WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. Whoisguard Protected, Whoisguard, Inc. / ESQUIRE 5, J Gates

Case No. D2015-0978

1. The Parties

1.1 The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany, represented by Nameshield, France.

1.2 The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / ESQUIRE 5, J Gates of Columbus, Ohio, United States of America (the "USA"), self-represented.

2. The Domain Name and Registrar

2.1 The disputed domain name <spirivasucks.com> (the "Domain Name") is registered with eNom (the "Registrar").

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2015. At that time the publically available WhoIs details for the Domain Name identified Whoisguard, Inc. as the registrant of the Domain Name. The name of the then registrant suggests that this was a domain name privacy service.

3.2 On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing that "J Gates" was the underlying registrant of the Domain Name behind the privacy service and providing associated contact information.

3.3 On June 15, 2015 the Center received an email from "J Gates" in which he asserted without further explanation that he was "fully within [his] lawful online rights to own the [Domain Name]". A further email was sent on June17, 2013 in which he asserted as follows:

"The domain www.spirivasucks.com and the hundred or so legally purchased and owned "sucks" domains have been directed to "www.mydomainestate.com". This case against us is completely baseless and without merit. I ask that the above case be dismissed."

3.4 The Center sent an email communication to the Complainant providing the new 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 naming Mr. Gates as the Respondent on June 19, 2015.

3.5 On June 23, 2015 the Respondent sent a further email to the Center. It read as follows:

"Our new public information company is currently in the start up stages and no reasonable person could think a business could be finished so quickly. We have over a hundred domains (about 20 'sucks' rx) and they range to 'www.spiriviasucks.com' to 'www.burgerkingsucks.com' We are going to build information sites where the public could either participate by message boards or polls and will have honest information. All domains including 'wwwspirivasucks.com' has been pointed to 'www.mydomainestate.com' where from day 1 our company has always made our intentions clear on that page. We have never attempted to make money off the site in question or of any other 'sucks' domains we own, it's strictly a site for public participation. Type in 'Spiriva sucks' or anything else 'sucks' in any search engine and the results are pretty common. Now with a '.sucks' being sold, the above claim D2015-0978 has absolutely no merit."

3.6 The Center responded to that email that same day. It informed the Respondent that the Center was currently verifying the Complain and that once this process was complete and formal notification of the commencement of proceedings had been provided, the Respondent would have 20 days to put in a Response. The Respondent responded by email that a Response would be filed in due course.

3.7 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").

3.8 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2015.

3.9 No formal Response was filed by the Respondent by that date, but on July 21, 2015 the Respondent sent a further email, which read as follows:

"Yes those 3 sent email replies to you (WIPO/ICANN) are my legal responses to the baseless claim brought against us. I have no preference if it's one person who decides or three, we will move forward regardless.

Please note the following emails from us are a 'formal response' to any inquiry brought against my company. You and Boehringer Ingelheim are welcomed to keep all of them for any future legal matters."

3.10 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 4, 2015. 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

4.1 The Complainant forms part of the well-known pharmaceutical group of companies which was founded in the late 19th century and is based in Germany. The two main business areas of the Complainant's group are human pharmaceuticals and animal health. Its net sales in 2013 amounted to approximately EUR 14.1 billion.

4.2 One of the Complainant's products is "Tiotropium bromide", which is an anticholinergic bronchodilator used in the management of chronic obstructive pulmonary disease. The product is sold and promoted by the Complainant and Pfizer in capsules form and under the trade name "Spiriva".

4.3 The Complainant is the owner of a number of trade marks that comprise or incorporate the term "Spiriva". These include the following:

(i) International trade mark registration No. 692353 for the word mark SPIRIVA in class 5 dated April 1, 1998. The mark designates and has proceeded to grant in over 40 countries.

(ii) International trade mark registration No. 823202 for the word mark SPIRIVA in class 10 dated March 18, 2004. The mark designates and has proceeded to grant in the USA only.

(iii) Community Trade Mark registration No. 89529 for the word mark SPIRIVA in class 5 applied for on April 3, 1998, and registered on June 16, 1999.

4.5 The Complainant registered the domain name <spiriva.com> on February 1, 1999 and has used it since that date for a website that promotes its "Spiriva" branded products.

