Satchidananada Ashram - Integral Yoga Institute v. Domain Administrator
Claim Number: FA0209000125228
Complainant is Satchidananada Ashram - Integral Yoga Institute (IYI), Buckingham, VA, USA (“Complainant”) represented by David S. Korzenik, of Miller and Korzenik, LLP. Respondent is Domain Administrator Yoga, Hong Kong, CHINA (“Respondent”) represented by Gregory J. Marcot, of Kring & Chung, LLP.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yogaville.com>, <yogaville.net>, <integralyoga.com>, <integralyoga.net>, <integralyoga.org>, <integralyogasf.com>, and <integralyogaofnewyork.com>, registered with Online NIC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Louis E. Condon, Chair; David H. Bernstein and James A. Crary as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 16, 2002; the Forum received a hard copy of the Complaint on September 16, 2002.
On September 17, 2002, Online NIC confirmed by e-mail to the Forum that the domain names <yogaville.com>, <yogaville.net>, <integralyoga.com>, <integralyoga.net>, <integralyoga.org>, <integralyogasf.com>, and <integralyogaofnewyork.com> are registered with Online NIC and that the Respondent is the current registrant of the names. Online NIC has verified that Respondent is bound by the Online NIC 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 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 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, email@example.com, 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 October 23, 2002.
On November 20, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Louis E. Condon, Chair; David H. Bernstein and James A Crary as Panelists.
On November 21, 2002, the Complainant sought leave to submit additional evidence – a letter from Respondent dated November 15, 1999 and a New York Post article dated September 13, 1999. On November 25, 2002, Respondent filed an objection to the submission of these supplemental materials. Because these materials were untimely, (see Nat. Arb. Forum Supplemental Rule 7), and because the additional materials are three years old and thus should have been included with the Complaint, the Panel declines to accept these materials.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant, Satchidananda Ashram- Integral Yoga Institute (“the Institute”) is the owner of a Federal Trademark (Registration No. 2,347,309) for the service mark YOGAVILLE for instructional services in the field of yoga in the nature of classes, retreats, lectures, workshops, and seminars. The Institute‘s US registration for YOGAVILLE was filed on July 22, 1999 and registered on May 2, 2000. The Institute has been using the Yogaville mark since 1980.
The Institute is the owner of a Federal Trademark (Registration No. 1,312,685) for the service mark INTEGRAL YOGA for instructional services in the field of yoga in the nature of classes, retreats, lectures, workshops, and seminars. The Institute’s US registration for INTEGRAL YOGA was filed on October 17, 1983 and registered on January 1, 1985.
The Institute is the owner of a Federal Trademark (Registration No. 1,106,648) for the trademark INTEGRAL YOGA for magazines, books, booklets, instructional and teaching material in the form of books and booklets. The Institute’s US registration for INTEGRAL YOGA was filed on August 25, 1977 and registered on November 21, 1978.
The Complainant alleges as follows:
On information and belief, an individual by the name of Matthew Cheng has (individually or via shell corporations or foreign nominees) retained the Registrant to register the seven challenged domain names – all of which are identical to Complainant’s two registered marks. Mr. Cheng, who is apparently angry with the Institute, has made the multiple domain name registrations in order to get back at the Institute and to mislead Internet users who are looking for information about the Institute and its programs and schedules. Viewers who think that they are going to petitioner’s site are diverted to a third-party site which disparages the complainant.
In addition, emblematic of his illegitimate purpose, Mr. Cheng has improperly and without authorization obtained and used the list of the Institute’s subscribers’ e-mail addresses. Without their consent, he sent e-mails to a part of the subscribers that confused some of them as to the source of this e-mail.
Neither Registrant nor Mr. Cheng conduct any business or not-for-profit organization relating to yoga; and neither the Registrant nor Mr. Cheng do business of any kind under trade names that are the same or even similar to the “Yogaville” or “Integral Yoga” marks. Neither Registrant nor Mr. Cheng have any affiliation of any kind with the Institute. Registrant’s registrations of the seven challenged domain names was made solely to block them from being used by the Institute; to disrupt Institute’s activities by diverting and misleading unsuspecting internet users. Neither Registrant nor Mr. Cheng has any rights to, nor any legitimate interest in, any of the marks or any of the challenged domain names.
