Citigroup Inc. and Primerica Financial Services, Inc. v. Brian Allman
Claim Number: FA0708001066738
Complainant is Citigroup Inc. and Primerica Financial
Services, Inc. (“Complainant”),
represented by Christopher J. Willis, of Rogers & Hardin LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <primericaisarip-off.com>, <primericaisarip-off.net>, <primericaisarip-off.info>, and <primericaisarip-off.org>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2007.
On August 21, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <primericaisarip-off.com>, <primericaisarip-off.net>, <primericaisarip-off.info>, and <primericaisarip-off.org> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on September 26, 2007.
On October 2, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant, Citigroup, Inc., a very large and well-known financial services company operating around the world, alleges that the company Primerica Life Insurance is one of its remote subsidiaries, serving millions of customers. It owns numerous trademarks for PRIMERICA, dating back to 1988.
The Complainant alleges that the Respondent registered the disputed domain names in May 2007, with the intent to use them to extract a settlement in litigation that has been pending between the Respondent and Primerica Life Insurance since January 2007. Throughout the litigation, the Respondent has repeatedly demanded that Primerica Life Insurance pay him a settlement amount.
In July 2007, the Respondent sent an e-mail requesting payment and stating “… I am having a HUGE rolling billboard sign placed on the side of my truck which will read PRIMERICA IS A RIP-OFF! And then direct customers to my web site.”
The websites in question are at present parked on GoDaddy’s platform and are therefore advertising products and other services sponsored by GoDaddy.
The Respondent has in several subsequent communications threatened to “go live” with his websites at the contested domain names if Primerica Life Insurance does not cooperate with his demands in the litigation.
Thus, according to the Complainant, the Respondent has co-opted registered trademarks in order to coerce a settlement of the pending litigation. In addition, by parking the contested domain names, the Respondent is using the Complainant’s marks to facilitate the offering of goods and services not associated with those marks.
According to the Complainant, the contested domain names are confusingly similar to the Complainant’s marks because they fully incorporate and mimic the Complainant’s marks. The mere attachment of the generic term “ISARIP-OFF” after the mark PRIMERICA is insufficient to avoid a finding that the disputed domain names are confusingly similar to the mark. The Complainant cites numerous cases decided under the Policy to this effect, including several cases where the domain name took the form TRADMARK-SUCKS. The relevant case law will be fully discussed below by the Panel.
According to the Complainant, there is no evidence that the Respondent was preparing to use the contested domain names in connection with any bona fide activity. Although the domain names were registered in May 2007, they are parked, as noted above.
Further, says the Complainant, the Respondent’s true intent when registering the contested domain names was to use them to obtain an exorbitant sum of money in settlement of a frivolous lawsuit that he has filed. Indeed, the Respondent’s failure to develop websites associated with the contested domain names and his registration of several similar domains shows that he is more interested in using the domains to make threats in litigation than engage in any critical speech.
Moreover, according to the Complainant, even if the Respondent’s sole intention for registering the contested domain was to criticize the Complainant’s subsidiaries, a consistent line of authority has established that the registration of a domain name confusingly similar to a Complainant’s mark to criticize the Complainant cannot be considered legitimate noncommercial or fair use under the Policy. The Complainant cites numerous cases decided under the Policy to this effect. The relevant case law will be fully discussed below by the Panel.
According to the Complainant, the registration and use of the contested domain names is in bad faith because they were registered as part of an effort to obtain compensation from the trademark owner: they were registered just five months after the Respondent initiated litigation. Further, they are parked, not being used to point to actual criticism.
The Respondent states that the Complainant has simply two purposes in filing this action. One is to simply shut him up from telling the world, via the Internet, that they raised his yearly insurance premiums from $1,581.52 a year to $8,885.75 a year. And after he filed a lawsuit against Primerica, one of their independent agents (who lied to him by telling him that she worked for Primerica) sold him exactly the same policy for $4,901.59 AND the second reason is to simply silence him from telling citizens that the registrant of <primericaisaripoff.com> is CitiBank, N.A. THAT’S IT IN A NUT SHELL.
