Genzyme Corporation v. Address / Aladdin Dinaali
Claim Number: FA1112001419156
Complainant is Genzyme Corporation (“Complainant”), represented by Lawrence R. Robins of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Massachusetts, USA. Respondent is Address / Aladdin Dinaali (“Respondent”), represented by Aladdin Dinaali, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <genzymegenetics.info>, registered with GoDaddy.com Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2011; the National Arbitration Forum received payment on December 8, 2011.
On December 8, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <genzymegenetics.info> domain name is registered with GoDaddy.com Inc. and that Respondent is the current registrant of the name. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@genzymegenetics.info. Also on December 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 3, 2012.
Complainant’s Additional Submission was received on January 6, 2012 and is deemed compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on January 9, 2012 and is also deemed compliant with Supplemental Rule 7.
On January 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it is one of the world’s leading biotechnology companies dedicated to discovering and developing innovative products and services to improve the lives of people with serious debilitating diseases. It owns the trademark and trade name GENZYME, and its rights in the GENZYME mark and name date back to at least as early as 1981. It uses this mark to promote its products world-wide.
According to the Complainant, the Respondent uses the disputed domain name for a website intended to gain leverage in a real estate dispute with one of the Complainant’s employees and to promote the Respondent’s commercial real estate services. Indeed the Respondent’s website contains various negative statements about the employee in question.
The Complainant states that the disputed domain name is identical and confusingly similar, in the sense of the Policy, to its mark and cites UDRP precedents to support its position.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s registration and use of the disputed domain name for a website intended to gain leverage in a real estate dispute with an employee of the Complainant and to promote the Respondent’s commercial real estate services does not constitute a bona fide offering of goods or a legitimate noncommercial or fair use of the disputed domain name under the UDRP. The Complainant cites UDRP precedents to support its position.
Further, says the Complainant, the Respondent is not and has not been commonly known by the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed name in bad faith, in the sense of the Policy, because he is using a domain name as leverage to obtain a favorable outcome in a real estate dispute with one of the Complainant’s employees. Such use has been recognized as an independent ground for bad faith under the UDRP. The Complainant cites UDRP precedents to support its position.
B. Respondent
The Respondent alleges that it is highly unlikely that anyone who comes across the website at the disputed domain name would be confused into thinking it was associated with the Complainant, and states that the web site contains a disclaimer. The material posted on the web site is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent states that he has a legitimate purpose for using the disputed domain name because he uses it as a tool for freedom of speech. Campaigning for public awareness is completely legitimate and has been done for altruistic purposes. The Respondent has the right to freedom of speech. The Respondent cites UDRP precedents to support his position.
Further, says the Respondent, as he is not a direct competitor of Complainant, it is generally not a violation of trademark law for the Respondent to say disparaging things about the targeted company even if Respondent uses the Complainant’s name or other trademarks in the process. The Respondent cites U.S. cases to support his position. In those cases, web sites containing a mark were used to criticize the company that owned the mark.
According to the Respondent, he has used the disputed domain name in good faith - to campaign for public support against the censorship operations of the Complainant. The Respondent believes that he is acting within the law, while the Complainant, a multi-million dollar corporation is breaking the law. The Respondent has acquired twelve additional sites related to the Complainant’s mark to further expose its frivolous activities.
The Respondent alleges that the Complaint is frivolous and that the Complainant has engaged in Reverse Domain Name Hijacking. The Complainant has submitted information which it knows to be untrue and has refused to withdraw its frivolous accusations and to settle the case. The Respondent has offered to turn the disputed web site over to the Complainant in a friendly manner but the Complainant has refused the offer. The Complainant has demonstrated that it entertains ulterior motives in pursuing this complaint beyond the scope of this domain dispute.
The Respondent states that the web site at the disputed domain name was not created until after the Complainant had interjected itself into a civil action dispute between the Respondent and one of Complainant’s employees so that it could affect the outcome of a trial. He denies having registered the disputed domain name as leverage in a lawsuit against one of the Complainant’s employees but he states that he sent an E-Mail to that employee warning him that the situation could be spilled into his workplace.
