WIPO Domain Name Decision: D2009-0076

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0076.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION Midland Heart Limited v. Uton Black Case No. D2009-0076

1. The Parties
The Complainant is Midland Heart Limited of Birmingham, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by its 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 email on February 3, 2009. The Center transmitted its request for registrar verification to the Registrar on January 21, 2009. The Registrar responded on January 22, 2009, confirming that it was the concerned registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Name would expire on May 22, 2010 and would remain locked during this proceeding, and that the registration agreement was in English. The Registrar also stated that it had not received a copy of the Complaint, provided the full contact details in respect of the registration on its Whois database, and did not dispute that the Respondent had submitted in the registration agreement to the jurisdiction of the courts where it was located. By email of January 30, 2009, the Center informed the Complainant that the Complaint had formal deficiencies, in that it had not been submitted in electronic format nor in one original with four copies, that it did not specify a method of communication in hard copy to the Complainant, that it did not identify the Registrar, that it specified remedies which were not available under the UDRP, and that it did not certify 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 amended Complaint 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 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the

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WIPO Domain Name Decision: D2009-0076

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0076.html

proceedings commenced on February 12, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 4, 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 the Rules. Having reviewed the file, the Panel is satisfied that the Complaint (as most recently amended) complied with applicable formal requirements, subject to the issues addressed below, was duly notified to the Respondent and has been submitted to a properly constituted 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 copy of an email sent by the Respondent using the Domain Name to which the Complainant had referred in the Complaint; afforded the Respondent an opportunity to comment thereon by March 30, 2009; and extended the time for forward its decision to the Center until April 13, 2009. The Complainant forwarded a copy of the email concerned to the Center on March 17, 2009, and the Respondent forwarded 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 32,000 units of stock. It operates under the name “Midland Heart” and has registered a logo including this name as a trademark in the UK in classes 36 and 37. It has operated a website at “www.midlandheart.org.uk” since February 2006. It also registered the Domain Name and <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 and established a website criticizing the Complainant to which these domain names were directed in October 2008.

5. Parties’ Contentions A. Complainant
The Complainant acknowledges that there have been some maintenance issues with the property let to the Respondent over the past few months, but states that progress has been made and that the Respondent’s commentary on his website is seriously inaccurate and defamatory. The Complainant explains that its initial priority following the launch of the Respondent’s website was to resolve the problems which had led him to establish his website in the hope that he would then cease to use the site or remove the offending content. The Complainant alleges that its conciliatory approach was met with an escalation of defamation and trademark infringement on the part of the Respondent, 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 the part of its tenants in relation to the corresponding domain name <midlandheart.co.uk>. It also refers to an email from the Respondent to a 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 and that 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 to the fact that the Respondent has maintained the website content to which it has objected even though the Complainant has largely resolved the alleged causes. The Complainant submits that the Respondent’s intent is to misrepresent the Complainant even though there 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’s tenants met in winter 2006 to discuss the formation of a tenants’ association with the objective of demanding the high quality service required 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 Complainant has rights, the Respondent contends that under UK trademark laws it is permissible for two businesses to trade under the same name providing that they do not offer similar goods or services. According to the Respondent, the services offered by the tenants’ association are 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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WIPO Domain Name Decision: D2009-0076

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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 Complainant does not have an exclusive right to the trademark “midland heart” except in the area for which it is registered and argues that he has a legal 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 was registered, 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 a chance 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 Complainant did not renew its registration of the Domain Name is irrelevant and points out that it was available for at least three months before he registered it. He states that the Domain Name was registered and has been used for non-commercial purposes, and that it was not registered to stop the Complainant from registering or using it, nor for the purpose of resale. He maintains that the comments posted on the 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 the Complainant which was itself a copy of a complaint previously sent by that tenant to the Complainant. According to the Respondent, the tenant was not confused and was merely acting on the suggestion made on the Respondent’s website to send him copies of complaints which had already been made to the Complainant. In the view of the Respondent, his reply to the tenant also made it clear that his group 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 Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. These requirements will 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 Panel further finds that the Complainant has unregistered rights in the word mark MIDLAND HEART. Although this combination of words has some descriptive connotation, it is far from being generic and has evidently been used by the Complainant on a substantial scale. The Panel considers that many tenants, suppliers and others dealing with the Complainant would understand MIDLAND HEART to identify the 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 HEART for the purposes of the first element of the UDRP, paragraph 4(a)(i). It is well established that this requires a comparison between the disputed domain name and the complainant’s mark irrespective of the content of any website at the disputed domain name: see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The content of a respondent’s website may be 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 the Respondent asserts, other entities also use the same or similar names, the Panel considers that for many people who deal with the Complainant, “Midland Heart” identifies the Complainant rather than other organizations. In the circumstances the Panel finds that many people 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 a domain name identical to a complainant’s mark for a website providing genuine criticism of the Complainant. This Panel adheres to the view expressed in Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947, and other cases, that such use is neither inherently incompatible with the UDRP, nor always permitted by the UDRP, and that its compatibility with the UDRP depends on the circumstances. In particular, this Panel has identified the following criteria considered in the Fundación Calvin Ayre Foundation case, supra, as relevant in assessing whether a respondent had a right or legitimate interest for the purpose of the UDRP in a domain name identical to a complainant’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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WIPO Domain Name Decision: D2009-0076

