Complainant’s clients and potential clients and to defame the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.

A. Procedural Issues – Correct Respondent

The Complainant names various parties as the Respondent in the Complainant – Tucows, Inc. (the Registrar), Flokinet, FlokiNet Ltd, and John Does 1-10. The Panel is satisfied that FlokiNET Ltd WhoisProtection, FlokiNET Ltd is the correct Respondent as that is name of the registrant in the WhoIs records.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Complainant is relying on his personal nick name “Terry Wyles” to establish rights under the Policy. According to the Complainant, the Complainant regularly trades on his nick name “Terry Wyles”, and has been using it as a common law trade mark for the provision of legal services, particularly intellectual property and small business law, since 2007.

The UDRP does not explicitly provide standing for personal names, which are not registered or otherwise protected as trade marks. However, where a complainant is using his or her personal name as a trade mark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.5.2). For example, see cases such as Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, and Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.

However, merely having a famous name, or making broad unsupported assertions regarding the use of a personal name in trade or commerce, will not usually be sufficient to demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint (see section 1.5.2 of WIPO Overview 3.0). In this case, the only evidence that the Complainant has provided to support his broad assertion of having trade mark rights in “Terry Wyles” comprises:

- Google search results that mention the Complainant;
- the fact that the website of the Complainant’s business “www.startupiplaw.com” refers to the Complainant as either “Terrence Wyles”, “Terrence M. Wyles”, or “Terry Wyles”; and
- the fact that the Complainant’s professional email address includes “Terry.Wyles”.

The Complainant has not provided enough evidence to establish that the Complainant's personal name has become distinctive of any particular goods or services (see Margaret C. Whitman v. Domains For Sale, WIPO Case No. D2008-1534). Furthermore, the Complainant uses the name Startup IP Law, LLC for his legal services business, and not the Complainant’s personal name. The Complainant has not provided evidence to demonstrate that he has made significant sales under the name Terry Wyles or that consumers would view this as a trade mark for his services. It appears that the Complainant provides his services under the name Startup IP Law and not Terry Wyles.

While the Panel has serious doubts regarding the Complainant’s asserted rights under the first element of the Policy, the Panel is not required to decide this element due to the findings on the second and third elements below.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case that:

- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to an active website that contains allegations against the Complainant of a personal nature.

- The Complainant has not authorised the Respondent to use the trade mark in the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name.

However, the Complainant has not addressed legitimate noncommercial or fair use. UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech can in principle support a respondent’s claim to a legitimate interest under the Policy (see section 2.6 of WIPO Overview 3.0). The criticism must be genuine and noncommercial, and not pre-text for commercial gain.

In this case, the website at the Disputed Domain Name contains allegations about the Complainant of a personal nature. There is no commercial advertising on the Respondent’s website. The website does link to other websites (of a commercial nature), but these links are to news articles from mostly well-known sources regarding allegations of a similar nature against celebrities, politicians, and other persons. The Panel considers that these links are informational, and that there is no evidence in the record that the website has been set up as a pretext for commercial gain.

The Disputed Domain Name is identical to the Complainant’s nickname (although as stated above, the Panel notes that the Complainant has not provided evidence that consumers would view the name “Terry Wyles” as a trade mark for his services).

Section 2.6.2 of the WIPO Overview 3.0, reflects a consensus in the manner of 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. In certain cases involving parties exclusively from the United States, some panels applying United States 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.”

The Panel notes that the Complainant is based in the United States, and, based on the content of the Respondent’s website, the Panel finds probable that the Respondent is also located in the United States, or at least has some connection with the United States and/or the Complainant.

In the circumstances of this case, this Panel considers preferable the approach followed by a number of panels in cases involving parties from the United States regarding a bona fide noncommercial criticism site. This approach is supported by prior decisions and the words of paragraph 4(c)(iii) of the Policy (see Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693).

The content of the Respondent’s website is clearly critical, and a consumer visiting the website would not be confused into thinking that this was the website of the Complainant, or affiliated with the Complainant. The Panel finds that these are circumstances beyond the disputed domain name itself supporting the Panel’s finding under the second element of the Policy (see section 2.5.2 and 2.6.2 of WIPO Overview 3.0, and The United Grand Lodge of Queensland v. Redacted for Privacy, 1&1 Internet Inc. / Alfred Warburton, WIPO Case No. D2018-2862).

The Complainant says that the allegations regarding the Complainant on the Respondent’s website are defamatory. The Panel considers that the statements may be deemed defamatory and actionable in court proceedings if they are untrue, but as discussed in The United Grand Lodge of Queensland v. Redacted for Privacy, 1&1 Internet Inc. / Alfred Warburton, WIPO Case No. D2018-2862, the truth or falsity of these allegations cannot be determined definitively in the limited scope of a UDRP proceeding. The Panel must focus on fair use and the likelihood of false association with the trade mark holder. In this case, the Panel considers that the content of the Respondent’s website seemsconsistent with noncommercial criticism.

The Panel concludes that the Complainant has not satisfied its burden of proving that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and that the Complainant fails on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.

UDRP paragraph 4(b) provides a list of scenarios that constitute evidence of a respondent’s bad faith. The Complainant has not framed his case against any of these scenarios, although the Panel notes that these are not exhaustive.

The crux of the Complainant’s case on bad faith is that the website contains trade marks and copyrighted materials (i.e. pictures from the Complainant’s website), that this is in violation of the Registrar’s acceptable use policy, and that the Respondent’s use of the Disputed Domain Name is solely to confuse the Complainant’s clients and to defame the Complainant. The Panel also notes that the Respondent uses a privacy service.

Regarding the Complainant’s submission that the information on the website at the Disputed Domain Name is defamatory, using a domain name to tarnish a complainant’s mark (e.g., by posting false or defamatory content, including for commercial purposes) may constitute evidence of a respondent’s bad faith (see section 3.12 of WIPO Overview 3.0). However, UDRP panels are not in a position to make definitive rulings on allegations of defamation which is a matter better suited for court proceedings (see The United Grand Lodge of Queensland v. Redacted for Privacy, 1&1 Internet Inc. / Alfred Warburton, WIPO Case No. D2018-2862). Furthermore, the mere fact that the Respondent's website criticises the Complainant and uses material that the Complainant considers to be defamatory does not prove that tarnishment has occurred (see Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc, WIPO Case No. D2015-2062). As stated in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505:

"As for Complainant's assertion of "tarnishment," that phrase, too, has a specific meaning that does not apply here. Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, Case No. D2000-1415 (WIPO Jan. 23, 2001); cf. Etam, plc v. Alberta Hot Rods, Case No. D2000-1654 (WIPO Jan. 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO Sept. 19, 2000) (protection for genuine criticism sites is provided by Policy's legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues."

The Complainant also argues that the Respondent uses the Disputed Domain Name to confuse the Complainant’s clients. However, the Panel considers from the content of the Respondent’s website that the Respondent is not attempting to pass itself off as the Complainant or misleadingly divert Internet users.

The Panel concludes that the third element of the Complaint has not been established.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: June 8, 2020