The Respondent goes on to give extensive details of his interactions with the Complainant’s subsidiaries and his complaints concerning those interactions. Such matters are outside the scope of the Policy, so they are not summarized here.
He alleges that he registered the contested domain names to tell citizens “his story” and to offer citizens an opportunity to write to him so that he could post their comments on a “blog.”. Further, he did post a large billboard sign on the sides of his truck, hoping to simply send citizens to his websites.
The Respondent cites various
According to the Respondent, criticism sites and other Internet speech on commercial issues vindicate First Amendment values by publicizing corporate wrongdoing when other media outlets do not. Just as setting up a picket line near a corporation targeted for criticism deserves constitutional protection, setting up a website with an Internet address that makes its target known deserves the highest level of First Amendment protection. This means that the registration and use of such an address should not be deemed to violate trademark rights so long as its sole purpose is not to mislead consumers into buying goods or services that they erroneously believe to originate with the trademark owner.
The Respondent states that he purchased a website package through a commercial web hosting company where he designed his own website using one of their standard packages, but he does not attach any evidence of his designs. He states that that software was difficult to use and that he encountered numerous problems. He attempted to design his website only to discover how difficult it was to do using his dial-up computer. He had to go to commercial premises where there was a high-speed computer. After many nights of struggling through it, he was about to launch his website when GoDaddy halted it because of this Complaint. Again, the Respondent does not provide any evidence to support his contention that he actually was in the process of developing a website containing actual criticism.
According to the Respondent, his intent in purchasing the contested domain
names was to launch a website for consumers. He never did anything in bad
faith. He never did it solely for the purpose of a monetary settlement from
Primerica Life. He also never tarnished the PRIMERICA mark and the good will
associated with their name. He initiated litigation in the
The Complainant is the owner of numerous trademarks containing the string PRIMERICA.
The contested domain names were registered in May, 2007.
The Respondent is using the contested domain names to point to websites containing commercial links.
The Respondent has used his ownership of the contested domain name as an element in negotiations with the Complainant concerning settlement of pending litigation between them.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
As a preliminary matter, the Panel notes that although the Respondent’s hard copy of the Response was received in a timely manner, the Respondent failed to submit an electronic submission before the deadline as required by ICANN Rule 5(a). Therefore, the Panel has sole discretion to determine the amount of weight given to the Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist).
nevertheless decides to accept the Response.
See Shedrick v.
The Panel is well aware of the fact that a majority of panelists have taken the view that a domain name consisting of a trademark and a negative term (for example, TRADEMARK-SUCKS) is confusingly similar to the complainant’s mark, in the sense of the Policy—see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at: http://www.wipo.int/amc/en/domains/search/overview/index.html#13.
Clearly the present case falls into that category. However, each case must be judged on its own, individual, specific merits. And the Panel finds that the present case is very similar to America Online, Inc. v. Johuathan Investments, Inc., & Aollnews.com, D2100-0918 (WIPO Sep. 14, 2001), in which the learned panel stated:
The Second Domain Name <fucknetscape.com>. This Domain Name comprises the word "FUCK", the Complainant’s trade mark "NETSCAPE" and the generic dot com suffix. This Domain Name is not identical to the Complainant’s trade mark, but is it confusingly similar to it?
In the trade mark context the term "confusingly similar" refers to confusion as to trade origin. Is it likely therefore that, because of the similarity between the Domain Name on the one hand and the Complainant's trade mark on the other hand, people will believe that the Domain name is associated in some way with the Complainant?
The Panel regards it as inconceivable that anyone looking at this Domain Name will believe that it has anything to do with a company of such high repute as the Complainant. It is manifestly, on its face, a name, which can have nothing whatever to do with the Complainant. It is a name, which, by its very nature, declares that it is hostile to Netscape. The Panel notes that in support of the bad faith claim the Complainant contends that the Respondent has registered this Domain Name in violation of paragraph 4(b)(ii) of the Policy on the basis that it has been done to prevent the Complainant registering the name. The Panel simply does not understand why on earth the Complainant would ever wish to register this Domain Name. There is no evidence before the Panel to support the contention. The Panel is aware that some companies seek to acquire such names, but only to forestall and/or impede the more obvious protest sites, not because they believe people will believe that the domain name in question or any site to which it is connected belongs to or is licensed or endorsed by the trade mark owner.
