National Arbitration Forum




Domtar Inc. v. Joel Theriault

Claim Number: FA0710001089426



Complainant is Domtar Inc. (“Complainant”), represented by Wendy Riel, of Fraser Milner Casgrain LLP, 99 Bank Street, Suite 1420, Ottawa, ON K1P 1H4.  Respondent is Joel Theriault (“Respondent”), represented by David Fewer of The Canadian Internet Policy and Public Interest Clinic 506-57 Louis Pasteur, Ottawa, ON K1N 6N5.




The disputed domain name is <>, which was registered with Melbourne IT, Ltd. dba Internet Names Worldwide (“Melbourne IT”) on November 27, 2005.



The undersigned, David H Tatham, Dennis A Foster and Clive Elliott certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.



Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 5, 2007; the Forum received a hard copy of the Complaint on October 10, 2007.


On October 9, 2007, Melbourne IT confirmed by e-mail to the Forum that the <> domain name (“the disputed domain name”) was registered with it and that the Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by its 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 October 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of November 5, 2007 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 by e-mail.


A timely Response was received and determined to be complete on November 26, 2007.


A timely Additional Response from Complainant was received and determined to be complete on December 3, 2007.


On December 5, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Messrs David H Tatham, Dennis A Foster and Clive Elliott as Panelists.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

Complainant was originally incorporated, in Canada, as Dominion Tar & Chemical Company, Limited but it changed its name to Domtar, Inc. in 1965. It claims to be Canada’s largest paper company, operating more than 80 paper distribution facilities located across North America and employing 14,000 people. It operates 10 sawmills and 1 wood re-manufacturing facility. Complainant contends that it is internationally renowned for its paper, wood and distribution services throughout North America and the rest of the world under the trademark DOMTAR and the trade name Domtar, Inc. Its sales have exceeded 3,000 million dollars for each of the last 4 years.


Complainant owns and uses the domain name <>. It also owns a number of trademark registrations and applications in Canada, USA and other countries for DOMTAR either alone, as part of a logo, or in conjunction with other wording and/or figurative elements. In particular, the trademark DOMTAR in plain block capital letters was registered with the USPTO under No. 877808, on September 30, 1969, claiming July 19, 1963 as its date of first use, in Class 16 for “Boxboard, corrugated paper medium. Liner board, fibre board. Wrapping paper and coated papers; newsprint; blank or partially printed labels. Paper toweling, paper tape, laminated paper materials, kraft paper, writing paper, printing paper, book paper, bond paper. Ledger and document paper, cover paper, stationery bristols, Bristol board, blotting paper, tag paper, cardboard, paper board, mimeograph paper,  litho and off-set paper, chart and certificate paper, envelope paper, wax and greaseproof paper, moisture resistant paper, and glassline”. Complainant contends that the disputed domain name is identical to all of its trademarks.


Complainant further contends that the disputed domain name re-directs visitors to an active website at <> which contains a host of articles, photographs and video clips regarding forestry and herbicides.


Complainant contends that it has established a pattern of usage of the name DOMTAR which pre-dates Respondent’s registration of the disputed domain name by some 40 years and Respondent should have known of this, given the widespread recognition of Complainant’s trademark in connection with pulp, paper and wood manufacturing.


Complainant cited a number of UDRP Decisions in support of its contentions, firstly, that this is a case of  ‘initial interest confusion’ and, secondly, that Respondent has intentionally deceived the public into believing that the website is endorsed by Complainant and that Respondent has no legitimate rights or interests in the disputed domain name. Complainant asserts that the website is a complaint site and that the disclaimer on the website does not bolster its legitimacy. Furthermore, the right to express one’s views is not tantamount to identifying oneself by another’s name when expressing such views.


Complainant further contends that the disputed domain name has been registered and is being used in bad faith. This occurs when, as here, the domain name comprises the trademark of another entity and is registered with a view to divert web traffic or to cause damage and disruption to the owner of the trademark and to tarnish that owner’s reputation. As proof thereof Complainant points out that the website to which visitors to the disputed domain name are re-directed contains links to correspondence between Respondent and government officials which criticize certain alleged forest management practices of Complainant.


Finally, Complainant contends that Respondent has unnecessarily used Complainant’s trademark DOMTAR in the disputed domain name in order to operate its website.


