WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Netblocks Group v. Collin Anderson
Case No. D2020-2240
1. The Parties
The Complainant is Netblocks Group, United Kingdom, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is Collin Anderson, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain names <netblocks.club>, <netblocks.fyi>, <netblocks.life>, <netblocks.online>, and <netblocks.xyz> are registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020 in respect of the disputed domain name <netblocks.fyi>. On August 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with this disputed domain name. On August 29, 2020, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name <netblocks.fyi> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 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 amendment to the Complaint on September 7, 2020. On September 9, 2020, the Complainant requested to add the disputed domain names <netblocks.club>, <netblocks.life>, <netblocks.xyz> and <netblocks.online> to the Complaint, pointing out that they are all registered by the Respondent. On September 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the new disputed domain names. On September 10, 2020, the Registrar transmitted by email to the Center its verification confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amendments to the 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 September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020. The Response was filed with the Center on October 7, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 19, 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.
On October 22, 2020, the Complainant filed a supplemental submission, and on November 2, 2020, the Respondent filed a supplemental response. The Panel decided to accept these supplemental filings in order to allow the Parties an opportunity to address in more detail the issues in dispute arising from the Complaint and the Response.
4. Factual Background
The Complainant describes itself as an independent and non-partisan civil society group working at the intersection of digital rights, cybersecurity, and internet governance, striving for an open and inclusive digital future for everyone, which has operated under the brand NETBLOCKS since 2016.
The Complainant claims to have unregistered trademark rights in the sign NETBLOCKS (the “NETBLOCKS trademark”).
On December 7, 2016, the Complainant registered the domain name <netblocks.org>, which it uses for its official website.
The disputed domain name <netblocks.fyi> was registered on January 12, 2020. It resolves to a website containing criticisms to the Complainant’s activities.
The disputed domain names <netblocks.club>, <netblocks.life>, <netblocks.xyz> and <netblocks.online> were all registered on September 1, 2020. They are currently inactive.
5. Parties’ Contentions
The Complainant claims to have unregistered trademark rights in the NETBLOCKS trademark. It submits that it has developed a global reputation in this trademark, which has become an established trading name in the United States, the United Kingdom, Europe, and elsewhere since 2016, and the public has come to perceive services that are offered under the NETBLOCKS trademark as emanating from or being endorsed by or affiliated with the Complainant. According to the Complainant, NETBLOCKS is the best-known brand in the Complainant’s field of activity, with thousands of online and televised articles of news coverage, including in leading newspapers, a presence on major international Internet social media platforms, including through verified profiles on Twitter and Facebook, news TV channels and radio stations. The Complainant points out that the fact that the Respondent is targeting the Complainant’s NETBLOCKS trademark, based on the manner in which the Respondent’s website is used, supports the Complainant’s assertion that this trademark has achieved significance as a source identifier for the Complainant’s services.
The Complainant submits that the disputed domain names are identical to the Complainant’s NETBLOCKS trademark as they incorporate the trademark entirely.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or otherwise permitted the Respondent to use the NETBLOCKS trademark or use any domain name incorporating it and there is no relationship between the Parties, and the Respondent is not commonly known under the disputed domain names and has not acquired trademark rights in them.
The Complainant maintains that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services, but its intent is to misleadingly divert customers or dilute or tarnish the trademark of the Complainant. It submits that when the Respondent registered the disputed domain names, it knew that the Complainant had developed an extensive goodwill and reputation in the NETBLOCKS trademark, which is evident from the content of the Respondent’s website, which identifies the Complainant’s organization and lists the Complainant’s staff members by name. According to the Complainant, the Respondent registered the disputed domain names, which fully incorporate the NETBLOCKS trademark and obviously refer to the Complainant, either to confuse Internet users or to receive benefit or profit. The Complainant contends that if the purpose for the registration of the disputed domain names was to publish criticisms against the Complainant, the right to criticize does not necessarily extend to registering and using domain names that are identical to the Complainant’s trademark, especially in cases when this trademark alone is used as the domain name, because that may be understood by Internet users as impersonating the trademark owner. The Complainant notes that the Respondent could have chosen another domain name that adequately reflects the object and the independent nature of its websites.
The Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Complainant maintains that the Respondent knows the Complainant and is aware of the goodwill of the NETBLOCKS trademark and has registered the disputed domain names to deliberately create confusion in Internet users and spread doubts about the Complainant while diverting clients, sponsors and donors to a competitor for illegitimate commercial gain. According to the Complainant, by selecting <trademark.tld> domain names, the Respondent is intentionally holding itself out as the Complainant in order to mislead Internet users seeking the Complainant and thus expand the group of Internet users who will read the content of its website. Once at the website, Internet users are exposed to the criticisms that they neither sought nor expected. This damage cannot be corrected by a disclaimer nor by the inclusion of some form of recognition within the website content that its author is not the trademark owner.
The Complainant submits that the Respondent is related with an organization that carries out activities in competition with the Complainant. The Complainant sent a cease and desist letter to this organization with a request for transfer of the disputed domain name <netblocks.fyi>. This organization initially denied the claim and stated that the owner of this disputed domain name was a former employee of theirs and that they had no responsibility for the situation. Upon being presented further evidence showing their involvement, this organization became unresponsive. The Complainant submits that the activities of the Respondent can be traced to this organization, as his actions have been digitally signed by and originate from an email address of this organization, with verified signatures and timestamps that can be independently verified. It notes that senior staff of the same organization has publicly stated its approval of the Respondent’s website at the disputed domain name <netblocks.fyi>, which website recommends the same organization and an entity affiliated to it as superior alternatives to the Complainant’s products and services.
In its supplemental submission, the Complainant points out that registration by the Respondent of all of the disputed domain names demonstrates that the Respondent has engaged in a pattern of cybersquatting conduct, which prevents the Complainant from exercising its rights in the NETBLOCKS trademark and managing its presence on the Internet.
The Respondent states that it has no knowledge about the status of the Complainant’s trademarks, and notes that at the time that the disputed domain names were registered, the Complainant’s website did not explicitly mention the status of its trademarks. The Complainant has since updated its website to assert that its trademark has been registered. The Respondent notes that regardless of the status of the Complainant’s trademark, it has used this trademark in the disputed domain name under an alternative Top-Level Domain (“TLD”) in order to name the Complainant in the critical commentary posted on the website at the disputed domain name.
The Respondent claims that it is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The Respondent maintains that it is using the disputed domain name <netblocks.fyi> for a critical commentary based on recognized public interest purposes – a demonstrable risk of harm to people by the Complainant’s business practices, with no intent for commercial gain or tarnishing. According to the Respondent, previous panels acting under the Policy, relevant national laws and international human rights principles and norms have recognized such exercise of free speech and have protected the rights of respondents in equivalent cases, especially given the human rights issues that are pertinent in this case.
The Respondent explains that the disputed domain names were registered to raise awareness to specific actions taken by the Complainant that puts individuals – often human rights defenders or endangered communities – within authoritarian and repressive countries at risk, and which could infringe privacy protection laws.
The Respondent denies that it has a commercial interest in the disputed domain names or in competitors of the Complainant, and asserts that its only interest is in a human rights matter. The Respondent submits that the website at the disputed domain name <netblocks.fyi> contains no advertisements and generates no revenue. The Respondent maintains that its activities do not represent “tarnishment” under the plain English understanding of the word or the precedent set from other Panels. The Respondent further notes that the search engine descriptions of the Respondent’s website pick up the critical nature of its content, and Internet users who read the descriptions in the search results would already be alerted to the critical nature of the Respondent’s website before clicking on the link indexing the website in the search tool. They would also pick up its critical nature of the Respondent’s website when they see its ominous logo, title, and content. The Respondent states that while the Complainant’s own website is a prominent first result for a search on its own name, the Respondent’s website appears on the fifth page of a Google Search and even further in Bing and DuckDuckGo, after listings about the use of the word “netblocks” as a technical term in the networking field and by other commercial actors. In view of this, according to the Respondent, no Internet users would stumble into its website without being made aware that it contains critical commentary about the Complainant.
The Respondent states that he has a decade of specific professional and academic expertise in the field of Internet network measurement in a non-profit environment, helping human rights groups, more often pro bono. The Respondent confirms that from May 2014 to December 2017, he had a contractual relationship with the entity referred to by the Complainant, and describes it as an Internet measurement project run out of a not-for-profit organization, which project aimed to protect the open Internet and foster broadband deployment through providing open source tools and open data for no cost to the public. The Respondent’s role had included support for the development of professional practices, ethical principles, and collaboration. The Respondent denies that he has had a financial relationship with the other entity referred to by the Complainant, and states that he has no knowledge about the relationship between them. The Respondent submits that in January 2018, he ceased the contractual relationship with the organization and no longer engages in work in the field, and instead is employed in a different field in the public sector. The Respondent explains that the email address cited by the Complaint to associate the Respondent with competitive interests was an old email address to which the Respondent no longer has access and the Respondent wasn’t aware that this old email address was indicated.
