Gorilla Companies LLC v. J Corwin
Claim Number: FA0909001283837
Complainant is Gorilla Companies LLC (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <savegorilla.com>, registered with Godaddy.com, Inc. (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 14, 2009.
On September 23, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the Disputed Domain Name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant thereof. 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 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 19, 2009 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 October 19, 2009.
A timely additional submission was filed by Complainant on October 26, 2009.
A timely additional submission was filed by Respondent on or about November 2, 2009.
On October 28, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
Complainant is a company located in
Complainant has rights in two
In 2007, Complainant purchased all rights, title and interest in the above noted trademarks from13 Holdings, Inc., along with substantially all other assets of said company. 13 Holdings, Inc. was a company owned by Respondent and her husband.
Respondent registered the Disputed Domain Name on November 25, 2008. In doing so, Respondent used the privacy services of Domains by Proxy, Inc.
Respondent has used the Disputed Domain Name to host a website (“Respondent’s Website”) that solicits Complainant’s employees to join other companies, colludes to steal Complainant’s trade secrets, and defames and disparages Complainant and its officers.
Respondent is currently a principal of a company named Great Days, LLC, a company which offers special event management services which currently competes directly with the services offered by Complainant.
Respondent is a party to a non-competition agreement in favor of Complainant. By registering the Disputed Domain Name and operating Respondent’s Website, Respondent is in breach of this non-competition agreement. Complainant has sued Respondent for breach of this non-competition agreement, among other things.
Respondent has attempted to falsify her ownership of the Disputed Domain Name, collude with the registrar of the Disputed Domain Name to falsely certify a non-existent respondent in the present action, and appear anonymously in the below noted bankruptcy court proceeding.
Complainant is currently a debtor-in-possession in a case pending in the U.S. Bankruptcy Court for the District of Arizona.
The Disputed Domain Name is nearly identical and confusingly similar to the noted trademarks. The Disputed Domain Name incorporates the dominant element of these trademarks, which dominant element is the word “Gorilla.” The Disputed Domain Name merely adds the generic word “save,” thus giving the Internet user the impression that the Disputed Domain Name and Respondent’s Website are related to an attempt to “save” the Complainant from going out of business.
Respondent has no rights or legitimate interests in the Disputed Domain Name. Firstly, Respondent transferred the noted trademarks to Complainant before Respondent Registered the Disputed Domain Name. Secondly, Complainant has not granted Respondent any license, permission, or authorization by which Respondent could own or use any domain name registrations which are confusingly similar to the noted trademarks. Thirdly, Respondent has not been known by the noted trademarks, nor has Respondent developed any rights in the noted trademarks or any similar trademarks.
Respondent registered and is using the Disputed Domain Name in bad faith. Respondent and Complainant are competitors. Respondent purpose in operating Respondent’s Website is to tarnish the noted trademarks, harass Complainant’s employees, disparage and harass key employees, incite illegal action against Complaint, incite employees to violate their non-competition agreements with Complainant, incite collusion among employees to steal and abuse Complaint’s trade secrets, and incite Complainant’s employees to sell Complaint’s equipment to Respondent’s husband in order to compete with Complainant. Further, Respondent has used the Disputed Domain Name to disrupt Complainant business in order to gain leverage in the on-going litigation with Complainant. Further, Respondent registered the Disputed Domain Name as retaliation against Complainant. Respondent registered the Disputed Domain Name on November 25, 2008, which is the same day that Complainant notified Respondent that Complainant was going to enforce its non-competition agreement. Further, Respondent’s effort to falsify the WHOIS record for the Disputed Domain Name is evidence of bad faith. Further, when viewing the totality of Respondent’s bad faith, Respondent’s actual knowledge of Complainant’s marks and the suspicious timing of Respondent’s registration of the Disputed Domain Name demonstrate a particularly high level of bad faith, especially in light of Respondent’s use of the Dispute Domain Name to injure Complainant in breach of Respondent’s duties to Complaint.
In 1987 Respondent and her husband founded a business that eventually grew into what was commonly known as the “Gorilla Companies,” or simply “Gorilla.” Initially, the business provided various types of event management and support, and it eventually grew to be a large special-event management company.
In June 2007 Respondent and her husband sold the company to Complainant by way of an asset purchase agreement. Contemporaneously with the sale, Respondent’s husband agreed to remain President and CEO pursuant to an employment contract. Additionally Respondent’s husband entered into a non-competition agreement with Complainant. Respondent was not a party to either agreement.
