The Complainant is Access2leisure Limited of Douglas, Isle of Man, Crown Dependency of the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Gordon Lamont of Ardersier, Inverness, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name, <access2leisure.info> (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”).
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2009. On September 23, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an Amended Complaint (hereafter “the Complaint”) on October 2, 2009.
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 on October 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2009. The Response was filed with the Center on October 21, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 27, 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.
The Complainant is a holiday services company which was incorporated in the Isle of Man on September 17, 1985 under the name of Access Timesharing Limited. From at least December 2002 until about January 20, 2005 it traded under the name Club Access. On January 20, 2005 the Complainant changed its name to Access2Leisure Limited. Thereafter it has used the names “Discover Access”, “Club Access 2 Leisure” and “Access 2 Leisure” as trading names.
On July 26, 2007 the Respondent entered into a purchase agreement with the Complainant whereby he acquired a holiday certificate entitling him, subject to the making of certain payments, to a prescribed number of holiday weeks (and other benefits) over a three year period.
A letter addressed to the Respondent and dated July 26, 2007 commences “Welcome to Discover Access + plus, the introductory membership of Club Access 2 Leisure. With Discover Access + plus, not only does everything look simple, it is simple. We give you quality and choice, advice and service. In short, we can give you and your family superb holidays [sic] experiences. Discover Access + plus members have the right to (…) book up to 5 seven night stays at any of the Access 2 Leisure resorts”.
On June 11, 2008 the Respondent entered into a further purchase agreement with the Complainant, this one featuring a stylized banner heading reading “Club Access 2 leisure – Affordable Holiday Ownership”, the most prominent element of the banner being the name “Access 2 leisure”.
Following a holiday in October 2008, which the Respondent found unsatisfactory, the Respondent withheld further payments under his contracts with the Complainant and a dispute ensued, the upshot of which is that the Respondent has expressed a desire to terminate his contracts with the Complainant and by a letter of January 2, 2009 demanded a refund of GBP 2,500 from the Complainant. The Complainant claims to have terminated the contracts in March 2009, prior to registration of the Domain Name and contends that the Respondent owes the Complainant the unpaid sums under the contracts.
On March 23, 2009 the Respondent emailed the Complainant expressing disappointment at the failure of the Complainant to deal with his complaint and informing the Complainant of his plan “to initiate my complaint to the European Consumer Centre and put my experiences with your company on to the web forums and letting everyone know the contact details to the relevant people at the MTA.”
The Domain Name was registered by the Respondent on March 24, 2009.
On August 5, 2009 a lady lodged an online complaint to the Complainant by way of the Respondent's website. The Respondent forwarded the email onto the Complainant and wrote to the lady complainant stating “I am afraid that you have sent your complaint through the wrong website.”
The Domain Name is connected to a website headed “Access 2 leisure Info – useful information on Access 2 leisure” and features a reasonably prominent disclaimer reading:
“THIS SITE HAS NOTHING TO DO WITH THE HOLIDAY COMPANY ACCESS 2 LEISURE. IT HAS BEEN SET UP PURELY FOR CLUB MEMBERS AND EX MEMBERS TO SHARE THEIR EXPERIENCES, INFORMATION AND USEFUL CONTACT LINKS.”
On the website the Respondent sets out his story in full and has provided a forum area where visitors may lodge their comments. Most of the lodged comments are negative.
The Complainant contends that the Domain Name is confusingly similar to its unregistered trade mark ACCES2LEISURE.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Respondent denies the Complainant's allegations and contends that the website is a legitimate non-commercial information website for members of the Complainant's club and ex-members of that club.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
The Domain Name comprises the name, “Access2leisure”, and the generic domain suffix “.info”. It is well-established that the domain suffix may be ignored when assessing identity/confusing similarity.
The Panel is satisfied that the Domain Name is identical to the name, “Access2leisure”, which the Complainant has used in the course of business since at least December 2005. The name is not registered as a trade mark, so it remains to be determined if the Complainant can be said to have unregistered trade mark rights in respect of the name.
The Complainant by its production of examples of its trading documentation featuring the name has done enough to satisfy the Panel that the Complainant has been using the name in the course of business over the last three years and the fact that the Respondent and the visitors to the Respondent's website clearly all recognize the Complainant by that trading name satisfies the Panel that the Complainant does indeed have unregistered trade mark rights in respect of the name Access 2 Leisure. To put it another way, the Panel is satisfied that if a competitor set up in the holiday business in the United Kingdom/Isle of Man under the name “Access 2 Leisure”, the Panel is in no doubt that the Complainant could successfully restrain use of the name by way of a passing off action.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The factual background to this dispute is set out in section 4 above.
The Respondent is using the Domain Name to connect to what he claims is a site devoted to providing information to people who have signed up to the Complainant's “Access2leisure” club and former members of that ‘club'.
In reality, while the site offers visitors the opportunity to lodge favourable as well as unfavourable comments about the Complainant, the site is devoted to criticism of the Complainant and to providing information to complainants designed to assist them in furthering their complaints. It even features the home addresses of the Complainant's directors. It is what is commonly known as a gripe or criticism site.
