The Complainant is General Steel Domestic Sales, LLC d/b/a General Steel Corporation of Littleton, Colorado, United States of America (“U.S.”) represented by David S. Fein, Esq., U.S.
The Respondents are PRQ Inet KB, Gottfrid Swartholm (“PRQ”) of Stockholm, Sweden, internally represented and Ethan Chumley (“Chumley”) represented by Leyendecker & Lemire, LLC.
The disputed domain name <generalsteelscam.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 26, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 26, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011.1 The Response was filed with the Center on November 16, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on November 24, 2011. 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 disputed domain name was registered on May 11, 2011. According to the Complaint and the affidavit of N. Wright, Vice President of the Complainant annexed thereto, the Complainant has since 1995 manufactured and marketed pre-fabricated steel buildings under the name and trademark GENERAL STEEL. It is the owner of a U.S. Federal Trademark Registration for the trademark GENERAL STEEL and logo dating from December 2002. It has extensively advertised its products and services under its name and trademark on the radio and through other media, spending approximately USD 60 million over the past 16 years. In that time it has produced and sold approximately 18,000 buildings. It owns the domain name <gensteel.com> and operates a website at that domain name generating about 600,000 unique visits since 2008.
The Complainant is currently in litigation in the State of Colorado against a competitor and former employee E. Chumley and his company Armstrong Steel (“the Colorado litigation”).
The Respondent is an Internet service provider based in Sweden providing website hosting services. It claims to be a firm believer in free speech, commerce and the right to privacy and anonymity. According to the Complainant, controversial websites hosted by the Respondent include sites promoting paedophilia, copyright piracy, including Pirate Bay, and other controversial websites, including WikiLeaks and that the Respondent derives substantial revenue from its activities.
In the Colorado litigation the Complainant issued a subpoena to the Registrar to produce all documents relating to the disputed domain name and all communications with the defendants in the Colorado litigation.
The Complainant contends that:
- It has established rights and reputation in the trademark GENERAL STEEL and that the disputed domain name is deceptively similar to that trademark. The Complainant contends that the addition of the word “scam” to its GENERAL STEEL trademark does not mitigate the overall confusing nature of the disputed domain name. It cites in support Anastasia International, Inc v. Whois Privacy Protection Service, Inc. / Jim McDonald, WIPO Case No. D2010-0235, and the cases there cited, in support of its contention.
- The Respondent has no rights or legitimate interests in the disputed domain name and is using it to further the commercial interests of General Steel’s former employee E. Chumley and competitor Armstrong Steel and those of their attorney.
- The disputed domain name was registered in bad faith because it is a “blatantly false and derogatory website started by General Steel’s competitor who is seeking to hide his identity through” the Respondent.
- The disputed domain name was registered only days after the Colorado Attorney General issued subpoenas to E. Chumley relating to deceptive trade practices.
- The disputed domain name is being used primarily for the purpose of disrupting the business of the Complainant.
The Respondent contends that:
- The disputed domain name is not confusingly similar to the Complainants’ trademark and that it is obvious from the use of the word “scam” that it does not seek to confuse or deliberately mislead anyone.
- It has both rights and legitimate interests in the disputed domain name; the information displayed on the website is of general public interest and protected under Swedish and international freedom of speech laws.
- The fact that the Respondent has hosted several other freedom of speech related sites is not relevant to the case at hand, nor is its financial situation.
- The disputed domain name is being used for the spreading of information for the public knowledge and has nothing to do with malice.
- Whether or not the information provided at the website of the disputed domain name is misleading or untrue is not relevant to the disputed domain name but is a matter for a civil law suit in the appropriate Court.
The Complainant has demonstrated substantial and extensive use of the trademark GENERAL STEEL and is the owner of a U.S. Registered Trademark in which the words GENERAL STEEL constitute the dominant part.
The Panel therefore finds that the Complainant has established rights in the trademark GENERAL STEEL.