After the sale of the company to the Complainant, many of the employees who remained became unhappy with the new management. Some of these employees repeatedly contacted Respondent’s husband after hours. This became a problem, and to address this problem, Respondent registered the Disputed Domain Name and created Respondent’s Website. Respondent intended this website to be a place where current and former employees could go to safely and anonymously share their thoughts and feelings about the company, the new management, the old management, and anything else.
In December 2008, Complainant filed suit in
Complainant’s purpose for filing the present UDRP action was to learn the identity of the person who registered the Disputed Domain Name and created the associated website, as Complainant could not discover this information through other means.
Respondent has legitimate rights in the Disputed Domain Name. The associated website is a non-commercial site devoted to allowing people to express their views and opinions about Complaint, its management, and even the prior management, as the First Amendment expressly permits them to do. Indeed, despite Complainant’s claims that Respondent is attempting to “disrupt” its business and “obtain an advantage in litigation,” Respondent’s Website has no purpose other than to facilitate free speech.
Respondent and Complainant do not compete as alleged by Complainant. Respondent owns a company by the name of Great Days L.L.C., which engages in consulting in the field of event management, which services are permitted. Complainant, on the other hand, provides different services, such as:
1. owing and renting large commercial generators - Respondent does not do this;
2. owning a small fleet of fuel trucks that it uses to sell and deliver fuel - Respondent does not do this;
3. providing theatrical lighting and sound, tables and chairs, buses and motor coaches, golf cars, “port-a-johns,” mobile restroom trailers, light towers, bleachers, tents, and canopies, waste services, traffic barricades, and signs, portable heating and air-conditioning, etc. - Respondent owns none of these things, rents none of these things, and has no intention of doing so; and
4. employing a staff of hundreds upon hundreds of employees – Respondent has only one employee other than herself and her husband.
Respondent does have a right to use the name “Gorilla” for purposes of the Policy. Respondent owns a company by the name of Gorilla Holdings, L.L.C and therefore has been known by and/or has used the name “Gorilla.”
Complainant has failed to establish rights of ownership over the mark GORILLA for purposes of the Policy. Complainant’s Vice-President of Business Development and Strategy testified at a deposition that Complainant no longer uses the name “Gorilla” as its branding, but rather, the Complainant has completely re-branded itself under the brand “ProEM.” This change took place in the fourth quarter of 2008 and was undertaken because the brand “Gorilla” was not an appropriate brand with respect to Complainant’s future business prospects (weddings, high-end social and business event, etc.). Further, in its bankruptcy case, Complainant has filed a schedule of assets and this schedule of assets does not include the noted trademarks.
Complainant does not establish that the Disputed Domain Name is confusingly similar to either of the noted trademarks: GORILLA FUEL MOBILE EQUIPMENT FUELING or GORILLA POWER SYSTEMS. Firstly, Complainant’s current website, www.proem.org is entirely dissimilar from Respondent’s Website. Secondly, a Google search for the word “gorilla” produces more than 14 million results including links to sites such as www.gorilla.com, www.helpgorills.com, www.sosgorilla.com, www.gorillarescue.com and www.stopgorilla.com, none of which are owned by or related to either Complainant or Respondent. Complainant does not have a monopoly on the word “gorilla” used in a domain name. Furthermore, the addition of descriptive terms to weak, descriptive trademarks is sufficient to avoid a finding that a domain name is confusingly similar to a complainant’s trademarks. Moreover, in a case of clear nominative fair use such as this – where the site is supposed to be about the Complainant – the question of similar is immaterial unless the use is likely to deceive consumers about the origin of goods or services.
Respondent has not registered or used the Disputed Domain Names in bad faith. Respondent did not register the Disputed Domain Name in retaliation for Complainant giving notice that it was going to enforce the non-compete agreement. Such notice may have been given on November 25, 2008, but Respondent actually registered the Disputed Domain Name on November 24, 2008, before she was aware of such notice. This is demonstrated by the receipt Respondent received from GoDaddy.com for the Disputed Domain Name, as copy of which is attached as an exhibit.
Respondent did not attempt to “falsify” her identity with the registrar of the Disputed Domain Name. Respondent’s true and correct contact information was always on file with Domain by Proxy. Respondent’s motive for using Domain by Proxy was to protect her identity, as is her First Amendment right to do so.
