The Situs Companies LLC v. Paul Cheek
Claim Number: FA1203001436733
Complainant is The Situs Companies LLC (“Complainant”), represented by J. Elliot Alfred of Craft Chu PLLC, Texas, USA. Respondent is Paul Cheek (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <situsco.com>, 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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2012; the National Arbitration Forum received payment on March 27, 2012.
On March 30, 2012, GoDaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <situsco.com> 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 March 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@situsco.com. Also on March 30, 2012, 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 April 20, 2012.
Additional Submission was received on March 30, 2012.
On April 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Firstly, Complainant contended that the disputed domain name <situsco.com> is highly confusing and is identical or similar to the trademarks in which it has rights. The litigious domain name incorporates Complainant’s trademark in its entirety. The mere adjunction of the generic word “co” is in itself not sufficient to circumvent the finding of similarity. Moreover, according to a well grounded case law, the adjunction of the extension “.com” does not bear any significance in the finding of similarity.
Secondly, Complainant further added that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant never gave its endorsement through a license or any other means to the Respondent in order to register the litigious domain name. Furthermore, Complainant quoted several decisions issued by the Panel of the National Arbitration Forum and of the World Intellectual Property Office which highlighting that freedom of speech does not allow a third party to register a domain name which reproduces the trademark of the trademark owner without its express consent.
Lastly, Complainant asserted that Respondent registered the disputed domain name <situsco.com> in bad faith. Respondent cannot but have the Complainant in mind when he registered the disputed domain name as the content of the website betoken it. The website is so well-documented on the defendants who are the subject of another lawsuit that he cannot pretend he was ignoring Complainant. The presence of a disclaimer, which happens to be ambiguous, is not sufficient to cure the finding of bad faith. A disclaimer is likely to be eluded by Internet users. In addition, given the importance of the sentence “The Situs Company” which is the headline of the website, the sentence will catch Internet users’ attention at first sight, diminishing de facto the importance given to the disclaimer. Respondent did not meet the criterions in order to qualify as a legitimate “gripe site” according to the coined expression. He has not added any indicative terminology which can imply that he casts criticisms directed towards Complainant.
B. Respondent
As preliminary point, Respondent dwells on the meaning of the word “situs” which can either be an English word as well as a Latin word. Moreover, Respondent adds that there cannot be any risk of confusion insofar as ten companies have the sign “situs” as a company name and provide activities in the very same sector, that is to say real estate. Respondent gave some examples of such companies for instance Situs Appraisal Group, Situs Inc., and Situs Properties. According to Respondent’s words, the sign “situs” is not a well-known trademark whatsoever and Complainant has not a monopoly on such a sign which is incidentally not distinctive. Respondent underlined that Complainant filed for a trademark registration just before filing the present Complaint, which betrays that Complainant has no rights on such a sign. The aforementioned trademark is weak and is diluted by the existence of trademarks bearing on the very same sign for the same kind of activities. Respondent alleged that the disputed domain name is not identical to Complainant’s trademark. Respondent argued that Complainant cannot quote decisions which imply big fish companies given the stature of its Company which is not well-known on a global scale. Moreover, Complainant cannot rely on a registered trademark but on a mere application which was filed before the Complaint was filed well after the registration of the disputed domain name. In addition, no e-mail or correspondence of any kind has ever been addressed to prospects or to Complainant’s clients.
On the other hand, Respondent highlighted that he is making a fair use as well as a nominative fair use of the disputed domain name. Respondent quoted WIPO Overview of the WIPO Panel views on Selected UDRP Questions Second Edition and several WIPO decisions which support its view. Respondent asserts that the <situsco.com> domain name is run to be a criticism website offering information about a pending lawsuit and its connection to Complainant.
Lastly, Respondent does not use or register the disputed domain name in order to derive a commercial gain. Actually, the administration of the disputed domain name cost him 10,000.00 $. Respondent stated that he never proposed to sell the litigious domain name, he never engaged in a pattern of registering domain names to prevent third parties to do so. Respondent said that he is not a competitor of Complainant. Respondent further added that the presence of a disclaimer is sufficient to circumvent any risk of confusion between Complainant’s trademark and the disputed domain name.
C. Additional Submission
At first, Respondent’s name was hidden by a privacy shield and was Domain By Proxy, LLC. As a result, at the time the Complaint was filed the true identity of Respondent was not known. Complainant contacted Domains By Proxy, LLC through its online form in order to unveil the identity of Respondent but this step taken through the intermediary of its counsel was unsuccessful. Later on, contact details of Respondent were communicated to Complainant which submitted an additional submission on March 30, 2012. The Panel has duly read the additional submission and acknowledged that Respondent is Paul Cheek and not the privacy service of GoDaddy.com, LLC namely Domain By Proxy, LLC. No additional information was added in the additional submission and the annexes remained unchanged too.
