WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compass Group USA, Inc. v. Baltic Collagen Corp., Jonathan Ledger, Emerging Markets Corp.
Case No. DCO2011-0028
1. The Parties
The Complainant is Compass Group USA, Inc. of Charlotte, North Carolina, United States of America, represented by an internal representative.
The Respondent is Baltic Collagen Corp. of Fort Bragg, North Carolina, United States of America, Jonathan Ledger of Henderson, Colorado, United States of America, and Emerging Markets Corp. of Lakewood, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <compassgroupusa.co> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. On May 5, 2011, the Center transmitted by email to GoDaddy.com, Inc (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On May 6, 2011, 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. In response to a notification and request by the Center, the Complainant filed an amended Complaint on May 23, 2011.
The Center verified that the Complaint together with the amendment to the Complaint/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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response June 19, 2011. The Response due date was subsequently re-set by the Center to June 27, 2011. Although the Center received several email communications from the named Respondents, no formal Response was filed.
The Center appointed William R. Towns as the sole panelist in this matter on July 15, 2011. 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 provider of contract foodservice and support services, and the owner of valid and subsisting trademark registrations for COMPASS and COMPASS GROUP, among others. The COMPASS GROUP mark has been used by the Complainant since as early as 1994. The Complainant also is the owner of the domain name <compass-usa.com>, which resolves to the Complainant’s commercial website at “www.compass-usa.com”.
The disputed domain name <compassgroupusa.co> was registered on January 18, 2011. It appears from the record that the Complainant became aware of the disputed domain name in April 2011. At that time, the disputed domain name resolved to a website at “www.compassgroupusa.co” entitled “The Official Compass Group Website”. The website, which displayed trademarks marks belonging to the Complainant and imagery and pictures used on the Complainant’s website, contained content critical of the Complainant. The website also contained advertising links to a third-party website,”www.scamradar.com”.
At the time the Complainant became aware of the registration of the disputed domain name, the concerned Registrar’s WhoIs records identified the registrant as Domains By Proxy, a privacy protection service affiliated with the Registrar. On April 8, 2011, the Complainant electronically sent a notice letter to an individual by the name Harry Klenda ([ ]@spsu.edu), who the Complainant suspected to be the owner of the disputed domain name.1 After receiving no response from Mr. Klenda, the Complainant on April 13, 2011 lodged a complaint with the concerned Registrar under the United States (“U.S”) Digital Millennium Copyright Act (DMCA) and pursuant to the Registrar’s Trademark Copyright and Infringement Policy, alleging trademark and copyright infringement.
The Registrar suspended the disputed domain name, and provided notice of the DMCA complaint to an individual by the name of Jonathan Ledger, apparently based on contact information provided to the Registrar in connection with the disputed domain name. A response to the DMCA complainant was provided by Mr. Ledger, in which he asserted that as a syndicated columnist he was making a fair use of the website to post content critical of the Complainant. On April 26, 2011, the Complainant sent a cease and desist letter to Mr. Ledger demanding that he cease use of the disputed domain name and transfer it to the Complainant. Mr. Ledger responded on April 27, 2011, rejecting the Complainant’s demands and reiterating his position as noted above.
The Complainant thereafter on May 4, 2011 filed a Complainant under the UDRP with the Center, naming Mr. Ledger as the Respondent. In response to the Center’s registrar verification request of May 5, 2011, however, the concerned Registrar on May 6, 2011 identified the registrant of the disputed domain name as Baltic Collagen Corp. On May 16, 2011, the Center notified the Complainant (and Mr. Ledger) of the registrant information received from the concerned Registrar and requested that the Complainant file an amended Complaint by May 21, 2011.