B. Respondent

Identical or Confusingly similar

In a lengthy Response, replete with references to UDRP Decisions, Respondent firstly takes issue with Complainant’s claims regarding the distinctiveness of its trademark DOMTAR, and alleges that Complainant has in no way substantiated the claim that the mark is a strong one.


Respondent contends that its website is a non-commercial space that provides a wealth of factually-based information and a forum for public commentary.  It acts as a meeting place, where informed citizens with environmental interests can participate in the dialogue prompted by the posting of government reports, recent news stories, public statements, scholarly articles and other bits of interesting information regarding the use of herbicides in Northern Ontario.  The site is not a gripe site:  it is non-inflammatory and in no way does it single out the Complainant in its discussions.


Furthermore, it advances critical thinking and debate in the environmental context, functions which are at the core of free speech values, and so are protected by the First Amendment (in the US) and s. 2(b) of the Charter of Rights and Freedoms (in Canada).  As such, the Respondent, a dual citizen, requests heightened scrutiny of the Complainant’s attempt to transfer the Domain Name. Respondent contends that there is a distinction between UDRP decisions involving US parties where a more robust view of “free speech” rights could be taken, and those where the parties were citizens of elsewhere.


Respondent denies that the disputed domain name is confusingly similar to the Complainant’s DOMTAR trade-mark and alleges that there is no evidence of actual confusion. The disputed domain name was registered over 2 years ago, and Complainant has had ample time to collect such evidence.


There is no likelihood of confusion because no one would be inclined to believe that they would come across the commercial site operated by Complainant by typing the disputed domain name into the browser. In fact, the opposite conclusion is appropriate, because typing it in will bring the visitor to a non-profit site with information about the company that would not be posted on Complainant’s own website.


Respondent’s site is a non-commercial site, hence the domain name suffix .org.  The .org TLD has traditionally been associated with non-profit organizations, not large corporations, and this is why the Respondent chose the .org TLD. 


Respondent is not using the website for commercial purposes and has not appropriated the .com domain.  Rather, the suffix .org combined with the immediate disclaimer visible when the disputed domain name is accessed from a search engine and when it is accessed directly (by typing <> into the browser) both evidence that the Respondent has made efforts to ensure there is no likelihood of confusion.


Respondent argues that the disputed domain name indicates on its face that it is not affiliated with Complainant.


The disputed domain name does not come up in the first pages of results when searching for “domtar” through or


For reasons unknown to the Respondent, the search results for <> have been recently modified by In the weeks, months, and years prior to the filing of the Complaint, any possibility of confusion was dispelled when the search result for <> would indicate the bold text in the center of the middle column on the index page, which read: “Note: This site is not associated with the Domtar corporation….However the most recent search indicates that Google has now changed the text appearing with the search result to “Domtar Inc. - V - Joel Theriault - October 5, 2007 Commencement re The Respondent’s website is a complaint site that includes a video and ….” Respondent contends that there is absolutely no possibility that someone might come across <> in the Google search engine and believe it was associated with Complainant, because the disputed domain name does not appear.  It is simply as though the domain name does not exist in Google’s search engine.  The cause of this change in the last two weeks is unknown.


The large font disclaimer referred to above that is visible in the center of the index page of the website to which the disputed domain name re-directs reads as follows: “NOTE:  This site is not associated with the Domtar corporation.  As this is the first text in the body of the webpage, any possibility of confusion which may exist upon typing in the disputed domain name when looking for the commercial entity called Domtar Inc. is immediately dispelled.


Nowhere on the Respondent’s site has the Complainant’s logo ever been posted, nor has there ever been any use of e-mail with the extension.


Respondent concludes its arguments on the absence of any similarity or confusion by

highlighting anomalies in some of the Decisions relied upon by Complainant.


Rights or Legitimate Interest

Respondent contends that, before any notice to the Respondent of the dispute, its use of the disputed domain name was, and is, in connection with a bona fide offering of goods or services. Respondent is using it as a link to a bona fide public service – one that facilitates public debate and discussion, which is critical in a democratic society.


Respondent whole-heartedly agrees with Complainant’s statement that the website “comprises a host of articles, photographs and video clips regarding forestry and herbicides” for the website in question serves as a repository of information rather than targeted criticism. Indeed, the mission statement of the website at <> to which the disputed domain name re-directs is:  “The goal is to bring about responsible fishing, hunting, forestry, and natural resource use by presenting information and debating the issues.