Complainant is a company specialized in real estate which runs several offices around the worldwide in North America, Europe, and Asia. Complainant’s core activities embrace all property types ranging from shopping mall to land and multifamily housing. Thanks to its genuine know-how in real estate, Situs has been approved by Moddy’s and is seen as a trustworthy company in the real estate field.
Certain Complainant’s officials have been summoned by the Supreme Court of the State of New York on July 28, 2011 for a fraud case among other grievances.
Complainant is notably the owner of the following trademark registrations:
- US Trademark SITUS filed on March 29, 2006 and registered with USPTO as registration number 3,202,017 on January 23, 2007.
- US Trademark SITUS filed on April 23, 2009 and registered with USPTO as registration number 4,061,813 on November 29, 2011.
- US Trademark SITUS & Design filed on April 23, 2009 and was registered with USPTO as registration number 4,061,814 on November 29, 2011.
- US Trademark SITUS & Design filed on April 23, 2009 and registered with USPTO as registration number 4,061,815 on November 29, 2011.
Complainant filed for the registration of THE SITUS COMPANIES with USPTO on March 21, 2012 and the trademark was given the serial number 85,576,065 and the application is still pending before the USPTO.
Lastly, Complainant happens to be the owner of common law rights in the service mark “THE SITUS COMPANIES” which first use dates back 1986.
It must be underlined that Respondent did reply to Complainant’s contentions but did not enclose any documents showing its allegations. Respondent is a US individual whose name is Paul Cheek. Panel carried on a cursive research and Respondent has not been a party to any other UDRP decisions neither before the World Intellectual Property Organization nor before the National Arbitration Forum. Respondent’s activities were not communicated but Respondent does not seem to have any business relationship with Complainant. Respondent states that he is not a party to the lawsuit involving Complainant’s officials.
The disputed domain name <situsco.com> was registered on September 14, 2010 via GoDaddy.com, LLC.
The website is headed “The Situs Companies” and the first line of the content featured on this website is a disclaimer which reads “this website is not affiliated with Situs Companies, Chrissy Wojcik or any of her related companies”. A summon issued by the New York Supreme Court on July 28, 2011 can be downloaded freely on the website. Many hyperlinks are available which give in depth information on each and every defendants. The information provided are quite critical to say the least about defendants of the lawsuit.
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.
Complainant contends that it has established its rights on the SITUS sign by registering it with the United States Patent and Trademark Office (“USPTO”) :
- The SITUS trademark No. 3, 202, 194 registered on January 23, 2007;
- The SITUS trademark No. 4, 061, 813 registered on November 29, 2011;
- The SITUS trademark No. 4, 061, 814 registered on November 29, 2011;
- The SITUS trademark No. 4, 061, 815 registered on November 29, 2011.
As far as the sign “THE SITUS COMPANIES” is concerned, Complainant asserts that it has common law rights on it by way of continuous use since 1986.
Complainant also happens to be the owner of the following domain names: <situs.com> , registered July 27, 1995 and <thesituscompanies.com>, registered October 23, 2006.
Complainant asserts that it uses its SITUS mark in connection with real estate goods and services. Complainant has provided the Panel with evidence of its registrations in the USPTO for the SITUS mark (among others Reg. No. 3,202,017 registered January 23, 2007). Panels have previously held that the registration of a mark with a national trademark agency is evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the SITUS mark pursuant to Policy ¶ 4(a)(i).
Furthermore, Complainant contends that Respondent reproduces Complainant trademark in its entirety with the sole adjunction of the generic term “co,” and adds the generic top-level domain (“gTLD”) “.com” in order to create the disputed domain name. The Panel finds that the adjunction of the generic term “co” can either be an abbreviation of the words company or corporation and is not sufficient to alleviate the risk of confusion between the disputed domain name and Complainant’s trademarks.
Moreover, the addition of a gTLD suffix, being a technical necessity, is irrelevant to the Panel’s analysis under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
It occurs to the Panel that Respondent’s changes were insubstantial. As a result the <situsco.com> domain name is confusingly similar to the SITUS mark pursuant to Policy ¶ 4(a)(i).
The interest of the present case lies in the assessment of the legitimate interest of a party which registered a domain name incorporating a trademark without the authorization of the trademark owner in order to express criticisms. The question is whether freedom of speech which is carved in the First Amendment allows an individual to criticize a trademark through a domain name which reproduces a trademark in its entirety.