Does the use of an entity's name for the purpose of a gripe site give rise to a right or legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy? The answer(s) to that question is/are to be found in paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which reads:
“2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?
This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico D2000-0477 among others, Transfer
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.
Relevant decisions:
Skattedirektoratet v. Eivind Nag D2000-1314, Transfer
Myer Stores Limited v. Mr. David John Singh D2001-0763, Transfer
Triodos Bank NV v. Ashley Dobbs D2002-0776, Transfer
The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez D2003-0166, Transfer
Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc. D2004-0136, Transfer
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.
Relevant decisions:
Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers D2000-0190, Denied
TMP Worldwide Inc. v. Jennifer L. Potter D2000-0536, Denied
Howard Jarvis Taxpayers Association v. Paul McCauley D2004-0014, Denied”
The Panel was the panelist in WIPO Case No. D2002-0763 (cited above) in which he took the view identified above as “View 1”. He is still of that view. The following passage from that decision is apposite:
“Respondent's Rights or Legitimate Interests
The Panel accepts for the purposes of this dispute that the Respondent has a genuine grievance against the Complainant and genuinely believes that the Complainant has behaved reprehensibly. The Panel further accepts that the Respondent's right of free speech entitles him fairly to express his views on the matter.
However, none of that entitles the Respondent to represent that he is the Complainant. In taking the Complainant's name in the way that he has, without adornment apart from the hyphen, the Respondent has misrepresented to a substantial number of visitors that he is the Complainant. The Respondent cannot sensibly deny that proposition. How else are the Complainant's customers likely to end up, as the Respondent hopes and anticipates, at the Respondent's website? While the Panel is prepared to accept that some of them may be speculative visitors, not certain where they are going, clearly a not insubstantial proportion of them will be would-be visitors to the Complainant's website.
The fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done. It does not lie in the mouth of the Respondent to deny that damage will be done to the Complainant, because that is precisely what he is setting out to achieve. He admits that he is seeking to warn off customers and/or would-be customers of the Complainant before they have any dealings or further dealings with the Complainant. The fact that that damage might in the Respondent's view represent the Complainant's just deserts is of no consequence.
The Panel is conscious that among panellists there are differing lines of thought on this topic, but the above represents the Panel's view as previously expressed in a number of previous cases including in particular [Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No.] D2001-0376. In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception.”
Here, as in that case, the Panel accepts for the purposes of this decision that the Respondent believes that he has a genuine grievance. The Panel also accepts that the Respondent has a right to express that grievance, but that right is not an unconditional right. As the judge said in the English case of Pankajkumar Patel v. Allos Therapeutics [13 June 2008] 2008 WL 2442985 when addressing the plaintiff's claimed human right to freedom of expression:
“This freedom is not unqualified, and must be balanced against the rights of others, such as the rights of a minority not to suffer abuse, or, as in this case, the rights of a trademark owner freely to enjoy its own rights and property.
It is generally considered to be in the public interest to provide free speech forums on the Internet to criticise companies and their actions. However, certain factors take the present case out of this general proposition. Mr Patel uses a domain name which is no more than the trading name of the company itself, without any additional indication to show that it is a protest site. More, the site adopts Allos's own trademark. In effect, Mr Patel is posing as Allos in order to attract members of the public to the site. It is intended that there should be confusion in the mind of the public. It is hardly free speech to use a domain name and trademarks that Internet users will (and are meant to) associate with Allos in order to trick those users.”
By the same reasoning the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. The disclaimer on the home page is of no assistance because by then the Internet visitor has already been deceived.
What were the Respondent's intentions when registering the Domain Name. Were they neutral and purely altruistic, governed by a desire to assist members of the public in gaining information on the Complainant's services (good and bad)? Or were they motivated by a desire to get even with the Complainant in light of what the Respondent believed to be the disgraceful behaviour of the Complainant? Did the Respondent hope that in registering the Domain Name and launching the gripe site the Complainant would capitulate to the Respondent's demands and pay up the GBP 2,500, which the Respondent was then demanding by way of compensation?
Given the Respondent's level of ire at the Complainant's behaviour, the Panel is unable to accept that the Respondent's motivation behind registration of the Domain Name was neutral and purely altruistic. Moreover, while the Respondent now says that he has dropped his demands for any compensation, the Panel believes it to be probable that the Respondent was at least in part motivated to recover financial recompense for the damage caused to him by the Complainant.
Unauthorised use of somebody else's trade mark for a domain name as a lever in negotiations to resolve a dispute with the trade mark owner is not a bona fide use of the domain name system. Registration and use for such a purpose, which is likely to lead to deception of Internet users, attracting them to the site in error, and which is calculated to bring pressure to bear on the trade mark owner for the purposes of the negotiations constitutes, in the view of this Panel, registration and use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <access2leisure.info> be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: November 9, 2009