The domain names <yogaville.com>, <yogaville.net>, <integralyoga.com>, <integralyoga.org> , and <integralyoga.net> consist entirely of the Institute’s trademarks with the suffixes .com; .net, or .org, added. They are identical -- and, therefore, confusingly similar -- to the trademarks YOGAVILLE and INTEGRAL YOGA; and consumers using those domain names and expecting to view the Institute’s web site will be and, indeed, have been mistakenly finding themselves diverted to another web site which has no connection with the Institute. The additional two domain names registered consist of the Institute’s trademark INTEGRAL YOGA with the name of the Institute’s various locations-- New York <integralyogaofnewyork.com>, and San Francisco <integralyogasf.com>. Because virtually all of the possible domain names using the Institute’s trademarks and locations have now been blocked up by Respondent, Internet viewers are unable to find their way to the Institute’s site.
Additionally, the look of the third party web site to which the Internet viewers are diverted has been arranged in such a way as to add to this confusion by having a web page that can easily be mistaken for the Institute’s own Web site. The home page features the name of the Institute—centered and in bold letters as a heading, including the name of its founder, followed by a picture of him. A first look at the Respondent’s site’s home page, so titled “ Yogaville/ Integral Yoga International” falsely suggests to the viewer that she/he is looking at he Institute’s official web site. Of particular importance is the fact that although the page further contains a paragraph explaining the real purpose of the website --disparaging the Institute -- at no point does it disclaim any affiliation with the Institute. Moreover, the page includes links to the Institute’s official web site, thus wrongfully inducing the viewers to believe that the Respondent’s site is somehow affiliated with the Institute.
The Respondent’s use of these domain names is intended to infringe on the Institute’s trademarks and interfere with Institute’s use of its own marks by diverting the Internet users who intend to visit the Institute’s website to the respondent’s site which automatically diverts all viewers to a third party website <rickross.com>. This web site, among other things, has pages devoted to disparaging the Institute. Given the special focus of this proceeding, the Institute makes no statement here concerning the offensive character of the Web site to which Respondent diverts viewers. The Institute does object, however, to the use of its name and trademarks to mislead Internet users and the public to a different site when they mistakenly think that they are going to a site that is associated with the Institute.
Respondent has no legitimate business use or need for the use of the seven domain names that are identical to the Institute’s marks; Registrant has registered the seven disputed domain names in bad faith and the multiple registrations are indicative of the Respondent’s abusive purpose; Registrant cannot by any stretch claim that he sells goods or services in connection with the marks and, if he did so, it would be a direct infringement of the Institute’s marks.
By blocking and “warehousing” the seven (7) challenged domain names, the Respondent not only prevents the Institute from reflecting their marks in corresponding domain names, but also dilutes the value of the trademarks and thereby disrupts and damages the Institute, its activities and its participants.
In response, Respondent has asserted that the “Amended Complaint by THE INTEGRAL YOGA INSTITUTE, SATCHIDANANDA ASHRAM (“Complainant” or “IYI”) is nothing more than an attempt by Complainant to suppress Respondent’s ability to provide the general public with factual but unfavorable information about Complainant, including truthful commentary and criticism about Complainant’s activities on Respondent’s website. As seen below, Respondent’s use of the Domain Names <yogaville.com>, <yogaville.net> (which contrary to Complainant’s allegations, is active), <integralyoga.com>, <integralyoga.net>, <integralyoga.org>, <integralyogasf.com> and <integralyogaofnewyork.com> (the “Domain Names”) is legitimate, proper and in accordance with the provisions set forth in the Uniform Domain Name Dispute Resolution Policy.” Additional excerpts from the Response follow (footnotes omitted):
This matter has a long, sordid and disturbing background that is much larger than the limited legal issues contained in this arbitration. However, a brief recitation of the facts is necessary to understand why Complainant’s Amended Complaint must be denied.
This story begins in or about 1997, when Respondent’s family member, Catherine Cheng followed her childhood dream to go to law school in New York City to become a lawyer with aspirations of defending the less advantaged people of the world. Catherine excelled in her studies and was able to obtain several fellowships, which allowed her to travel to various parts of the United States -- working on behalf of migrant farm workers and other indigent people. While in law school, she met another law school student, fell in love and confided to her friends that they would one day marry and work together after graduation.