4.6 The Domain Name was registered on February 23, 2015. On May 7, 2015 the Complainant's representatives sent a letter to the Respondent using the email address recorded in the WhoIs details for the Domain Name at that time. It demanded that the Respondent transfer the Domain Name to the Complainant if the Respond had "no rights nor legitimate interests in respect of the [D]omain [N]ame". The Complainant received no response to that letter.

4.7 Prior to the filing of the Complainant, a simple webpage was displayed from the Domain Name that included the following text:

"My Domain Estate

Because mydomainestate.com is already highly regarded in the industry we don't use a fancy website, advertising or any banners. Our young start up company currently owns many domains and there are some that don't suck in our opinion. Most all receive a good amount of web traffic without use from search engines. We reserve the right to categorize any domains owned at anytime. Anything our partners choose to build on in the future will be for informational purposes only and will welcome public participation."

As at June 3, 2014 a list of 20 domain names also appeared below that text. The list did not include the Domain Name but it did include various other domain names that appeared to take the form of third party trade marks combined with the word "sucks" and the ".com" generic Top-Level Domain ("gTLD"). Examples of this are <amtraksucks.com>, <burgerkingsucks.com>, <disneycruisesucks.com>, <gsksucks.com> and <papajohnssucks.com>.

4.8 As at the date of this decision the webpage displayed from the Domain Name has changed slightly. The text set out above continues to be displayed save that the sentence "Most all receive a good amount of web traffic without use from search engines" has been removed. The following text has also been added:

"UPDATE 6/19/2015: MYDOMAINESTATE HAS BEEN TAKEN TO WORLD INTELLECTUAL PROPERTY ORGANIZATION BY BOEHRINGER INGELHEIM CASE NUMBER D2015-0978 AS THEY SEEK THE TRANSFER OF DOMAIN www.spirivasucks.com THANK YOU FOR YOUR CONTINUED SUPPORT FOR MYDOMAINESTATE IN THIS EXREMELY IMPORTANT MATTER. THIS CASE WILL HAVE A BEARING ON MANY HELD "SUCKS" DOMAINS IN THE FUTURE"."

4.9 A list of domain names also remains but the list is slightly different, with some domain names removed from the list and others added. One of the additional domain names is <boehringeringelheimsucks.com>. The publically-available WhoIs details for this domain name suggest that it was registered on June 27, 2015; i.e., after the Respondent became aware of the Complainant's Complaint.

5. Parties' Contentions

A. Complainant

5.1 The Complainant's Complaint is very brief. It contends that the Domain Name is confusingly similar to its SPIRIVA mark with the "addition of the derogatory term 'sucks' not being sufficient to change the overall impression of the designation as being connected to the trademarks and domain names of the Complainant". It relies in this respect on the decision in Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

5.2 The Complainant claims that the Respondent is unconnected with the Complainant and has not been authorised to register the Domain Name. It also relies upon the fact that the Respondent did not respond to its representatives' letter dated May 7, 2015 as evidencing that the Respondent has no rights or legitimate interests in the Domain Name.

5.3 The Complainant further contends that the Respondent must have been aware of the Complainant's mark at the time the Domain Name was registered. It also appears to rely on the Respondent's failure to respond to its representatives' letter dated May 7, 2015 as evidencing that the Respondent registered the Domain Name in has no rights or legitimate interests in the Domain Name. It further asserts as follows:

The Complainant considers that one of the Respondent's primary motives in relation to the

registration and use of the Domain Name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights. Critically, there is nothing (not even so much as a reply) in the record indicating that the Respondent has used or made demonstrable preparations to use the domain name for purposes of legitimate criticism.

B. Respondent

5.4 The Respondent did not file a formal Response to the Complaint. Various emails were sent to the Center by the Respondent in connection with the Complaint. The contents of these emails are set out in full in the "Procedural History" section of this decision.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.

6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".

A. Identical or Confusingly Similar

6.4 The Domain Name can only be sensibly read as making a reference to the Complainant's trade mark in combination with the derogatory term "sucks" and the ".com" gTLD. The Complainant refers to two decisions under the Policy in which domain names that similarly comprised a trade mark and the term "sucks" were confusingly similar to those marks for the purposes of the Policy.