The disputed domain name commences with, and wholly contains, the Complainants’ trademark. The addition of the generic word “scam” is in this Panel’s view not sufficient to distinguish it from the Complainants’ trademark and does not serve sufficiently to diminish the confusing similarity between the trademark and the disputed domain name. That has been the consensus view of panelists since the early days of the administration of the Policy, see, e.g., Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The Panel agrees with that view and therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The owner of the disputed domain name, and the Respondent in these proceedings, is a Swedish Internet service provider which appears to specialize in hosting “freedom of speech” websites including a number of controversial sites. The website at the disputed domain name contains a number of postings which, on their face, appear to have been made by individuals complaining about the Complainant and its goods and services. The website does not, on its face, have any commercial purpose, such as by linking to sponsored or other commercial websites.
As discussed in the carefully reasoned decision of the learned panelist in Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, there is a split amongst panelists as to whether the use of a domain name containing a trademark for a criticism site constitutes a legitimate interest under the Policy. The more widely accepted of the two competing views is that such use can be considered a legitimate interest. The foundation of that view is the strong commitment to free speech based on the First Amendment to the U.S. Constitution. The factors influencing the decision, enumerated in the Semo case, discussed supra, included facts that both parties were resident in the U.S., the registrar was located in the U.S. and the location of mutual jurisdiction was in the U.S. In the present case, the Complainant, the registrar and the location of mutual jurisdiction are all in the U.S., but the Respondent is in Sweden. Nevertheless, the underlying principle of respect for freedom of speech is also a principle of Swedish law. Accordingly, this Panel is of the view that, absent strong contrary considerations, the Respondent may have a legitimate interest in the disputed domain name notwithstanding that the website which it operates at the disputed domain name may be harmful to the Complainant.
The Complainant contends however, that it is not the Respondent who is the true owner of the disputed domain name and the operator of the website to which it resolves. The Complainant contends that the true owner and operator is E. Chumley and his company Armstrong Steel, the defendants in the Colorado litigation. The Complainant has not, however, adduced any evidence to support that contention save to assert an inference based on the fact that the disputed domain name was registered shortly after the Colorado Attorney General issued subpoenas which, the Complainant asserts, were based on evidence of the defendant’s deceptive trade practices disclosed in the Colorado proceedings. The Complainant states that it has “substantial evidence linking E[.] Chumley and Armstrong Steel to the disputed domain name as summarized in Annex 8 to the Complaint”. Annex 8 however, does no more than state that the disputed domain name was registered shortly after the commencement of an investigation by the Colorado Attorney General and that the website at the disputed domain name contains false information about General Steel and its past and present employees. The Complainant states further that the disputed domain name is not directly at issue in the Colorado proceedings but that the Complainant believes that the evidence it has obtained will prove that the defendants in those proceedings are behind the disputed domain name. The Complainant has not, however, produced any such evidence, nor has it produced, or even referred to, any documents which it obtained on subpoena to the Registrar, which would implicate E. Chumley or Armstrong Steel in the registration or use of the disputed domain name.
It is clear from the Policy and well recognized in previous cases under the Policy, that the onus is on the Complainant to establish, on the balance of probability, each of the three necessary circumstances for success of a Complaint enumerated in paragraph 4(a) of the Policy (see for example, TABCORP Holdings Limited and TABCORP Assets Pty. Ltd v. Steven Hertzberg, WIPO Case No. D2000-0566). The Complainant has failed to discharge that burden.
The Panel therefore finds that the Complainant has failed to show that the Respondent has no rights or legitimate interests in the disputed domain name.
For the Complaint to succeed, all of the circumstances enumerated in paragraph 4(b) of the Policy must be shown. In the light of the Panel’s finding under paragraph 6B above, the Complaint must fail, and it is therefore unnecessary to further consider the questions of whether or not the disputed domain name has been registered and used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Sole Panelist
Dated: November 20, 2011
The Panel delivered the above prior decision in this matter on November 20, 2011. Following receipt of the decision the Complainant’s attorney wrote to the Center pointing out that the Panel’s statement on page 4 of the Decision, that the Complainant had failed to adduce evidence linking Ethan Chumley and Armstrong Steel to the disputed domain name was incorrect and pointed to the content of Annex 8 to the Complaint. The Panel, after consultation with the Center, investigated the matter and discovered that, while the complete case file had been fully transmitted electronically, due to a printing error, page 2 of Annex 8 and the substantial exhibits thereto were not printed and were not taken into account by the Panel in stating its conclusions. Having considered that material the Panel concluded that it should have been taken into account, and pursuant to general panel powers under UDRP Rule 10 to conduct the administrative proceeding and to ensure that the parties are treated with equality, the Panel caused to be issued the Procedural Order No. 1 annexed to this Decision.