C. Complainant’s Additional Submission
Complainant filed a timely additional submission.
Respondent competes with Complainant, and the purpose for the content on Respondent’s Website is to disrupt Complainants business, which are facts sufficient in themselves to establish bad faith.
Respondent’s efforts to disprove competition between the parties fails. Respondent admits that it is a “complete special event consultant,” which is sufficient to establish competition. The parties are in the same business, and competition exists, even though Respondent does not offer the exact items that Complainant offers.
Respondent’s effort to argue that she is not responsible for the content of Respondent’s Website fails. Respondent created Respondent’s Website and, given that Respondent has administrative control over Respondent’s Website, Respondent is consequently responsible for statements appearing there.
Respondent fails to provide proof that it registered the Disputed Domain Name on November 24, 2008 and not November 25, 2008.
Respondent’s argument that it was attempting to “save” Complainant by “increasing employee moral” is not correct. This argument is unbelievable on its face and is itself an admission that it intended to disrupt Complainant’s business.
Complainant has rights in the noted trademarks. Complainant’s trademark registrations are prima facie evident of ownership rights for purposes of the Policy. This is not changed by Complainant’s list of assets filed in its bankruptcy proceeding.
The Disputed Domain Name is confusingly similar to the noted trademarks. Respondent admits that she chose the Disputed Domain Name to refer to Complainant’s company, and that admitted fact alone is sufficient to prove confusingly similarity to the noted trademarks. Further, Respondent has admitted in her recent deposition that she included Complainant’s company name (“Gorilla Companies”), the name of its parent company (“ProEM”), and at least one member of Complaint’s management in the “meta keywords” of Respondent’s Website. Respondent admittedly did so because Complainant’s company, Gorilla Companies, “had some connection back to savegorilla.com.”
Respondent has no rights or legitimate interest in the Disputed Domain Names. Respondent does not dispute Complainant’s prima facie case that Complainant purchased from Respondent all right, title and interest to the noted trademarks in 2007, and Complainant has never granted or licensed any rights therein to Respondent.
Respondent’s argument that she and her husband own a company by the name of Gorilla Holdings, L.L.C., and therefore have been known by the name “Gorilla” for purposes of the Policy, is not correct. This argument does not provide any legal justification why this would give her rights to register or use the Disputed Domain Name. The fact is that Respondent is not commonly known as “Gorilla Holding,” and the company by this name is not the party noted in the WHOIS record for the Disputed Domain Name. Further, Respondent’s assertion of rights based on her ownership of Gorilla Holdings, LLC is inconsistent with Respondent’s argument that she registered the Dispute Domain Name for the purpose of improving the moral of Complainant’s employees.
Respondent’s argument that she has legitimate interests as a protest site is defeated by the fact that Respondent is a competitor of Complainant, and both Respondent’s Website and the postings contained there are plainly meant to disrupt Complainant’s business. As a competitor, Respondent has a bad faith economic stake in the Disputed Domain Name because it has been used to disrupt Complainants business, to affect Respondent’s competitive business, to affect Respondent’s business disputes with Complainant, and to affect the litigation surrounding those disputes.
D. Respondent’s Additional Submission
Respondent filed a timely additional submission.
Complainant’s correct name is “ProEM,” not "Gorilla." Complainant has changed its name from "Gorilla" to “ProEM.” This name change occurred nearly a year ago, in November 2008, when complainant "re-branded" itself as "ProEM.” This was stated by Complainant's Vice-President of Business Development in deposition testimony. Regardless of whether this change in identity has been formalized by a merger or otherwise, Complainant uses the name “ProEM” and only that name; it no longer uses “Gorilla,” and has not done so for nearly a year.
In Complainant's Additional Submission, Complainant points out that Respondent failed to provide a promised exhibit. This exhibit was a receipt from Go Daddy.com that proves Respondent registered the Disputed Domain Name on November 24, 2008, and not November 25, 2008. This failure was inadvertent, and the exhibit is attached to Respondent's additional submission.
Complainants primary assertion is that Respondent is a competitor who has registered a domain name she knew would evoke Complainant, and has used the domain name to disrupt Complainant’s business and gain an advantage in litigation. Complainant has supplied no evidence to support these allegations.