6.5 This is not a view that has always universally been held by all panelists. Nevertheless, the prevailing view now among panelists is that this is correct. Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") records the consensus position on this issue to be as follows:

"Generally, a domain name consisting of a trademark and a negative or pejorative term (such as [trademark]sucks.com) would be considered confusingly similar to the complainant's trademark for the purpose of satisfying the standing requirement under the first element of the UDRP (with the merits of such cases typically falling to be decided under subsequent elements). Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name [reference is also made to the discussion under paragraph 1.2 above]."

6.6 The general rationale underlying this consensus position was set out in greater detail by this Panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 where the domain name in issue was <unofficialblackberrystore.com>. In that case this Panel stated (starting at paragraph 6.5) as follows:

"The Panel accepts the Complainant's contention that the use of term 'unofficial' does not prevent the Domain Name from being confusingly similar to the Complainant's BLACKBERRY mark.

It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.

It is against this 'standing' requirement that the word 'confusing' is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as 'sucks', there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647). There are cases where a domain name combining the term 'sucks' with a mark has not been held to be confusingly similar to that mark where the domain name has been used for a criticism site (see the case listed in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166), but the Panel would suggest that the real rationale of those cases may rather be found in an assessment of whether the operation of a criticism site from such a domain name provides rights or legitimate interests and/or is in bad faith.

This low threshold approach in cases where the pejorative or the alleged distinguishing term is incorporated in a Domain Name is sometimes said to be justified by the fact that the domain name might be seen by persons who are not familiar with the language from which the additional word is taken. It is claimed that such persons will be confused by the mark element of the domain name and that this confusion will not be dispelled by the additional word or words in the domain name. There may be some force in this argument, but regardless of its exact justification, the advantages of the low threshold approach are clear. Take for example, a company that registers the domain name <[name of competitor]sucks.com> for a website that does nothing more than sell its own goods. In the opinion of this Panel the question of whether or not such use should be allowed is best addressed in the context of an assessment of rights or legitimate interests and bad faith. To interpret paragraph 4(a)(i) as setting a low threshold test permits this to happen."

6.7 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.8 The question of whether and in what circumstances a domain name that incorporates a trade mark can be used for a criticism site has at times been subject to differing views. This Panel expressed its views on the issue at length in the decision of 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461.

6.9 The issue is also addressed in section 2.4 of the WIPO Overview 2.0, which states as follows:

"This section only concerns sites that practice genuine, noncommercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage.

In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views. In cases involving only US parties or the selection of a US mutual jurisdiction, panelists tend to adopt the reasoning in View 2 (though not universally).

View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2 below.

View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial."

6.10 This Panel is of the opinion that the way that this section of the overview is presently expressed, and in particular the suggestion that some panels apply "View 1" but then switch to "View 2" when a domain name takes the form <trademarksucks.tld>, is potentially unhelpful. As will be apparent from the decision in the 1066 Housing Association Ltd, supra, this Panel generally adheres to "View 1"; i.e., the view that where a domain name takes the form <trademark.tld> it will be considered to involve an unfair impersonation of the trade mark owner. Consequently, a domain name registrant cannot have a right or legitimate interest in a domain name that inherently involves such impersonation.

6.11 However, this Panel also accepts that a domain name registrant may have a legitimate interest in a domain name that takes the form <trademarksucks.tld> and which is being used for a genuine (i.e., not pretextual) noncommercial criticism site. This is not because the Panel's position somehow changes to "View 2" when the domain name takes this form. It is because when a derogatory term is added to the domain name the charge of unfair impersonation by reason of the domain name alone is likely to fall away. The inclusion of the derogatory term in the domain name will usually mean that the domain name now inherently signals that it is unlikely to be being used by, or approved of by, the trade mark holder. In such circumstances, the domain name is no longer so inherently deceptive that its use cannot be is "legitimate" or "fair" within the meaning of paragraph 4(c)(iii) of the Policy.

6.12 What is a sufficient signal is something that needs to be examined every case. For example, the terms "sucks" may have different connotations in the context of a vacuum cleaners that it does in the context of pharmaceuticals. Similarly, the territory or territories in which the relevant mark is used and the language of the derogatory term may be relevant to the assessment. However, so far as language is concerned, it is important that to recognise that a domain name is not inherently unfair because there may be a small number of people who may not understand what the domain name is signaling.

6.13 Recent cases that appear to have adopted this approach include Alsace Croisieres SA v. John Livingstone / Write Place Publications Inc. WIPO Case No. D2013-2025 and Nix Solutions Ltd. Limited Liability Company v. WhoisGuard Protected / Shaun Ferguson, WIPO Case No. D2014-1475.