Catherine originally began practicing yoga while in college because she found it to be an effective method of reducing stress. As her law school career continued, and the stresses began to mount, Catherine found comfort in developing her practice of yoga. It was at that time that she began attending various yoga classes offered by Complainant in a studio located in New York City. In December of 1998, Catherine decided to participate in a month-long yoga-training program offered by Complainant during her winter recess from school as a vacation. She applied, and received a "one month scholarship" for Living Yoga Training (“LYT”) in Yogaville, Virginia – “the Ashram" and main campus of Complainant, devoted to the spiritual teachings of Swami Satchidananda. She left for Yogaville on December 18, 1998 and scheduled her return home on January 14, 1999.
At first, Catherine's Yogaville experience was uneventful. She spoke with her family every few days by telephone and said that much of her training had nothing to do with yoga, but rather consisted of cooking and cleaning the bathrooms. However, on or about January 5, 1999, things seemed to change suddenly and dramatically. Catherine called home on that date and told her family that there had been a serious accident and that a stove at the Ashram's kitchen had exploded in her face. She said that she thought she was going to die, but that she was brought to the hospital, was treated and was now feeling better. She told her father that she was coming home earlier and was going to register for classes since the semester was beginning shortly. She further stated that she was going on a trip to Washington D.C. with a friend at the ashram who was also an attorney. She said that she would be gone for several days and would call back when she returned.
On January 11, 1999, Catherine called her father and in a frantic voice, said that she was never returning home. She then stated that she was going to remain at the Ashram and marry a 51-year-old man called "Swami Atmananda", (a.k.a. Larry Gross), who was the attorney who took her to Washington D.C. She also acknowledged that she only knew Mr. Gross for about a week and was thirty years her senior. Then she abruptly hung up the telephone. Thereafter, her family, boyfriend and law school friends tried many times to contact her. Various people of the Yogaville administration took their messages, but their calls were never returned. After the Respondent retained Rick Ross, a Cult Intervention Specialist, her family was able to see Catherine twice in the past few years. Each visit was under the strict supervision of Complainant, its lawyers and Larry Gross.
Concerned for the safety and well being of Catherine, Respondent began investigating Complainant and its representatives, using the Internet to research and exchange information with others who had similar experiences with Complainant. Respondent began compiling this information and secured the Domain Names at issue herein as a means to inform the general public about Catherine’s story and to provide an open forum for others to share their experiences they had with Complainant. Since Respondent began the web site, however, the Cheng family began receiving harassing phone calls from Mr. Gross and others associated with Complainant on a daily basis threatening legal action that would be taken by their "New York lawyers" against Respondent’s entire family. They were told that this would result in their family being made penniless and homeless, facing "criminal prosecution and/or a substantial civil suit" that would ruin their lives.
To date, Respondent maintains the web site in the same manner as when it was originated, as an open forum to share information with the general public relating to Complainant. Respondent’s website contains factual information that Complainant frankly wants to keep secret. For example, Complainant has been involved with several sexual scandals over the years that have brought into question the legitimacy of their organization. In an effort to prevent Respondent from exposing this factual, yet unfavorable information, Complainant commenced the instant action. However, as seen below, Respondent’s use of the Domain Names are valid, legitimate and permissible under the Policy. Accordingly, Complainant’s Amended Complaint must be denied. . . .
The question of whether exclusive use of a designated name of a concept in public domain can be granted to an individual, organization or entity through registration of a trademark with the U.S. Patent and Trademark Office has previously been analyzed under the Policy. In Vishwa Nirmala Dharma a/k/a Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, D2001-0467 (WIPO, Jun. 2001), a three-member panel ruled that a complainant’s registration of the name “SAHAJA YOGA” did not prevent Respondent’s use of the domain name <sahaja-yoga.org> because, although the domain name was essentially identical to the registered trademark, the alleged trademark was actually a descriptive term, relating to a religious concept that not only did not originate with the complainant, but dated back several thousands of years. As stated in a similar action decided by this forum, to “grant Complainant’s request for relief [to transfer respondent’s domain name] would be to permit a virtual monopolization on the Internet by Complainant of any domain name which includes the name of a great spiritual teacher and leader. While making no judgment on the relative merits or validity of the world’s religions or spiritual movements or any leader thereof, this Arbitrator finds that permitting this would be as improper as doing the same with Christianity, Judaism, Islam, Zoroastrianism, Hinduism, Buddhism, Taoism, Confucianism, Shintoism or any of the several hundred other of the world’s religions and/or spiritual movements. Neither the Lanham Act nor the ICANN Policy and Rules contemplate or intend such a result. See Osho Int’l Found. v. Osho Dhyan Mandir and Atul Anand, FA 94990 (Nat. Arb. Forum July 2000).