On May 21, 2011 – the day upon which the amended Complaint was due – Mr. Ledger contacted the Complainant and the Center, indicating that the registrant of the disputed domain name was Emerging Markets Corp. The email address provided by Mr. Ledger for Emerging Markets Corp. was the email address used by Mr. Ledger ([ ]@aol.com). Mr. Ledger indicated that his email constituted a “response” to the Complaint, which included within it a further response from an individual Mr. Ledger identified as his attorney, Brian Wagner, Esq. The postal address provided for Mr. Wagner was the same given for Mr. Ledger. 2
As noted above, an amended Complainant was filed with the Center on May 23, 2011, in which Jonathan Ledger, Baltic Collagen Corp., and Emerging Markets Corp. collectively are identified as the Respondent. Corporate records maintained by the North Carolina Secretary of State reflect the incorporation of a business entity by the name of Baltic Collagen inc., whose registered agent is Harry M. Klenda.
Subsequent to the Center’s notification of the formal commencement of proceedings herein, the Center received several email communications from Baltic Collagen, denying ownership and control of the disputed domain name and disavowing responsibility for the content of the “www.compassgroupusa.co” website. Baltic Collagen requested that no further emails communications regarding the disputed domain name be sent to it, and indicated that it would not engage in any further communications regarding the matter.
The Center also received an email communication from Harry Klenda, from the same email address to which the Complainant’s initial notice letter of April 8, 2011 to Mr. Klenda had been sent, characterizing communications from the Center as “spam”, and requesting that his address be removed from the email list.
The disputed domain name presently does not resolve to an active website. How long this has been the case cannot reliably be determined from the administrative record.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the disputed domain name appropriates the Complainant’s business name and is confusingly similar to the Complainant’s registered COMPASS GROUP mark. The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name, as the Respondent has not been commonly known by the disputed domain name, and has not been authorized to use the Complainant’s marks. The Complainant observes that the Respondent‘s website claims to be “The Official Compass Group Website”, prominently displays ten of the Complainant’s trademarks and copyrighted material, including imagery and pictures from the Complainant’s website, in addition to containing pay-per-click advertising links to “ScamRadar.com”. According to the Complainant, the Respondent is using the disputed domain name to drive Internet traffic to the website in order to generate revenue from these links. In view of the foregoing, the Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as a genuine criticism site.
The Complainant further asserts that Harry Klenda is the President and CEO of Baltic Collagen Corp. and that Mr. Klenda registered and is the beneficial owner of the disputed domain name. According to the Complainant, Mr. Klenda was involved in a dispute with Southern Polytechnic State University (“SPSU”) after he cancelled a meal plan for which he had contracted with SPSU, but was denied a refund. The foodservice was provided by the Complainant under contract with SPSU. The Complainant contends that “Jonathan Ledger” and “Emerging Markets Corp.” are fictitious names or aliases, and that Mr. Klenda has continuously used false and misleading registrant information in an attempt to evade or obstruct this administrative proceeding. The Complainant further alleges that Mr. Klenda has knowingly posted false and defamatory information on the Respondent’s website in order to harm the Complainant’s reputation and business.
In view of the foregoing, the Complainant contends that the disputed domain name was registered and used in bad faith.
B. Respondent
No formal Response was submitted with respect to the Complainant’s contentions. As discussed above, however, prior to the formal commencement of proceedings herein, a fair use defense was asserted by a person identified as “Jonathan Leger”, claiming to be a syndicated columnist. Mr. Ledger subsequently asserted that the disputed domain name had been registered by Emerging Markets Corp. No response of any kind has been submitted by Emerging Markets Corp. Baltic Collagen Corp., identified by the concerned Registrar as the domain name registrant following the submission of the original Complaint, has denied registering the disputed domain name, and Harry Klenda has not claimed rights in the disputed domain name.
6. Preliminary Issue: Respondent Identity
As noted above, Baltic Collagen Corp., the current registrant of the disputed domain name according the concerned Registrar’s WhoIs database, has disavowed ownership or control of the disputed domain name and disclaimed responsibility for the content on the website to which the disputed domain name at one time resolved. Harry Klenda is the registered agent for Baltic Collagen, and purportedly the president/CEO of the company. The Panel considers it likely that this is the same Harry Klenda who responded to communications from the Center. Mr. Klenda responded to the Center using the same email address to which the Complainant sent its April 8, 2011 notice letter.
