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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Norton Peskett v. Domain Privacy / Tom Hampson

Case No. D2009-0724

1. The Parties

The Complainant is Norton Peskett of Suffolk, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Domain Privacy / Tom Hampson of Apple Valley, Minnesota, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nortonpeskett.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 3, 2009. On June 3, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On June 3, 2009, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on June 8, 2009. The Center verified that the Amended 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 on June 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2009. The Response was filed with the Center on June 27, 2009.

The Center appointed John Swinson as the sole panelist in this matter on July 8, 2009. The Panel finds that it was properly constituted. 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.

4. Factual Background

The Complainant is a law firm with five offices across the Norfolk/Suffolk coast of the United Kingdom. The firm has a long history, although its current trading name of "Norton Peskett" was not adopted until 1996. The Complainant does not have a registered trade mark in respect of its trading name.

The Respondent is an individual, currently residing in the United States of America. The Respondent is a former client of the Complainant. The Complainant acted for the Respondent in relation to the sale of property, and also acted for the Respondent`s father in probate matters.

The website operating from the disputed domain name contains the following introduction: "This Website describes my experiences as a client of Norton Peskett Solicitors". The Respondent`s website makes certain claims about the Complainant and its partners, primarily related to their handling of his father`s estate.

5. Parties` Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant (a firm of solicitors) commenced trading in England in the early 1830s, although at that time was known by the name of Edmund Norton. The firm`s name was Norton Peskett & Forward in the 1920s, however this was shortened to Norton Peskett on January 1, 1996. The firm currently has more than 100 staff in several offices, and over the past three years the Complainant`s turnover has exceeded GBP 14 million.

The Complainant has established a reputation in its name, in all the areas of law in which it specializes (criminal, conveyancing/property, family and personal injury). The Complainant has sponsored various sporting clubs and societies in the south-east of England, including the Norton Peskett Award for Best Innovation and Innovative Approach to Business.

The Complainant is the registrant of the <nortonpeskett.co.uk> domain name, which was registered on November 5, 1997. The Complainant`s website provides general information on the services the Complainant offers, the location of its offices and details of its personnel.

Through use of the name "Norton Peskett" over 13 years, the Complainant has acquired goodwill and a significant reputation in the name. The name has become a distinctive identifier associated with the Complainant and the services it provides. A Google search for "Norton Peskett" returns results which primarily relate to the Complainant (with the exception of the disputed domain name which the Respondent has registered). To the Complainant`s knowledge, there are no other businesses which use the name "Norton Peskett".

The Complainant has obtained unregistered trade mark rights in "Norton Peskett" through use of that name over the last 13 years in trade and commerce. The disputed domain name is identical to the Complainant`s common law trade mark.

The Respondent registered the disputed domain name on April 3, 2009. The Respondent has never been commonly known by the disputed domain name, and has acquired no trade mark rights in it. Nor has the Respondent made any use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant has never licensed or allowed any other party to use the "Norton Peskett" name, apart from in relation to sponsorship events.

The Respondent has elected to have his identity anonymised, and the Complainant believes the Respondent is a disgruntled former client who has previously made complaints against the Complainant. The relationship between the Complainant and Respondent ended in November 2007. The website operating from the disputed domain name refers to the Respondent`s experience as a client of the Complainant. This content is one-sided and is untrue and harmful to the reputation and goodwill of the Complainant. The sole purpose of the website appears to be to attack the honesty, credibility and integrity of the Complainant and its partners and employees.

The content on the Respondent`s website is highly defamatory and the only purpose of it appears to be to damage the Complainant`s business. This indicates that the Respondent has no rights in or to the mark "Norton Peskett".

Also, the content on the website contains unfounded allegations of professional misconduct, impropriety and criminal conduct which is clearly intended to cause harm and damage to the Complainant`s business, and tarnish its reputation. The motivation of the Respondent`s registration was clearly to disrupt the business of the Complainant.