The Respondent’s website is not a “complaint site”, which Complainant appears to acknowledge. It acts as a directory of information.


Linking to sites that deal with related subject matter is a bona fide use, and that is exactly what the Respondent’s website does. Respondent is merely trying to give information that has been collected and linked together, and as such, should be protected by the safe harbour of paragraph 4(c)(i) of the Policy.  There is no confusion about affiliation, endorsement, or sponsorship in regards to the information that is collected and posted, and Respondent has gone out of his way to make this clear through the prominent use of disclaimers.


Respondent is making a legitimate, non-commercial, or fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish Complainant’s trademark. There is no deception, intent to deceive, or “unseemly conduct” in the facts of this matter. The primary purpose of the Respondent’s site is to provide information, and prudent users should and would recognize this. The Respondent also has no conscious concealment of any kind of affiliation, nor does he use meta-tags aimed at indicating an affiliation with Complainant.


The primary concern of UDRP proceedings is cybersquatting, and that is not what Respondent is doing in the present case. His use is legitimate and fair:  providing information to the public. In no way does the Respondent unfairly interfere with the intellectual property rights of the Complainant.


Non-commercial speech is protected in UDRP proceedings. Nothing is for sale on the Respondent’s site and, apart from a banner ad from <> which appears on the site in some sections, the balance of the material is non-commercial.  The banner ads were inserted into the website with a goal of easing Respondent’s financial burden in creating a safe environment to discuss and debate environmental issues.  The banner ads have not covered even 5% of Respondent’s costs to host the materials on the site.


Respondent is not (as the Complainant claims) using the Complainant’s trademark to divert traffic to the Respondent’s website, nor “deliberately creating confusion” for Internet users attempting to reach the Complainant’s website.  The Respondent expects visitors to come to the website intentionally. There is also no potential to mislead once they arrive at the site, as users will know from the disclaimer immediately that they are at a site not affiliated with Complainant.


The contact email address of <> does not have the potential to solicit or divert customers and it is clear that Respondent’s email address would have nothing to do with Complainant. No potential consumers have contacted Respondent, believing that they were contacting Complainant. 


On the other hand, typing “domtar + herbicides” into a search engine will yield Respondent’s website as a top result.  This illustrates that the Respondent is targeting people who might be seeking information about Complainant’s use of herbicides, not consumers interested in buying its products. People looking for a site like the Respondent’s site will find it, but people looking for Complainant’s site are unlikely to stumble upon the disputed domain name.


Respondent further contends that he has no intent to and does not misleadingly divert consumers for commercial gain or to tarnish the DOMTAR trade-mark. Fair use consumer commentary does not equal tarnishment, and this has been established again and again in domain name decisions.  This is even truer in the present case, as the Respondent’s site does not criticize the Complainant so much as it provides factually-accurate information about some of the Complainant’s environmental practices.


Respondent has a right and legitimate interest in the disputed domain name. Complainant has not met its burden, under the heightened scrutiny required by the Respondent’s freedom of expression interests or otherwise, to substantiate its allegation that the Respondent lacks such a right or interest.  At the heart of Complainant’s argument are concerns of commercial libel but these concerns are better addressed in a venue other than the UDRP.


Bad Faith

There is no evidence that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. 


Respondent has not registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name, and has not registered multiple domain names. Respondent’s use of the .org Domain Name has not prevented the Complainant from making its commercial presence known on the Internet through its domain name <>.


Respondent has not registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. It has been registered for approximately 2 years, in good faith, and without the intention of selling it. Its primary focus is on herbicides used by the forestry industry. 


There are no associated Domtar domain names registered to the Respondent, such as <> or <>, and there is no indication that there was ever any threat to Complainant that such domain names would be registered unless payment of extortion fees were paid. Respondent has never attempted to interfere with or disrupt the business of the Complainant. He has not usurped the .com domain name and has never passed himself off as someone having anything to do with Complainant.


Respondent is not a competitor of Domtar Inc. which, Respondent alleges is required by paragraph 4(b)(iii)of the Policy. Respondent is not in the business of forestry, and is not aimed at disrupting that industry.  Even if profit is ancillary to determining if Respondent is a “competitor” of Complainant, it is clear that Respondent is not one of its “opponents”.


Respondent has never intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on the Respondent’s website.