The Procedural Order was served upon the Complainant and the Respondent on January 9, 2012 and on Chumley on January 16, 2012. The time for response to the Order was seven days from the date of service. The Complainant’s further filing was made on January 16, 2012. Filings by the Respondent and on behalf of Chumley were made on January 23, 2012. The Panel finds that the filings by the Complainant and by Chumley were timely made. The filing by the Respondent was out of time, nevertheless, in the circumstances of this case the Panel, in the exercise of its discretion, admits the Respondent’s further filing.
The Panel having now considered the material contained in the Complainant’s Annex 8 and in the further filings by the parties and Chumley, finds its decision of November 20, 2011 inaccurate in certain respects and incomplete in that it failed to take into account relevant material. Accordingly, the Panel hereby issues the following reasoned Addendum to its earlier decision of November 20, 2011, including a substituted order as made under paragraph 7 below.
In support of its contention that Chumley is the true owner of the disputed domain name and controls the operation of the website at the disputed domain name the Complainant relies upon the sworn testimony of Chumley and Todd Rodenborn in depositions taken in the course of the Colorado litigation (“the Transcript”), Chumley’s answers to interrogations in those proceedings, and the reply to a third party subpoena. In particular, the Complainant relies upon evidence of:
- Ethan Chumley’s approach to Todd Rodenborn with a request that he assist in the marketing of the website at the disputed domain name – a request which was declined by Rodenborn.
- Ethan Chumley’s admission that he contributed a substantial part of the material displayed at the website.
- Ethan Chumley’s admission that he participates in the operations of the website by adding content relating to the Complainant.
- An alleged coincidence between the time of the registration of the disputed domain name and the issue of subpoenas to Chumley by the Colorado Attorney-General.
- An alleged connection between Chumley and allegedly spoof website articles attacking the Complainant.
- The unauthorized use of the name of the Complainant’s founder Jeff Knight as part of an allegedly bogus email address, […]@gmx.com, used to attack the Complainant.
- The showing of an alternative email address “generalsteelscam@mail.com” in the account of the address […]@gmx.com.
- The content of articles in third party websites purporting to be authorized by Jeff Knight and stating that Jeff Knight is the webmaster at the disputed domain name.
- The back-linking of spoof sites, allegedly connected to Chumley, to the website at the disputed domain name.
The Complainant’s filings also contained material relating to other emails attacking Jeffrey Knight and other instances of attacks on the character of Jeffrey Knight. This material does not directly concern this dispute and is not within the ambit of the Procedural Order. The Panel has therefore excluded this material from its consideration.
The Complainant did not seek to add Chumley as a Respondent to the Complaint.
The Respondent repeats its earlier submissions noting further that:
“The issues that the plaintiffs bring up has no bearing on this case.
They want WIPO to act as a US COURT, where their issues belong.
The issue is not who owns the domain or not, the issue is if the domain name is infringing on the plaintiffs name.
The domain cannot be mistaken for the plaintiffs, the domain is clearly named and used to gather and spread information.
If the plaintiffs thinks that the person they name (Ethan Chumley) is the owner or control the domain, it’s not a WIPO issue.
They should go through the US courts to take care of this issue.”
Much of the filing on behalf of Chumley comprises material relating to law suits filed against the Complainant, the Colorado Attorney-General’s investigation of the Complainant, orders made against the Complainant and Jeff Knight, proceedings brought by General Steel against its former attorneys and allegations of misconduct by Jeff Knight. This material, contained in Annexes 1 to 7 of the Chumley filing does not directly concern the disputed domain name and is not within the ambit of the Procedural Order.
The Chumley filing states that:
- neither Mr. Chumley nor Armstrong Steel is the true owner or the operator of the website at the disputed domain name, pointing to Mr. Chumley’s answer at page 154 of the Transcript, in which he states:
- “No. I am not the creator of generalsteelscam.com”.
When asked “who is the creator”, he said:
- “I don’t know”.
- he was not in control of the website. In support of that, the Chumley filing refers again to pages 154 and 155 of the Transcript. However, the Panel finds no statement to that effect in the pages referred to or in other pages which are in evidence in these proceedings.
