WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LCF Law Limited v. Lee Tyson, BDTHREE
Case No. D2021-2412
1. The Parties
The Complainant is LCF Law Limited, United Kingdom, represented internally.
The Respondent is Lee Tyson, BDTHREE, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <lcf.news> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 30, 2021. 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 law firm in the United Kingdom. The Complainant traded for approximately 30 years under a name which was often abbreviated to “LCF”, and has been trading as “LCF Law” since 2014. The Complainant owns a number of registered trademarks consisting of or incorporating the mark LCF including United Kingdom Registered Trademark No. 3114594, in respect of the word mark LCF, registered on November 13, 2015 in classes 16, 35, 36, 38, and 45. Among others, the Complainant is the owner of the domain names <lcf.co.uk>, registered on July 21, 1998, <lcfnews.co.uk>, registered on February 25, 2014, and <lcfnews.com>, registered on May 13, 2013. The Complainant uses <lcf.co.uk> in connection with its official website, and <lcfnews.co.uk> and <lcfnews.com> in connection with the dissemination of news about its business, via a forward to said official website.
The Respondent is the beneficiary of an estate administered by the Complainant. The Respondent disagrees with certain aspects of the Complainant’s administration of such estate. The Panel does not require to go into the full detail of the Parties’ dispute regarding such estate for the purposes of its Decision.
The disputed domain name was registered on April 1, 2021. According to screenshots produced by the Complainant, the website associated with the disputed domain name is used to display a site having a close appearance to the Complainant’s official website, but which features content critical of the Complainant’s dealings with the Respondent.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
Identical or confusingly similar
Ignoring the generic Top-Level domain (“gTLD”) “.news”, the disputed domain name is identical to the Complainant’s LCF registered trademark. If the gTLD is taken into account, the disputed domain name is confusingly similar to the Complainant’s other domain names. The Respondent’s intention is to attract the Complainant’s potential customers to the website associated with the disputed domain name because such customers will believe that it is associated with or authorized by the Complainant. The Respondent has set its said website to display a disclaimer but this would not avoid confusion as the Internet user has already been confused by the time that they reach the said website. In any event, the confusion is exacerbated by the Respondent having selected design features and an overall get-up which are the same as those on the Complainant’s website.
Rights or legitimate interests
The Respondent adopted the disputed domain name long after the Complainant’s rights in the LCF mark came into being. The Complainant has not authorized the Respondent to use the disputed domain name, nor is the Respondent affiliated with the Complainant. The disputed domain name is not derived from the Respondent’s name, nor is there evidence that the Respondent is commonly known by a name from which the disputed domain name could be derived. The Respondent’s intention is to use the disputed domain name to disrupt the Complainant’s business.
The Complainant’s potential customers are drawn to the disputed domain name where they are invited to view defamatory and disparaging statements regarding the Complainant and its employees. The Respondent has also circulated such statements to at least the Complainant’s employees and also on social media. Such conduct has tarnished the Complainant’s marks and the Respondent cannot claim rights and legitimate interests insofar as the Respondent’s intention is purely to damage the Complainant. The Respondent is entitled to make fair criticism of the Complainant’s actions and conduct but not to use the disputed domain name as a tool to damage the Complainant’s business and trademarks intentionally.
Registered and used in bad faith
The circumstances of this case do not fall within the illustrative examples of bad faith in paragraph 4(b) of the Policy but such examples are not limitative. The registration of an identical or confusingly similar domain name for the purpose of damaging the owner of the trademark where the disputed domain name does not itself indicate that it signifies parodic or critical purposes constitutes bad faith within the meaning of the Policy. The disputed domain name purports to be a legitimate domain name of the Complainant, distinguishing this case from the “name sucks” type of cases. It will continue to attract hits by misrepresenting an association with the Complainant. The Respondent’s website is designed to disrupt the legitimate business operations of the Complainant. The related content is in many cases a work in which copyright subsists and is owned by the Complainant.