The disputed domain name will unfairly disrupt the Complainant`s business because it is identical to the Complainant`s unregistered trade marks. The Respondent`s website is in all material respects identical to the website which the Complainant has previously used. The Respondent has done so to ensure that his website has the same get up and look and feel as the Complainant`s genuine website. The similarity will cause initial confusion particularly given the use of the Complainant`s common law trade mark in the disputed domain name. A deceptive use of another`s trade mark as part of a domain name cannot give rise to a legitimate interest in respect of the domain name.

The Respondent has a variety of avenues available to express his opinions, and he has already utilized some of those avenues (including complaining to the Legal Complaints Service). The Respondent is engaged in vexatious conduct which is intended to disrupt the Complainant`s business.

The Respondent`s registration of the disputed domain name to create a website intended to air grievances against the Complainant is an abuse of the domain name registration system, and as such the registration is in bad faith. The Respondent has no interest in maintaining the registration of the disputed domain name, other than to prevent the Complainant from registering it.

B. Respondent

The Respondent makes the following contentions:

The Complainant has failed to annex a copy of the Respondent`s registration agreement in Annex 2 of the Complaint.

The Complainant does not have a registered trade mark for "Norton Peskett". The name "Norton Peskett" is not widely known outside of the local area in which the firm does business. The sponsorship undertaken by the firm is of no relevance to their reputation as a law firm.

Prior to April 2009, the Complainant operated websites at two domain names: <nortonpeskett.co.uk> and <nortonpeskettbusiness.com>. Therefore the Complainant was clearly aware of the existence of ".com" TLDs, but made no attempt to register the disputed domain name for themselves. After the Complainant became aware of the Respondent`s website, they immediately registered a large number of additional domain names containing the term "Norton Peskett".

The Respondent is making a legitimate, non-commercial and fair use of the disputed domain name, without intent for commercial gain, or intent to misleadingly divert consumers.

The Respondent`s website is about the Complainant, and it is therefore reasonable to use the title "Norton Peskett Solicitors" and the disputed domain name. The website summaries the experiences of a former client. There is no attempt to misrepresent the website as the official website of the Complainant.

The right of free speech is a sacred right. Previous panels have stated that a United States-based website engaged in non-commercial criticism of a trademark owner`s activities enjoys First Amendment protection, even if the disputed domain name incorporates the Complainant`s trade mark.

The Respondent has no intention of selling, renting or otherwise transferring the disputed domain name to the Complainant, or its competitors. Nor does the Respondent have any intention of making a commercial gain from the website. The first sentence on the website`s primary landing page makes it clear that the website concerns the Respondent`s experiences, and there is no attempt to deceive visitors into thinking that they reached the official website of the Complainant. There is a clear public interest in maintaining the website to warn future potential victims.

The Respondent did not register the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The Complainant has at least 12 domain names that reflect the "Norton Peskett" name.

The Complainant and Respondent are not competitors. The disputed domain name was not registered by the Respondent primarily to disrupt the Complainant`s business. Rather it was registered to protect society at large, and vulnerable and elderly adults from becoming victims of the Complainant`s predatory behavior. The Respondent`s website is in the public interest. The Complainant is seeking to suppress free speech, and wish to hide their activities from public scrutiny.

The Respondent has never attempted to hide its identity from the Complainant - it is obvious who the Respondent is from the website. The use of a domain privacy service is common practice and is intended solely to discourage spamming. It is not evidence of any attempt to hide the Respondent`s identity.

The material on the Respondent`s website is not defamatory - all statements are either factually true, or clearly labeled as opinion. The Complainant has lied in its Complaint, by stating that the Solicitors Regulation Authority chose to take no action when the Complainant acted for both the buyer and seller in a real estate transaction. A written warning was issued and the Complainant was fined GBP 100.--. The Complaint also misleadingly refers to a claim made by the Respondent against the Complainant being struck out. This is technically truthful, but it was struck out because the Respondent chose not to lodge security for costs, not for any reason based on merits of the case. The substantive case of the claim was never decided.