The Respondent refers to a number of Panel decisions under the Policy that have held that freedom of speech and fair use considerations permit the registration of “<trademark.com>” domain names that were used, fairly, to establish noncommercial websites containing material that is critical of the named trademark or its owner. The Respondent points out that First Amendment jurisprudence in the United States protects fair use of a trademark for critical commentary such use, and the Respondent is an American citizen, hosting a site with a United States corporation, with a generic Top-Level Domain (“gTLD”) run by a United States corporation.
In its supplemental submission, the Respondent states that it chose the “.fyi” gTLD for the disputed domain name <netblocks.fyi> because it clearly communicated the critical content of its website, and notes that if the Complainant would like to resolve the other disputed domain names separately from this disputed domain name, the Respondent would be open to their deletion, allowing to lapse, or other accommodations, because the Respondent’s sole purpose is to protect the disputed domain name <netblocks.fyi>.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) each of the disputed domain names is identical 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 names; and
(iii) the Respondent has registered and is using the disputed domain names in bad faith.
A. Identical or Confusingly Similar
The Complainant submits that it has unregistered trademark rights in the NETBLOCKS trademark, arising as a result of its use in the period starting from 2016. As summarized in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered 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 the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and 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.
The Complainant has referred to relevant evidence in this regard, which shows that in dozens, if not hundreds of articles published in the last four years, the Complainant has been regularly referred to by the name “Netblocks” by major international media networks and international organizations as their source of information about telecommunications disruptions, Internet controls and cyber-security issues in various parts of the world. This is sufficient to satisfy the Panel that the NETBLOCKS trademark has become a distinctive identifier that Internet users associate with the Complainant’s services, including prior to the registration of the disputed domain names in 2020. In addition, the Respondent has confirmed that it has chosen and registered the disputed domain names because they incorporate the Complainant’s name and with the intent to refer to the Complainant, and this is confirmed by the content of the Respondent’s website. As discussed in section 1.3 of the WIPO Overview 3.0, 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. Therefore, the Panel finds that the Complainant has established that it has unregistered trademark rights in the NETBLOCKS trademark for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the TLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.club”, “.fyi”, “.life”, “.online”, and “.xyz” gTLD sections of the disputed domain names.
Each of the disputed domain names incorporates in its relevant section the NETBLOCKS trademark entirely without the addition of any other elements. This satisfies the Panel that the disputed domain names are identical to the NETBLOCKS trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent’s right to criticize does not extend to registering and using domain names that are identical to the Complainant’s trademark, because that may be understood by Internet users as impersonating the Complainant. According to the Complainant, the Respondent’s intent in registering and using the disputed domain names is to misleadingly divert Internet users and spread doubts about the Complainant while diverting Internet users to a competitor, which the Respondent’s website at the disputed domain name <netblocks.fyi> describes as a superior alternative to the Complainant’s products and services. The Complainant’s maintains that the Respondent has financial links to this competitor and that it is the beneficiary of the Respondent’s actions.
The Respondent claims that it is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The Respondent maintains that he is using the disputed domain name <netblocks.fyi> for a critical commentary based on recognized public interest purposes, and denies that he has commercial interest in the disputed domain names or that he has financial links to competitors of the Complainant.
The Respondent registered four disputed domain names on September 1, 2020 – the date when the Center provided to the Complainant the registrant and contact information disclosed by the Registrar about the disputed domain name <netblocks.fyi>. The Respondent has not explained the reason for the registration of four additional domain names in the Response, but the case file shows that on the date of their registration a statement appeared on the website at the disputed domain name <netblocks.fyi> that the same website content had been archived and may be made available inter alia at the other four disputed domain names, apparently in case the Complainant succeeds to obtain the transfer of the “.fyi” disputed domain name in the present proceeding. In its supplemental response, the Respondent states that it is open to discussing with the Complainant different options about these disputed domain names in case it retains control over the disputed domain name <netblocks.fyi>. All this taken together, and even though these four disputed domain names are currently inactive, appears to show that the Respondent has registered them as a defensive measure in case the Complainant succeeds with its Complaint and with the intention either to use them in the same way as it is currently using the disputed domain name <netblocks.fyi> or even as a bargaining chip in eventual negotiations with the Complainant. This leads the Panel to the conclusion that the intentions and the conduct of the Respondent in relation to all disputed domain names are essentially the same.