Respondent’s use of a disclaimer indicates that it is in no way attempting to actually interfere with Complainant’s business.  Although Complainant alleges otherwise in the Complaint, the Respondent has actually gone out of his way to dispel confusion with the disclaimer on the website at the disputed domain name. Accordingly, Respondent’s motivation cannot be equated with the motivation of attempting to deceive visitors and turn their positive views into negative ones.


Respondent’s goal is not to take business away from Complainant. He provides information that is fact-based and the opinions of various sources, not just complaints. Respondent is not an “aggressive opponent” of Complainant and there is no “misleading purpose.


Respondent does not manipulate traffic and cannot divert actual customers. It would gain nothing, commercially or otherwise, from such confusion. Respondent’s site has different aims and works in a different area of service.


Respondent does not sell t-shirts, he does not tarnish Complainant’s name by calling them Domcrap, etc. The Respondent is entirely aimed at providing balanced information to the public from the public.  The use of herbicides is presented as an issue for debate.  Other topics include municipal pesticide bylaws, the protection of white moose, global warming, safeguarding water supplies, hunting and fishing regulations, genetically modified foods, renewable energy, protection of endangered species, and aboriginal rights (to mention a few).  Even among the forestry sections of the website, analysis and discussion papers make reference to forestry companies other than Complainant. 


While bad faith can sometimes be assumed from striking similarity, in this case, the site is not similar at all. In actuality, Respondent does not want to be confused with Complainant, but having the disputed domain name show up when someone types “Domtar + herbicides + information,” etc. is desirable, and Respondent does not dispute this.


Respondent is merely exercising his freedom to disseminate commentary. Free speech negates bad faith and, as Complainant provides no other clear indicators of bad faith, Respondent’s proven legitimate interest negates any blind assertions of such. Complainant is merely suppressing commentary, while claiming bad faith registration and use (though neither has been evidenced).


The Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) case changed the line of thinking on the Internet being a vehicle for free speech—while prior cases had concluded that modifiers were important (i.e. as opposed to to signal commentary, this case loosened the grips and broadened the scope of permissible domain names. 


Respondent’s choice of <>, as opposed to <>, only evidences that the site is intended to provide balanced information, rather than act as a storehouse for gripes.


The Respondent does not traffic domain names, as he is not a cybersquatter.  There is no history of industry related domain names registered by Respondent. He is only using the disputed domain name to provide concerned-citizen commentary and facilitate discussion, and Complainant is trying to stifle that in direct conflict with Respondent’s First Amendment and s. 2(b) rights.


All other liabilities (for infringement, defamation, etc.) that Complainant alleges are separate and outside the authority of this forum. The Panel is limited to transfer or cancellation, and cannot decide infringement, dilution or other common law causes of action. Respondent asserts this in defense of any other claims Complainant has made in the Complaint.


            C. Additional Submission.

            Complainant filed an Additional Submission contending as follows.


Complainant disagrees with Respondent’s contention that the DOMTAR trademark is not a strong mark, pointing out its submissions in the Complaint that the mark had been used in Canada, the USA and internationally for over 40 years. Complainant is Canada’s largest paper company and one of North America’s largest integrated makers and marketers of freesheet paper. Furthermore, Complainant has obtained 17 registrations in the US and 17 in Canada of trademarks containing or comprising the word DOMTAR.


Complainant then quoted at length from several UDRP Decisions to refute various submissions by Respondent in its Response, concluding that the issue in them is whether the disputed domain names themselves signify critical or commentary purposes as opposed to imitation of the trademark. A domain name for the purpose of criticism or commentary must, on its face, indicate that any site to which it leads is not that of the trademark holder but is instead a site for the criticism of or commentary on the trademark holder. Otherwise there is inpermissible initial interest confusion. In the present case, Respondent’s use of the disputed domain name will cause initial interest confusion by “capturing initial consumer attention, even though no sale [or other economic benefit] is finally completed [or realized] as a result of the confusion. Complainant concludes by submitting that the disputed domain name does not on its face indicate that any site to which it leads is not that of Complainant and causes initial interest confusion.


Respondent refers to “the prudent user” but the standard test, used in numerous Decisions is that for “the average consumer”.


Complainant submits that Respondent has deliberately chosen a domain name which comprises only its own trademark DOMTAR with the aim of attracting visitors who are seeking a website connected to Complainant. The inclusion of a disclaimer, after the user has arrived at the site, does not remedy the issue of confusion.