We cannot but say that the Panel is not empowered to assess the trustworthiness of the information featured on Respondent website, object of a lawsuit which is alien to the present case, where only judges has jurisdiction to state on the merits of the file. In the present case, the Panel tried to find a balance between the rights of the trademark owner and free speech.
The Panel is not empowered to draw the line between Complainant and its officials’ activities. To some extent, some high ranked individuals within a Company are so linked with the Company that they could be considered as being the Company as they speak on its behalf. The subtlety of this case is that the Complainant as a Company is not party to the lawsuit but some of its officials are.
The following elements were considered of high relevance in order to flag the legitimate interest on the part of Respondent:
-the existence of a disclaimer at the forefront of the website to which the domain name redirects, in the same font and same size as the content featured on the website (title excluded);
-the availability of an official decision which is pending before the New York Court which is undoubtedly an unbiased document;
-Respondent does not derive economical profit from the use of the website;
-Respondent never proposed the disputed domain name for sale;
-Respondent did not circumvent Complainant to register domain names which reflect its trademark;
In the light of the evidence adduced to the Panel by Complainant, the Panel cannot but state that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that it has made a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent asserts that it uses the <situsco.com> domain name to provide Internet users information regarding the lawsuit involving Complainant’s employee, Chrissy Wojcik, and Complainant’s willingness to continue her employment despite being presented with evidence of fraudulent behavior. Although Complainant asserts that Ms. Wojcik is no longer an employee, Respondent contends that it called on April 18, 2012 asking for Ms. Wojcik and was forwarded to her office voicemail rather than being told that she is no longer an employee of Complainant’s. Thus, Respondent claims that Wojcik is still an employee with ties to Complainant.
Respondent argues that its <situsco.com> domain name is completely noncommercial and brought miscellaneous proofs to support its contention. Panels have held relentlessly that websites dedicated to providing information without commercial gain often confer rights and legitimate interests in the domain name registrant. See Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <stmoritz.com> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes); see also Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose). Therefore, the Panel finds that Respondent has made either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use and thus that Respondent has rights or legitimate interests in the <situsco.com> domain name.
Respondent website falls undoubtedly within the category of “gripe website”. Respondent quoted miscellaneous decisions which were of high relevance.
The fact that the disputed domain name consists only of Complainant’s trademark with the mere adjunction of a generic term which is not derogative (and does not imply criticism), is not a hindrance in the acknowledgement of Respondent’s legitimate interest (See WIPO Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO Apr. 22, 2004)). Some Panels have diverging opinions on the registration of domain names reproducing a trademark plus a gTLD suffix for websites which broadcast criticisms on Complainant. Such a situation is highly detrimental to parties and panelists and endangers legal certainty. The lack of consistency between UDRP decisions must be avoided as far as possible and any bias on the part of panelist must be fought. In the light of the particular facts of this case, the Panel is of the view that Respondent has legitimate interest on the disputed domain name as it derives no economic profit of the registration and use of the litigious domain name. Moreover, the presence of a disclaimer, even before the Complaint was filed, tellingly supports the finding of the existence of a legitimate interest on Respondent’s side.
Through its website <situsco.com>, Respondent gave a deep insight on nearly all of the defendants of another lawsuit. Complainant is not a party in said lawsuit but one of its officials is. The facts of the present case are particularly compelling in the finding of good faith on the part of Respondent. The Panel is not empowered to assess the relevance of the grievances against Complainant’s officials and if they are well-grounded or not. Nonetheless, the pending dispute between Complainant’s officials and third parties should not be overlooked.
As far as the disclaimer is concerned, the presence of the aforementioned disclaimer shows that Respondent was aware at all times of the existence of Complainant’s trademark. It is a common view among UDRP Panels that the presence of a disclaimer is not incompatible per se with a finding of bad faith if other elements of the case are sufficient to retain bad faith. In some circumstances however, the presence of a disclaimer can prove that a Respondent had a legitimate interest in a domain name or registered it in good faith (See WIPO Case No.D2003-0035, Besiktas Jimnastik Kulubru Dernegi v. Mehmet Tolga Avcioglu). The Panel is of the view that the disclaimer in this case proves Respondent’s legitimate interest. The disclaimer is the very first line of the website right after the title, its font is not different from the rest of the website, and its wording is clear and does not imply that there is any link between Complainant and Respondent.