6.14 The Panel accepts that there are some panelists that have taken a more extreme view and hold that there never can be a legitimate use of a <trademarksucks.tld> type domain name because some other domain name could have been chosen for a criticism site that does not incorporate the trade mark. This is one reading of the decision in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166 that is cited in the WIPO Overview 2.0. It also seems to be the approach subsequently adopted in MIG Banque SA (MIG Bank Ltd) v. Akram Mohammad Khalid, WIPO Case No. D2011-0159. However, the Panel has not been unable to identify any more recent case that has adopted this approach and it is not one with which this Panel agrees.

6.15 Of course, the fact that it might be possible to show a right or legitimate interest in a domain name that takes the form <trademarksucks.tld>, does not necessarily mean that such an interest will exist in a particular case. There are numerous examples of cases under the Policy where the domain name took that form but the panel held that there was no right or legitimate interest, because the panel was not convinced that the domain name had been registered for the purpose of genuine noncommercial criticism. Recent examples include Standard & Poor's Financial Services LLC v. Shaun Ray, WIPO Case No. D2013-1545, Mobile Mini, Inc. v. Derek Carmichael, WIPO Case No. D2015-0350; and Philip Morris USA Inc. v. Johnny Angelone, Aware Marketing, WIPO Case No. D2015-0380.

6.16 The reason why it has been necessary in this Decision to address the competing views on this issue is that although the Respondent has not filed any Response in these proceedings, it seems reasonably clear that it takes the position that the Domain Name has been registered for possible use in criticism sites. Although "criticism" is not mentioned in any of the webpages operating from the Domain Name or any of the Respondent's emails, this is at least suggested by the statement in the Respondent's email dated June 23, 2015:

"We are going to build information sites where the public could either participate by message boards or polls and will have honest information."

6.17 Notwithstanding this, the Panel does not believe that a right or legitimate interest exists in this case. First, the Panel is not convinced that the setting up of this sort of bulletin board is the reason why the Domain Name has been registered. Although this has been asserted in an email, the Respondent has not been prepared to include those claims within a formal Response, let alone provided any evidence in this respect. In Privatbrauerei Eichbaum GmbH & Co. KG v. Hamit Karaca, WIPO Case No. D2010-0258, this Panel commented (starting at para 6.3) as follows:

"The Respondent has failed to submit a proper response in compliance with the requirements of the Rules. This means for example, that the statements made by the Respondent in its email are unsupported by the statement of truth required by paragraph 5(b)(viii). As this Panel recently stated in Christian Dior Couture v. Christina Dior/Chris Vella, WIPO Case No. D2009-0032, this is not a trivial matter.

The Policy provides a relatively informal process of dispute resolution. It has no formal rules of evidence and panels frequently are prepared to treat as evidence assertions of fact to be found in the parties' submissions insofar as these facts can reasonably be expected to be within the knowledge of that party. In the circumstances, it is imperative that submissions contain at the very least the limited safeguard provided by paragraph 5(b)(viii).

It is, therefore, not surprising that some panels have disregarded in their entirety responses that have not complied with these formal requirements. At the very least it is likely to have an impact on the evidential weight that a panel will give to any assertion made in such a document. It is this later approach that the Panel considers to be appropriate in this case. Whilst it has not completely disregarded the Respondent's assertions, it believes that they should be accorded very limited evidential weight."

6.18 There is also the curious fact that the pages that have in fact appeared from the website displayed from the Domain Name trumpeted the fact that the various domain names "all receive a good amount of web traffic without use from search engines" and yet this was removed from later versions of the page. Therefore, in an absence of a proper explanation of the Respondent's business model, and why this text was initially used and then removed, the Panel is not prepared to take the Respondent un-evidenced assertions in an email at face value. This is particularly so in this case given that the true motives for the Respondent's registrations was clearly and unambiguously put in issue by the Complainant in its Complaint when it remarked that "there is nothing […] indicating that the Respondent has used or made demonstrable preparations to use the domain name for purposes of legitimate criticism".

6.19 Second, to fall within paragraph 4(c)(iii) of the Policy the use must be without intent for commercial gain. As paragraph 2.4 of the WIPO Overview 2.0 records, regardless of the exact form of the domain name:

"There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage."

