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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Triodos Bank NV v. Ashley Dobbs
Case No. D2002-0776
1. The Parties
Complainant in this administrative proceeding is Triodos Bank NV of Bristol, United Kingdom ("Complainant").
Respondent is Ashley Dobbs of Cornwall, United Kingdom ("Respondent").
2. The Domain Name and Registrar
The domain name in issue is <triodos-bank.com>.
The registrar of the domain name in issue is Gandi, 38 rue Notre-Dame de Nazareth F-75003 Paris, France.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("Center") on August 19, 2002. The Center has verified that the Complaint satisfies the formal requirements of the ICANN’s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
Gandi has confirmed that the domain name <triodos-bank.com> ("the Domain Name") was registered through Gandi and that Ashley Dobbs is the current registrant. Gandi has further confirmed that the Policy is applicable to the Domain Name.
On August 23, 2002, the Center notified the Respondent of the Complaint in accordance with the Rules, paragraph 2(a), and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was September 12, 2002.
On September 12, 2002, the Center received the Response, issued a Response Deficiency Notification in respect of a formal defect which was duly corrected.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision, is October 3, 2002.
4. Factual Background
The Complainant is a Dutch bank with a place of business in the UK.
It is the proprietor of a number of trade mark registrations around Europe the principal element of which is the name Triodos Bank. It is not clear from the exhibits to the Complaint whether any of those registrations are for the words TRIODOS BANK alone. Nonetheless, the Complainant is a bank, it is the owner of a UK trade mark registration for TRIODOS (word) and there is no dispute between the parties that the Complainant has carried on trade as a bank in the United Kingdom under the name TRIODOS BANK.
The Complainant is the proprietor of a number of domain names featuring the name TRIODOS BANK including, inter alia, <triodosbank.co.uk> and <triodosbank.com>.
The Respondent is a director of a company named Acorn Televillages Limited, a company which borrowed money from the Complainant. The Complainant appointed a Receiver over that company’s assets. As the Complainant puts it "the company ceased trading, depriving the Respondent of his employment and such other benefits as he may have expected as a director and shareholder".
It is unnecessary for the Panel to delve into the details of the dispute. Suffice it to say that the Respondent regards the Complainant’s behaviour in the matter as having been criminal. For the purposes of this Decision, the Panel will assume in the Respondent’s favour (without of course making any such finding) that the Complainant has behaved reprehensibly in relation to the Respondent and his company.
The Respondent registered the Domain Name on May 14, 2002, and has subsequently used it to air his grievances against the Complainant. In the Response, he says that the purpose of the website is "to make the public aware of the ‘unethical and non-transparent’ treatment experienced by Acorn Televillages at the hands of this self-proclaimed ‘ethical and transparent’ bank".
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights. The Complainant produces an email survey carried out by the Complainant’s solicitors purporting to show a likelihood of confusion.
The Complainant further contends that the factual background set out above demonstrates that the Respondent can have no rights or legitimate interests in respect of the Domain Name. The Complainant has granted the Respondent no licence to use its name as part of a domain name. The Complainant further contends that in doing what it has done the Respondent has sought to derive a commercial benefit.
The Complainant further contends that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iii) of the Policy:
"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;"
The Complainant appears to recognise that the Respondent does not at first sight readily fall into the category of a competitor of the Complainant, but nonetheless argues on the basis of some earlier decisions under the Policy that "competitor" should be read more broadly to mean "opponent". The Complainant argues that in the context of this dispute necessarily the Respondent is an opponent of the Complainant and therefore a competitor.
The Complaint ends:
"Looking at the extract from the website, it is clear that the intent is to publish to a reader highly negative views which inevitably have a propensity to undermine any favorable views that the visitor to the website might have previously had. The activity of the Respondent, as demonstrated by its website, is therefore disruptive of the activities of the Complainant.
The Complainant notes that there were numerous other ways in which the Respondent could have made its publications on the Internet but he chose to use this method presumably because it was calculated to have a disruptive effect on the Complainant's activities. Given that there were numerous other ways of publishing, the Complainant does not consider that any disruption is merely a consequence of the Respondent publishing his views but rather as a result of his choosing to abuse a domain name."