The Complainant is seeking to deprive the Respondent of the disputed domain name solely for the purpose of suppressing the Respondent`s constitutional right to free speech. The Respondent requests that the Panel makes a finding that the Complainant has engaged in reverse domain name highjacking.

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in Paragraph 4(a) of the Policy):

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

A. Identical or Confusingly Similar

The Complainant does not hold any registered trade mark rights in its trading name, "Norton Peskett" and has therefore sought to establish common law trade mark rights in this term.

As mentioned above, the Complainant has been trading under the name "Norton Peskett" since January 1996 (over 13 years). Prior to this date and for a significant period of time, the Complainant traded under a similar name (Norton Peskett & Forward).

The Complainant has provided evidence of significant revenue derived under the NORTON PESKETT mark in recent years, as well as evidence of use of its trade mark in a wide range of sponsorship activities. The Complainant is a medium sized firm, with five offices and over 100 employees. The Panel also accepts that NORTON PESKETT is a fairly unique trade mark, as it comprises the surnames of the firm`s previous partners, and is not a descriptive term, or a term commonly used by third parties.

In light of the Complainant`s evidence, the Panel is satisfied that the mark NORTON PESKETT has become a distinctive identifier associated with the Complainant and its provision of legal services. It is well recognized for purposes of paragraph 4(a)(i) of the Policy that the Complainant`s rights are not limited due to the fact that the Complainant`s reputation and common law trade mark rights may not extend outside a particular geographic area in Norfolk/Suffolk.

The disputed domain name is identical to the Complainant`s trade mark of NORTON PESKETT.

Accordingly, the first requirement has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three ways in which a respondent can demonstrate rights or legitimate interests in a disputed domain name.

The Panel agrees with the Complainant`s assertions that the Respondent is not commonly known by the disputed domain name, has no trade mark rights in the disputed domain name, and is not using the name in connection with the bona fide offering of goods and services (as provided for inter alia under paragraphs 4(c)(i) and 4(c)(ii)).

The website operating from the disputed domain name is being used to publish certain information and comments regarding the Complainant. This information relates to a dispute between the Complainant and Respondent, which arose out of the Complainant acting as solicitor for the Respondent and the Respondent`s father.

This type of use currently made by the website by the Respondent in the Panel`s view is clearly non-commercial and is relevant to paragraph 4(c)(iii) of the Policy, which refers to a respondent 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 at issue.

While the Complainant states that it recognizes the Respondent`s right to free speech, the Complainant raises the following issues which it alleges tell against a finding of legitimate noncommercial or fair use:

1. the disputed domain name is identical to the Complainant`s trade mark;

2. the Respondent`s website is similar in look and feel or get up to the Complainant`s previous website, therefore leading to a higher likelihood of confusion and deception amongst Internet users;

3. the Respondent`s website contains defamatory, untrue and/or misleading statements, therefore taking it outside the realm of legitimate use.

Paragraph 4(c) of the Policy places the onus on the respondent to rebut the Complainant`s assertion of lack of rights or legitimate interest in the domain name. As set out in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, for the respondent to establish a legitimate interest under paragraph 4(c)(iii), the following circumstances must be found to exist:

1. the respondent`s use is legitimate noncommercial or fair use of the disputed domain name;

2. this use is without intent for commercial gain;

3. this use is without intent to misleadingly divert consumers; and

4. this use is without intent to tarnish the trademark of the complainant.

There is no firm rule that use of an exact trademark of another as a domain name for a legitimate complaints website is not legitimate use of the domain name. (See Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019).

There are currently two alternative approaches taken by panels in cases of criticism or protest websites:

1. The "Domain Name itself is misleading" approach - an approach where the focus is on the domain name, as opposed to the content of the website. This involves analysis as to whether the words used in the domain name make it clear that it is a protest site, for example, by adding the word "sucks" to a trade mark (see for example, LLOYDS TSB BANK PLC v. PAUL BRITTAIN, WIPO Case No. D2000-0231).