In the case at hand, Complainant’s registered trademark “INTEGRAL YOGA” is actually a conceptual phrase that describes a type of yoga that has been practiced and taught long before Complainant allegedly adopted the phrase as a trademark. Specifically, the phrase “Integral Yoga” originates with Sri Aurobindo (1872-1950) who synthesized and formulated several different types of Yoga, including, but not limited to, Karma, Jnana and Bhakti yogas, to create a new metaphysical system of spiritual discipline that he called Integral Yoga.
Aurobindo detailed the practice of this type of yoga in his 1948 book entitled “The Synthesis of Yoga.” Accordingly, since Complainant’s first use of the phrase “Integral Yoga” did not occur until approximately 1969, as alleged in its Amended Complaint, neither the phrase, nor the concept originated with Complainant. Accordingly, it would be improper to grant Complainant the exclusive right to use the phrase or practice the concept of “Integral Yoga.” Accordingly, even though Respondent’s domain names that utilize the phrase “Integral Yoga” are similar to Complainant’s registered trademark for “Integral Yoga,” Complainant’s rights in the descriptive phrase should not be exclusive. . . .
In this case, Respondent has a legitimate noncommercial and fair use interest in the domain names at issue herein. Specifically, Respondent’s web sites were created for the purpose to provide the public with factual information, commentary and criticism regarding the unethical and improper tactics employed by Complainant in its recruitment and retention of its allegedly voluntary members, as well as other information regarding Complainant and the concept of Integral Yoga in general that cannot be found on Complainant’s web sites. Moreover, Respondent’s web sites provide an open forum for members of the public to exercise their First Amendment rights by sharing their stories and experiences relating to Complainant. See Bosley Medical Group and Bosley Medical Inst., Inc. v. Michael Kremer, D2000-1647 (WIPO Feb. 2001) (Respondent’s contention that he has registered the site to make information regarding Bosley Medical more widely accessible, without any intent for commercial gain, is clearly fair use); Compusa Mgmt. Co. v. Customized Computer Training, FA 95082 (Nat. Arb. Forum Aug. 2000) (Respondent has a First Amendment right to offer criticism of goods and services offered by complainant); TMP Worldwide Inc. v. Jennifer L. Potter, D2000-0536 (WIPO Aug. 2000) (using a website to exercise First Amendment right to comment on her experiences in dealing with complainant is legitimate).
The fact that Respondent’s Domain Names do not clearly designate that they are sites dedicated to criticism of Complainant has no effect on Respondent’s rights of free speech and fair use and the ability to use the Domain Names for the website that criticize and inform about Complainant. See Bosley Med. Group and Bosley Medical Inst., Inc. v. Michael Kremer, D2000-1647 (WIPO Feb. 2001) citing Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc. and Bridgestone Corp. v. Jack Myers, D2000-0190 (WIPO July 2000) (domain name registrants need not utilize the formulation “trademarksucks.com” to designate a website for consumer criticism or commentary).
Finally, Complainant cannot show that Respondent used the Domain Names in order to gain a commercial advantage because Respondent’s site is a non-commercial information resource offered to the general public free of charge. See Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, D2001-0467 (WIPO June 2001). Accordingly, there is no commercial motivation for Respondent’s use of the Domain Names. . . .
