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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Joseph Dello Russo M.D. v. Michelle Guillaumin

Case No. D2006-1627

 

1. The Parties

Complainant is Joseph Dello Russo M.D., Bergenfield, New Jersey, United States of America, represented by INC Business Lawyers, West Vancouver, British Columbia, Canada.

Respondent is Michelle Guillaumin, Houston, Texas, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <dellorusso.info> and <dellorussosucks.com> are registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2006. On December 22, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain names at issue, and Register.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for both disputed domain names and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 2, 2007.¹

The Center appointed David H. Bernstein, Sandra Franklin, and Richard G. Lyon as panelists in this matter on April 4, 2007.² The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The facts upon which the Panel bases its decision are straightforward, supported by competent evidence, and, because of Respondent’s default, undisputed.

Complainant is a recognized leader in ophthalmological surgery. He has used his name to market his services and holds a trademark registered on the principal registrar of the United States Patent and Trademark Office in his last name for ophthalmology services and optometry services in Class 44. He applied for this trademark in January 2005, claiming a first use in commerce of 1985, and the mark issued in November 2006. He has spent and continues to spend considerable sums, sometimes exceeding $1 million in a given year, in advertising to promote his medical practice.

Little is known of Respondent beyond what the registrar’s confirmation and Whois database reveal about her. She appears to be an individual residing in Houston, Texas, United States of America. In his Declaration in support of the Complaint, Complainant states that he has no record indicating that Respondent or her child was a patient of his.

Respondent registered the disputed domain names in January 2005. The disputed domain name <dellorussosucks.com> has never resolved to an active website; an internet user entering this domain name in his browser gets a standard registrar’s page. During 2006 the <dellorusso.info> domain name resolved to what is commonly known as a criticism site, at which Respondent stated “I am a nurse” and “one of my kids was hurt by Dr. Dello Russo.” The website included a number of statements critical of Dr. Dello Russo’s abilities, ethics, integrity and business practices, and has factual statements questioning Dr. Dello Russo’s advertising.³ At no time did this website contain any links or other commercial content.

Failure by Register.com to place <dellorusso.info> on register lock as required by paragraphs 3.7.5.7 of the ICANN Expedited Domain Deletion Policy allowed the registration to expire shortly after the Complaint was filed. Immediately following expiration Complainant registered this domain name. Complainant’s counsel confirmed to the Registrar his consent that this disputed domain name will remain on registrar lock pending the Panel’s determination in this proceeding.

The disputed domain name <dellorusso.info> today resolves to a website containing pictures of handwritten letters and postcards commending Dr. Dello Russo for his services. In Procedural Order No. 1, issued April 13, 2007, the Panel requested that Complainant confirm that he is responsible for the current site content; Complainant did confirm this in a submission dated April 17, 2007.

 

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Rights in a Mark. Complainant has rights in his last name, Dello Russo, by reason of his federally-registered service mark and continuous use of his name as an identifier of the optomological services that he provides. The disputed domain name <dellorusso.info> is identical to the DELLORUSSO mark and the disputed domain name <dellorussosucks.com> is confusingly similar to it. In support of this latter contention Dr. Dello Russo cites to the WIPO Overview and its consensus view that adding a derogatory word to mark deserving of protection under the Policy does not obviate confusion.

Rights or Legitimate Interests. Complainant has never authorized Respondent to use his name or trademark; there is nothing in the record to suggest that Respondent has ever been commonly known, professionally or personally, by the name DELLORUSSO. Any use of Complainant’s service mark without permission is a “trademark infringement in the most classical sense.” Respondent cannot seek refuge under Paragraph 4(c)(iii) of the Policy.⁴

As to <dellorussosucks.com>, Respondent has never made any use of the disputed domain name. As to <dellorusso.info>, while Respondent may be free to express her opinions of Dr. Dello Russo, she may not take advantage of Complainant’s own valid interest in its mark. Complainant thus cites the “initial interest confusion” line of cases discussed below.