Respondent is not a "competitor." Complainants only support for its allegation is a single page print out from the website belonging to Great Days, LLC. This printout explains that this company offers "complete special event" consulting services. Since ProEM apparently believes it is also in the consulting business (offering no evidence for this), it argues this single page conclusively establishes that Respondent is a competitor.
This is not correct. Great Days, LLC was formed at the time Respondent and her husband sold their company commonly known as "Gorilla” to Complainant. As expressly permitted by the non-competition agreement signed by Respondent’s husband, he expected to offer consulting services through Great Days, LLC in the field in which he has worked for the past 20 years - venue consulting/event management. Respondent works for Great Days, LLC, but this does not mean that Respondent is competing with Complainant simply because her husband offers consulting services. Respondent has stated in her declaration attached to her Response that she is not competing with Complainant, and Complainant has offered nothing whatsoever to show otherwise. Thus, aside from its inaccurate interpretation of a single website, Complainant has not offered any evidence showing that Respondent has ever engaged in any form of competition with Complainant, whether directly or indirectly.
Respondent has not used the Disputed Domain Name to "disrupt" Complainant’s business. There is simply nothing whatsoever in Complainant’s submissions to support the allegation that Respondent has used the Disputed Domain Name to disrupt Complainant’s business. Unless the Panel is willing to accept the unsupported allegations of Complainant’s counsel as evidence, the Panel cannot find any merit to this claim and it should be rejected for absence of proof. Rather, ample evidence exists showing that no business disruption is even possible in this situation because the entity pursuing this proceeding is no longer conducting any business, nor has it conducted any business during all of 2009. As reflected in the most recent Operating Report filed in the bankruptcy proceeding in September 2009 by Gorilla Companies, LLC (Complainant's legal name prior to filing this administrative action), Complainant reported a grand total of three dollars in revenue for 2009 year to date.
Competitors can still have rights under Policy Paragraph 4(c)(iii). Reduced to its simplest terms, Complainant's argument can be restated as this syllogism:
Major premise: under the policy, competitors can never have rights in a domain name which include the mark of another competitor;
Minor premise: Respondent is Complainant's competitor;
Therefore: Respondent cannot have any rights in the Disputed Domain Name.
As explained above, and as a factual matter, Respondent is not in competition with Complainant, and as such the syllogism fails. Further, Complainant's major premise (that competitors are automatically disqualified from having rights in a disputed domain name under policy paragraph 4(c)(iii)) is simply incorrect. Indeed, Complainant offers no authority to support its argument that "[l]egitimate interests [under policy paragraph 4(c)(iii)]… simply cannot co-exist where bad faith intent of the competitor is evident." Rather, a competitor may or may not be able to successfully claim rights in domain name depending whether the evidence shows that it is using the disputed domain name with an intent for commercial gain by misleadingly diverting customers.
Complainant does not argue that Respondent is profiting or even attempting to profit by way of the Disputed Domain Name, nor does Complainant suggest that Respondent is trying to use the Disputed Domain Name to divert customers to Great Days, LLC.
Those arguments cannot be made because there is simply no mention of Great Days, LLC on Respondent's Website, thus no viewer could be diverted to Respondent’s benefit because diversion is not the purpose of the site, speech, commentary and criticism are.
Respondent has legitimate rights under Policy Paragraph 4(c)(iii). Under the Policy and as an initial matter, the Panel need not consider any of Respondent's submissions unless it first finds that Complainant’s complaint sets forth a prima facie showing that Respondent lacks rights in Respondent's Website, and Complainant fails in its burden. Complainant's complaint contains a mere three paragraphs (two of which are a single conclusionary sentence) on the issue of Respondent’s rights in the Disputed Domain Name. The only argument presented in the complaint against the validity of Respondent's rights was the non-controversial fact that Complainant had not granted Respondent a license to use the word “gorilla.” This fact standing alone is patently insufficient to support a finding that Respondent lacks legitimate rights under Policy Paragraph 4(c)(iii).
Because Complainant has failed to meet its burden on this mandatory element, the Panel’s job is over.
While Complainant rushes to complain that Respondent has used the Disputed Domain Name to foster negative attacks solely on Complainant, it conveniently fails to note that many of the comments appearing on Respondent’s Website are also critical of Respondent's husband.
This matter is not a cybersquatting case; it is a simple business dispute, and for this reason it falls outside the scope of the UDRP. Thus, the limited role of the Policy is not implicated under these facts. As such, respondent respectfully request that the Panel deny relief and dismiss Complainant's complaint.
