Monsanto Company v. Rowena Tollitt
Claim Number: FA0204000110795
Complainant is Monsanto Company, St. Louis, MO (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Roger Lovejoy, Cornwall, UK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monsanto.org>, registered with Joker.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Roger P. Kerans Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 24, 2002; the Forum received a hard copy of the Complaint on April 25, 2002.
On April 25, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <monsanto.org> is registered with Joker.com and that the Respondent is the current registrant of the name. Joker.com has verified that Respondent is bound by the Joker.com 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 April 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 16, 2002 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 by e-mail.
A timely Response was received and determined to be complete on May 16, 2002.
Complainant submitted an Additional Submission in a timely manner, on May 17, 2002. Respondent submitted an Additional Submission in an untimely manner, on May 28, 2002. The Panel may decide whether or not to use Respondent’s Additional Submission in making its determination.
On May 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Roger P. Kerans as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant Monsanto Company in its lengthy submission asserts that it is a famous “biotechnology giant”, that it in law owns the unique name MONSANTO, and that it has a well-established website at <Monsanto.com>.
It asserts that the Respondent’s <monsanto.org> is confusingly similar, and that the Respondent has no legitimate right or interest in the name. Moreover, the Respondent’s website attacks the Complainant and its products, and the use of the name of the Complainant’s business in the Respondent’s domain name is an obvious attempt to divert consumers away from the Complainant’s website and thus do harm to the Complainant.
Evidence to support this allegation is that the the Respondent’s website contains a reference to “Corporate Info”, offering details of the Complainant and leading consumers to think that the Respondent’s website is in fact that of the Complainant. Moreover, the site duplicates the trademark of the Complainant, and offered support for “Decepticons”, an organization that deliberately mimics established trade names.
The Respondent’s website makes shocking and false allegations about the work of the Complainant.
The Respondent’s registration information was at least partly false. Registration was in the name of Rowena Tollit but, in response to the demand of the Complainant, one Roger Lovejoy replied to say that he had been joint owner and , in light of the demand, was now the sole owner. This is offered as further evidence of bad faith.
Further, Roger Lovejoy earlier used a registered trademark in a domain name and this use was found to be abusive under the UK rules. See Nominet UK Dispute Resolution Service DRS 00048). This is evidence of a pattern of abuse.
The Respondent’s Response was filed by Roger Lovejoy, who asserts he had no intention of “passing myself of as “Monsanto” nor to use the name to unfairly disrupt their business.” Instead, the “intention is to encourage surfers to query Monsanto with regard to the information we provide.” The “purpose of the site is to provide details that Monsanto suppress. . .” or “Monsanto are unlikely to advertise themselves”, and not to sell the site, nor to dissuade anybody from the purchase of Monsanto products, nor to deceive anybody into thinking the site belonged to Monsanto.
Lovejoy also asserted that the Nominet decision can be distinguished, and in any event was wrong. And that he never intended to support Decepticon.
Lovejoy acknowledged that “an odd surfer, or three, will present a query regarding a product or action of Monsanto” and these are answered “in good spirit”. Indeed, “three surfers did ask for help regarding Monsanto products and were directed to”Monsanto” and/or I asked Monsanto for their advice and passed it to the original enquirer.”
As to the business about registration name, there was no intention to confuse or mislead. Ms Tollit’s name appeared primarily because registration was purchased by use of her credit card at Lovejoy’s request. He also reports subsequent difficulty in his efforts to change registration. He supplies his Cornwall UK address.
He also quotes Halsbury to say that there is no property in a name as such, and he had no intention to pass himself off as Monsanto.
He reports that he has made certain changes to the website to make it clear that the domain owner is a critic of Monsanto, not Monsanto.
He chose the domain name so that the site would be “more noticeable”. He likens a domain name to a chapter heading in a book.
C. Additional Submissions
In a reply to the Respondent’s Response, which was filed by the Complainant in a timely fashion, the Complainant questions whether a non-registrant has the right to file submissions. It is also said that Lovejoy admitted that there had been actual confusion from his use of the Monsanto name as a domain name. And the Complainant repeats that this case is on all fours with the Nominet case.
Mr. Lovejoy then made a sur-response, but it was out of time. I have nevertheless considered it. It merely repeats arguments made in his original submission.
I accept the explanation by Mr. Lovejoy about the registration confusion, and that he had no intention thereby to mislead or confuse. I accept also that he had an interest in the domain name at the time of registration, and I infer that he responds on behalf of himself and the registrant Tollitt.
I accept the explanation of Lovejoy that the sole purpose of the Respondent’s website is to offer criticism of the Monsanto Company and its products. That said, it is disingenuous of Mr Lovejoy to assert that he had no intention “to dissuade anybody from the purchase of Monsanto products.” I find that this very much is his purpose. It seems to me the only reasonable inference when the site proclaims “Monsanto actions are detrimental to the environment.”
I also accept his assertion that any documentation on the Respondent’s website that may have led a member of the public to believe that this was the website of the Monsanto Company, as opposed to its critic, was inadvertent. His choice of domain name is, however, a very different matter. He nowhere offers any explanation why he did not choose a domain name that better described the function of the domain. A hint as to his true intent can be gained for his acknowledgment that he chose the name because it was
“more noticeable”. I infer that what he had in mind was that members of the public who search the internet for the Monsanto Company domain would find his site. I find that he hoped to attract to his site people looking for the Monsanto site, and hoped that some would stay to read his criticisms.
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.
Identical and/or Confusingly Similar
It is undeniable, and undenied, that the names “Monsanto Company” or “Monsanto.com” and <monsanto.org> are confusingly similar. In fact there has been confusion, which is unsurprising. Indeed, as I have found, the Respondent chose the name because of this likely confusion.