Respondent refers to the decision in Compagnie de Saint Gobain v. Com-Union Corp. but in Complainant’s submission this case stands for the proposition that the issue at hand is not freedom of speech and expression but the choice of the domain name used to exercise these rights. In that case, it was held that the domain name in question was identical to the Complainant’s trademark, that the Respondent had no rights or legitimate interest in the domain name and that it had been registered in bad faith.


Complainant concludes by submitting that Respondent could have chosen a domain name that did not consist solely of Complainant’s trademark, thereby eliminating, or at the very least reducing, the likelihood of confusion.  



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)   that 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)   that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   that the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar [paragraph 4(a)(i)]


The disputed domain name is <> and Respondent alleges that there is no actual or likelihood of confusion between it and any of Complainant’s trademarks.


Complainant owns a registration of the word trade mark DOMTAR in the US and has a pending application for it in Canada. It also owns a number of registrations and applications for trademarks which commence with or contain the word DOMTAR.


Firstly, the Panel notes that there is no requirement for actual confusion in the Policy. As set out above, a complainant need only prove that he has rights in a trademark or service mark that is identical or confusingly similar to the domain name that is the subject of a dispute. Therefore, Respondent’s allegations regarding the lack of actual confusion are not directly relevant.


However Respondent goes on to make the extraordinary claim that its domain name <> is not likely to be confused with trademark DOMTAR. This claim appears to rest on the fact that the site at the disputed domain name is non-commercial, that the name is registered within the ‘.org’ domain, that the site contains a prominent disclaimer, and that anyone would therefore fail to be confused.


It is true that in an early UDRP case Pueblo International, Inc. v. Pueblo On-Line FA95250 (Nat. Arb. Forum Aug. 24, 2000) the single Panelist found that the domain name <> was, strictly speaking, not “identical” to the trade mark PUEBLO, but he failed to address the question of confusing similarity. Also, the Panel in North American Wilderness Recovery, Inc. v. Citizens with Common Sense FA 97058 (Nat. Arb. Forum July 1, 2001) did consider whether complaint sites using a complainant’s mark could be fair use under certain circumstances, for example, the use of a noncommercial suffix such as ‘.org’ or ‘.net’ may be sufficient to differentiate when criticizing a commercial enterprise, but in the end he rejected this argument.


Certainly the overwhelmingly prevailing view in the huge majority of Decision is that, when comparing a domain name with a trademark, no account need be taken of the ‘www’ prefix or any suffix such as ‘.com’, ‘.org’, ‘.net’, ‘.ca’, ‘.us’ etc. For example, in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) it was said that “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.. It was also concluded in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to an analysis of paragraph 4(a)(i) of the Policy.


The Response referred to the Decision in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign D2004-0206 (WIPO Apr. 30, 2004) as evidence that “confusion falls somewhere along a spectrum”, but in fact in that case the domain name in question was not identical to the trademark – as it is in the present case – and the remarks concerning a spectrum of confusion were made in a discussion on ‘rights or legitimate interest’ and the Panel actually found that the trademark COVANCE and the domain name <> were confusingly similar.


As to the disclaimer, Respondent makes great play of the fact that there is a “large font disclaimer … that is visible in the center of the index page of the website” and that “this is the first text in the body of the webpage”. The Panel takes issue with both of these statements. Firstly, the font used is identical to that used for a description of a video which is also accessible on the page, and secondly there are several other comments on the site which appear before the disclaimer and which are in a larger font. The Panel also wonders why, if Respondent expects anyone to believe that he hit upon the disputed domain name by chance, and that he did not have Complainant in mind at the time, did he find it necessary to add this disclaimer. The wording might have some relevance to someone who arrived at the whitemoose site via the disputed domain name, but anyone accessing the whitemoose site direct will be mystified by the disclaimer. If, prior to this, they had not previously heard of Complainant they will probably think that despite the disclaimer the site must nevertheless refer in some way to Domtar, Inc.


Disclaimers do not always have the desired effect. For example, in DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) it was found that the 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; also, in AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) it was found 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”; and in Estée Lauder, Inc. v., and Jeff Hanna D2000-869 (WIPO Sept. 25, 2000) it was said that “Respondent has not denied, and cannot credibly deny, that its use of the domain names at issue was to attract internet users desirous of criticizing the Complainant or its products, and therefore likely divert them from legitimate sites authorized by Complainant . The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion.


