WIPO Domain Name Dispute Case D2004-0014 by liuhongmeiyes


									                WIPO Arbitration and Mediation Center


               Howard Jarvis Taxpayers Association v. Paul McCauley

                                   Case No. D2004-0014

1.   The Parties

     The Complainant is Howard Jarvis Taxpayers Association (“HJTA”), Los Angeles,
     United States of America, represented by Straw & Gough, United States of America.

     The Respondent is Paul McCauley (“McCauley”), Sherman Oaks,
     United States of America. Respondent proceeds pro se.

2.   The Domain Name and Registrar

     The domain name at issue is <hjta.com> (the “Domain Name”). The Domain Name is
     registered with Tucows.com, Inc. (the “Registrar”).

3.   Procedural Background

     The Complaint was filed with the WIPO Arbitration and Mediation Center
     (the “Center”) on January 8, 2004. On January 9, 2004, the Center transmitted by
     email to Tucows a request for registrar verification in connection with the domain
     name at issue. On January 16, 2004, Tucows transmitted by email to the Center its
     verification response confirming that the Respondent is listed as the registrant and
     providing the contact details for the administrative, billing, and technical contact. The
     Center verified that the Complaint satisfied the formal requirements of the Uniform
     Domain Name Dispute Resolution Policy (the “Policy”), 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 on January 23, 2004.
     In accordance with the Rules, paragraph 5(a), the due date for Response was
     February 12, 2004. The Response was filed with the Center on February 12, 2004.

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     The Center appointed David H. Bernstein as the Sole Panelist in this matter on
     March 2, 2004. 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.

     Because the parties did not brief in their submissions the central legal issue raised by
     this case – whether registration of a “trademark .TLD” domain name strictly for use for
     bona fide, non-commercial criticism can be a legitimate interest – the Panel, with the
     assistance of the Center and its index of cases, undertook significant independent
     research. To accommodate the time required for this research, the Panel extended the
     target date for decision pursuant to paragraph 10(c) of the Rules.

4.   Factual Background

     Complainant is a non-profit California corporation organized pursuant to
     Section 501(c)(4) of the Internal Revenue Code. HJTA is a tax-relief advocacy
     organization. Prior to 1988, HJTA was known as the California Tax Reduction
     Movement. HJTA is named after the late Howard Jarvis, a proponent of tax reduction.
     Complainant’s Internet address <hjta.org> was registered on September 25, 1997.

     Respondent describes himself as a critic of HJTA. Respondent registered the domain
     name <hjta.com> on June 3, 2003, and maintains a website at that address that is
     highly critical of the practices of Complainant and the activities of its management

     There is a nearly decade long history of litigation between the parties. In 1990,
     Respondent filed a lawsuit against Complainant and affiliated parties alleging
     numerous violations of the California political campaign reporting laws. Respondent
     prevailed on two counts at the trial level and was awarded a judgment and attorney’s
     fees. Complainant appealed and an appellate court reversed the decision and ordered
     the trial court to enter judgment in favor of Complainant. See McCauley v. Howard
     Jarvis Taxpayers Assn., 68 Cal. App. 4th 1255, 80 Cal. Rptr. 2d 900,
     (Cal. App. 4th Dist. 1998), rehearing denied (January 26, 1999), review denied
     (March 31, 1999).

5.   Parties’ Contentions

     A.   Complainant

     Complainant claims that it has acquired a common law trademark in the acronym
     HJTA through continuous use for the last fifteen years. It further asserts that
     Respondent’s domain name “hjta.com” is confusingly similar to its common law
     trademark HJTA and phonetically and visually identical to its domain name
     (save for the TLD “.com” instead of “.org”). Complainant submits that Respondent’s
     use of the Domain Name has caused confusion to those attempting to locate the real
     HJTA website and that Complainant has received complaints to this effect.
     Complainant therefore asserts that the Domain Name is identical or confusingly similar
     to a mark in which it has rights for the purposes of paragraph 4(a)(i) of the Policy.