- The Complainant presents no evidence to support the allegation that Mr. Chumley is connected to the email address.
- The Complainant presents no evidence to support the allegation that Mr. Chumley is connected to the email address […]@gmx.com or to show that the address is a bogus address.
- With regard to the testimony of Todd Rodenborn:
“Mr. Rodenborn’s testimony only covered one brief conversation and was directly refuted by Mr. Chumley’s own testimony.”
The Panel notes that that refutation does not appear to be in the portions of the Transcript provided in the Complainant’s Annex 8. What appears to be the relevant passage of the Transcript at pages 208 and 209 reads as follows:
Q. Mr. Rodenborn, I believe, has testified that you came to him recent -- in recent months and wanted to have him market the General Steel Scam Web site for you; is that correct?
A. I considered it.
Q. Did you present that to Mr. Rodenborn, and he declined?
A. I asked for his advice. I didn’t -- I didn’t ask him if he would do it and -- I asked him what his thoughts were on it.
Q. He test -- were you at his deposition a couple of days ago?
A. No.
Q. I believe he testified that you had come to him to ask him about marketing the General Steel Scam site, and he said that he told you that Google doesn’t allow these negative-type Web sites to be marketed and that he declined.
A. Correct.
MR GRANT: Object to the form.
Q. (BY MR FEIN) So that’s correct?
A. I came to Todd Rodenborn, and I asked him about marketing the Web site, his opinion. He said, You shouldn’t do it.
- The Complainant has made the unsupported allegation that Mr. Chumley was somehow involved in the creation of […]gmx.com the email account and offers no proof of this fact.
PRQ contends that this dispute is not one suitable for resolution under the Policy. There is some force in that contention in view of the fact that this dispute appears to be part of extensive and acrimonious disputes and litigation concerning the Complainant and Chumley, and that there is conflicting evidence and contention in relation to the question of who is the true owner and/or controller of the disputed domain name and the website to which that name resolves. Nevertheless, the Panel considers it appropriate to proceed to decide the matter for the following reasons:
- PRQ is not party to the Colorado litigation.
- The Colorado litigation appears to relate principally to issues of deceptive and misleading conduct, and the disputed domain name is not directly in issue in those proceedings, see for example Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
- A decision under the Policy will not be binding upon a court or the outcome of the Colorado litigation and the decision will not constitute a bar to any legal proceedings which the parties may choose to undertake in relation to the disputed domain name, see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187 and other prior UDRP decisions in which this issue has been raised, and in particular to the decision in Galley, Inc. v. Pride Marketing & Procurement / Richard’s Restaurant Supply, Inc., WIPO Case No. D2008-1285.
- This is not a case where ownership and rights in the underlying trademark are in issue, such as in Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183.
There is however, a further question which needs to be addressed and that is whether or not the Panel, having issued its decision, has the power to issue a reasoned addendum to it and substitute a different order, in the circumstances of this case.
There is no specific provision in the Policy or the Rules. The Rules do however, provide guidance. Rule 10(a) gives the Panel the right to conduct the proceedings in such manner as it considers appropriate in accordance with the Policy and the Rules. Rule 10(b) requires that the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. Rule 15(a) provides that the Panel shall decide the Complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and “and rules and principles of law that it deems applicable”. The principles embodied in these Rules are therefore that each of the parties must be given a fair hearing and that in addition to matters specifically provided by the Policy and the Rules the Panel may resort to applicable rules and principles of the law in determining matters which may not be provided for by the specific provisions of the Policy and the Rules. Proceedings under the Policy are administrative rather than judicial in nature. It is therefore appropriate, in this Panel’s view, to look at decisions of the courts in cases concerning errors in administrative decisions.
In this case, in failing to consider a substantial body of relevant evidence in the Exhibits to the Complainant’s Annex 8 the Panel, through no fault of the Complainant, committed an inadvertent though nevertheless material error in failing to afford natural justice to the Complainant, by failing to consider certain highly relevant evidence filed with the Complaint. In doing so, in this Panel’s view, it failed to give the Complainant a fair opportunity to present its case in accordance with paragraph 10(b) of the Rules. As the responsible Panel, this Panel finds its decision should therefore be reopened. In Ridge v Baldwin, [1964] AC40@79, Lord Reid, in the English House of Lords said:
“I do not doubt that if an officer or body realises that it has acted hastily and reconsiders the whole matter afresh, after affording to the person affected a proper opportunity to present his case, then its later decision will be valid.”