Bad Faith. Given the content as of December 2005 at one of the disputed domain names, Respondent was clearly aware of Dr. Dello Russo and his use of his name. Her registration of the disputed domain names was thus an attempt to “appropriate Complainant’s established and widely-recognized mark.” Under the initial interest confusion line of cases and Policy decisions, registering and using a domain name that incorporates Complainant’s mark as its dominant feature misleads Internet users into believing that the content of Respondent’s website is somehow sponsored or condoned by Complainant. Under the initial interest confusion line of cases bad faith in both registration and use is made out as to the disputed domain name <dellorusso.info>. As to the disputed domain name <dellorussosucks.com>, Respondent’s non-use of this mark for two years permits the Panel to infer bad faith in registration and use under the well-established “warehousing doctrine,” See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Complainant has clearly established his rights in the DELLORUSSO service mark by virtue of his federally-registered service mark and continuous use in commerce of that mark for more than twenty years. The disputed domain name <dellorusso.info> is identical to Complainant’s mark except for the top-level domain identifier. The disputed domain name <dellorussosucks.com> is confusingly similar, at least for purposes of paragraph 4(a)(i).⁵ This approach is consistent with universally accepted practice in all cases that inclusion of a subsidiary word to the dominant feature of the mark at issue does not obviate any confusion. E.g., Microsoft Corporation v. Rave Club Berlin, WIPO Case No. D2002-0890.

The only significant issue for the Panel to decide is whether Respondent comes within the safe harbor of Paragraph 4(c)(iii) of the Policy by virtue of her use of the disputed domain names. The analysis and conclusion under this Policy element differ between the two disputed domain names.

A. The <dellorusso.info> domain name.

Respondent used this domain name for a criticism site. Whether such use is “legitimate” under paragraph 4(a)(ii) of the Policy is an issue that has divided panels in UDRP proceedings and United States of America courts. The WIPO Overview, paragraph 2.4, identifies two opposing views, neither of which is accorded majority status. View 1 follows the “initial interest confusion” doctrine first articulated by the United States Court of Appeals for the Ninth Circuit in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F. 3d 1036 (1999), that “the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.” View 2, contra, is a bright-line rule that a “respondent has legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.” Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, is the case most often cited in support of View 2. Although covering relatively few cases, this split in authority has provoked spirited discussion by Panelists on both sides of the controversy; compare, for example, Howard Jarvis, supra, with Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175. These and other cases set out the arguments for the two respective positions and the Panel sees no need to repeat those arguments here except as necessary to resolve this proceeding.

In this proceeding both parties are United States citizens, each with a guaranteed right under the First Amendment to the Constitution freely to express his or her views on any subject, subject only to civil or criminal sanctions should the expression cross legal boundaries of defamation, fraud, or other liability for false statements. While Complainant challenges the accuracy and completeness of some of Respondent’s statements, the site content is generally personal opinion and, to the extent possible to determine without further proceedings expressly limited by the Policy, may be characterized as fair commentary on Complainant’s business practices. The evidence indicates Respondent’s site is entirely non-commercial. So the Panel must decide between the competing lines of authority.

As to a domain name that is identical to Complainant’s mark, a majority of the Panel believes that the initial interest confusion approach more accurately accords with the language and purpose of the Policy, both of which are directed against misleading Internet users as to ownership and sponsorship of a website maintained at the domain name at issue. Respondent’s selection of Complainant’s name for her criticism site allows her to make use of Complainant’s service mark – in a manner that would lead an ordinary Internet user initially to believe that Respondent was Complainant or that Respondent had Complainant’s permission to distribute her message. Such use is not legitimate under paragraph 4(a)(ii) of the Policy, and the safe harbor of paragraph 4(c)(iii) is not available because Respondent undeniably intended “to misleadingly divert consumers.” This diversion was obviously intended when Respondent registered both disputed domain names, which is enough to establish registration and use in bad faith under paragraph 4(a)(iii). Because <dellorusso.info> is identical to Complainant’s mark and is thus not itself expressive, Respondent has no right or legitimate interest in it.

As noted in the initial interest confusion line of cases, this reasoning in no way abridges Respondent’s freedom to criticize Complainant. She is merely prevented from broadcasting her criticism from Complainant’s soapbox, taking advantage of Complainant’s mark to reach her intended audience.