     Complainant argues that Respondent has no rights or legitimate interests in the domain
     name as required by paragraph 4(a)(ii) of the Policy, and states that Respondent does

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     not have “any legitimate commercial purpose justifying the use of the ‘.com’ suffix.”
     Complainant further argues that Respondent “has not been engaged in any of the
     activities conducted by HJTA . . . has never been an officer or director of HJTA and is
     not authorized to act on behalf or [sic], of represent in any way, HJTA.”

     Finally, the Complainant submits that the domain name has been registered in bad faith
     under paragraph 4(b)(iii) because it was registered “primarily for the purpose of
     disrupting the business of a competitor.” Complainant supports this contention by
     claiming that Respondent uses the Domain Name in “a bad faith attempt to: 1) mislead
     the public into thinking McCauley won his lawsuit against HJTA when if fact he lost
     each and every claim; [and] 2) disrupt the ongoing activities of HJTA and persuade
     HJTA members to change their memberships to a different organization.”
     Complainant claims that Respondent posts “untrue” statements about Complainant on
     the <hjta.com> website and distributes “vitriolic, libelous” email about the
     Complainant. Complainant also argues that Respondent registered and used the
     Domain Name in bad faith under paragraph 4(b)(iv) because Respondent “is attempting
     to attract commercial gain for himself by asking visitors to donate $20,000 to him to
     help him disrupt HJTA’s operation by convincing its members to transfer to another

     B.   Respondent

     Respondent asserts that: (a) he is a critic, not a competitor, of HJTA and thus cannot
     “have registered the domain name primarily for the purpose of disrupting the business
     of a competitor” under paragraph 4(b) (iii) of the Policy; and (b) he has not used the
     domain name for commercial gain under paragraph 4(b)(iv) of the Policy because he
     has not solicited donations for himself but rather he “was and am seeking an individual
     or organization that was/is willing to expend $20,000 of its funds to assist me in a
     mailing to HJTA’s membership for the purpose of alerting its membership” to his
     mismanagement claims regarding HJTA. Respondent further argues: “That any
     person could confuse my web site with HJTA’s web site, thinking they are the same, is
     preposterous . . . my web site details my criticisms of HJTA in such a way that no
     thinking person would confuse my web site with HJTA’s.” Respondent also asserts
     that the Complaint states “. . . that I have sought to disrupt the operations of HJTA.
     Wrong. I have exercised my lawful and divine right to speak freely and to speak the
     truth and have used this remarkable new technology, the Internet, to do so.”

6.   Discussion and Findings

     The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:

          (i)     The domain name registered by the Respondent 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
                  domain name; and
          (iii)   The domain name has been registered and used in bad faith.

     A.   The Domain Name is Confusingly Similar to Complainant’s Mark

     The Respondent does not dispute that the Domain Name is identical or confusingly
     similar to the Complainant’s mark. Complainant surely has trademark rights in its
     acronym on account of its extensive use in commerce, and the domain name is

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      obviously identical to that mark. Accordingly, Complainant has satisfied its burden
      under the first prong.

      B.    Respondent Has a Legitimate Interest in Its Criticism Site

      This case raises a fundamental – and somewhat unsettled – question of law under the
      Policy: Can a respondent have a legitimate interest in a domain name consisting solely
      of the complainant’s trademark plus a top-level domain (referred to below as
      “trademark.TLD”) if the website is used solely for bona fide, non-commercial

      An initial review of UDRP cases involving “trademark.TLD” criticism sites suggests
      that there is a split among panels on this question. Some panels have held, as this
      Panelist has in the past, that use of “trademark.TLD” for a bona fide criticism site can
      give rise to a legitimate interest. See Britannia Building Society v. Britannia Fraud
      Prevention, Case No. D2001-0505 (WIPO July 6, 2001) (refusing to transfer
      britanniabuildingsociety.org domain name where domain hosted a true criticism site).
      Others, though, have disagreed with that conclusion, stating that “the right to use a
      domain name as a platform for lawful criticism of a trademark owner does not extend
      to occupying a domain name identical to a sign identifying the owner.”
      Teollisuuden Voima OY v Vastamäki, Case No. D2001-0321 (WIPO May 4, 2001)
      (expressing the view in dicta that environmental protestors do not have a legitimate
      interest in using a trademark.TLD domain name for criticism about the disposal of
      nuclear fuel on Olkiluoto island).