2. The "Complaints Site" Approach - an approach where the focus is the content on the website. The purpose of this approach is to determine if the website is a genuine complaints site, after carefully considering all of the circumstances. If so, paragraph 4(c)(iii) may be satisfied (see TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536).

This approach is also reflected in the "Overview of WIPO Panel Views" (located at www.wipo.int/amc/en/domains/search/overview/index.html):

"In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech web site, there are two main views. There is also some division between proceedings involving US parties and proceedings involving non-US parties, with few non-US panelists adopting the reasoning in View 2.

View 1: 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. [citations omitted] View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial. [citations omitted]"

This Panelist prefers View 2 for the reasons set out in the Legal & General decision (Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019). In applying this approach, the Panel makes the following findings:

- The Respondent`s website uses the title of "Norton Peskett Solicitors" in the title bar as well as in large font on the landing page, above a picture of a building with "Norton Peskett Solicitors" signage. In search results, the following line also appears due to the meta content description in the Respondent`s website: "A Description of My Experiences as a Client of Norton Peskett Solicitors" - it is not clear from this sentence that the Respondent`s experiences were bad, or that the website is critical. In the Panel`s view, the Respondent`s use of the title "Norton Peskett Solicitors" could initially mislead some Internet users, and combined with the fact that the disputed domain name is identical to the Complainant`s trade mark and trading name, the Respondent`s website could be mistaken for the Complainant`s official website.

- The layout or look and feel of the Respondent`s website is not similar to the look and feel of the Complainant`s current website (at "www.nortonpeskett.co.uk").

- The content of the website is clearly non-commercial, and there is no evidence of the Respondent`s intention to seek commercial gain in relation to the website in the future. The website documents personal experiences of the Respondent and provides advice to visitors. The majority of the comments appearing on the website which are detrimental to the Complainant are worded as opinion rather than fact. After moving past the title and the graphic on the landing page, it becomes obvious that the website is a criticism website. Whether statements on the website are defamatory is not within the scope of the Policy, and is therefore not a matter for this Panel to decide.

On balance, although not without some difficulty, the Panel finds that the Respondent has demonstrated a legitimate interest in the disputed domain name. The Panel is satisfied that the Respondent has demonstrated a real grievance against the Complainant, and has established the website at the disputed domain name for this purpose. The Respondent has not attempted to elicit money or other benefits from the Complainant in return for transferring the disputed domain name, or withdrawing its comments. There is no advertising on the website of the disputed domain name.

While some Internet users may be initially confused into thinking that the disputed domain name <nortonpeskett.com> is the Complainant`s official website, this belief is likely to be quickly dispelled by the content on the Respondent`s website. A Google search conducted by the Panel for "Norton Peskett" returned the Complainant`s website in the top spots, above the Respondent`s website, so that consumers looking for the Complainant`s official website are more likely to be directed to the Complainant`s website than the website under the disputed domain name. Finally, there is no evidence that the Respondent is promoting the disputed domain name or its website.

The fact that the Respondent is a disgruntled client is not detrimental to his case. The following comments from the Legal & General Decision are relevant here (albeit these comments relate to a previous employee as opposed to a previous client):

"A Panel cannot and should not try to distinguish between a disgruntled former employee and a genuine whistle-blower. In the view of the majority of the Panel, the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain."

Accordingly, the Panel finds that the Respondent has legitimate interests in the disputed domain name, and the second element has not been met.

The Panel does not agree that the Complainant brought this proceeding in bad faith. As stated above, there are certain factors which weigh in the Complainant`s favour in relation to the second element, and as such it is not appropriate to make a finding of reverse domain name hijacking.

C. Registered and Used in Bad Faith

Due to the findings above, it is not necessary to decide this issue.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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John Swinson
Sole Panelist

Dated: July 21, 2009