Respondent’s uses of the Domain Names do not fall under any of [the Policy’s 4(b)] categories of bad faith. Specifically, (i) Respondent did not acquire the Domain Names with the intent of selling them for a profit, nor have they ever offered to sell the Domain Names to anyone, let alone Complainant; (ii) Respondent did not register his Domain Names to prevent Complainant from using the mark in its own domain name as evidenced by the fact that Complainant owns and uses a multitude of other related domain names; (iii) Respondent is not a business rival or competitor of Complainant as defined under its plain meaning in Civic Dev. Group LLC v. John Paul Schaffer, FA 100138 (Nat. Arb. Forum Nov. 2001), Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, D2001-0467 (WIPO Jun. 2001), Bosley Med. Group and Bosley Medical Inst., Inc. v. Michael Kremer, D2000-1647 (WIPO Feb. 2001), TMP Worldwide Inc. v. Jennifer L. Potter, D2000-0536 (WIPO Aug. 2000); (iv) Respondent’s website has no commercial purpose in that it offers access to its open forum for discussion, criticism and commentary relating to Complainant free of charge and does not sell any goods or service, thus the Domain Names have not been used to attract any users for the purpose of commercial gain.
Additionally, there is no likelihood of confusion between Respondent’s web site and Complainant’s marks, or that Complainant somehow sponsors or endorses Respondent’s website because of the critical commentary prominently depicted on Respondent’s website. Similarly, Respondent’s web site contains an explicit disclaimer that clearly differentiates the site from one sponsored by Complainant. As stated in the Disclaimer, visible on every page, “All such information should of course be evaluated critically, through a process of individual and independent judgment. Please note that there are links often prominently placed at the top of individual pages to a group's own official website, which may reflect another viewpoint. See what they have to say.”
Finally, of the twenty-six (26) domain names currently owned by Complainant . . . only fifteen (15) of the domain names direct visitors to active web sites. The other eleven (11) are inactive, unused domain names. This demonstrates Complainant's trivial need for stockpiling additional domain names that it has no intention of ever using. Thus, Respondent has not only not used the Domain Names in bad faith, but Complainant’s cyber monopolization of domain names evidences their own bad faith in attempting to gain control over Respondent’s Domain Names. Therefore, Complainant’s Amended Complaint must be denied. . . .
As seen herein, the main purpose for Complainant’s action is to shut down Respondent’s website simply because it criticizes Complainant and offers truthful accounts from ex-members as to the improper techniques used by Complainant to recruit and contain its members. Respondent’s website is a valuable resource of information that cannot be found anywhere else on the web. Complainant should not be permitted to defeat Respondent’s First Amendment rights simply because it does not like Respondent’s message. As one National Arbitration Forum Panelist has previously stated, “the Policy should not be used to shut down robust debate and criticism. Allowing trademark owners to shut down web sites that obviously are aimed at criticism of the trademark holder does just that.” Civic Dev. Group LLC v. John Paul Schaffer, FA 100138 (Nat. Arb. Forum Nov. 2001) citing Wal-Mart Stores, Inc. v. Wal-MartCanadaSucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 2000). Accordingly, Respondent should not be compelled to transfer the Domain Names and Complainant’s amended complaint should be dismissed in its entirety.”
(1) The domain name is identical or confusingly similar to a mark in which Complainant appears to have rights.
(2) The Respondent has a legitimate interest in and right to use that trademark in his domain names in the exercise of his First Amendment rights.
(3) The Complainant failed to establish that the domain name was registered in and is being used in bad faith.
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.” 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
Rights or Legitimate Interests
Respondent asserts that it is making a legitimate noncommercial and fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii) because it is using the disputed domain names in connection with its public forum/information website. Respondent asserts that its website is dedicated to providing the public with factual information, commentary and criticism regarding the unethical and improper tactics employed by Complainant in its recruitment and retention of its allegedly voluntary members. Respondent also asserts that the domain names are being used as a public forum because Respondent provides space for past members of Complainant to share their stories and experiences related to Complainant. Respondent argues that it is not necessary to designate in a domain name that a website is being used as a public forum for criticism and information.
