Complaint site operator had rights and legitimate interests in disputed domain name

The Panel in Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc decided in favor of the Respondent, finding that the Respondent’s registration and use of <bewareoftitangarages.com> for a site critical of the Complainant’s business did not run afoul of the second UDRP element. Specifically, the Panel found that the Respondent was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the Complainant’s trade mark or service mark.

The Panel rejected the Complainant’s argument that although the disputed domain name was being used for a free speech purpose it was primarily a pretext for commercial advantage. There were no advertisements on the Respondent’s website, there was no evidence that the Respondent was a competitor of the Complainant, nor was there any evidence that the Respondent had operated this website for any commercial purpose. While the Respondent did solicit members of the public to provide information to participate in a legal action against the Complainant, there was no evidence that the Respondent was doing so for a commercial purpose. The fact that the Respondent may have advertised its site was not conclusive of a commercial intention, especially in the face of the operation of the site itself. The Panel rejected the Complainant’s submission, unsupported by evidence, that the Respondent’s conduct was likely to have been undertaken by a commercial competitor as speculative.

The Panel went on to find that the Respondent, in registering the disputed domain name using an appendage that indicated that it was critical of the Complainant, was not attempting to impersonate the Complainant or misleadingly divert Internet users. Rather, the Respondent was using the TITAN mark in the disputed domain name to identify the Complainant for the purpose of operating a website that criticized the Complainant. Such use is generally described as “fair use” of a trade mark.

Additionally, the Panel found unpersuasive the argument that the Respondent was tarnishing the TITAN mark. The mere fact that the Respondent’s website criticized the Complainant and used material that the Complainant considered to be misstatements or misrepresentations did not prove that tarnishment had occurred.

Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc, WIPO Case No. D2015-2062

Respondent had rights or legitimate interests in domain name where it established site critical of Complainant

Respondent acquired the domain names <newmandenneypc.com> and <louisnewmanesq.com> to establish criticism websites. The Panel denied the Complaint, finding that the Complainant failed to establish the first and second elements under the UDRP.

As for the first element, the Panel found that the Complainant failed to establish secondary meaning of the marks comprising the disputed domain names. A screenshot of the Complainant’s website from 2010 showing the Complainant’s establishment, and a media article mentioning Complainant were not enough to demonstrate the marks had acquired distinctiveness.

The Panel further determined that the Complainant failed to make a prima facie showing that the Respondent lacked rights or legitimate interests in the disputed domain names. It found that the Respondent’s establishment of websites to criticize the Complainant was consistent with a noncommercial or fair use, and thus Respondent had rights or legitimate interests in the domain names.

 

Newman and Denney P.C. v. David Schorr, (NAF) Claim Number: FA1510001643577

 

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