It cannot be ascertained from the record when Baltic Collagen Corp. became the holder of the disputed domain name, as the identity of the underlying registrant at the time of the filing of the original Complaint was shielded through the use of a privacy protection service. At the time the Complainant lodged its DMCA complaint with the Registrar, it appears that information provided to the Registrar indicated that the disputed domain name was registered to “Jonathan Ledger”. Nevertheless, after responding to the DMCA complaint, Mr. Ledger subsequently claimed that the disputed domain name was registered to “Emerging Markets Corp.” of Lakewood, Colorado. As noted earlier, “Jonathan Ledger and “Emerging Markets Corp.” share a common email address, [ ]@aol.com.
The Panel finds substantial indication in the record that an identity of interests exists between Harry Klenda and Baltic Collagen Corp. There also is reason to suspect that both “Jonathan Ledger” and “Emerging Markets Corp.” may be aliases, but regardless of whether such is the case, the record before the Panel manifests an orchestrated effort to conceal and manipulate registrant identity and to obstruct or at a minimum delay proceedings commenced under the Policy. That Panel concludes for all of the foregoing reasons that there is a sufficient identity of interests between all of these parties that they may effectively be considered a single Respondent for purposes of this proceeding.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain name <compassgroupusa.co> is confusingly similar to the Complainant’s COMPASS GROUP mark. The first element of the Policy stands essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
In this instance, the disputed domain name incorporates the Complainant’s mark in its entirety. The resulting similarity between the disputed domain name and the Complainant’s mark and the potential for Internet user confusion is in no manner diminished by the addition of the term “usa”, particularly considering that the Complainant’s business name is Compass Group USA. Based on a comparison of the Complainant’s mark and the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. In this instance the disputed domain name incorporates the Complainant’s COMPASS GROUP mark in its entirety. The Respondent has used the disputed domain name to attract Internet users to a website that appears to have prominently displayed at one point, a significant number of the Complainant’s trademarks as well as imagery and pictures from the Complainant’s website, and bore the legend “The Official Compass Group Website”. In addition, the Respondent’s website appears to have contained pay-per-click advertising links. There is no indication that the Respondent has been commonly known by the disputed domain name, and it is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s mark.
Even though this combination of circumstances ordinarily would suffice as the Complainant’s prima facie showing under paragraph 4(a)(ii), the Respondent claims to be making a fair use of the disputed domain name in connection with a criticism site, which the Complainant acknowledges. Further, there is evidence in the record that the website to which the disputed domain name at one time resolved contained content critical of the Complainant. Pursuant to paragraph 4(c)(iii) of the Policy, a respondent making a legitimate noncommercial or fair use of a domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue, may establish rights or legitimate interests in the domain name.
Where there is evidence in the record that suggests the Respondent might have some right or legitimate interest in the disputed domain name, the Panel considers it appropriate to consider such evidence with the evidence as a whole in determining whether the Complainant has satisfied its overall burden of proof under paragraph 4(a)(ii) of the Policy. See Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., WIPO Case No. D2009-0062; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
There has been and continues to be two clearly predominant views among UDRP panels whether a respondent who registers a domain name identical or confusingly similar to the complainant’s mark for use with a criticism or “gripe” site can establish rights or legitimate interests in the domain name. See WIPO Overview 2.0, paragraph 2.4 (and relevant decisions cited therein). A number of panels have held that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s trademark. Conversely, other panels have held that a respondent has a legitimate interest in using the trademark as part of a domain name associated with a criticism sight if the use is fair and noncommercial. This latter view tends to be more prevalent in cases involving only U.S. parties or the selection of U.S. mutual jurisdiction, possibly due to the “robust free speech tradition” associated with the First Amendment to the United States Constitution. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.