The Respondent denies that the Complainant has registered triodOs bank as such as a trade mark. The Respondent points out that the registrations of TRIODOS BANK appear to be device marks incorporating a logo between the two words. Accordingly, although the Respondent does not specifically say so, the Panel takes it that the Respondent is denying that the Domain Name is identical to a trade mark in which the Complainant has rights.
The Respondent observes that the Complainant does not appear to have any trade mark registrations in the United States. He believes that this may be relevant because he understands that recent US Court rulings have indicated that .com domain names are US property.
As to confusing similarity, the Respondent says that it is quite clear when one visits the Respondent’s website that it is not a site of the Complainant.
The Respondent does not directly deal with the allegation that prior to reaching the site visitors to the site are likely to be under the misapprehension that they are visiting a site of the Complainant. However, the Complainant does say that he expects customers of the bank to visit the website. He says "I feel that it is important that, before placing deposits, customers should be aware of the actions taken by Triodos Bank to destroy a highly successful, award winning environmental company".
In support of the argument as to likelihood of confusion the Complainant’s solicitors produced an email survey. The Respondent ridiculed it and the Panel does not propose to deal with it, it not being in dispute that the Respondent acted in the hope and expectation that customers of the Complainant would be likely to visit the Respondent’s website.
As to whether or not the Respondent has any rights or legitimate interests in respect of the Domain Name, there is of course no dispute that the name in question is the Complainant’s name and not the Respondent’s name. The Respondent is using the name without the consent of the Complainant. Nor is there any dispute that one of the objects of the Respondent’s website is to draw to the attention of visitors to the website the Respondent’s views as to the shortcomings of the Complainant.
However, the Respondent claims that his right to free speech gives him a right and/or legitimate interest to use the Domain Name to connect to a protest/criticism site. He claims in effect that the content of the site while severely critical of the Complainant is, nonetheless, fair comment in the circumstances and he should not be deprived of the ability to publish this material under and by reference to the Domain Name.
The Respondent roundly denies that he registered the Domain Name in bad faith or is using the Domain Name in bad faith. He also roundly denies that anything he has done in respect of the Domain Name has been for commercial gain.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Identical or confusingly similar
The Panel agrees with the Respondent that the precise extent of the Complainant’s registered rights is not clear. Specifically, it is not clear that the Complainant has registered rights in respect of the words TRIODOS BANK per se.
However, there can be no serious doubt that if a third party set up in business in the UK in competition with the Complainant under the name TRIDOS BANK, the Complainant would have an overwhelming case in passing off against that third party. On that basis the Panel is in no doubt that the Complainant has strong unregistered trade mark rights in the name TRIODOS BANK. The fact that those rights are unregistered does not in any way de-value them in the context of a Complaint under the Policy.
Accordingly, whether one takes the Complainant’s registered rights in respect of the name TRIODOS or the Complainant’s registered rights in respect of the device mark incorporating TRIODOS BANK or whether one takes the unregistered rights of the Complainant in the name TRIODOS BANK, clearly the Domain Name, featuring as it does the name TRIODOS BANK separated by a hyphen and followed by the generic .com suffix, is identical or confusingly similar to a trade mark or service mark in respect of which the Complainant has rights. The Panel so holds.
For completeness, the Panel notes the Respondent’s argument relating to ‘.com’ domain names being US property, but believes it to be misconceived and in any event takes the view that it is irrelevant to any issue to be decided under the Policy.
Respondent’s Rights or Legitimate Interests
The Panel accepts for the purposes of this dispute that the Respondent has a genuine grievance against the Complainant and genuinely believes that the Complainant has behaved reprehensibly. The Panel further accepts that the Respondent’s rights of free speech entitle him fairly to express his views on the matter.
However, none of that entitles the Respondent to represent that he is the Complainant. In taking the Complainant’s name in the way that he has, without adornment apart from the hyphen, the Respondent has misrepresented to a substantial number of visitors that he is the Complainant. The Respondent cannot sensibly deny that proposition. How else are the Complainant’s customers likely to end up, as the Respondent hopes and anticipates, at the Respondent’s website? While the Panel is prepared to accept that some of them may be speculative visitors, not certain where they are going, clearly a not insubstantial proportion of them will be would-be visitors to the Complainant’s website.
The fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done. It does not lie in the mouth of the Respondent to deny that damage will be done to the Complainant, because that is precisely what he is setting out to achieve. He admits that he is seeking to warn off customers and/or would-be customers of the Complainant before they have any dealings or further dealings with the Complainant. The fact that that damage might in the Respondent’s view represent the Complainant’s just deserts is of no consequence.
The Panel is conscious that among panellists there are differing lines of thought on this topic, but the above represents the Panel’s view as previously expressed in a number of previous cases including in particular D2001-0376 (see below). In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.
In the Panel’s view a deceptive use of another’s trade mark as part of a domain name is rarely if ever likely to give rise to a right or legitimate interest in respect of a domain name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel rejects the Complainant’s attempt to manipulate the factual matrix of this case into paragraph 4(b) of the Policy. It does not fit. For the Complainant to succeed under paragraph 4(b)(iii) of the Policy, the paragraph relied upon by the Complainant, the Respondent has to be a competitor of the Complainant. Manifestly, the Respondent is not a competitor of the Complainant. The Complainant is a bank. The Respondent is not a bank, but an erstwhile customer of the Complainant.
The Panel also rejects the suggestion that the Respondent’s objective has anything to do with commercial gain. The Respondent’s intention is transparent, namely, for reasons which the Respondent believes are justified, to deter people from dealing with the Complainant.
Nonetheless, the examples of bad faith registration and use given in paragraph 4(b) of the Policy are non-exhaustive and the Panel adopts his reasoning in D2001-0376, another case where the respondent, Greenpeace, had a genuine good faith reason to criticise the activities of the Complainant in that case. Quote:
"Paragraph 4(b) of the Policy sets out four non-exclusive criteria, which shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b)(i) concerns acquisition of the Domain Name in order to sell it, but the only evidence that the Respondent may be prepared to release it to the Complainant (the Respondent’s letter of February 12, 2001, quoted above) relates to the Respondent’s recent realization that the Domain Name may be surplus to requirements. The Panel is satisfied that the Domain Name was not registered with a view to it being sold to the Complainant. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct. Notwithstanding the evidence of a pattern of conduct, namely the Respondent’s registration of <britishnuclearfuels.com>, the Panel accepts the Respondent’s denial that this was the reason for registering it. Paragraph 4(b)(iii) involves disruption of the business of a competitor, but the Respondent is not a competitor of the Complainant. Paragraph 4(b)(iv) involves use of the Domain Name for commercial gain for the purpose of attracting visitors to the Respondent’s online location in the mistaken belief that they are visiting a location of or associated with the Complainant. Arguably that cannot apply to the Respondent because it is a non-profit making charitable organization.
However, paragraph 4(b) does not comprise an exhaustive list of the circumstances, which shall constitute evidence of registration and use in bad faith.
In assessing ‘bad faith’ for the purpose of the Policy, the motivation of the Complainant is all-important. In this case, the motivation is clear. As the Complainant claims in one part of the Complaint and as the Respondent expressly admits in the Response, the Domain Name "was registered for the purpose of criticizing the Complainant, its business and activities." The Panel accepts that that was the Respondents intention. In so saying, it is also clearly the case that, as the Respondent stated in its letter of February 12, 2001, an important aim of the campaign in which the Domain Name was to be used was to stop nuclear processing. Necessarily, if successful, that would cause serious disruption and damage to the Complainant’s business.
In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website.
Had the Respondent been a competitor, there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iii) of the Policy. Had the Respondent been acting "for commercial gain", there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iv) of the Policy.
In this Case, the Respondent is neither a "competitor" of the Complainant nor is it acting for "commercial gain" in the ordinary sense of those words. However, while the Panel recognizes the Respondent’s right to campaign and to conduct its campaigns by way of the internet, the Domain Name is not necessary for that purpose. Moreover, registration of a domain name comprising the name and trade mark of another and specifically with a view to causing damage and disruption to that other cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trade mark owner’s site into visiting the registrant’s site. The Panel therefore finds that the Domain Name was registered in bad faith."
By virtue of precisely the same reasoning the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, <triodos-bank.com>, be transferred to the Complainant.
Dated: October 3, 2002