Consequently the Panel has found that Respondent’s disclaimer is in itself not sufficient to dispel the possibility of confusion, and concludes that because Complainant has established, to its satisfaction, that he possesses substantial rights in the name and trademark DOMTAR, applying the above rule it has no hesitation in finding that this name is identical to the disputed domain name <>.


As a postscript, the Panel notes another incorrect description of its site by Respondent, and so another reason to mistrust the facts as presented by Respondent. In the Response, it was stated that the mission statement on the website is: “The goal is to bring about responsible fishing, hunting, forestry, and natural resource use by presenting information and debating the issues.” However in fact, as the copy presented by Complainant clearly shows, the mission statement reads in full: “To make the world a better place ….


Rights or Legitimate Interests [paragraph 4(a)(ii)]


It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. The Panel finds that, in this case, Complainant has indeed made out a prima facie case.


The first point the Panel wishes to make is that although the disputed domain name is <>, the arguments of both parties are concerned with the contents of an entirely different site at <>. This is because by clicking on the former name, a visitor is instantly transferred to the site at the latter name.


There is a marked difference of opinion between the parties to this dispute over the contents of this website. To Complainant it is an attack upon itself, its production methods, and its commercial practices. To Respondent however it is a site containing factual information and opinions concerning the use of herbicides in Northern Ontario. The trouble with this latter point of view is that the information is almost entirely one-sided. It is clear that Respondent is convinced that the use of such herbicides is wrong and that companies such as Complainant are villains for their use of them. It is true that the site contains on its opening page a disclaimer regarding its non-association with Complainant (see above) but immediately following this is a video which is described as being a video of the harvesting of “the Pineland Forest management under Domtar control”. This is written in the same size and typeface as the disclaimer, and the video – which lasts for 3 minutes and 19 seconds – consists of an aerial film showing swathes of forest where the foliage is dying or dead, as the result of herbicide spraying by Complainant. It is true that other companies’ names are mentioned on the opening page e.g. Tembec and Monsanto, but a click on them reveals only factual information about the products they produce. To argue, as Respondent does, that the site is not a protest site (about the use of herbicides) or that it does not complain about Complainant for their use of the same is clearly mistaken.


Consequently the Panel has concluded that the website to which the disputed domain name transfers is in fact primarily a protest, or a criticism, site and has considered the matter accordingly.


All the members of this Panel are respectful of an individual’s right to the freedom of speech, but they have asked themselves two questions: why did Respondent choose the name ‘Domtar’ for his domain name if the site has, as he asserts, no connection with the company of that name, and why does he concentrate on Complainant for his disparaging remarks concerning the use of herbicides in Northern Ontario?


In reply, Respondent pleads his right to freedom of speech. This is a topic which, as is well known, divides panelists who have to decide cases under the UDRP and, as the Overview of WIPO Panel Views on Selected UDRP Questions, published by WIPO in 2005 puts it, there is a division of opinion among Panelists over whether a Respondent is at liberty to use a domain name that is similar to a trademark for a genuine non-commercial free speech website.


The whole subject, and the existing case law, was extensively reviewed by the experienced panelist David Bernstein in Howard Jarvis Taxpayers Association v. Paul McCauley D2004-0014 (WIPO Apr. 22, 2004). In this he concluded that “although there has been a split even in the United States, in this Panel’s view, the weight of authority suggests that a consensus is emerging that trademark .TLD names, when used for U.S.-based criticism sites, can constitute a legitimate interest, especially if there are no other indicia of bad faith. Given that this appears to be the emerging view in federal courts as well, aligning the decisions under the Policy with decisions emerging from the courts will prevent forum shopping.


It is to be noted that Respondent claims to have dual US and Canadian nationality, and also that the website at the disputed domain name is concerned with the position in Northern Ontario. Thus, the site is not a “U.S.-based criticism site” and so, strictly speaking, David Bernstein’s above conclusion should not apply.


However no sooner had the Howard Jarvis Decision appeared than a contrary view was expressed in the Covance case, which is referred to above – “There is in this Panel’s opinion merit in the view that a domain name which is identical to the Complainant’s trademark should necessarily not qualify as a ‘legitimate noncommercial or fair use’ under paragraph 4(c)(iii) regardless of website content. This because there is an immediate potential for false association with the trade mark owner and a degree of initial confusion which is at the top end of the spectrum.