Similar principles have been applied by the High Court of Australia in Bhardwaj v The Minister for Immigration and Multicultural Affairs, [2002] HCA 11, the Supreme Court of Canada in Chandler v Alberta Association of Architects, [1989] 2SCR 848 and The High Court of New Zealand in Horowhenua County v Nash (No. 2,) [1968] NZLR 632. It may also be noted that the rules of superior courts also contain provisions whereby the Court may set aside an order made per incuriam. See for example Rule 668 of the Uniform Civil Procedure Rules of the Supreme Court of Queensland. That Rule provides that if facts arise after an order is made entitling the person against whom the order is made to be relieved from it, or facts are discovered after an order is made that if discovered in time would have entitled the person against whom the order is made to an order or decision in the person’s favour, or to a different order the court may, inter alia, set aside or vary the order. The Panel further notes that prior UDRP panels have recognized the concept of a denial of natural justice as relevant to the question of whether or not to accept a re-filed Complaint (see e.g., WIPO Overview 2.0, paragraph 4.4). While this Panel recognizes that one option open to it here could be to, in effect, simply acknowledge the Complainant’s point and suggest it consider a possible re-filing under the Policy, this Panel prefers not to do so here. Rather, this Panel finds this principle and the Panel’s general powers under the Rules to be sufficient to enable it to set aside or vary its own order where the Panel considers (as it does here) that this principle and the particular circumstances warrant it.
Applying these principles to the facts of this particular case, this Panel finds that it has the power, and the duty, to set aside its November 20 decision on the basis that the Panel, in failing to consider the Annex 8 evidence, did not give a fair opportunity to the Complainant to present its case contrary to the provisions of paragraph 10(b) of the Rules.
As noted above, the identity of the beneficial owner and/or controller of the disputed domain name is subject to contention.
Paragraph 1 of the Rules defines the Respondent as the holder of a domain name registration against which a Complaint is initiated. Prima facie therefore PRQ is the proper Respondent to these proceedings. A well recognized exception to this Rule arises in cases where the identity of the true owner of the disputed domain name is hidden behind a privacy protection or proxy service. That does not appear exactly to be the case here. The Respondent provides a web hosting service where it provides for a fee, a domain name and a website for the use of its clients. It provides a vehicle whereby the client does not own a domain name but can use it to operate a website using the facilities and web architecture provided by the host. By analogy it owns the vehicle but leases it to the driver. The Respondent provides a legitimate service but it does not necessarily follow from that that its ownership of the disputed domain name or the use which is made of it is legitimate. That remains to be determined according to the ordinary criteria established under the Policy. The Respondent is a proper respondent to the Complaint but, in this Panel’s view, so too is the person upon whose behalf the disputed domain name, and the website to which it resolves, is hosted.
The Complainant contends that the person is Chumley. Chumley denies it. PRQ neither affirms nor denies but contends that the question is irrelevant. The Panel rejects that submission. In the taking of Chumley’s depositions in the Colorado litigation he was shown a substantial number of extracts posted to the website at the disputed domain name and was asked whether he was responsible for those postings. The answer in most cases was that he did or that he could not recall. Specifically, in answer to a question at page 169 of the Transcript, as to whether he posted all of the postings on the website attacking the Complainant, he replied:
“Well, I didn’t post them all. I posted a large majority of them.”
He made a substantial number of similar admissions at pages 171 to 177 of the Transcript. According to his answers in the course of the depositions his modus operandi was to access the website of the disputed domain name using a login name and password allocated to him and then post to the website copies of material, taken from publicly available sources such as court records and other complaint sites, attacking the Complainant or Jeff Knight. In Chumley’s answers to Interrogatories Chumley admits that he adds content to the website at the disputed domain name relating to known judgments, rulings and business practices employed by the Complainant and that he participates in the operations of the website by adding such content.
The Complainant seeks further to link Chumley to the control and operation of the website at the disputed domain name by reference to the alleged use by Chumley of a bogus name “Jeff Knight” as part of an email address and as the alleged name of the webmaster at the disputed domain name in articles posted on third party websites which provide links to the website at the disputed domain name. The Complainant’s evidence in this respect is circumstantial. Chumley does not specifically deny it but contends that the Complainant has not satisfied the burden of proof.