C. Additional Submissions
In its Additional Submission, the Complainant alleges that, in his civil lawsuit, the Respondent is seeking payment of $1,050 for his work as a home inspector, among other remedies. The disputed domain name is not the subject of the Respondent’s lawsuit and the Complainant is not a defendant in the lawsuit.
According to the Complainant, nothing in the Response changes the basic facts of this case that entitle the Complainant to the requested relief. In fact, the Respondent’s own admissions are alone sufficient for the Complainant to prevail. In particular the Respondent submitted evidence showing that that he registered and uses the disputed domain name to obtain leverage in a legal dispute with one of the Complainant’s employees.
Further, says the Complainant, after the present Complaint was filed, the Respondent offered to transfer the disputed domain name in exchange for $1,050, an amount calculated by Respondent as $100 per hour for “legal fees” but which is the same amount sought by the Respondent in his lawsuit against the Complainant’s employee. This offer to sell the disputed domain name to the Complainant for the same amount he sought from the Complainant’s employee in an unrelated legal dispute clearly demonstrates that the Respondent registered and uses the disputed domain name as leverage and for commercial gain.
The Complainant states that the Respondent subsequently registered additional domain names comprised of the Complainant’s trademarks with the intention of obtaining commercial gain by selling such domain names to the Complainant. Specifically, the Respondent sent e-mail that stated: “Please beware that there are now thirteen Genzyme related sites now. It costs me time and money to make these sites. Your clients are going to be paying for these sites.”
The Complainant alleges that the Respondent’s claim that he registered and uses the disputed domain name “to exercise his freedom of speech and to provide public awareness of the censorship and oppressive tactics of the Complainant” has no merit. The Respondent’s activities do not constitute a fair use of the Complainant’s marks because the Respondent’s registration and use of the disputed domain name are inherently commercial. The Respondent seeks payment in his lawsuit against the Complainant’s employee, registered the disputed domain name and has used it as leverage for his lawsuit, and has also sought payment from the Complainant. These commercial uses are fatal to the Respondent’s “fair use” defense, and there is no support under the UDRP or U.S. law for the Respondent’s claims. The cases cited by the Respondent must be distinguished from the present case, because in the cited cases an individual had been a customer of the company that the individual was criticizing, and there was no intent to gain commercially from the criticism.
The Complainant states that it has not engaged in Reverse Domain Name Hijacking.
In his Additional Submission, the Respondent makes various negative statements about the Complainant and its counsel, restates that his use of the disputed domain name is protected free speech, and submits the full set of e-mails between himself and the Complainant.
The Complainant has trademark rights for the name GENZYME and it is active in the biotechnology field.
The Respondent initiated a civil lawsuit against one of the Complainant’s employees and subsequently registered the disputed domain name.
The Respondent offered to transfer the disputed domain name for an amount above out-of-pocket costs, the amount being identical to the amount that he demands from the Complainant’s employee.
The web site at the disputed domain name contains negative statements about some of the Complainant’s employees, in particular the defendant in the Respondent’s civil lawsuit. The criticism is related to private actions of the Complainant’s employee, not to actions taken by the employee on behalf of the Complainant.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Complainant owns rights in the GENZYME mark and is active in the biotechnology business. The disputed domain name is confusing similar to its mark because it combines the mark with a descriptive term. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Respondent makes much of the fact that the web site at the disputed domain name contains a disclaimer. But this is not sufficient to prevent a finding of confusing similarity under the Policy. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
According to the Respondent, he registered and is using the disputed domain name in good faith - to campaign for public support against the censorship operations of the Complainant and to expose what he considers to be its illegal or frivolous activities. The Respondent denies having registered the disputed domain name as leverage in a lawsuit against one of the Complainant’s employees.
The Panel cannot accept these assertions. On the basis of the evidence submitted to it, the Panel holds that the Respondent registered the disputed domain name in order to gain leverage in his civil lawsuit against one of the Complainant’s employees; that he offered to transfer the disputed domain name to the Complainant for an amount above out-of-pocket costs, the amount being identical to the amount that he demands from the Complainant’s employee; and that the web site at the disputed domain name contains criticism related to private actions of the Complainant’s employee, not actions taken by the employee on behalf of the Complainant.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2d ed.) [hereinafter WIPO Overview 2.0] available at http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#24, in cases involving only U.S. parties (as in the present case), panelists tend to agree that, irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial. See WIPO Overview 2.0.