The Panel appreciates the dissent’s concern, expressed here and in other cases, that the initial interest confusion doctrine may lead to different results under United States trademark law and the Policy.⁶ The Policy was adopted to provide a straightforward and inexpensive alternative to litigation for resolving a limited category of disputes, those involving cybersquatting. While narrow in application, the goal of the Policy is to create, to the extent possible, its own rules of decision and underlying rationale, drawn from principles of law from various jurisdictions but intended ultimately to stand on its own. To achieve that objective requires panelists to use the language of the Policy as its standard occasionally to depart from the trademark law of certain jurisdictions. That such differences may grant a panel authority to impose a remedy perhaps not available under trademark United States law is authorized by the consent given by each domain name registrant to the Policy, and is a necessary corollary of the first-come, first-served system of the registration of domain names. Respondent was able to register the disputed domain names on a showing of nothing more than their availability in the Whois database. She did not make (and was not required to make) any showing of entitlement and the registrar did not make (and was not permitted to make) any investigation of interference with the rights of others. Her agreement with the registrar’s terms and conditions included consent to resolution of this dispute in accordance with the Policy and in consequence her agreement to Policy precedent. An agreement to arbitrate may invest the arbitrator with authority not otherwise available at law. Mastrobuono v. Shearson Lehman Hutton Inc., 514 U.S. 52, 58 (1985). There is no reason why this principle should not apply to administrative proceedings under the Policy, particularly given the limited remedies available in a Policy proceeding⁷ and the ability of a dissatisfied loser immediately to commence an action de novo in court.⁸

B. The <dellorussosucks.com> domain name.

Even though Respondent has never used it for any purpose other than a placeholder, this disputed domain name raises a question independent of the content of Respondent’s active site: Is posting this name as an Internet website itself Respondent’s “speech” entitled to First Amendment protection? At least one American court has held that it is. See The Taubman Co. v. Webfeats, supra, at 778. If that be the case, does the First Amendment confer a “right” on Respondent under paragraph 4(a)(ii) of the Policy?

These questions require an analysis different from that made above under paragraph 4(a)(i) of the Policy. The latter is a mechanical (though reasoned) comparison of the appearance, spelling, sound, and other objective characteristics of the disputed domain name against those of the mark,⁹ without regard to the content of the site.¹⁰ The First Amendment issue, in contrast, touches on application of national law to the facts of the proceeding. That the source of the national law in the present proceedings is the Bill of Rights demands special attention.

The phrase making up this domain name is undoubtedly expressive; in fact its message is clear and unmistakable to any English speaker and very likely to others familiar with certain words and phrases whose meanings and expressive qualities transcend a single language, such as “OK.” The rationale most often given for the “majority rule” for paragraph 4(a)(i) analysis, that non-English speakers may not readily distinguish the derogatory nature of the word “sucks,”¹¹ even if a valid argument in other contexts (which this Panel doubts), carries little force where, as in this proceeding, the mark-owning service provider has a practice located in a single city in an English-speaking country.

The rationale for applying the initial interest confusion doctrine in Policy proceedings, that “harm results from the confusion caused by the initial attraction to the site by means of borrowing the complainant’s mark,”¹² is similarly weakened when a word of uniformly derogatory meaning dilutes the likelihood of initial confusion. See The Taubman Co. v. Webfeats, supra, at 778, Justice for Children v. R neetso / Robert W. O’Steen, supra (decision based in part upon identity of mark and domain name).

A different majority of the Panel concludes that, in a proceeding involving parties resident in the United States of America, the free speech guaranty of the First Amendment to the Constitution confers a right or legitimate interest on the use of a domain name that itself is an expression of opinion, at least in the absence of other evidence that the registration of this domain name was merely a pretext for cybersquatting, see, e.g., Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

This right cannot be set aside under the Telstra line of decisions, as posting a domain name is little different from publishing commentary on a billboard. Though a one-time act the message is delivered each time the message is read. Free speech rights are not limited in time. And the Telstra doctrine presupposes no right in the domain name at the time it is registered.

 

7. Decision

By majority vote (see Rules, paragraph 15c)), the Panel orders that:

(a) as to the disputed domain name <dellorusso.info> the Complaint is granted (Mr. Bernstein dissenting); and

(b) as to the disputed domain name <dellorussosucks.com>, the Complaint is denied (Ms. Franklin dissenting).

