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WIPO Arbitration and Mediation Center 
ADMINISTRATIVE PANEL DECISIONMidland Heart Limited v. Uton BlackCase No. D2009-00761. The Parties
The Complainant is Midland Heart Limited of Birmingham, United Kingdom of Great Britain and Northern Ireland (“UK”), represented byits company secretary.The Respondent is Uton Black of Birmingham, UK.
2. The Domain Name and Registrar 
The disputed domain name <midlandheart.com> (the “Domain Name”) is registered with Register.IT SPA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in hard copy on January 19, 2009, and by emailon February 3, 2009.The Center transmitted its request for registrar verification to the Registrar on January 21, 2009. The Registrar responded on January22, 2009, confirming that it was the concerned registrar and the Respondent was the registrant of the Domain Name, that the UniformDomain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Name would expire onMay 22, 2010 and would remain locked during this proceeding, and that the registration agreement was in English. The Registrar alsostated that it had not received a copy of the Complaint, provided the full contact details in respect of the registration on its Whoisdatabase, and did not dispute that the Respondent had submitted in the registration agreement to the jurisdiction of the courts where itwas located.By email of January 30, 2009, the Center informed the Complainant that the Complaint had formal deficiencies, in that it had not beensubmitted in electronic format nor in one original with four copies, that it did not specify a method of communication in hard copy to theComplainant, that it did not identify the Registrar, that it specified remedies which were not available under the UDRP, and that it did notcertify its transmittal to the Respondent or the Registrar. The Complainant submitted an amended Complaint by email on February 3,2009, and in hard copy on February 10, 2009; a further amended Complaint by email on February 4, 2009; and a further amendedComplaint by email on February 10, 2009.The Center verified that the Complaint (as most recently amended) satisfied the formal requirements of the UDRP, the Rules for UniformDomain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name DisputeResolution Policy (the “Supplemental Rules”).In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the
IPO Domain Name Decision: D2009-0076http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0076.html1 of 54/28/2009 4:15 PM
 
proceedings commenced on February 12, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was March4, 2009. The Response was filed with the Center by email on March 1, 2009, and in hard copy on March 9, 2009.The Center appointed Jonathan Turner as the sole panelist in this matter on March 13, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of theRules. Having reviewed the file, the Panel is satisfied that the Complaint (as most recently amended) complied with applicable formalrequirements, subject to the issues addressed below, was duly notified to the Respondent and has been submitted to a properlyconstituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.By its Procedural Order No.1 of March 17, 2009, the Panel ordered the Complainant to provide to the Center by March 23, 2009, a copyof an email sent by the Respondent using the Domain Name to which the Complainant had referred in the Complaint; afforded theRespondent an opportunity to comment thereon by March 30, 2009; and extended the time for forward its decision to the Center untilApril 13, 2009. The Complainant forwarded a copy of the email concerned to the Center on March 17, 2009, and the Respondentforwarded comments thereon on March 30, 2009.
4. Factual Background
The Complainant is a charitable Housing Association which lets out social housing in the Birmingham area and manages some 32,000units of stock. It operates under the name “Midland Heart” and has registered a logo including this name as a trademark in the UK inclasses 36 and 37. It has operated a website at “www.midlandheart.org.uk” since February 2006. It also registered the Domain Nameand <midlandheart.co.uk> in February 2006 but allowed them to lapse in February 2008.The Respondent is a tenant of the Complainant. He registered the Domain Name and <midlandheart.co.uk> on May 22, 2008 andestablished a website criticizing the Complainant to which these domain names were directed in October 2008.
5. Parties’ ContentionsA. Complainant
The Complainant acknowledges that there have been some maintenance issues with the property let to the Respondent over the pastfew months, but states that progress has been made and that the Respondent’s commentary on his website is seriously inaccurate anddefamatory.The Complainant explains that its initial priority following the launch of the Respondent’s website was to resolve the problems which hadled him to establish his website in the hope that he would then cease to use the site or remove the offending content. The Complainantalleges that its conciliatory approach was met with an escalation of defamation and trademark infringement on the part of theRespondent, indicative of bad faith.The Complainant submits that the Domain Name is identical to its registered trademark. It adds that there has been confusion on thepart of its tenants in relation to the corresponding domain name <midlandheart.co.uk>. It also refers to an email from the Respondent toa tenant using the Domain Name which it says was “bound to cause confusion”.The Complainant contends that the Respondent had no prior rights to the name “Midland Heart”, pointing out that it applied to register its trademark in June 2007. It says that the Respondent does not need to use the Domain Name in order to represent tenants’ rights andthat no tenants appear to have joined his “club”.Finally, the Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant refers tothe fact that the Respondent has maintained the website content to which it has objected even though the Complainant has largelyresolved the alleged causes. The Complainant submits that the Respondent’s intent is to misrepresent the Complainant even thoughthere are viable alternative ways for him to have his criticism heard and acted upon.The Complainant asks that the Domain Name be transferred to it.