The Panel finds that the Complainant has failed to prove this Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The present case is also similar to Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001), in which the majority of the Panel stated:
A majority of this Panel agrees with the result reached by the panelist in the Wallmartcanadasucks.com case, and disagrees with the opposite view in the previously cited cases. Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word "sucks" or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark.
Although the Panel’s conclusion comports with
the plain language of the Policy, it is worth noting that
In reaching this conclusion, the court found, inter alia, there could be no confusion because the parties did not offer "related goods". This case fits our Case at hand in all essential respects. And it certainly is true that here, as in Bally’s, Complainant’s products from aerospace to t-shirts are very different from Respondent’s service of providing a forum for voicing criticism of Complainant and other prominent corporations.
Furthermore, there is at least one other federal case similar to Ballys and our Case that follow this same reasoning, viz., "sucks" appended to a famous trademark used as a domain name for websites used to discuss or criticize the business of the trademark owner results in a non-infringing and not confusingly similar use of the trademark. (re the domain name <Lucentsucks.com>, Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535, E.D. Va. 2000).
In the case cited above, the Panel held that the plain language of the Policy is clear. The Panel’s understanding of that plain language is supported by a reference to the travaux preparatoires of the Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html). This report states at paragraph 172:
… Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive. …
And at paragraph 176:
In applying the definition of abusive registration given above in the administrative procedure, the panel of decision‑makers appointed in the procedure shall, to the extent necessary, make reference to the law or rules of law that it determines to be applicable in view of the circumstances of the case. Thus, for example, if the parties to the procedure were resident in one country, the domain name was registered through a registrar in that country and the evidence of the bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision‑maker to refer to the law of the country concerned in applying the definition.
In the present case, both parties are
domiciled in the
aptly cites cases where it has been held that
In Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998), the court held that there was no likelihood of confusion between the trademark BALLY and the domain name <ballysucks.com> because they are not “related goods.” Further, it found that the terms were not similar because “sucks” is such a loaded term and negative word that the attachment of it to another word cannot be considered a minor change.
Thus, it appears that, under
Taking into account the plain language of the
Policy, the case law under the Policy, and relevant
The Complainant states that “a consistent line of authority has established that the registration of a domain name confusingly similar to the Complainant’s mark to criticize the Complainant cannot be considered legitimate noncommercial or fair use pursuant to the Policy,” but this is not the case.
As stated at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, there are two main views, with US panelists differing from non-US panelists in that US panelists more frequently take the view that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial (protection of free speech). See http://www.wipo.int/amc/en/domains/search/overview/index.html#24.
A careful analysis of case law and of the true intent of the Policy can be found in National Alliance for the Mentally Ill Contra Costa v. Fouts, FA 204074 (Nat. Arb. Forum Nov. 28, 2003). That decision quotes from other decisions, and the quotations are rather lengthy. In order to facilitate the reader’s distinguishing the quotation from the text of the present decision, the long quotation below is italicized. The text of the present decision then continues in normal font.
The question of whether or not criticism sites violate the Policy is a controversial issue, with Panels taking opposite views on the matter. …
Decisions transferring the domain names of criticism sites include Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, <cogema.org> D2001-0376 (WIPO May 14, 2001) (Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant ... is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”, especially given that the mark was famous); and Monty & Pat Roberts, Inc. v. Keith, <montyroberts.net> D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant”, especially given that the mark was famous); and Compagnie de Saint Gobain v. Com-Union Corp., <saint-gobain.net> D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant).