      Disagreements of this type between panels creates a challenge for parties, panelists and
      providers. Parties in UDRP proceedings are entitled to know that, where the facts of
      two cases are materially indistinguishable, the complaints and responses will be
      evaluated in a consistent manner regardless of the identity of the panelist; this goal is
      undermined when different panels can be expected to rule differently on the same types
      of facts. Panelists, too, are disadvantaged by these disagreements; they would be able
      to more efficiently evaluate cases and draft decisions if they knew that they could rely
      on a shared, consistent set of UDRP principles. If such consistency could be achieved,
      it also would assist providers, who could assign panelists to cases without any concern
      that panelist choice may itself inject bias into the system, and would encourage more
      cost effective decision making as parties could rely on a single panelist rather than
      having to request a three member panel in order to ensure balance. More generally,
      because no system of justice can long endure if its decisions are seen as random,
      consistency will help support the very legitimacy of the UDRP itself.

      For these reasons, when policy disagreements do arise, panelists should pause and
      consider whether a consensus has emerged that might inform which way they should
      rule on these types of issues. If such a consensus has emerged, panelists should
      endeavor to follow that consensus and thus promote consistent application of the
      UDRP. See Koninklijke Philips Electronics N.V. v. Relson Ltd., Case No.
      DWS2002-0001 (WIPO June 14, 2002); Nikon, Inc. v. Technilab, Inc., Case No.
      D2000-1774 (WIPO February 26, 2001), n.3.

      Such an approach is particularly appropriate in the context of the Policy. That is
      because UDRP decisions are not binding and non-appealable; rather, a losing party is
1   This inquiry should be distinguished from the more common circumstance in criticism site cases where the
    domain name also includes verbiage indicating that it is a criticism site. E.g., Compusa Management Co.
    v. Customized Computer Training, Case No. FA0006000095082 (NAF August 17, 2000)
    (use of stopcompusa.com and bancompusa.com for a criticism site is a legitimate interest).

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      free to pursue its claim in local courts. See Policy ¶ 4(k). Moreover, even if the
      consensus supports a decision that individuals believe to be wrong or bad policy,
      parties would at least know how such decisions would be decided under the Policy, and
      could elect instead to pursue their claims in court if they believed the judicial system
      would provide a more just result. Either way – whether because parties go to court in
      the first instance or through litigation initiated after a UDRP decision is issued – if the
      courts of a particular country later determine that the legal principle should be different
      from how it was resolved in UDRP decisions, panels ruling in future cases (at least in
      cases involving citizens of that country2) could appropriately follow that judicial
      decision as creating new precedent that supplants the former consensus view.

      In this case, any effort to divine consensus must be sensitive to these local law issues.
      That is because the United States’ robust free speech tradition, which derives from the
      First Amendment to the United States Constitution, tends to tolerate more criticism
      than the laws of other countries. Indeed, many of the cases in which trademark.TLD
      domain names have been transferred, despite claims that the sites were being used for
      legitimate criticism, involved non-U.S. parties or panelists. E.g., Mission Kwa
      Sizabantu v. Rost, Case No. D2000-0279 (WIPO June 7, 2000) (rejecting free speech
      as a valid defense in case involving German and South African parties); Grupo
      Picking Pack, S.A. v. Prospero Moran, Case No. D2000-1220 (WIPO
      December 18, 2000) (relying on Spanish case law to reject free speech argument for
      putative criticism site and support transfer of domain name); Skattedirectoratet v.
      Eivind Nag, Case No. D2000-1314 (WIPO December 18, 2000) (in case involving
      Norwegian parties, while “it is, in principle, legitimate to operate a domain name for
      the purposes of lawful criticism of a trademark owner . . .. this right [does not] extend[]
      to occupying a domain name identical to a sign identifying a trademark owner”);
      Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro
      Consulenze Kim Paloschi, Case No. D2000-1171 (WIPO November 6, 2000) (holding
      in case involving Swiss parties: “Even if the Panel admitted that the aim of the website
      was to serve as a discussion forum, it is of the opinion that the exercise of the right of
      free speech does not require the use of a Domain Name identical to the trademark of
      the Complainant.”); Teollisuuden Voima OY v Vastamäki, Case No. D2001-0321
      (WIPO May 4, 2001) (in case involving Finnish parties, indicating agreement with the
      principal articulated in Skattedirectoratet); British Nuclear Fuels Plc v. Greenpeace
      International, Case No. D2001-1318 (WIPO January 10, 2002) (right to free speech in
      order to criticize is different from right to use trademark as domain name – English and
      Dutch parties); Yüksel Inşaat A.Ş. v. Erdogan Koparal, Case No. D2002-0285 (WIPO
      May 28, 2002) (holding in Turkish case that, “while the Respondent is entitled to freely
      express his views . . . such right does not extend to having a right to use the
      Complainant’s trademark as a domain name for the purposes of establishing a website
      to express such views”); Tridos Bank NV v. Dobbs, Case No. D2002-0776
      (WIPO October 3, 2002) (even if English respondent has a genuine grievance, it may
      not use English complainant’s name without adornment as its domain name).