Respondent originally, in 2004, created a legitimate website under the neutral name ‘whitemoose’ but a year later he inexplicably chose to register the disputed domain name and to equip it with a link to the whitemoose site. He has provided no explanation as to why he did this, or why he chose Complainant’s name for the title of this second site. It is difficult to think of a legitimate interest reason for doing this.


The Panel has therefore concluded that Respondent must have had Complainant in mind if not directly in his sights when creating the website to which visitors accessing the disputed domain name are transferred. There are a number of Decisions that concur with our findings, for example in Baker & Daniels v., FA 104579 (Nat. Arb. Forum Mar. 27, 2002) it was found that because the respondent’s <> domain name merely incorporates the complainant’s trademark, without more, it is not protected by the First Amendment. Also, in Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) the Panel said that it did “not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant., whilst in E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) it was found that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety. In Compagnie Generale des Matieres Nucleaires v. Greenpeace International, D2001-0376 (WIPO May 14, 2001) it was held 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”.


Complainant has alleged that its name and trademark, DOMTAR, has been used for over 40 years and that it is one of the largest paper companies in North America, with very substantial annual sales. (The sum of over 3 billion dollars annually is mentioned and the Panel has assumed that these are Canadian not U.S. dollars.) As a result, the name DOMTAR has clearly become extremely well known. Respondent is not commonly known by the name ‘domtar’ and, in the opinion of the Panel, his use of it cannot therefore be legitimate. In this regard, the Panel notes the Decisions in Xerox Corporation v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec., 22, 2003) “[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark., as well as in Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) “Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent..


Complainant alleges in its Additional Submission that Respondent is specifically using Complainant’s trademark DOMTAR in the disputed domain name to attract customers searching for Complainant’s goods and services to Respondent’s website, which offers competing services, and is attempting to commercially gain from this likelihood of confusion. Respondent denies this, and the Panel is inclined to agree with him.


Nevertheless the weight of the evidence is that Respondent has no rights or legitimate interest in the disputed domain name. The Panel finds accordingly, noting that the present case can be distinguished from the authoritative finding in Howard Jarvis in that in its view the site at the disputed domain does contain indicia of bad faith.



Registration and Use in Bad Faith [paragraph 4(a)(iii)]


In the opinion of the Panel, Respondent’s use of a disclaimer fails to mitigate a finding of bad faith. As discussed above, the disclaimer is not particularly prominent and it is negated by the reference to Complainant in the immediately following entry on the site. In Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) it was said that “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.. Also, in Thomas & Betts International, Inc. v. Power Cabling Corporation, AF-0274 (eResolution Oct. 23, 2000) bad faith was found because of initial interest confusion despite a disclaimer and a link to the complainant’s website on the respondent’s website.


Not all the members of the Panel agree with the contention that initial interest confusion is necessarily evidence of bad faith. However in this particular instance it would be difficult to find otherwise.


Respondent’s actual or constructive knowledge of Complainant’s trademark DOMTAR at the time of registration of the domain names is further evidence of bad faith pursuant to paragraph 4(b) of the Policy. In Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002 it was found that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”. Also, in Digi International v. DDI Systems, FA 124506 (Nat. Arb. Forum Oct. 24, 2002) it was said that “[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.Both of these Decisions very much chime with the thinking of the Panel in the present case.


In Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) it was found that the respondent’s expected use of the domain name <> would lead people to believe that the domain name was connected with the complainant, and thus is equivalent to bad faith use.


The Panel also believes that Respondent’s use of the disputed domain name, which is identical to Complainant’s trademark, to confuse and redirect Internet users to Respondent’s website could disrupt Complainant’s business and is therefore evidence of bad faith pursuant to paragraph 4(b)(iii) of the Policy. In North West. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) it was said that “Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.. Also, in TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) it was found that the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith.


Respondent is using the disputed domain name, which is identical to Complainant’s mark, to operate a complaint website that features Complainant and its mark. The Panel considers that this is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. In State Fair of Texas v., FA 95288 (Nat. Arb. Forum Sept. 12, 2000) bad faith was found where the respondent registered the domain name <> to infringe on the complainant’s goodwill and attract Internet users to its website; while in Diners Club Inernational, Ltd.  v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) it was said that Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).. 



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. However the Panel would like to make clear that its finding is dependant on the actual facts of this case, and in different circumstances its decision might have been different.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.





David H Tatham


 Dennis A Foster and Clive Elliott



Dated: January 4, 2008







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