Decisions denying the transfer of the domain names of criticism sites include Bridgestone Firestone, Inc. v. Myers, <bridgestone-firestone.net> D2000-0190 (WIPO July 6, 2000) (finding that Respondent has free speech rights in the domain name <bridgestone-firestone.net> where Respondent linked the domain name to a “complaint” website about Complainant’s products and stating that as a general proposition: “the same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent” (citing Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535-536 (E.D. Va. 2000)); Legal & Gen. Group Plc v. Image Plus, D2002-1019 <legal-and-general.com> (WIPO Dec. 30, 2002) (finding that initial interest confusion is displaced by the criticism content at Respondent's website, that such a "low level of confusion is a price worth paying to preserve the free exchange of ideas via the Internet, and that “the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain”); and Britannia Building Society v. Britannia Fraud Prevention, <britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001).
This Panel takes the view that the goals of the Policy are limited. Domain name registrations are basically first-come-first-served, and the purpose of the Policy is limited to rectifying cases of obvious cyber-squatting.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc ). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
And at 172:
… Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive.
This Panel agrees with the case law cited by the Panel in Bridgestone Firestone, Inc. v. Myers, <bridgestone-firestone.net> D2000-0190 (WIPO July 6, 2000), but mutatis mutanda, in the sense that the Complainant in the present case would not be expected to have a domain name under “.com” (see discussion on that point at the end of this section):
The "fair use doctrine
applies in cyberspace as it does in the real world." See
Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1065 (9th Cir. 1999). In
In this case, the Respondent is not using the website for commercial purposes and has not appropriated the <.com> domain, which the Complainants have themselves registered and are using for a commercial website. This case is more closely analogous to the facts in Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998), one of the cases cited approvingly by the Ninth Circuit Court of Appeals in Brookfield on the fair use issue. In Bally, the court held that the defendant’s use of a trademark in an Internet site for purposes of consumer commentary and criticism did not infringe or dilute the plaintiff’s mark. The court held that the defendant was "exercising his right to publish critical commentary about Bally" and that he could not do so without making reference to Bally:
Faber is using Bally’s mark in the
context of a consumer commentary to say that Bally engages in business
practices, which Faber finds distasteful or unsatisfactory. This is speech
protected by the First Amendment...As such; [sic] Faber can use Bally’s mark to
identify the source of the goods or services of which he is complaining. This
use is necessary to maintain broad opportunities for expression.
The court in Bally thus recognized both fair use and free speech as defenses to trademark infringement and dilution in the Internet context. In Bally, the defendant was not using the trademark in the domain name itself, however, but on the website, which prominently stated, inter alia, "Bally sucks." The Bally court distinguished cybersquatting cases like Panavision International v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) on the grounds that the use of the trademark in domain names in those cases created a high likelihood of consumer confusion, i.e., that reasonably prudent consumers would believe that the site using the appropriated name was the trademark owner’s site. However, the court pointed out that "no reasonably prudent Internet user would believe that "Ballysucks.com" is the official Bally site or is sponsored by Bally." Bally at 1163-1164.
The Panel sees no reason to
require domain name registrants to utilize circumlocutions like
<trademarksucks.com> to designate a website for criticism or consumer
commentary. "We must be acutely aware of excessive rigidity when applying
the law in the Internet context; emerging technologies require a flexible
The Panel is aware of the line of
trademark infringement cases holding that <trademarksucks.com>domain
names may be protected as free speech because of their "communicative
content" while <trademark.com> domain names serve merely as
"source identifiers" and are thus unprotected. See, e.g., OBH,
Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000), cited by
Complainants. The Panel declines, however, to adopt that distinction for
purposes of analysis of the Policy’s requirements and notes that the Second
Circuit Court of Appeals has recently expressly rejected this distinction
because "the nature of the domain names is not susceptible to such a
uniform, monolithic characterization," in view of the "lightning
speed development" and "extraordinary plasticity" of both the
Internet and the domain name system. See Name.Space, Inc. v. Network Solutions Inc. 202
F.3d 573, 585 (2d Cir. 2000). With respect to free speech, the Second
Circuit held in Name.Space that "Domain names ... per se are
neither automatically entitled to nor excluded from the protections of the
First Amendment, and the appropriate inquiry is one that fully addresses
particular circumstances presented with respect to each domain name."
As noted above, the disputed domain name was redirected to a criticism site, but the site was clearly identified as criticizing the planned Crestwood facility and users would not be confused into believing that the site was associated with the Complainant.