2   It is generally accepted that, when both parties in a UDRP proceeding are from the same country, it is
    appropriate to consider and apply that country’s legal principles in evaluating the parties’ rights and
    conduct. Document Technologies, Inc. v. International Electronic Communications, Inc., Case No.
    D2000-0270 (WIPO June 6, 2000) at n.2 (applying U.S. law); Grupo Picking Pack, S.A. v. Prospero
    Moran, Case No. D2000-1220 (WIPO December 18, 2000) (applying Spanish law). The Policy does
    create a set of basic standards for determining whether a respondent has been guilty of cybersquatting
    conduct that justifies transfer, but those standards do not replace local law. Rather, in the event of a
    conflict between the Policy and local law, the Policy makes it clear that local law, as interpreted by
    national courts, would ultimately govern any issues of domain name transfer. Policy ¶ 4(k).

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In cases involving United States parties and/or panelists, on the other hand, a number
of panels have ruled that the First Amendment does protect trademark.TLD domain
names when they are used for legitimate criticism sites. See, e.g., Bridgestone
Firestone, Inc. v. Myers, Case No. D2000-0190 (WIPO July 6, 2000)
(refusing to transfer domain name bridgestone-firestone.net where Respondent’s
domain hosted a true criticism site); TMP Worldwide Inc. v. Potter, Case No.
D2000-0536 (WIPO August 5, 2000) (refusing to transfer tmpworldwide.net and
tmpworldwide.org domain names where domains hosted true criticism sites);
Bosley Medical Group v. Kremer, Case No. D2000-1647 (WIPO February 28, 2001)
(refusing to transfer domain name bosleymedical.com where Respondent had prepared
a true criticism site but did not post site pending outcome of UDRP proceedings);
Pensacola Christian Coll. v. Gage, Case No. FA101314 (NAF December 12, 2001)
(refusing to transfer pensacolachristiancollege.com domain name where domain hosted
a true criticism site); Satchidananada Ashram - Integral Yoga Institute v. Domain
Administrator, Case No. FA0209000125228 (NAF December 13, 2002) (refusing to
transfer domain names where domains hosted true criticism sites); Action Instruments,
Inc. v. Technology Associates, Case No. D2003-0024 (WIPO March 6, 2003) (refusing
to transfer buswaredirect.com domain name where domain hosted a criticism site).
More importantly, this view has prevailed in U.S. court cases that have litigated this
issue, including in recent decisions from two different U.S. Courts of Appeals. TMI
Inc. v. Maxwell, No. 03-20243 (5th Cir. April 22, 2004) (reversing transfer of
trendmakerhome.com website used to criticize plaintiff’s TrendMaker Home houses
because defendant’s non-commercial criticism site is not actionable cybersquatting);
Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004)
(refusing to order transfer of lucasnursery.com domain where it was used for legitimate
criticism site and defendant showed no intent to mislead visitors or commercially profit
from use of the domain); see also Northland Insurance Co. v. Blaylock, 115 F. Supp.
2d 1108, 1120 (D.C. Minn. 2000) (refusing to issue preliminary injunction in case
involving true criticism site located at “www.northlandinsurance.com”); Bihari v.
Gross, 119 F. Supp. 2d 309, 322 (S.D.N.Y. 2000) (refusing to issue preliminary
injunction in case involving true criticism sites located at “www.bihari.com” and