Complainant does not bring the proof that Respondent derives commercial profit from the use of the disputed domain name. The contentions of Complainant lies on mere hypothesis especially when Complainant asserts that Respondent’s use “must be for some ulterior or cleverly shielded commercial motive”. Moreover, Complainant did not bring the proof that Respondent has any link with the pending lawsuit involving Complainant’s officials. In the light of the evidence provided by both Complainant and Respondent it occurs that Respondent does not seem to be a competitor of Complainant. In the same vein, Complainant accuses Respondent of spamming without bringing any proof in order to support its contention.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that Complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel can draw the necessary inferences from the previous finding that Respondent has rights or legitimate interests in the <situsco.com> domain name pursuant to Policy ¶ 4(a)(ii). The Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <situsco.com> domain name in bad faith as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
After an accurate assessment of each and every data provided within the Complaint, it seems that Respondent did not register and use the disputed domain name in order to sell the disputed domain name. Therefore, the Panel deeply thinks that Respondent did not register and is not using the <situsco.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i) by not offering it for sale. See PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the respondent did not register the domain names in bad faith where there is no evidence that the respondent intended to sell the domain names and actually refused several offers from third parties).
The Panel thinks that, in the light of the facts and evidence that were adduced, Respondent did not register and use the disputed domain name in order to prevent Complainant from reflecting its mark in a domain name and has not made a pattern of bad faith registration. Respondent happens to be the owner of other domain names bearing on the name plus family name of the defendants of the pending lawsuit before the New York Supreme Court. Complainant is not circumvented to register other domain names comprising its registered trademarks in order to adduce its real estate services to Internet users. Therefore, Respondent did not register and use the disputed domain name in bad faith under Policy ¶ 4(b)(ii). See Minn. Mining and Mfg. Co. v. Overbey, D2001-0727 (WIPO Oct. 15, 2001) (finding that Policy ¶ 4(b)(ii) was inapplicable because the complainant already had registered and used a domain name containing its mark and thus, “the Panel does not find that [the complainant] has been deprived of its ability to register or use the mark as a domain name.”
The rationale which lies at the heart of the registration made by Respondent of the <situsco.com> domain name was not to be disruptive. Respondent registered said domain name in order to express its view on a pending lawsuit. This view, how biased it could be, will not benefit to Respondent economically. Rather, Respondent is a not a competitor of Complainant, and Complainant’s definition of a competitor is far too inclusive to be applied in the present case. Therefore, Respondent did not register and is not using the <situsco.com> domain name in order to disrupt Complainant’s business conducted under the SITUS mark pursuant to Policy ¶ 4(b)(iii). See Gorstew Ltd. & Unique Vacations v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000) (finding no bad faith under Policy ¶ 4(b)(iii) because the respondent and the complainant are not truly competitors, but in fact are business partners where the respondent is the complainant’s agent and was acting in good faith on behalf of the complainant); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
In the light of the peculiar facts of the present case it occurs that Respondent did not register and is not using the disputed domain name in order to attract, for commercial gain, Internet users to the <situsco.com> domain name in order to take advantage of their mistakes as to the source of the disputed domain name. Respondent does not use the <situsco.com> domain name commercially and thus cannot be found to have acted in bad faith under Policy ¶ 4(b)(iv). Panels have found that a lack of bad faith is evident when a respondent operates a purely noncommercial website. See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith where the respondent operated the fan club website without commercial gain, therefore the requirements of Policy ¶ 4(b)(iv) could not be established); see also Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (As a general proposition, “the same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent” (citing Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d at 535-36)). Therefore, Respondent did not register and is not using the disputed domain name in order to cause confusion as to the source of the <situsco.com> domain name and then to take commercial advantage of Internet users mistakes under Policy ¶ 4(b)(iv) and thus did not act in bad faith.
Panel found that Respondent did not register and is not using the disputed domain name in bad faith. Respondent <situsco.com> domain name is a complaint site. Respondent rightfully registered the domain name according to its free speech rights to provide information regarding a lawsuit that Complainant is related to. The Panel finds that Respondent’s registration and use of the disputed domain name, to operate a complaint website, are not a product of bad faith pursuant to Policy ¶ 4(a)(iii). See 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 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.)”).
In order to demonstrate a lack of bad faith further, Respondent offers to make certain changes to the disputed domain name in order to quell any potential for confusion in the future. Respondent offers to make the following changes, within reason, to Complainant’s desire:
a) Change of font, color, location, and working of the disclaimer;
b) Inclusion of a link to Complainant’s website;
c) Inclusion of a plainly visible response by Complainant to the claims made on the disputed domain name on each page;
d) Any further changes or additions the Panel suggests or reasonable requests by Complainant;
e) Forwarding of all, if any, e-mails received by Respondent which are intended for Complainant, though Respondent has not received any communications intended for Complainant to this point.
Respondent proposed to commit itself to certain steps like inserting a hyperlink towards Complainant’s website, nonetheless the panel has no jurisdiction to request Respondent to take such steps. Parties are notwithstanding free to enter into an amicable settlement at any time.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <situsco.com> domain name REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: May 10, 2012
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