http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0076.html

(b) Does the registrant believe the criticism to be well-founded? (c) Does the registrant have intent for commercial gain? (d) Is it immediately apparent to Internet users visiting the website at the domain name that it is not a website of the owner of the mark? (e) Has the respondent registered all or most of the obvious domain names suitable for the owner of the mark? (f) Where the domain name is one of the obvious domain names suitable for the owner of the mark, is a prominent and appropriate link provided to the latter’s website (if any)? (g) Where there is a likelihood that email intended for the complainant will be sent using the domain name in issue, are senders immediately alerted in an appropriate way that their emails have been misaddressed? Applying these criteria to the present case: (a) The Panel is satisfied that the Domain Name was registered and is being used genuinely for the purpose of criticizing the owner of the mark. (b) The Panel accepts that the Respondent believes the criticism to be well-founded, or at any rate that the contrary has not been shown. As observed in Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645, it is not the function of a Panel under the Policy to evaluate the merits of rival contentions on matters of public controversy. Unless it is clearly shown that the content is deliberately false and malicious, the principle of free speech must prevail. (c) The Panel accepts that the Respondent is not seeking commercial gain such as to delegitimize his use of the Domain Name. The Respondent may well hope that his and others’ criticism of the Complainant through his website will result in an improvement of service by the Complainant. However, an improvement in response to criticism is a normal and legitimate objective of criticism. It is to be contrasted with the situation where criticism is used to extort an unrelated benefit from the person criticised. The Panel does not find any such element in this case. (d) The Panel is not satisfied that it is immediately apparent to all Internet users likely to visit the Respondent’s website that it is not a website of the Complainant. While it would be apparent to most Internet users quite rapidly that it is a website complaining about the Complainant’s service, the Respondent’s home page does not present a disclaimer or other language which clearly and immediately tells the user that it is not the Complainant’s website. There is also a slight similarity in the general layout of the home page, and the buttercups on the Respondent’s website might recall the clover-leaf logo used by the Complainant. The Panel further bears in mind the diversity of the Complainant’s tenants and the possibility that some are not fluent in English. The Panel has considered the quotes of three of the Complainant’s customers reproduced in the Complaint. It appears to the Panel that two of these realised on accessing the Respondent’s website that it was not a website of the Complainant. However, the other does not appear to have realised the true position until he asked the Complainant’s staff about it. On the other hand, the Complaint does not provide details of the circumstances or direct evidence of the statement made by this customer, and the Panel can place only limited weight on it. In the circumstances, the Panel does not find this factor conclusive in the present case, but does regard it as a factor weighing in the balance against the Respondent. (e) The Respondent has registered two of the more obvious domain names suitable for the Complainant, namely the Domain Name and the corresponding domain name <midlandheart.co.uk>. Whether or not this could be said to constitute “most” of the obvious domain names suitable for the Complainant, the Panel regards it as a further factor weighing in the balance against the Respondent. (f) A link is provided on the Respondent’s homepage to the Complainant’s website, although it is not as clearly identified as it should be. The Panel regards this as a further point against the Respondent. (g) The Panel considers that there is a likelihood that members of the public will send email intended for the Complainant using the Domain Name. However, the Panel is not satisfied on the evidence that the Respondent has failed or will fail to make it clear to the senders of such emails that they have been misaddressed. The Panel sees no reason to reject the Respondent’s explanation relating to the email referred to in the Complaint. On balance, taking into account all of these considerations, the Panel has concluded that the Respondent’s use of the Domain Name is not such as to confer a right or legitimate interest in the Domain Name. In all the circumstances, the Panel finds that the second requirement of the UDRP is met in this case.

C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP identifies various circumstances which constitute evidence of registration and use of a domain name in bad faith. These are not exhaustive, but it is convenient to consider first whether they apply in this case before considering more generally whether the Domain Name was registered and is being used in bad faith. As to paragraph 4(b)(i), the Panel finds that the Respondent has not registered or acquired the Domain Name primarily for the purpose

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WIPO Domain Name Decision: D2009-0076

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of transferring it to the Complainant or a competitor of the Complainant at a profit. As to paragraph 4(b)(ii), the Panel is not satisfied that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. The Panel notes that the Complainant has registered and is using the corresponding domain name <midlandheart.org.uk>. Although the Complainant had previously registered the Domain Name and <midlandheart.co.uk>, it had allowed these registrations to lapse, and there is no evidence that the Respondent knew that the Complainant intended to re-register them. Nor is the Panel satisfied that the Respondent registered the Domain Name for the purpose of disrupting the business of a competitor within the meaning of paragraph 4(b)(iii). In the Panel’s view, the Respondent is not a competitor of the Complainant. Furthermore, it appears to the Panel that the Respondent does not regard his use of the Domain Name as disrupting the business of the Complainant, but rather as encouraging it to improve the performance of its operations. The Panel finds that the Respondent is not using the Domain Name for commercial gain. Accordingly, paragraph 4(b)(iv) of the Policy does not apply. Although none of the specific circumstances identified in paragraph 4(b) of the UDRP applies, it remains necessary to consider generally whether the Domain Name was registered and is being used in bad faith. As described above, the Panel finds that aspects of the Respondent’s use of the Domain Name are not entirely satisfactory. Nevertheless, the Panel is not satisfied that these deficiencies or any of the other circumstances of the case suffice to prove that the Domain Name was registered and is being used in bad faith. The Panel concludes that the third requirement of the UDRP is not met in this case.

7. Decision
For all the foregoing reasons, the Complaint is denied. Jonathan Turner Sole Panelist Dated: March 30, 2009

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