The Panel acknowledges that transfer has been ordered in some trademark.TLD
criticism cite UDRP cases involving U.S. parties. Although the panels in those cases
generally did not analyze the issue with the level of detail as is being applied in this
case, the Panel notes that, in many of those cases, there were indicia of bad faith that
tended to suggest that criticism was not the respondent’s primary motive. See, e.g.,
Council of American Survey Research Organizations (CASRO) v. Consumer
Information Organization LLC, Case No. D2002-0377 (WIPO July 19, 2002) (ordering
transfer of domain name casro.com where criticism site was used to market products,
respondent owned over 1200 domain names, and many of respondent’s domain names
incorporated famous marks); New York Times Co. v. New York Internet Services, Case
No. D2000-1072 (WIPO December 5, 2000) (ordering transfer of domain name
newyorktimes.com where respondent received financial benefit from advertising on
commentary site); Estée Lauder, Inc. v. Estelauder.com, Estelauder.net, and
Jeff Hanna, Case No. D2000-0869 (WIPO September 25, 2000) (ordering transfer of
<estelauder.com> and <estelauder.net> where domains of complaint sites established
by law firm incorporated misspelling of complainant’s trademark, complainant
submitted considerable evidence of actual confusion, respondent concealed
sponsorship of complaint sites by law firm, and respondent reserved other domain
names incorporating famous marks); Rollerblade, Inc. v. McCrady, Case No.
D2000-0429 (WIPO June 25, 2000) (ordering transfer of domain name rollerblade.net
where panel rejected respondent’s use of site for rollerblading photos as pre-textual and

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found respondent made “overtures to be bought off” in order to transfer domain name).
Similar issues appear to have informed court decisions that have ruled for plaintiffs in
these circumstances. See People for the Ethical Treatment of Animals (PETA) v.
Doughney, 263 F.3d 359 (4th Cir. 2001) (ordering transfer of domain name <peta.org>
despite use as parody website after finding bad faith intent to profit by registrant);
Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff’d, 159 F.3d 1351
(3d Cir. 1998) (finding confusion where criticism site was confusingly designed to look
like official Jews For Jesus site and defendant admitted his intent was to deceive
consumers about the sponsorship of his website); Planned Parenthood v. Bucci, 42
U.S.P.Q.2d 1430 (S.D.N.Y. 1997) (finding confusion where criticism site was
confusingly designed to look like official Planned Parenthood site in order to lure
readers into the site before delivering its anti-abortion message), aff’d, 152 F.3d 920
(2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998). Nevertheless, in some of these
cases, the Panels broadly held that there is no legitimate interest in a trademark.TLD
criticism site, and there are other such decisions as well. E.g., Prem Rawat Found. v.
Leason, File No. FA0401000231883 (NAF March 27, 2004) (although Panel held that
Respondent’s site was not a bona fide criticism site, Panel also noted its view that,
“while the content of Respondent’s website may enjoy First Amendment protection,
such protection does not spawn rights or legitimate interests with respect to a domain
name which is confusingly similar to another’s trademark. Respondent cannot claim
rights or legitimate interests in the domain name”).

In sum, although there has been a split even in the United States, in this Panel’s view,
the weight of authority suggests that a consensus is emerging that trademark.TLD
domain names, when used for U.S.-based criticism sites, can constitute a legitimate
interest, especially if there are not other indicia of bad faith. Given that this appears to
be the emerging view in federal courts as well, aligning the decisions under the Policy
with decisions emerging from the courts will prevent forum shopping.