Complainant has rights in two
In 2007, Complainant purchased all rights, title and interest in the above noted trademarks from 13 Holdings, Inc., along with substantially all other assets of said company.
Respondent registered the Disputed Domain Name.
Respondent’s Website contains content which is critical of Complainant and certain members of Complainant's Management, and Respondent’s Website does not contain content which is overtly commercial in nature.
The Disputed Domain Name is not identical or confusingly similar to Complainant’s trademarks.
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.
Respondent requests that the complaint be dismissed because the dispute between the parties is essentially a business dispute and not a cybersquatting case. This Panel respectfully declines this invitation.
A panel has the discretion to dismiss an administrative action under the Policy when the ownership of a disputed domain name is at issue in a concurrent litigation and/or when the panel is called upon to make decisions that are best left to a court, among other reasons. See Western Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008)(deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative a proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Love v. Barnet, FA 944826 (Nat. Arb. Forum May 14, 2007)(“When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.”); see also AmeriPlan Corp. v. Gilvert FA 105737 (Nat. Arb. Forum Apr. 22, 2002)(Regarding simultaneous court proceedings and UDRP disputes, Policy § 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
In the present action, two litigations are pending. Firstly, Complainant has sued Respondent in
The bankruptcy court case does not directly involve ownership of the Disputed Domain Name, and the bankruptcy judge has specifically allowed Complainant to pursue this administrative action.
With respect to the
Further, even though the parties differ markedly in their respective presentations of the facts, the Panel is nevertheless able to reach to a decision pursuant to the Policy.
Identical or Confusingly Similarity
Pursuant to Policy Paragraph 4(a)(i), a complainant must have rights in a trademark, and the Disputed Domain Names must be either identical or confusingly similar thereto
With respect to this first issue, Complainant argues that it does have trademark rights for purposes of policy paragraph 4(a)(i) because it owns two federal registrations for the marks GORILLA FULE MOBILE EQUIPMENT FULING and GORILLA POWER SYSTEMS. Ordinarily this is sufficient. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007)(“as the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy 4(a)(i).”)
However, Respondent argues that Complainant does not have rights in a trademark for purposes of the Policy because Complainant’s Vice President of Business Affairs admitted in a recent deposition that Complainant "re-branded" itself approximately one year ago, in November 2008. The Complainant's new brand is “ProEM,” and Complainant has stopped using the brand “Gorilla.”
This Panel finds that Complainant does have rights to a trademark for purposes of Policy Paragraph 4(a)(i) despite its abandonment of the “Gorilla” brand because the Policy is not keyed to "brands," but to "trademarks." Complainant may have made a marketing decision to no longer use the name “Gorilla” as its common company name, but that does not change the fact that it owns the above noted trademarks. It might be different if Complainant had abandoned these trademarks as a matter of trademark law, but the facts presented do not establish this.
In determining whether a disputed domain name
is identical or similar to a complainant’s trademark trivial distinctions are
ignored, such as a single letter, a space, a hyphen, and the like, and in all
cases top level domain identifiers, gTLDs, such as “.com,” “.biz,” etc. See Jerry
Damson, Inc. v.
In the present action, and after accounting for the trivial distinctions, the Disputed Domain Name is clearly not identical to either of Complainant's trademarks. The Disputed Domain Name adds the word “save” to the word “gorilla,” which is the dominant feature of both of Complainant’s trademarks (and therefore for purposes of the Policy, the Disputed Domain Names can be said to contain Complainant’s Trademark).
In deciding whether the addition of nontrivial content to a complainant’s trademark creates a meaningful distinction for purposes of the Policy, this Panel believes that the better approach is to examine whether, for the average Internet user, the additional content strongly leads back to the complainant and its trademark, and if so, then the additional content does not create a sufficient distinction. See Enterprise Rent-a-Car Company v. Richard Lanoszka a/k/a Silent Register, FA 1242244 (Nat. Arb. Forum February 25, 2009)(In the view of this Panel, the difference between these two groups of administrative actions lies in whether the addition of a word and its associated concept strongly leads an average Internet user back to a complainant and the complaint’s trademark…”). It is to be noted that in such an analysis the strength of the complainant's trademark and the notoriety of the mark are both relevant.
In the present action, the Disputed Domain
Name is "savegorilla.com."