In some cases, it has been held that the suffix ".org" is sufficient to avoid confusion. See Pueblo Int’l, Inc., v. Pueblo On-Line, FA 95250 (Nat. Arb. Forum Aug. 24, 2000), where the panel took note that a "org" suffix was customarily used by a not-for-profit organization and this could justify a ruling that there was no confusion with a commercial enterprise. It is a question of fact. See North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v. Citizens With Common Sense FA97058 (Nat. Arb. Forum July 1, 2001). Here, the suffix was insufficiently distinguishable to prevent confusion.
Rights or Legitimate Interests
It is undeniable, and undenied, that the Complainant has valuable property rights in the name “Monsanto”, rights that would be recognized in the United Kingdom and elsewhere.
It is undeniable, and undenied, that the Respondent had no business or other pre-existing legal interest in the name “Monsanto”.
The Respondent protests reference to US cases by the Complainant, and refers to UK law.
The law that governs, however, is the Uniform Domain Name Dispute Resolution Policy. This derives from the fact that the Respondent chose to register his domain name with a firm that had adopted the Policy. And that is the law that I shall apply.
In any event, the Respondent’s claim rests on his right to free speech. I accept that, in the United Kingdom, one is free to do anything not forbidden by law. Mr Lovejoy argues that, in the United Kingdom, a person is free to adopt any name he chooses because “there is no property in a name as such”. This is true as far as it goes, but in the United Kingdom the user of a name acquires rights over it when goodwill attaches to its use, as is the case with the use by Monsanto Company of the name Monsanto. Monsanto has the right to prevent others from passing themselves off as Monsanto by the use of that name, if that practice causes it damage. It causes Monsanto damage when a potential customer is diverted away.
To employ the name of another, a name in which that other has rights, in a domain name in order to attract persons searching for that other is not a legitimate right or purpose with the meaning of the UDRP. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name). See also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
The Respondent would justify breach of this rule on the ground that the domain in question does not compete with the Complainant, it merely criticises the Complainant. I note that the Complainant acknowledges that the Respondent has a right to criticise the Complainant (although it protests that the criticism offered by the Respondent is untrue and unfair). The merits of the attacks on the Complainant are not for me to judge, and I do not offer any judgment for or against them. But, even if the purpose of the Respondent’s domain is to offer valid criticism of the Complainant, that admirable purpose does not legitimise the use of the Complainant’s name to attract persons looking for the Complainant. The public may inadvertently go to the critic’s site when searching for the site of the person criticized, and then be confused or frustrated and never continue the search, with the result that the commercial site loses business. See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark); See also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for “public comment” on the Internet); See also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety). If the decisions in TMP Worldwide Inc. v. Potter, D2000-0536 (WIPO Aug. 5, 2000) or Western Hay Co. v. Forester, FA 93466 (Nat. Arb. Forum Mar. 3, 2000) may be thought to take a differing view, I must, with respect, decline to follow them.
Mr. Lovejoy argues that to use “Monsanto” to name the Respondent’s site is like using it as the name of a chapter in a book. It is not. It is more akin to using the Monsanto mailing address or telephone number. At the very least, the domain name must make it clear somehow to internet searchers that the domain is not that of the other. The Respondent failed to do this. This is not a case like New York Press v. New York Press, FA 94428 (Nat. Arb. Forum May 18, 2000), where the domain name does not necessarily offer confusion with some of the newspapers being criticised on the site.
Mr Lovejoy argued that he made it clear on the Respondent’s site that it was not the Monsanto site. In my view, reliance on the home page or the content of the website is only relevant on the question of bad faith. It does not tell us the answer to the question whether the use of the name is legitimate. That is my simple answer to those who would excuse an illegitimate name whose true purpose is clarified only on the site. Again see North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v Citizens With Common Sense FA97058 (Nat. Arb. Forum July 1, 2001).
I find that the Respondent had no legitimate right or interest in the use of the name of the Complainant in a domain name without adequate indication in that domain name that the domain is something other than that of the Complainant.
Registration and Use in Bad Faith
Having found no legitimate use of the name, it is somewhat academic to consider the bad faith issue. This is because, now that the Respondent knows the use is illegitimate, it would indeed be guilty of bad faith in the future if it continued that improper use. See Netfolio v Tantalus Investments FA 96684 (Nat. Arb. Forum Mar. 27, 2001)
In any event, where, as here, the Respondent deliberately employs the name of the Complainant (unaccompanied by adequate clarification of its use in the domain name itself) to attract those looking for the Complainant’s website, it is no answer to say that there is an adequate disclaimer on the Respondent’s website. In my view, the UDRP forbids this particular version of “bait and switch” when it prohibits, in clause 4(b)(iv), intentional efforts to attract users by creating a likelihood of confusion. See Northwest Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (finding bad faith where the "purpose of Respondent in choosing the domain name is to cause the persons seeking information on the Complainant’s activities to be drawn into the Respondent’s web site and thereby to be exposed to contrary and critical views").
The problem as I have already said is that some searchers may miss the disclaimer, others may simply tire of the search. In either event, there has been an interference with the legitimate commercial activity of the Complainant.
Policy paragraph 4(b) extends to non-commercial gain from use of a domain name to attract users by creating a likelihood of confusion between the impugned site and the Complainant’s commercial mark in terms of source, sponsorship, affiliation, or endorsement. See North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v Citizens With Common Sense FA97058 (Nat. Arb. Forum July 1, 2001).
I find bad faith in the use of this particular domain name. Because Lovejoy intended this confusion from the outset, I also find bad faith at registration.
I declare and direct that the name “Monsanto.org” be transferred to the Complainant.
Hon. Roger P. Kerans, Panelist
Dated: June 4, 2002.
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