Turning to the case at hand, applying the approach described above, the Panel
concludes that Complainant has failed to prove that Respondent lacks a legitimate
interest in the Domain Name. In particular, it has failed to prove that Respondent is not
entitled to the protections of paragraph 4(c)(iii) of the Policy, which provides that
Respondent has a legitimate interest if he is “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.”

Respondent’s website appears to be a classic criticism site. The content is openly
critical of the management of the HJTA organization. See, e.g., Bridgestone Firestone,
Inc. v. Myers, Case No. D2000-0190 (WIPO July 6, 2000) (use of
bridgestone-firestone.net for criticism site is a legitimate interest). There is no
evidence in the record to suggest that Respondent’s use is not “legitimate,” such as use
of a criticism site as a mere pretext for cybersquatting. Cf. Rolex Watch U.S.A., Inc. v.
Spider Webs, Ltd., Case No. D2001-0398 (WIPO July 2, 2001) (Respondent claimed
domain name incorporating Rolex mark was used for legitimate discussion site but had
admitted in prior court proceedings that he was a “domain name speculator” that
acquired famous trademark domain names in order sell them to the trademark owners
at a profit). Respondent thus appears to be “making a legitimate noncommercial or fair
use of the domain name.” Policy ¶ 4(c)(iii).

That, however, is not enough for Respondent to prevail. Complainant can trump this
finding if it can show that Respondent’s actions evidence an “intent for commercial
gain to misleadingly divert consumers” or an “intent for commercial gain . . . to tarnish
the trademark or service mark at issue.” Id.

                                        page 7
      Complainant has not made that showing here. For starters, there is no evidence in this
      record that Respondent is pursuing its actions with any intent for commercial gain.3
      Rather, Respondent’s activities appear to be directed towards non-commercial speech.
      To the extent that Respondent solicits contributions or encourages consumers not to
      join HJTA, he is exercising his free speech right; he is not competing as an alternative
      tax reform organization.

      Moreover, there appears to be neither misleading diversion of consumers nor
      tarnishment of the mark. Complainant has not established that Respondent is seeking
      to divert consumers for two separate reasons. First, the concept of “misleadingly
      diverting consumers” refers to the kind of confusion that arises in a trademark
      infringement context when a competitor diverts consumers to its site and, potentially,
      diverts sales. A “competitor” in this context (and also for purposes of
      paragraph 4(b)(iii) of the Policy), is a person or entity in competition with the
      Complainant for the provision of goods or services, and not merely any person or entity
      with an interest oppositional to that of a mark holder. Vishwa Nirmala Dharma a.k.a.
      Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, Case No.
      D2001-0467 (WIPO June 16, 2001) (“declin[ing] to accept the contention of the
      Complainant that the broad definition of ‘competitor’ will include not only commercial
      or business competitors, but anyone acting in opposition to another”); Tribeca Film
      Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772 (WIPO April 10, 2001)
      (“a respondent can ‘disrupt[] the business of a competitor’ only if it offers goods or
      services that can compete with or rival the goods or services offered by the trademark
      owner”). Although Complainant argues that Respondent operates his website and has
      attempted to raise money to “disrupt” HJTA operations, nowhere in the Complaint
      does the Complainant argue that Respondent is its “competitor” in the provision of tax
      reform associational services.

      Second, and in any event, there is nothing misleading about the source or sponsorship
      of Respondent’s website. Unlike as in other cases where confusion has been found, for
      example, Respondent’s home page is not designed in a way to confuse consumers into
      believing it is the official website of HJTA. Cf. Jews for Jesus v. Brodsky, 993 F.
      Supp. 282 (D.N.J. 1998), aff’d, 159 F.3d 1351 (3d Cir. 1998) (finding confusion where
      criticism site was confusingly designed to look like official Jews For Jesus site and
      defendant admitted his intent was to deceive consumers about the sponsorship of his
      website); Planned Parenthood v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997)
      (finding confusion where criticism site was confusingly designed to look like official
      Planned Parenthood site in order to lure readers into the site before delivering its
      anti-abortion message), aff’d, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S.Ct. 90