As noted above, Chumley has admitted he consulted Mr. Todd Rodenborn about marketing the website at the disputed domain name.
The burden of proof which lies upon the Complainant in these proceedings is to establish its case according to the burden of proof in civil cases; that is, upon the balance of probabilities. It is not the burden in criminal cases; to establish beyond reasonable doubt. The Complainant’s case is largely circumstantial. However, on the basis of the material adduced and in the absence of likely alternatives the Panel concludes that Chumley was instrumental in causing the Respondent to register the disputed domain name and exercises substantial control of the disputed domain name and the website to which it resolves. Both Chumley and PRQ had the opportunity to adduce evidence to the contrary but did not do so. PRQ said it was irrelevant and Chumley merely denied and stated that the Complainant had failed to provide proof. The Panel therefore finds that Chumley is a proper Respondent to these proceedings and, notwithstanding the Complainant’s failure to accept the Panel’s invitation to do so, should be added as a Respondent to the Complaint and so orders:
Although Chumley was afforded the opportunity to make submissions on the question of who is a proper respondent, he had not formally been afforded an opportunity to respond to the substantive issues in the Complaint. The Panel therefore, in accordance with the principles of natural justice issued Procedural Order No. 2. Chumley filed a Response (“the Chumley Response”) on February 23, 2012. The Complainant, on the same day, sought leave to reply. The Panel declined the Complainant’s request. PRQ wrote to the Center on February 16, 2012, as follows:
“Who has contact with this \“Ethan Chumley\” character ?
We do not know who that person is or why he \ is being asked to respond in this case.
Do WIPO have contact with him?”
Chumley again asserts that he did not create and is not responsible for the operation of the website at the disputed domain name. He states however, that his Response is offered in part to highlight deficiencies in the Complainant’s evidence. Chumley’s submission may be summarized as follows:
- The Complainant’s trademark registration is not for the words General Steel per se but for a logo including the words General Steel Corporation (with the words “Steel Corporation” disclaimed), and therefore the disputed domain name does not “wholly incorporate” the Complainant’s trademark.
- The website at the disputed domain name is not directed at non-English speakers and no reasonable English speaker would find it likely that the Complainant would identify itself with such a domain name.
- The Respondents have a legitimate interest in the disputed domain name because it is used to offer a forum for legitimate criticism of the Complainant and is noncommercial in that it does not offer or propose the sale of any goods or services. Chumley cites in support, inter alia, Bloomberg L.P. v Seacaucus Group, NAF Claim No. FA97077; Full Sail, Inc. v. Ryan Spevack, WIPO Case No. D2003-0502; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
- The Complainant has failed to link Chumley to the disputed domain name and the Respondent PRQ has not sought to disguise its identity or otherwise acted in bad faith.
The Chumley Response also contained allegations and exhibits relating to alleged improper dealings by the Complainant. Those matters are not in issue in these proceedings.
The Panel therefore, in accordance with the general powers conferred upon it under paragraph 10 of the Rules proceeds to further consider the matter on the basis that Chumley is added as a Respondent and on the basis of the Complaint and the Response and the further filings by the Complainant, PRQ and Chumley.
The Panel confirms its findings in its above prior decision of November 20, 2011 and finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The dominant feature of the Complainant’s registered trademark is the words “General Steel” and the Complainant has shown extensive use and promotion of its mark sufficient to establish common law rights in the mark General Steel per se.
The Panel retracts the statements contained in the decision of November 20, 2011 from the third sentence of paragraph 3 of the Section 6B to the end of Section 6B and substitutes the following:
This case concerns the rights in the disputed domain name, it does not concern the ethics or business practices of the Complainant or of either of the Respondents.
