Decisión del Panel Administrativo nº D2013-0097 of WIPO Arbitration and Mediation Center, April 12, 2013 (case Yellowstone Mountain Club LLC v. Offshore Limited D and PCI.)
| Resolution Date | April 12, 2013 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer, denied in part with dissenting opinion |
| Dominio | Generic Domains |
Complainant is Yellowstone Mountain Club LLC of Big Sky, Montana, United States of America, represented by Duane Morris & Heckscher, LLP, United States of America.
Respondents are Offshore Limited D. of Miami Beach, Florida, United States of America, for two of the disputed domain names [yellowstoneclub.net], [yellowstoneclubscandal.com]; and PCI of Bellevue, Washington, United States of America, for the disputed domain name [theyellowstoneclub.org].[1] Both are represented by Stillman and Associates, United States of America.
The disputed domain names [yellowstoneclub.net], [yellowstoneclubscandal.com], and [theyellowstoneclub.org] are registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2013. On January 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name [yellowstoneclub.net]. On January 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for this disputed domain name [yellowstoneclub.net].
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response February 24, 2013. The Response was filed with the Center February 22, 2013.
On March 6, 2013, Complainant submitted a supplemental filing to the Center, including a proposed amended Complaint, requesting that the Panel add two additional domain names, [theyellowstoneclub.org] and [yellowstoneclubscandal.com], to the proceeding. The Center replied on March 7, 2013, acknowledging receipt and advising that this matter would be referred to the Panel upon appointment. By Administrative Panel Procedural Order dated March 13, 2013, the Panel added these two additional domain names to the proceeding, ordered the Center to request Registrar verification for them, and directed that Respondent submit any additional Response it deemed appropriate, limited to the two additional domain names, by March 23, 2013. By direction of the Panel this date was extended through March 26, 2013. An amended Response was submitted to the Center on March 26, 2013.[2]
On March 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names [theyellowstoneclub.org] and [yellowstoneclubscandal.com]. On March 13, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “Offshore Limited D” was listed as the registrant of the disputed domain name [yellowstoneclubscandal.com] and that Respondent “PCI” was the registrant of the disputed domain name [theyellowstoneclub.org], and providing the respective contact details.[3]
The Center appointed M. Scott Donahey, Richard G. Lyon and Neil, J. Wilkof as panelists in this matter on March 8, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant operates the Yellowstone Club, an exclusive golf and ski residential community near Big Sky, Montana, United States of America. It holds two trademarks registered on the Principal Register of the United States Patent & Trademark Office (“USPTO”) for YELLOWSTONE CLUB, the earlier of which is dated February 2007, and recites a date of first use in commerce of January 1997. The Yellowstone Club has been in business since about 1997. Starting in 2008, Complainant was involved in extensive, widely publicized, and highly contentious bankruptcy proceedings that have only recently concluded.
Respondent, which used a privacy service or assumed name for its registrations of the disputed domain names,[4] is a critic of Complainant. Each of the websites at the disputed domain names contains virtually identical content, consisting of media articles, press clippings, bankruptcy court filings, other public documents, and related commentary. All content is highly critical of Complainant, the bankruptcy court, and assorted third parties involved with Complainant and the bankruptcy proceedings. Respondent registered the disputed domain names in late 2012 or early 2013.
Complainant contends as follows:
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Complainant has rights in YELLOWSTONE CLUB by reason of its USPTO-registered marks for that term. The disputed domain name [yellowstoneclub.net] is identical to these marks except for the generic top-level domain (“gTLD”), which is of no moment in comparing the mark and the disputed domain name. The disputed domain name [theyellowstoneclub.net] is confusingly similar to these marks, as the addition of the definite article “the” does not obviate confusion. Nor does the addition of “scandal” in the third disputed domain name. Policy precedent holds that adding even a derogatory word to a recognized mark does not prevent consumer confusion.
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Respondent has never been known by the term ”Yellowstone Club”, and Complainant has not authorized Respondent to use the YELLOWSTONE CLUB marks. Anticipating Respondent’s criticism site defense, Complainant contends that:
“WIPO panels have repeatedly rejected [such a defense] when the domain name is identical to the Complainant’s trademark, reasoning that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. This is particularly true when the trademark alone is used as the domain name because that may be understood by Internet users as impersonating the trademark owner.”
(Complaint, page 10).
Further, the criticism sites at the disputed domain names target not Complainant or its goods and services but third parties involved in earlier management of Complainant or Complainant’s bankruptcy proceedings, thus weakening any free speech arguments and providing another basis for denying Respondent recourse to the safe harbor of paragraph 4(c)(iii) of the Policy. Respondent’s hiding its identity similarly weakens any claim of true criticism.
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Respondent was well aware of Complainant and its mark when it registered the disputed domain names, as illustrated by their contents. Other indicia of bad faith include Respondent’s hiding its identity, use of the sites as part of a “smear campaign,” and a placing a hyperlink on each site to the personal website of one of Complainant’s founders, a central figure in Complainat’s bankruptcy proceedings and a longtime critic of Complainant’s present owners and management.
B. Respondent Respondent contends as follows:
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Complainant’s trademark rights are limited in scope to services related to a particular real estate development, and two of the marks include Complainant’s logo. Complainant’s marks consist of two “generic” words, and the principal word “Yellowstone” is used by many other trademark and website owners; that word is best known in connection with Yellowstone National Park. Complainant therefore has not shown sufficient secondary meaning in the YELLOWSTONE CLUB mark to demonstrate a likelihood of confusion. The “look and feel” of Respondent’s websites makes plain to any Internet user that Respondent is not in any way related to Complainant. Respondent uses none of Complainant’s marks or logos on its sites, and each site includes an “explicit” and “prominent” disclaimer of affiliation with Complainant.
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After noting that Respondent is not a competitor of Complainant, Respondent summarizes its principal defense thus:
“Respondent is making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain whatsoever, and clearly does not misleadingly divert customers or dilute or tarnish the trademark, if any, of Complainant, other than as fair commentary based on public records, filings with various courts, state and federal, and other publicly available information. Respondent has a First Amendment[[5]] right to publish truthful information and opinion on the proceedings involving the Yellowstone Club and therefore is merely exercising its constitutional right to free speech and freedom of the press in legitimately using ‘yellowstoneclub.net’ along with a clear and unambiguous disclaimer.”
(Response, page 5).
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Respondent’s conduct fits none of the examples of evidence of bad faith enumerated in paragraph 4(b) of the Policy. Fair criticism of Complainant injures Complainant or its business no more than any other uncomplimentary article in the press. Respondent’s websites at the disputed domain names consist entirely of investigative journalism and contain no unrelated hyperlinks or other commercial content.
6. Discussion and Findings In this Policy proceeding Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has...
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