The issue of whether the Respondent is related to the entity recommended on its website is indeed relevant for the purposes of determining whether the Respondent’s actions have been motivated by a commercial interest in a competitor of the Complainant. If this is so, this would delegitimize the Respondent’s claim that he is acting solely in the public interest and is genuinely exercising his right of free speech. See section 2.6.1 of the WIPO Overview 3.0. As pointed out by the Complainant, the Respondent’s website indeed contains references to a third party whose conduct is favorably portrayed in comparison with the alleged conduct of the Complainant. The Complainant has also submitted evidence that in January 2020 the Respondent identified himself by an email address of the same third party (described by the Complainant as a competitor to it), while the Respondent claims that this was an old and inactive email address which it had forgotten to update with another. The Respondent denies that the Complainant and the third party should be regarded as competitors, but this makes one ask the question of why he has compared their conduct. The Complainant has also submitted a printout from the personal webpage of the Respondent, where he mentions being involved in the activities of the same third party, without listing this as a former involvement. In view of the above evidence and Parties’ statements, it appears to the Panel as more likely than not that the Respondent may still be involved in one way or another in the activities of this third party which appears to be a competitor to the Complainant.
Regardless of the above, even if the Respondent’s actions are not motivated by commercial interests, this would still not necessarily or automatically lead to a conclusion that the Respondent has rights or legitimate interests in the disputed domain names. As discussed in section 2.5 of the WIPO Overview 3.0, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner, and domain names identical to a complainant’s trademark carry a high risk of implied affiliation with the respective trademark owner. As further discussed in section 2.6 of the WIPO Overview 3.0, UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy. However, the consensus view of panels is 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>). 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.1
In this case, the disputed domain names are identical to the Complainant’s trademark and follow the pattern <trademark.tld>, and thus prima facie misrepresent to users that any associated website is likely to be officially connected with the Complainant. They include no additional elements, including the respective TLDs, to indicate that they are dedicated to content critical of the Complainant (the Respondent could have chosen any number of other domain names containing such elements).2 When Internet users arrive at the Respondent’s website, they may realize that it is not that of the Complainant, but such users would nonetheless have already been attracted to the website on the false premise that is the Complainant’s own.
Taking all the above into account, the Panel concludes that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
As discussed above, the Panel considers that the Respondent has registered and used five domain names that are identical to the NETBLOCKS trademark and thus prima facie misrepresent to Internet users that the associated website is connected with the Complainant. In the Panel’s view, the foregoing constitutes registration and use in bad faith, which cannot be cured by the content of the Respondent’s website (if it is accepted that the content is noncommercial and indeed represents legitimate criticisms, for which the latter aspect Panel makes no findings, as this is generally seen as not being a matter falling within the scope of the Policy).
It is also notable that the Respondent has registered four of the disputed domain names after receiving correspondence from the Center about the present proceeding, and has not explained the reasons for their registration in the Response. As discussed above, it appears that their registration was made with the intention either to use them as a “backup” and likely in the same way as the disputed domain name <netblocks.fyi> or as a bargaining chip in eventual negotiations with the Complainant. The Respondent’s conduct also supports a finding that it has engaged in a pattern of conduct aimed at preventing the Complainant from reflecting its trademark in a corresponding domain name.
On the basis of the above, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <netblocks. club>, <netblocks.fyi>, <netblocks.life>, <netblocks.online>, and <netblocks.xyz> be transferred to the Complainant.
Date: November 9, 2020
1 The Panel notes that in certain cases involving parties exclusively from the United States, some panels applying United States First Amendment principles have in the past found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest. This Panel however does not find reasons to apply these First Amendment principles to the present case, as the Parties are not exclusively from the United States and the Respondent’s actions are not confined to the United States. Moreover, the Panel notes that this “US-US approach” has been criticized, and may no longer find many adherents; as articulated in Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633, that panel noted a convergence away from applying the historic “US-US approach” and identified a growing consensus around the impersonation test, “even for cases [ ] between United States parties and with a United States panelist and where the location of mutual jurisdiction is in the United States.” That panel went on to note that “[s]ignificantly, 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>).”
2 The Panel has considered in particular the “.fyi” gTLD as standing for the phrase “for your information” but ultimately does not consider that this changes the analysis (i.e., even ignoring for the sake of argument that the second level portion of the disputed domain name is identical to the Complainant’s mark, the gTLD by itself does not convery that the content would be critical).