Richard G. Lyon Presiding Panelist
David H. Bernstein Panelist (Dissenting as to part 6-A)	Sandra J. Franklin Panelist (Dissenting as to part 6-B)

Dated: April 27, 2007

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Opinion concurring in part and dissenting in part:

While I concur with the result in the <dellorusso.info> domain name case, I must respectfully dissent from my colleagues on the decision regarding <dellorussosucks.com>. This Panelist finds that Respondent’s election to use the <dellorusso.info> domain name for criticism, rather than the <dellorussosucks.com> domain name (which remains devoid of content), a complicating factor. That election is an indication that Respondent is purposely misleading Internet users looking for Dr. Dello Russo into a criticism site, when it could easily have posted the criticism at a “soapbox” it already owns, namely the <dellorussosucks.com> domain name. I must respectfully disagree with the majority that “posting a domain name is little different from publishing commentary on a billboard.” Publishing obvious critical commentary on a billboard is very different than usurping a registered trademark, misdirecting patients or potential patients, and then leaving the more appropriate “billboard” or “soapbox” empty. If the Panel had the benefit of a response from Respondent, or if the commentary at <dellorusso.info> had been posted at <dellorussosucks.com>, this dissent may have been different. As it is, this Panelist finds that free speech is not served by endorsing the way Respondent chose to use the two domain names.

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Sandra J. Franklin
Panelist

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Opinion concurring in part and dissenting in part:

I join the portion of the majority opinion concerning the <dellorussosucks.com> domain name. However, because I believe the Complaint also should be denied with respect to the <dellorusso.info> domain name, I respectfully dissent from that portion of the decision.

As the majority opinion notes, there has been a historical split among panels with respect to non-commercial criticism sites located at <trademark.TLD> domain names (like the <dellorusso.info> domain name at issue in this proceeding). For the reasons expressed in Howard Jarvis Taxpayers Assoc. v. Paul McCauley, WIPO Case No. D2004-0014, I continue to believe that such non-commercial criticism sites, even when located at <trademark.TLD> domain names, constitute a legitimate interest under the Policy and thus should not be transferred to complaining trademark owners.

The alternative view, which has been adopted by the majority here, is not supported by the Policy or by United States trademark law. As the majority notes, paragraph 4(c)(iii) provides as an example of how to demonstrate rights or legitimate interests in a domain name that the registrant is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” It may be correct, as the majority notes, that use of <dellorusso.info> might misleadingly divert consumers to Respondent’s website, but it is undisputed that Respondent has exhibited no “intent for commercial gain” through her website. In these circumstances, even if a <trademark.TLD> domain name might initially divert consumers, and even if that diversion might be misleading because the domain name does not, on its own, communicate that the website is not operated by the trademark owner, the exception of paragraph 4(c)(iii) cannot apply because there is no intent for commercial gain, and that phrase is a critical component of paragraph 4(c)(iii). Ryanair Ltd. v. Michael Coulston, WIPO Case No. D2006-1194 (“if the diversion of traffic was not made misleadingly with an intention of realizing some commercial gain, it does not fall under the language of the Policy, which is intended to address commercial diversions”); Xtraplus Corp. v. Flawless Computers, WIPO Case No. D2007-0070 (March 9, 2007).

Nor is the majority’s view supported by United States trademark law. The majority states that it is following the Ninth Circuit’s decision in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F. 3d 1036 (1999), for the proposition that initial interest confusion may be actionable under the Lanham Act. But, Brookfield involved a completely different situation – in Brookfield, the registrant of the domain name was a direct competitor who misleadingly diverted consumers for commercial gain. The Court of Appeals noted that any initial interest confusion of consumers was actionable in that case because the confusion might very well have effected the purchase decision. In other words, even if the consumer, at the time of purchase, was no longer confused, the consumer was nevertheless diverted to the competitor because of initial interest confusion and it was not worth the effort to go back and try to find the trademark owner because the competitor was able to offer an acceptable substitute product. Here, in contrast, any consumer who is looking for Dr. Dello Russo and who is initially diverted to <dellorusso.info> would immediately realize that the site is not Dr. Dello Russo’s and would have no problem clicking on the “back” button of his or her Internet browser to go back to the search results and find Dr. Dello Russo’s authorized site.