      Similarly, Respondent’s site cannot be characterized as evidencing an intent to “tarnish
      the trademark or service mark at issue.” Respondent’s site does not appear to be
      classic “tarnishment,” in the sense of associating the mark with unwholesome concepts
      such as drugs, violence or sexual activity. Cf. American Express Co. v. Vibra
      Approved Labs. Corp., 10 U.S.P.Q. 2d 2006 (S.D.N.Y. 1989) (mark DON’T LEAVE
      HOME WITHOUT IT tarnished by condoms sold under the slogan “Never Leave
      Home Without It’); Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.
3   It is, of course, possible that Respondent does have some commercial motive, but that has not been shown
    on this (albeit limited) record. Should Complainant elect to pursue this matter in court, it certainly could
    explore that issue in discovery. Cf. Lopez v. Irish Realty Corp., File No. 94906 (NAF August 8, 2000)
    (refusing to transfer domain name rockcity.com where facts were in dispute and noting that the courts
    provide fact finding tools, such as discovery, that are unavailable in truncated UDRP proceedings).

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2d 1479 (W.D. Wash. 1996) (adult entertainment site at domain name candyland.com
is tarnishment of CANDYLAND trademark for children’s games); Kidman v.
Zuccarini, Case No. D2000-1415 (WIPO January 23, 2001) (tarnishing to link actress’s
name to website selling adult entertainment). Moreover, under Section 43(c) of the
Lanham Act, there is no cause of action for trademark dilution (which encompasses
both blurring and tarnishment) if a party is making a “[n]oncommercial use of a mark,”
15 U.S.C. § 1125(c)(4)B), which is the case if the site is a legitimate gripe site. Bally
Total Fitness Holding Corp. v. Farber, 1998 WL 897335 (C.D. Cal.
December 21, 1998) (no dilution where “Bally Sucks,” used for criticism site);
Northland Insurance Co. v. Blaylock, 115 F. Supp. 2d 1108 (D.C. Minn. 2000)
(criticism site at “www.northlandinsurance.com” is protected speech and, because the
website was non-commercial commentary, it could not generate initial interest
confusion and did not constitute dilution); see also L.L. Bean v. Drake Publishers Inc.,
811 F.2d 26 (1st Cir.) (First Amendment is defense to dilution tarnishment claim when
use is noncommercial parody); cert. denied, 483 U.S. 1013 (1987); Dr. Seuss
Enterprises, L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1574
(S.D. Cal. 1996) (parody not dilution because use was non-commercial), aff’d, 109
F.3d 1394 (9th Cir. 1997). That is true even if the gripes may be untrue – the proper
cause of action in that circumstance is one for defamation, not dilution or
cybersquatting. Brittania Building Society v. Brittania Fraud Prevention, Case
No. D2001-0505 (WIPO July 6, 2001).

Finally, Complainant argues that Respondent lacks a legitimate interest because
Respondent’s website makes untrue and misleading statements regarding HJTA, and
Respondent makes “vitriolic, libelous” statements about HJTA in email
correspondence. To be clear, the Panel has not considered the truthfulness of
Respondent’s website content – it may be true that Respondent’s statements are
libelous under United States law. Indeed, given the long history of litigation between
the parties, the important free speech U.S. law interests implicated by this dispute, and
the complexity of the underlying facts, this may well be a case more appropriate for
resolution in a U.S. court than in this administrative proceeding, which provides no
discovery, a limited evidentiary record, no live testimony at which credibility
determinations can be made, and very tight deadlines for submissions and decision. Cf.
Thread.Com, LLC v. Poploff, Case No. D2000-1470 (WIPO January 5, 2001).
Nevertheless, this Panel is required to rule as best it can on this record, Bootie Brewing
Co. v. Ward, Case No. D2003-0185 (WIPO May 28, 2003), and has concluded that fair
use criticism like Respondent’s, even if libelous, is not prohibited by the Policy, as
interpreted in the United States. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a
For Sale, Case No. D2000-0662 (WIPO September 19, 2000) (protection for genuine
criticism sites is provided by Policy’s legitimate interest and bad faith prongs).