Irrespective of this divergence of views, however, there is consensus for the principle that a respondent cannot make a legitimate noncommercial or fair use of a domain name within the meaning of paragraph 4(c)(iii) where bad faith registration and use of the domain name otherwise is indicated from the circumstances of the case. See Howard Jarvis Taxpayers Association v. Paul McCauley, supra; Wal Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra; The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516. See also Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., supra. For example, it has been held that a respondent has no right to use the complainant’s mark or a corresponding domain name so as to trick the public into believing that the complainant endorses any of the critical views expressed on the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175.
In this case, the Respondent held out its website as “The Official Compass Group Website”, displayed multiple trademarks belonging to the Complainant, and incorporated imagery and pictures from the Complainant’s website. Bad faith has been found where a respondent’s site copied the “look and feel” of the complainant’s website, while making no attempt to disclaim any affiliation. See Justice for Children v. R neetso / Robert W. O’Steen, supra. The Respondent’s website also contained pay-per-click advertising links. UDRP panels have held that the use of a confusingly similar domain name to create Internet user confusion for purposes of commercial gain is inconsistent with “legitimate noncommercial or fair use” under paragraph 4(c)(iii) of the Policy. See Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., supra; The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057. See also Council of American Survey Research Organizations v. The Consumer Information Organization, LLC, aka Pinelands Web Services, WIPO Case No. D2002-0377; New York Times Co. v. New York Internet Services, WIPO Case No. D2000-1072.
In addition, other indications of bad faith are present in the record before the Panel. As found earlier by the Panel, the record manifests an orchestrated effort by the Respondent to manipulate registrant identity and to evade or obstruct proceedings commenced under the Policy. The record reflects a pattern of conduct consistent with cyberflight, which in this case appears to include use of a privacy protection service in order to conceal registrant identity and avoid detection of transfers of the disputed domain name.
Paragraph 4(c)(iii) is intended to protect sites that practice genuine, noncommercial criticism. See WIPO Overview 2.0, paragraph 2.4. For the reasons discussed above, the Panel concludes in the circumstances of this case that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Giving due regard to the totality of circumstances in the record, the Panel concludes that the Respondent’s conduct in this case supports a finding of bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. For the reasons discussed under the preceding heading, the Panel finds that the Respondent‘s claim to be making a legitimate noncommercial or fair use of the disputed domain name is not supported by the record. The Panel finds a clear pattern of conduct in the nature of cyberflight reflected in the record. The phenomenon of cyberflight entails the systematic transfer of the domain name to different registrants following the initial domain name registrant’s receipt of notice of the complaint in order to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced respecting the domain name under the Policy or elsewhere. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. In this instance, the Panel considers that this pattern of conduct includes the registration and most likely the transfer of the disputed domain name under the cloak of a privacy protection service.
While this Panel does not consider a domain name registrant’s use of a privacy service in and of itself to constitute bad faith under the Policy, privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere. There is substantial indication of such manipulation in the record of this case. Neither the foray into cyberflight nor the employment of a privacy protection service in the questionable circumstances reflected in the record is consistent with what one would expect of a good faith registrant accused of cybersquatting. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <compassgroupusa.co> be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: July 30, 2011
1 As discussed below in connection with the Complainant’s contentions, the Complaint alleges that Mr. Klenda registered the disputed domain name after becoming involved in a dispute with Southern Polytechnic State University (“SPSU”) concerning a meal plan for which Mr. Klenda contracted with SPSU. Mr. Klenda cancelled the meal plan but was told he was not eligible for a refund. The foodservice was provided by the Complainant under contract with SPSU. The Complaint further alleges that Mr. Klenda is the President and CEO of Baltic Collagen Corp. (or Baltic Collagen inc., according to corporate records maintained by the North Carolina Secretary of State).
2 Mr. Wagner’s telephone number was also provided, but the Complaint alleges that when Mr. Wagner was contacted by the Complainant he denied being an attorney or having any knowledge of a “Jonathan Ledger”.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.