This Panel also agrees with Britannia Building Society v. Britannia Fraud Prevention, <britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001):
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 a Respondent has a legitimate interest if it 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".
The Panel concludes that Respondent
is making a legitimate noncommercial use of the domain name because Respondent
maintains its website as a site critical of the policies of the management of
The Respondent’s actions cannot be characterized as consistent with an "intent for commercial gain to misleadingly divert consumers." That phrase 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. See Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. (WIPO June 29, 2000); Houghton Mifflin Company v. The Weathermen, Inc., Case No. D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion "for commercial gain" and thus no loss of legitimacy. That some internet users might initially be confused into thinking that, because of the use of the mark in the Domain Name, <britanniabuildingsociety.org> is Complainant’s official web site is of no moment. First, any such confusion would immediately be dispelled by Respondent’s prominent disclaimer and the link that is displayed to Complainant’s official site. Second, and in any event, such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the internet. A user who misleadingly stumbles upon Respondent’s site while looking for Complainant’s official site need only click the "back" button to return to her search, or the link helpfully provided by Respondent.
In the present case, the Respondent’s criticism site clearly states that the views are the Respondent’s own personal views, so a user would not be confused into thinking that he or she had accessed information provided by the Complainant. The Complainant is promoting the Crestwood facility and its name is associated with information regarding the facility. Thus, the Respondent has, prima facie, a legitimate interest in using a variation of the Complainant’s name in order to publicize her own views concerning the Crestwood facility.
But the cited case National Alliance for the Mentally Ill Contra Costa v. Fouts, FA 204074 (Nat. Arb. Forum Nov. 28, 2003)—the text presented above in italics—must be distinguished from the present case, because in that case the disputed domain name had been used to point to a website containing actual criticism, which is not the case here.
Indeed, there is consensus amongst WIPO panelists that, if a website is not in fact being used for criticism, then free speech considerations do not apply and the domain name must be transferred. See, for example Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000).
Such is the case here. The Respondent is not using the contested domain name to point to a website containing criticism: the domain name points to a website containing commercial links.
The Respondent does allege that he has the intention of building a criticism site, but he provides no evidence to support this allegation (for example, mock-ups of the website). The Respondent alleges that he has not had sufficient time to build his website. Yet he registered the disputed domain name more than three months before the Complainant initiated proceedings under the Policy. And the Respondent has access to tools that would allow him easily to create a simple website, since his Response was sent as an HTML file. With today’s software tools, anybody who can use a text editor can create a simple website literally within a few hours. The Respondent had ample time to create a website containing actual criticism, but did not do so.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that respondent might be capable of doing otherwise).
As a consequence, the Panel finds the Respondent does not have a legitimate interest in the contested domain names.
Since the Respondent has not provided any evidence that he has made demonstrable preparations to use the disputed domain names to point to actual criticism of the Complainant, the Panel accepts, on the basis of the preponderance of the evidence submitted, the Complainant’s allegation that the Respondent registered the disputed domain names in an apparent attempt to extract a settlement of pending litigation or, as the Complainant bluntly states:
Respondent’s failure to develop websites associated with the Offending Domains and his registration of several similar domains shows he is more interested in using the domains to make threats in litigation than engage in any critical speech.
The Complainant appropriately cites K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (stating that registration of domain names for extortionate purposes “typifies bad faith registration and use as defined in Policy 4(b)(i)”); and Schlund + Partner AG & GMX GmbH v. Global Tlds, Inc., FA 174667 (Nat. Arb. Forum, Sept. 10, 2003) (finding bad faith where Respondent’s apparent purpose in registering the domain was “to extort valuable consideration from mark holders”).
Thus the Panel holds that the Respondent has registered and is using the disputed domain names in bad faith in the sense of the Policy.
Having examined all three elements required under the ICANN Policy, and concluded that the Complainant failed to prove the first element, although it did prove the other two elements, the Panel concludes that relief shall be DENIED.
Richard Hill, Panelist
Dated: October 16, 2007
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