Various comments on the Respondent’s website are defamatory and disparaging of the Complainant or its employees. Certain statements are defamatory because they are false and are likely to cause serious harm to the Complainant’s reputation. The Respondent is unable to justify its allegations within certain articles on said website.
The Respondent did not reply to the Complainant’s contentions. However, in an informal email to the Center dated August 24, 2021, the Respondent made several contentions, summarized as follows:
There are multiple sites on the Internet with the domain name “lcf”, for example, <lcf.biz>. The disputed domain name is a shortened version of the name “Lucifer” and is used in connection with a not for profit personal website. Everything is backed up and “waiting for the next domain”. The Complainant is trying to cover up all of the mistakes which it made in dealing with the Respondent.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown to the Panel’s satisfaction that it is the owner of the registered trademark LCF specified in the factual background section above. This mark is identical to the second level of the disputed domain name. In these circumstances, the Complainant’s mark is exactly reproduced in the disputed domain name and is wholly recognizable therein, disregarding the gTLD “.news” as is typical in the comparison exercise under the first element analysis under the Policy.
The Respondent does not directly take issue with the Complainant’s contentions as regards the first element analysis. The Respondent does note that there may be other websites or domain names in existence which also use the letters “lcf”, although this is not relevant to the first element assessment (nor is the relevance to the Respondent’s case clear in general terms). What matters is that the Complainant’s mark is recognizable in the disputed domain name, which it is in the present case, given that it is incorporated in its entirety (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Although the gTLD is typically disregarded in the comparison exercise, in this case it should be noted that the Complainant actively operates domain names containing the word “news”, in conjunction with the LCF trademark, to point to the news section of its official website. Accordingly, the “.news” gTLD here affirms the conclusion that the Complainant’s mark is being targeted by the disputed domain name and hence affirms a finding of confusing similarity.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
In the present case, the Complainant asserts that, notwithstanding a disclaimer, the website associated with the disputed domain name has been used to imitate the Complainant’s official website, and, under this guise, to publish material that is false, and defamatory of the Complainant, which amounts to tarnishment of the Complainant’s LCF mark. The Respondent did not provide a formal response but asserts in its informal email that many websites use the letters “lcf”, that in the case of the disputed domain name this stands for “Lucifer”, and that the associated website is noncommercial in nature.
Dealing with the Respondent’s various arguments, first, the fact that many other domain names may use the letters “lcf” does not of itself entitle the Respondent to claim rights and legitimate interests in the disputed domain name. The Respondent would also need to show that it is using the disputed domain name in a way which was not intended to reference or target the Complainant’s LCF trademark, but some other cited legitimate purpose – which clearly is not the case. In the present case, such targeting is precisely what the Respondent is doing, as the content at the website associated with the disputed domain name makes clear. Equally, the fact that the letters may be an abbreviation for a name does not take the Respondent any further, given that the Respondent is plainly not using the disputed domain name solely for that reason but rather to reference the Complainant’s mark. In these circumstances, the Panel turns to the Respondent’s third comment that its website is noncommercial in nature. This submission, taken together with the content at the Respondent’s website, indicates that the Respondent is effectively asserting that it is engaging in noncommercial criticism of the Complainant, which amounts to a case along the lines of paragraph 4(c)(iii) under the Policy.
Panels under the Policy recognize that the use of a domain name for free speech in the form of noncommercial criticism can in principle support a respondent’s claim to a legitimate interest under the Policy (see section 2.6 of the WIPO Overview 3.0). To support such fair use, the Respondent’s criticism must be genuine and noncommercial, and not a pretext for cybersquatting, commercial activity, or tarnishment. Here, so far as the Panel can tell, the Respondent genuinely believes that its criticism of the Complainant is justified and arises out of the Parties’ prior dealings. There is no suggestion that the Respondent is using the disputed domain name for the purposes of cybersquatting. Equally, the Panel does not consider that the content on the Respondent’s website amounts to tarnishment. “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.” (see Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633 (“Dover Downs”)).