Complainant's trademark for purposes of this analysis is GORILLA, and
Complainant's business is professional event management in
This Panel's is not persuaded that the word
“save” strongly leads back toward Complainant and its trademark. Rather, the addition of this word
conceptually leads toward the idea of the plight of majestic animals in Africa,
which is necessarily away from a particular professional event management
As such, the Disputed Domain Name is neither identical to nor confusingly similar to the Complainant trademark, and as such Complainant has not established the first element of the policy.
Rights or Legitimate Interests
Once a panel has decided that one element of
the policy has not been established, it is not necessary for the panel to
analyze the other two elements. See Tanner Gould d/b/a Rhythm
Motor Sport (RMS
For purposes of Policy Paragraph 4(a)(ii) a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name, which burden is light. If it does so, then the burden shifts to the respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the present action, Complainant demonstrates that Respondent is not commonly known by the Disputed Domain Name (Respondent’s name is J Corwin, whether or not it currently owns a company by the name of Gorilla Holdings., LLC) and that Complainant did not give permission to Respondent to use its GORILLA trademark. Further, it is clear from the record that Respondent is not using the Disputed Domain Name for the purpose of offering goods or services, whether bona fide or otherwise. As such, Complainant has maintained its burden, and the burden consequently shifts to Respondent.
Respondent argues that Respondent is exercising her First Amendment rights in using the Disputed Domain Name and operating Respondent's Website, and this invokes Policy Paragraph 4(c)(iii), which provides that a respondent has a legitimate interest in a domain name if the respondent is making a legitimate noncommercial or fair use thereof, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to Policy Paragraph 4(c)(iii).
In the context involving a disputed domain name that is identical or confusingly similar to a complainant's trademark (which is not the case in this present action) and that directs to a website containing content critical of the complainant, different panels have taken different reasonable approaches.
Some panels have taken the approach that free speech cannot be used as a defense against the use of a confusingly similar mark as a domain name. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defense against the use of a confusingly similar mark as a domain name.”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the 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).
Some panels have taken something of the opposite view, that free speech is extremely important and for this reason the use of a trademark within a domain name for the purpose of making critical comments about the trademark owner is a minor imposition upon the trademark owner’s trademark rights and ought to be allowed, provided that the Website to which the involved disputed domain name directs does not continue the confusion and, better still, contains disclaimers that dispel any potential confusion. See, e.g., 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); see also Smith v. DNS Research, Inc., FA 220007 (Nat. Arb. Forum Feb. 21, 2004) (finding that the respondent had a right or legitimate interest in the <annanicolesmith.com> domain name “as a matter of First Amendment free speech rights and existing law” because it was used as a fan club website); see also Shell Int’l Petroleum Co. Ltd. v. Donovan, D2005-0538 (WIPO Aug. 8, 2005) (“The use of a domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to use his free speech rights and express his opinion in this way, subject to other laws of course (copyright, libel, etc.).”); see also Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002). See Britannia Bldg. Soc'y v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001)(the use of a disclaimer and provision of a link to the complainant’s website was found to legitimize the free speech usage).
Some panels have taken the view that can fairly be described as a synthesis of these noted other two approaches to the effect that the use of a trademark within a domain name can be permissible if under the totality of the circumstances its is reasonably clear to an Internet user that the domain name is not associated with the trademark owner, or in the alternative, the respondent can show why no reasonable alternative exists. See Trodos Bank NV V. Ashley Dobbs, WIPO D2003-0776 (Nov. 17, 2004) (“The Panel is conscious that among panelists there are different lines of thought on this topic…In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Doman Name enables the Respondent to transmit his view more effectively is neither here not here. Depriving the Respondent of the ability to deceive internet uses by his use of the Domain Name does not in any away deprive him of his right to free speech. He could readily use a Doman Name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.” (emphasis added); see also Howard Jarvis Taxpayers Association v Paul McCauley, WIPO D2004-0014 (April 22, 2004). (“Where the degree of initial confusion is at the lower end of the spectrum, because by way of example only, the modifier element imports a negative connotation such that people would be much less likely to assume that there is some connection between the Respondent’s domain name and the Complainant’s trade mark then it would seem to be an unreasonable extension of the trade mark owner’s rights under the Policy to automatically find that the Respondent does not have legitimate rights in the domain name under paragraph 4(c)(iii). Where on the other Hand the modifier is purely neutral and subject to the particular factual circumstance is likely to have no effect in reduction the degree of initial confusion, then it would seem appropriate to find that the Respondent does not have legitimate rights in the domain name for the purpose of paragraph 4(c)(iii)”; see also Palm Wonderful LLC v. Tara Redavid, NAF 0846577 (Jan. 8, 2006)(“In assessing legitimacy, the Panel believes that where a respondent alleges that its domain name, which includes the mark or name of an entity, is being used to support a complaint site the primary purpose of which is to serve as a vehicle for critical comment about that entity, then it is eminently reasonable to shift the burden of proof to that respondent to show why no reasonable alternatives exist to use of the particular domain name. If, in any dispute, a sufficient factual showing is made that no such alternatives exist, then under the unique facts of that dispute, a panel may conclude that the use there is legitimate. Alternatively, if the respondent makes no such showing, then a panel may find that its use lacks legitimacy, possibly evincing bad faith.”)