The Policy is designed to prevent abusive cybersquatting, but under United States law,
it cannot extend to insulating trademark holders from contrary and critical views when
such views are legitimately expressed without an intention for commercial gain. That
is true even if the critical views are unfair, overstated, or flat-out lies, and even if they
are posted at trademark.TLD websites. Use of the Policy to provide such insulation
may undermine freedom of discourse on the Internet and undercut the free and orderly
exchange of ideas that the First Amendment seeks to promote.

C.   Respondent Has Not Registered and Used the Domain Name in Bad Faith

In light of the Panel’s finding under the legitimate interest factor, the Panel need not
consider in detail Complainant’s assertions that Respondent registered the domain
name in bad faith for the purpose of disrupting Complainant’s business,

                                        page 9
     Policy ¶ 4(b)(iii), and that Respondent is making a bad faith effort to attract Internet
     users to its website by creating a likelihood of confusion as to its source,
     Policy ¶ 4(b)(iv). Briefly, because the Panel has found that Respondent is not a
     competitor of Complainant’s, Complainant cannot prevail under paragraph 4(b)(iii).
     See Britannia Building Society v. Britannia Fraud Prevention, Case No. D2001-0505
     (WIPO July 6, 2001) (“To rule otherwise would render so many parties “competitors”
     as to dilute the Policy’s bad faith requirement beyond recognition”). Similarly,
     Complainant has not established a bad faith effort by Respondent intentionally to divert
     Internet users to its website by creating a likelihood of confusion with Complainant’s
     mark. To the contrary, as noted above, it is unlikely that anyone could confuse the
     source of the Respondent’s website once they arrive at Respondent’s home page.

     D.   Complainant Is Not Guilty of Reverse Domain Name Hijacking

     For all the reasons discussed above, the Panel holds that Complainant has failed to
     satisfy its burden under the Policy. That does not, however, end the Panel’s inquiry.
     Under the Rules, the Panel must also consider whether Complainant is guilty of
     Reverse Domain Name Hijacking. Rule 15(e). That is true notwithstanding that
     Respondent has not requested such a finding because the Rules specifically put the
     burden on the Panel to determine whether a complainant has tried to use the Policy in
     bad faith to attempt to deprive a registered domain name holder of a domain name. Id.
     (“If after considering the submissions the Panel finds that the complaint was brought in
     bad faith, for example in an attempt at Reverse Domain Name Hijacking or was
     brought primarily to harass the domain-name holder, the Panel shall declare in its
     decision that the complaint was brought in bad faith and constitutes an abuse of the
     administrative proceeding.”); see also Rodale, Inc. v. Cambridge, Case No.
     DBIZ2002-00153 (WIPO June 28, 2003).

     The Complaint in this case made only conclusory allegations regarding Respondent’s
     alleged lack of any legitimate interest, and failed to discuss at all whether the use of
     this domain name for a criticism site constitutes a legitimate interest under the Policy.
     Moreover, the use of the Policy in an effort to suppress protected speech rather than to
     address legitimate concerns of cybersquatting may well rise to the level of bad faith
     conduct by a complainant in the United States.

     The Panel has nevertheless concluded that a finding of Reverse Domain Name
     Hijacking is not warranted in this case. As discussed above, there has been a split
     among panels in considering “trademark.TLD” criticism cite cases. Even though this
     Panelist believes a consensus is emerging in U.S. cases where there is no other indicia
     of bad faith, some recent cases have gone the other way, and there has been sufficient
     uncertainty in this area that Complainant may well have believed that it was bringing
     this challenge in good faith to advance a legitimate claim under the Policy. In these
     circumstances, it would be unfair to enter a finding of bad faith. Putative complainants
     should be on notice, though, that, if this consensus solidifies, future panels in U.S.
     cases may well find bad faith in similar circumstances. Church in Houston v. Moran,
     Case No. D2001-0683 (WIPO August 2, 2001).
7.   Decision

     Because Complainant has failed to prove that Respondent lacks a legitimate interest or
     has registered and used the domain name in bad faith, the Panel declines to order
     transfer of the Domain Name.

                                           page 10
 David H. Bernstein
   Sole Panelist

Dated: April 22, 2004

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