B. Respondent
The Respondent says that the Complainant has deliberately misrepresented the aims and objectives of the website as those of a single,bitter tenant. He states that the website was built by and for tenants of the Complainant and explains that a group of the Complainant’stenants met in winter 2006 to discuss the formation of a tenants’ association with the objective of demanding the high quality servicerequired by the relevant regulatory authority.As regards the requirement of the UDRP that the Domain Name is identical or confusingly similar to a mark in which the Complainanthas rights, the Respondent contends that under UK trademark laws it is permissible for two businesses to trade under the same nameproviding that they do not offer similar goods or services. According to the Respondent, the services offered by the tenants’ associationare in no way similar to those of the Complainant. The Respondent also contends that the words “Midland Heart” are generic and are
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used by other companies offering the same or similar goods and services as the Complainant.The Respondent submits that he has a right and legitimate interests in respect of the Domain Name. He notes that the Complainantdoes not have an exclusive right to the trademark “midland heart” except in the area for which it is registered and argues that he has alegal right to use it in other areas. He points out that tenants of the Complainant are entitled to call themselves “Midland Heart Tenants”.He records that use of the Domain Name began before he was notified of the Complaint.The Respondent further maintains that genuine, fair and non-commercial use of the Domain Name has been made since it wasregistered, in that the Domain Name and website to which it is directed serve as a medium through which tenants can express critical or appreciative comments about the Complainant, and advice, educate and support each other. He adds that it gives the Complainant achance to hear the opinions of tenants who are usually underneath its radar.As regards the Complainant’s allegation of bad faith registration and use, the Respondent submits that the reason why the Complainantdid not renew its registration of the Domain Name is irrelevant and points out that it was available for at least three months before heregistered it. He states that the Domain Name was registered and has been used for non-commercial purposes, and that it was notregistered to stop the Complainant from registering or using it, nor for the purpose of resale. He maintains that the comments posted onthe website about the Complainant are true and fair and notes that the Complainant has not instituted proceedings for defamation.In relation to his email referred to in the Complaint, the Respondent stated that he was replying to an email from a tenant of theComplainant which was itself a copy of a complaint previously sent by that tenant to the Complainant. According to the Respondent, thetenant was not confused and was merely acting on the suggestion made on the Respondent’s website to send him copies of complaintswhich had already been made to the Complainant. In the view of the Respondent, his reply to the tenant also made it clear that hisgroup was not the Complainant.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the DomainName is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests inrespect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. These requirementswill be considered in turn.
A. Identical or Confusingly Similar 
The Panel finds that the Complainant has registered and unregistered rights in its logo containing the words “midland heart”. The Panelfurther finds that the Complainant has unregistered rights in the word mark MIDLAND HEART. Although this combination of words hassome descriptive connotation, it is far from being generic and has evidently been used by the Complainant on a substantial scale. ThePanel considers that many tenants, suppliers and others dealing with the Complainant would understand MIDLAND HEART to identifythe Complainant, such that the Complainant has rights in this mark.The Panel finds that the Domain Name is confusingly similar to the Complainant’s logo and identical to the word mark MIDLAND HEARTfor the purposes of the first element of the UDRP, paragraph 4(a)(i). It is well established that this requires a comparison between thedisputed domain name and the complainant’s mark irrespective of the content of any website at the disputed domain name: seeparagraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The content of a respondent’s website maybe relevant to the second and third requirements of the Policy but does not affect the assessment of the first.As noted above, although the words “Midland Heart” have some descriptive connotation, they are not wholly generic. Even if, as theRespondent asserts, other entities also use the same or similar names, the Panel considers that for many people who deal with theComplainant, “Midland Heart” identifies the Complainant rather than other organizations. In the circumstances the Panel finds that manypeople would suppose that a website url or email address using the Domain Name is operated by the Complainant.The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
There has been a diversity of decisions under the UDRP as to the application of its second requirement in relation to the use of adomain name identical to a complainant’s mark for a website providing genuine criticism of the Complainant. This Panel adheres to theview expressed in
Fundación Calvin Ayre Foundation v. Erik Deutsch
,WIPO Case No. D2007-1947, and other cases, that such use isneither inherently incompatible with the UDRP, nor always permitted by the UDRP, and that its compatibility with the UDRP depends onthe circumstances.In particular, this Panel has identified the following criteria considered in the
Fundación Calvin Ayre Foundation
case,
supra
, as relevantin assessing whether a respondent had a right or legitimate interest for the purpose of the UDRP in a domain name identical to acomplainant’s mark:(a) Has the domain name been registered and is it being used genuinely for the purpose of criticising the owner of the mark?
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