This Panel adopts the approach of this last group of prior actions because, in his view, they reconcile the tensions between the other two groups of actions and thereby more appropriately balance the involved rights and interests of Complainant, Respondent and Internet users.
In the present action, this Panel believes that even presuming that the Disputed Domain Name refers to Complainant and the expression "save gorilla" is a reference to the need to save Complainant, as a practical matter Respondent’s Website is unlikely to be perceived by the average Internet users as originating with Complainant (the problem of initial interest confusion). Having said this, it is true that this is not impossible, in that Complainant is in financial difficulty, but as a practical matter companies do not ordinarily make public pronouncement that they need saving.
Policy paragraph 4(c)(iii) does contain two exceptions, firstly that a respondent's intention in making comments critical of a complainant may not be for purposes of “commercial gain to misleadingly divert consumers.” Secondly, a respondent cannot intend to tarnish the trademark or service mark at issue. When either of these intentions is found , the respondent cannot assert the safe harbor protection of Policy Paragraph 4(c)(iii). See PFIP, LLC v. Vendetta Marketing, NAF 861594 (Jan. 18, 2007)(holding that a lawyer who operated a protest cite against a company was seeking a commercial advantage because the involved website included links to the website of the respondent’s law offices, and therefore the respondent did not have a legitimate interest in the domain name <boycottplanetfitness.com>).
Complainant argues that Respondent does
intend that the Disputed Domain Name and Respondent Website garner for it a
commercial advantage by inciting Complainant's employees to do certain improper
things with respect to Complainant and in attempting to gain an advantage in
Respondent argues that the parties are not competitors, and as such no commercial advantage can possibly flow to Respondent as a result of any comments contained on Respondent’s Website. With respect to gaining advantage in the litigation, Respondent argues that this is not at all likely no matter what might be said on Respondent’s Website. With respect to tarnishing Complainant's trademarks, Respondent argues that the policy refers to tarnishing a trademark in a technical trademark sense, as opposed to tarnishing Complainant.
This Panel is not persuaded that that Respondent's motivation is to gain a commercial advantage over Complainant. Complainant presents no direct evidence that this is Respondent's intention, understanding that such direct evidence is difficult to obtain in a summary administrative action pursuant to the Policy. Consequently panels must often infer intent by looking to natural consequences of an act, among other things. Applying this technique here, this Panel is not persuaded that a competitive advantage would flow to Respondent from the contents of Respondent's Website, even assuming that the parties are competitors.
The comments contained on Respondent’s Website are in the nature of garden-variety employee grousing. They are sentiments found just below the surface within most businesses and organizations. Revealing such sentiments to the world is in the nature of a nonevent. As such, a customer or potential customer of Complainant who reads these comments is not likely to be overly concerned, except perhaps with respect to the morale of Complainant's employees. This might cause inquiries, but little else, and it is not likely to cause customers or potential customers to abandon the services of Complainant and seek the services of Respondent.
With respect to gaining an advantage in litigation, again there is little if any harm likely to be caused by the comments contained on Respondent’s Website, and as such little if any potential leverage to be achieved.
With respect to tarnishing the trademark or service mark at issue, it is true that disparaging comments can tarnish the target of the comments, but the comments on Respondent’s Website are directed to Complainant and certain members of Complainant's management and not either the trademarks at issue or Complainant’s goods or services. If it were true that disparaging comments directed to a complainant were always sufficient to trigger the exception of this Policy Paragraph 4(c)(iii), then this exception would essentially swallow the rule, which cannot be correct.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed, Panelist
Dated: November 25, 2009
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