Insofar as the Respondent’s criticism of the Complainant’s activities may be defamatory, the Complainant may have other remedies in other fora. However, the Panel in the present administrative proceeding is in no position to determine the accuracy, reasonableness, allegedly defamatory nature, or otherwise of the criticism expressed by the Respondent, nor does it require to do so in terms of its analysis under the Policy (see, for example, the comments of the panel in MUFG Union Bank, N.A. v. William Bookout, WIPO Case No. DME2014-0008).
However, the fact that the content of the website associated with the disputed domain name appears to contain non-pretextual, noncommercial criticism of the Complainant is not necessarily an end of the matter. Many panels under the Policy also require a domain name used for this purpose to be subject to the “impersonation test” (see Dover Downs, supra). In short, to constitute fair use under the Policy, these panels consider that any such domain name must not impersonate the trademark owner and should clearly signal to potential visitors that an associated website is likely to contain content critical of the trademark owner, lest it otherwise draw in by deception those users looking for the Complainant’s own online presence. An identical domain name to the trademark concerned (e.g., <trademark.tld>) is likely to prima facie falls foul of the “impersonation test”. Such a domain name may be seen to give rise to “an impermissible risk of user confusion” (see section 2.6.2 of the WIPO Overview 3.0). This may be distinguished from those cases where the domain name concerned is not identical to the complainant’s trademark but comprises the mark plus a derogatory term (the example often cited is “sucks”) or indeed any other term which clearly signals to the public that the associated website is likely to contain material critical of the mark owner.
The disputed domain name here contains an exact match of the Complainant’s trademark without adornment, and lacks any clear signal as to the presence of critical content. In the Panel’s opinion the disputed domain name falls foul of the “impersonation test” and cannot be considered to constitute fair use within the meaning of the Policy. There is a risk that the disputed domain name would be perceived by the public as being authorized or affiliated with the Complainant, leading users seeking the Complainant’s website to the Respondent’s website. The fact that new visitors may be greeted with a disclaimer at the Respondent’s site is nothing to the point and, in any event, the disclaimer states that such users should “read through this site first”. As the panel in Dover Downs, supra, indicates, registrants remain free to select domain names for the purposes of genuine noncommercial criticism so long as such domain names make clear that the registrant is not affiliated with or authorized by the trademark holder concerned. The disputed domain name here does precisely the opposite.
In all of the above circumstances, the Panel finds that the Complainant has carried its burden in respect of the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As the Complainant notes, these examples are not limitative. In the present case, consideration of the topic of registration and use in bad faith closely mirrors that of the discussion above concerning rights and legitimate interests. The Panel has found that the disputed domain name falls foul of the “impersonation test”. The second level of the disputed domain name is identical to the Complainant’s LCF trademark and thus prima facie misrepresents to Internet users that the associated website is connected with the Complainant. Given the Parties’ prior dealings, the Respondent was clearly aware of the Complainant when it registered the disputed domain name. The selected gTLD, “.news” appears to have been chosen to call to mind the Complainant’s own domain names, and this affirms the reference to the Complainant, notwithstanding the Respondent’s claim to be referencing the name Lucifer. Given that the content of the associated website relates directly to the Complainant’s alleged activities, any such claim lacks credibility, as does the Respondent’s comment that there are multiple other sites, presumably unrelated to the Complainant, using the letters “lcf”.
In short, the disputed domain name is likely to draw confused Internet users who are looking for the Complainant’s official news page to a site where they will encounter the Respondent’s critical content. The fact that they will be met there by a disclaimer does not avail the Respondent. As the panel noted in Netblocks Group v. Collin Anderson, WIPO Case No. D2020-2240, the use of a domain name which makes this kind of prima facie misrepresentation “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 latter aspect the Panel makes no findings, as this is generally seen as not being a matter falling within the scope of the Policy).”
In all of the above circumstances, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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, <lcf.news> be transferred to the Complainant.
Andrew D. S. Lothian
Date: September 13, 2021