Without judging the merits of the parties’ dispute, it is crystal clear that Respondent is using the disputed domain names for legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Brttannia Building Soc’y v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (criticism site at <britanniabuildingsociety.org> is protected, non-commercial speech); TMP Worldwide Inc. v. Potter, D2000-0536 (WIPO Aug. 5, 2000) (finding that a criticism forum is an exercise of First Amendment rights and, therefore, a legitimate noncommercial use of the <tmpworldwide.net> and <tmpworldwide.org> domain names); Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that the Respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where the Respondent linked the domain name to a “complaint” website about the Complainant’s products); Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that Respondent has rights and legitimate interests in a domain name incorporating Complainant’s name at which commentary and criticism of Complainant are offered, and at which users are free to post messages about Complainant). As explained in the Britannia Building Society case:
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. Use of the Policy to provide such insulation would radically undermine freedom of discourse on the internet and would undercut the free and orderly exchange of ideas that the Policy seeks to promote.
Registration and Use in Bad Faith
Respondent did not register the domain names for the purpose of selling the registrations to Complainant, or any other party. Respondent did not register the domain names in order to prevent Complainant from reflecting its mark in a domain name because Complainant already holds and uses numerous other domain names to advertise its services. Respondent is not a competitor of Complainant nor is it using the disputed domain names for commercial gain, because it is not selling or offering any good or service, it is merely using the disputed domain names to host a website that offers a public space to discuss Complainant, and experiences people have had with Complainant. Furthermore, this use is a legitimate noncommercial and fair use of the disputed domain names and therefore Respondent’s registration and use of the domain names cannot be construed as bad faith. See Britannia Building Soc’y, supra; Bridgestone Firestone, Inc., supra (“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 at 535-536); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that, after Respondent is determined to have rights and legitimate interests in the disputed domain name, there is no need to decide the issue of bad faith).
Not only is Respondent’s use wholly non-commercial, but also, there is no likelihood of confusion between Respondent’s website and Complainant’s marks because of the critical commentary prominently depicted on Respondent’s website, and Respondent’s use of an explicit disclaimer. The disclaimer is visible on every page of Respondent’s website. See Britannia Building Soc’y, supra (“Respondent goes to great lengths to dispel any possible confusion about the source of the website, including a prominent disclaimer at the top of the site and a link to Complainant’s actual site. This conduct is paradigmatic of good faith, not bad.”); Caterpillar Inc. v. Off Road Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith when Respondent put a very visible disclaimer on its website located at <catparts.com>, because the disclaimer eliminated any possibility that Respondent was attempting to infer an affiliation with Complainant and Complainant’s CATERPILLAR mark); Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where Respondent conspicuously informs viewers that his site is not affiliated with Complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of Respondent which precludes any determination that Respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website).
One Panelist, David Bernstein, is of the opinion that, under Rule 15(d), the Panel must consider whether Complainant is guilty of Reverse Domain Name Hijacking. He feels that is true notwithstanding that Respondent has not requested such a finding because, in his opinion, 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. See Rodale, Inc. v. Cambridge, DBIZ2002-00153 (WIPO June 28, 2002).
In this case, Mr. Bernstein would have found Reverse Domain Name Hijacking given what he considers Complainant’s bad faith effort to use the Policy as a crude club to suppress legitimate, protected, First Amendment speech. It has become clear that the Policy cannot and should not be used to try to silence genuine criticism. Cf. Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001).
On the other hand, Complainant has valid trademark registrations and the right to bring a claim under the Policy and Rules. The other two Panelists did not believe that Complainant’s conduct was so outrageous as to rise to the level of bad faith abuse of the Policy. In their opinion, there was no showing that the Policy and Rules were being used as a club to thrash Respondent for exercising its First Amendment Rights. Respondent did not request this sanction on Complainant. While they agree that the Panel has the responsibility to make a reverse cybersquatting finding even when not requested by the Respondent, in their view those situations should be limited to cases where the Complainant was clearly shown to be abusing the Policy. In their opinion, there are no facts in this case apart from the mere bringing of the Complaint to support finding abuse.
Although the domain names are identical and/or substantially similar to marks in which Complainant has rights, the Panel concludes that Respondent has a legitimate noncommercial and fair interest in the domain names at issue and that the Respondent did not register these names in bad faith. Accordingly, the relief requested is DENIED and the Respondent may RETAIN the domain names.
For the Panel
Louis E. Condon, Chair
December 13, 2002
David H. Bernstein
Louis E. Condon
James A. Crary
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