6.20 In this case, even if the Panel were to accept that the Respondent intends to use the Domain Name and other <trademarksucks.tld> domain names for criticism sites, the material it has seen leads it to the conclusion that such use is with an intent for commercial gain. The Respondent has in text on his website claimed that "mydomainestate.com is already highly regarded in the industry" and refers to mydomainestate.com as a "young start up company". These references suggest that this is a business operation. It is a suggestion that is reinforced by statements made by the Respondent in emails sent to the Center, in which he refers to mydomainestate.com as a "company [...] in the start up stages" and a "business".

6.21 There is a vague claim in one of these emails that "[mydomainestate.com has] never attempted to make money off the site". One reading of these words is that no monies have been made yet from the domain names, but if this is what is intended, the statement does not address the right question; i.e., whether there is an "intent for commercial gain" regardless of whether that commercial gain has actually been realised to date. The Panel is not prepared to assume that something more far reaching is intended by those words in circumstances where a broader reading would prima facie be inconsistent with other statements of the Respondent and where the assertion is not supported by any evidence or even an attestation as to the statement's truth.

6.22 Third, this is not a case where a single person or entity has set up a web page or website to express a grievance in relation to a trade mark owner and allow others to express their grievances on that website. Instead, even if the Respondent's claims were to be taken at face value, what the Respondent is doing is registering multiple "sucks" type domain names that incorporate trade marks of others with which it has no personal grievance so that others can express their grievances. Even if the Respondent were operating or intending to operate entirely noncommercially, the Panel does not believe that such multiple registrations are "legitimate" or "fair" within the meaning of those words in paragraph 4(c) of the Policy.

6.23 There are potential parallels here with the recent numerous cases under the Policy involving Yoyo.Email and its registration of multiple domain names that took the form <trademark.email>. In Logitech International S.A and others v Yoyo.Email , CAC case no 100891 the respondent complained that panels had been deciding cases against it not because there was a good reason for so doing under the Policy but because simply they did not like the respondent's business model. In that case this Panel responded to that allegation as follows:

"[…] with all due respect to the Respondent, this misunderstands and mischaracterises the position of panellists. The fact that there may be other ways of doing what the Respondent wishes to do without engaging in a wholesale "land grab" of thousands of domain names of this particular structure and character, is something that is clearly of potential relevance to the assessment of whether that activity is 'bona fide' or 'fair'."

6.24 The present case is one where it appears the Respondent has engaged in the registration of perhaps tens of <trademarksucks.com> domain names (the Panel notes that there is an inconsistency in the numbers in the Respondent's emails to the Center) rather than thousands of those domain names, but this still strikes the Panel as an unfair "land grab" even if the acreage claimed is far more modest.

6.25 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.26 In light of the assessment of whether the Respondent has a right or legitimate interest in the Domain Name, the issue of bad faith registration and use can be dealt with relatively rapidly.

6.27 There is no doubt that the Domain Name was registered with the knowledge of the Complainant's use of the term "Spiriva" for one of its products. That is inherent even in the Respondent's own explanation for the registration.

6.28 Although paragraph 4(b) of the Policy provides a list of circumstances that if found by the panel to be present, shall be evidence of the registration and use in bad faith, the list is non-exhaustive. A domain name is likely to have been registered and used in bad faith where it was registered to take unfair advantage of the complainant's right (see for example Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

6.29 In this case the Panel finds on the balance of probability that the Domain Name was registered and has been used with a view to taking some form of unfair advantage of the reputation of the Complainant mark. This has been alleged by the Complainant and the Respondent has not formally responded to that allegation. Further, even if the Panel were prepared to accept at face value the Respondent's claim that his intention is to set up a business involving "information sites where the public could either participate by message boards or polls and will have honest information", in the Panel's opinion such registration and use would be in bad faith. The unfair use in this case is of the Complainant's marks to draw Internet users to a website operated by an entity that is seeking to gain commercially by the potential free speech of third parties in relation to the Complainant's (or third party's) products.

6.30 Further, even had the Panel been persuaded that the Respondent is not a commercial entity, the registrations are still likely to have been in bad faith given that this particular registration appears to have been part of a broader "land grab" of <trademarksucks.com> domain names.

6.31 In the circumstances, the Panel finds that the Complainant has made our the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <spirivasucks.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: August 17, 2105