Definitive proof that Brookfield does not support transfer of the domain name in this case is that, in a directly analogous case (also, coincidentally, involving a patient’s complaint about medical services), the Ninth Circuit subsequently refused to transfer a <trademark.TLD> domain name that was being used only for a non-commercial website. Bosley Medical Institute v. Kremer, 403 F.3d 672 (9th Cir. 2005) (finding no cybersquatting where use of “www.bosleymedical.com” was used as a noncommercial complaint website). Indeed, Bosley Medical is part of the continuing trend of federal circuit courts that have held that, in cases involving non-commercial criticism cites, United States trademark law does not support challenges to the registration, ownership and use of <trademark.TLD> domain names. See, e.g., Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (finding no cybersquatting by criticism website <fallwell.com> where there was no likelihood of confusion because no one would believe that Rev. Falwell was sponsoring the website himself from the contents); TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004) (reversing transfer of <trendmakerhome.com> website used to criticize plaintiff’s TrendMake Home houses because defendant’s non-commercial criticism site is not actionable cybersquatting); Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004) (refusing to order transfer of <lucasnursery.com> domain name where it was used for legitimate criticism site and defendant showed no intent to mislead visitors or commercially profit from use of the domain).

The majority acknowledges the existence of this contrasting authority, but indicates that the Panel need not conform its decisions to United States law. I believe that is a serious error. If decisions issued under the Policy are inconsistent with the way the same cases would be resolved in court, it will invite losing parties to file more challenges to Policy determinations, and the resulting court decisions overturning panel decisions will reduce the public’s confidence in the UDRP system. If, instead, panels try to conform their UDRP decisions to the national law that would apply if the same dispute were pursued in court, that would help ensure consistent application of the law, would discourage unnecessary litigation, and would show that the UDRP is a fair alternative to national court litigation for resolution of these kinds of domain name disputes. See Richard Starkey v. Mr. Bradley, NAF file No. 874575 (Bernstein, dissenting).

Because I believe that trademark law, the Policy, and sound public policy all are aligned in the support of protecting noncommercial criticism, I would rule for Respondent on this domain name as well.

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David H. Bernstein
Panelist

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¹ The Center's tracking record for delivery of the Complaint indicates delivery to Respondent in Houston, Texas, United States of America. There is thus no issue regarding due notice or the Panel's jurisdiction over this proceeding.

² The error by Register.com and subsequent communication between the Center and Register.com discussed in the following section delayed the proceeding somewhat.

³ Complainant provides a page from the wayback machine, “www.archive.org”, displaying this content.

⁴ Paragraph 4(c)(iii) provides as an example of how to demonstrate a right or legitimate interest: "(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

⁵ As noted at p. 6 infra, the test for similarity under paragraph 4(a)(i) differs from whether the subsidiary word obviates confusion sufficiently to place an expressive domain name within the protection of the First Amendment.

⁶ Not all decisions in the United States agree on the First Amendment basis upon which the Howard Jarvis line of cases rests, however. We leave for another day and proper case whether a statute or uniform rule of decision would dictate a different result.

⁷ A successful plaintiff under the Lanham Act may obtain substantial damages and an injunction, a fact that has influenced several of the United States Courts that have not followed the initial interest confusion doctrine. The Taubman Co. v. Webfeats, supra; TMI Inc. v. Maxwell, supra.

⁸ While the Panel considers Complainant's posting of new content on this website to be inconsistent with his undertaking to abide by standard register lock during the pendency of this proceeding, such conduct does not allow the Panel to disallow the Complaint on equitable grounds. Only truly egregious conduct would justify a different result once Complainant satisfied the tests in paragraph 4(a) of the Policy.

⁹ Sharman License Holdings, Limited v. Gregg Smitherman, WIPO Case No. D2004-0375.

¹⁰ Overview, paragraph 1.2 and cases cited.

¹¹ Overview, paragraph 1.3 and cases cited.

¹² Justice for Children v. R neetso / Robert W. O’Steen, supra.