As the panel stated in Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000), there is "no reason to require domain name registrants to utilize circumlocutions like <trademarksucks.com> to designate a website for criticism or consumer commentary". Indeed, as the panel stated in Nat’l Alliance for the Mentally Ill Contra Costa v. Fouts, FA 204074 (Nat. Arb. Forum Dec. 6 2003), referring to the legislative history of the Policy, the “goals of the Policy are limited. Domain name registrations are basically first-come-first-served, and the purpose of the Policy is limited to rectifying cases of obvious cyber-squatting”.
In the case Spokane Civic Theatre v. Ryan, FA 1409107 (Nat. Arb. Forum Nov. 1, 2011), it was not disputed that the Respondent was using his web site as a bargaining tool in order to attempt to obtain a settlement (not necessarily monetary) from the Complainant. But that case must be distinguished from the present case because in that case the Respondent was criticizing the Complainant and the Complainant’s actions, which is not the case in the present case.
The sequence of events in the present case seems to be: (1) the Respondent sued one of the Complainant’s employees; (2) the Respondent created his web site; (3) the Respondent offered to transfer his web site in exchange for an amount above out-of-pocket-costs. That sequence is quite different from the sequence in the cited case.
In the present case, the offer to transfer the disputed domain names would appear to be an attempt to leverage the disputed domain name to obtain payment from the Complainant for a lawsuit not involving the Complainant and for actions not involving the Complainant.
Similarly, the cases cited by the Respondent must be distinguished from the present case, because, in the present case, the Respondent is criticizing private actions taken by the Complainant’s employee, not actions taken by the employee on behalf of the Complainant, nor actions taken by the Complainant. For sure the Respondent criticizes the Complainant for not having intervened in his favor in his dispute with the Complainant’s employee, but that dispute was totally unrelated to the Complainant’s business and the Respondent does not explain why the Complainant should have intervened. Nor does he give any details of the Complainant’s alleged intervention in his lawsuit against the Complainant’s employee. Thus there the Panel has no basis for concluding that the Respondent has a fair right to use the Complainant’s mark to criticize one of the Complainant’s employees.
The Panel agrees that the precedents cited by the Complainant are relevant, namely InMed Diagnostic Services v. Harrison, D2006-1230 (WIPO Dec. 11, 2006) (“[R]espondent registered the disputed domain name [<inmeddiagnostics.net>] in the midst of a contract dispute with [c]omplainants and openly threatened to use, and actually used, the disputed domain name to gain leverage in that dispute. As such, while perhaps not falling neatly into one of the four non-exclusive examples of bad faith set out in paragraph 4(b) of the Policy, his conduct constitutes bad faith under a wealth of decisions.”); see also AvCraft Aviation v. Kohlschmidt, D2004-0213 (WIPO June 3, 2004) (holding respondent’s registration of the domain name <avcraftaviation.com> for leverage in a dispute with the complainant constituted bad faith); see also Kinko’s v. eToll, FA 94447 (Nat. Arb. Forum May 27, 2000) (finding bad faith where respondent registered the domain name <kinkosoffice.com> without permission as a form of leverage to extract a business deal that was not sought by complainant).
The Panel holds that the Respondent has satisfied its burden of proof for this element of the Policy.
The Respondent registered and is using the disputed domain name to attract to his web site customers who are looking for the products or services associated with the Complainant. This would not be bad faith use if the web site contained criticism of the Complainant or of its products and service. But such is not the case. The Respondent’s use of the Complainant’s mark creates customer confusion, dilution of the mark, and tarnishment, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law may constitute bad faith use of a domain name. See also the precedents cited above.
As noted above, the web site at the disputed domain name contains a disclaimer. But this is not sufficient to mitigate the Respondent’s bad faith registration and use of the disputed domain name. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
Thus the Panel holds that the Complainant has satisfied its burden of proof for this element of the Policy.
Since the Complaint succeeds, the Panel finds that the Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <genzymegenetics.info> domain name be TRANSFERRED from Respondent to Complainant.
The request for a finding of Reverse Domain Name Hijacking is DENIED.
Richard Hill, Panelist
Dated: January 15, 2012
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