On the basis of the evidence discussed above the Panel has found that Chumley was responsible for causing the disputed domain name to be registered by PRQ. At the time of doing so he was fully aware of the Complainant’s trademark and of the Complainant’s rights in it. The purpose for which he caused the disputed domain name to be registered was for attacking the Complainant and posting on the website at the disputed domain name, material critical of the Complainant and its business practices. It was motivated to do so as part of extensive and acrimonious dispute and litigation with its competitor, the Complainant. Chumley’s claim that the use of the disputed domain name was noncommercial is not sustainable. The fact that it does not direct to a site directly offering Chumley’s goods or services or to offer commercial sites, such as PPC sites, does not mean that its use is noncommercial. Its use to denigrate the Complainant and its goods and services is in the commercial interest of Chumley and his company and is commercial in an indirect sense. Chumley’s reliance on the decisions in Bloomberg and Full Sail, supra, is inapposite. In neither of those cases was the Respondent a competitor of the Complainant and in the case of Full Sail, the site at the domain name listed both positive and negative comments. The situation in this case is more akin to that in BRIO Corp v Spruce Caboose, NAF Claim No. FA114419, where the respondent was a competitor of the complainant and bad faith registration and use was found. It is in the Panel’s view, based on the evidence submitted by both the Complainant and Chumley, that Chumley caused the disputed domain name to be registered with the intention of using it for commercial gain, to misleadingly divert consumers, to tarnish the trademark and goodwill of the Complainant and to disrupt its business. It has used the disputed domain name for those purposes. Such use does not constitute a use in the bona fide offering of goods or services. The site at the disputed domain name is a criticism site but it is not one which is fair or noncommercial. It consists of extracts from public sources material, sometimes several years old, which is damaging to the Complainant. It is not credible that Chumley is doing this only for the purpose of providing a public platform for criticism of the Complainant. Rather, he appears to be using it as a vehicle for his own commercial advantage.
So far as PRQ is concerned, the legitimacy of its interest is infected by that of Chumley and their interests and responsibilities are merged. In the light of the Panel’s finding above and the fact PRQ has not specifically denied its connection with Chumley, the Panel finds that PRQ has acted as the instrument of Chumley in the registration and use of the disputed domain name. PRQ cannot therefore have any more rights or legitimate interests in the disputed domain name than Chumley has. Further, PRQ is an experienced Internet operator owning over 350 domain names. As such, it has a responsibility to at least make reasonable enquiries as to whether or not registration of a domain name may infringe the rights of third parties. It cannot proceed with reckless disregard for the possible existence of such rights, see for example BHP Billiton Innovation Pty Ltd. v. OS Domain Holdings IV LLC, WIPO Case No. D2008-0488.
Whilst the business conducted by PRQ may be legitimate, its registration of the disputed domain name and the use which it permitted to be made of it does not constitute a use in the bona fide offering of goods or services. Neither in the case of Chumley nor of PRQ is there any other basis upon which they can base a claim to a legitimate right or interest. They are not commonly known by the disputed domain name, they are not authorized by the Complainant to use the disputed domain name. As discussed above, the use of the domain name is not a legitimate noncommercial or fair use.
The Panel therefore finds that neither PRQ nor Chumley has rights or legitimate interests in the disputed domain name.
The Panel retracts the statements contained in Section 6C of its above prior decision of November 20, 2011 and substitutes the following:
For the reasons discussed above, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel has found that Chumley caused the disputed domain name to be registered in full knowledge of the Complainant’s rights and has used it primarily for the purpose of disrupting the business of the Complainant who is a competitor. PRQ registered the disputed domain name in reckless disregard for the rights of third parties and permitted the disputed domain name to be used by Chumley for the purpose of disrupting the business of the Complainant. Neither in its initial Response, nor its email of February 16, 2012 (which the Panel finds disingenuous) has it denied or sought otherwise to explain its relationship with Chumley.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
The Panel hereby vacates its above prior order as made in its decision of November 20, 2011 and substitutes the following:
For all of the foregoing reasons, in accordance with paragraph 4(i) of the policy and 15 of the Rule, the Panel orders that the disputed domain name <generalsteelscam.com> be transferred to the Complainant. The Complainant so orders without prejudice to the rights of any of the parties (including rights under paragraph 4(k) of the Policy) to take legal or other proceedings in relation to the disputed domain name.
Desmond J. Ryan AM
Sole Panelist
Dated: March 20, 2012
Further to matters addressed on the Panel’s authority in the attached communication of January 4, 2011, due to an error which occurred in the printing of the relevant documents from the electronic file of this case, only the first page of Complainant's Annexure 8 was printed and reviewed by the Panel. The Panel therefore failed to take account of the rest of Annexure 8 and its Exhibits in formulating its decision. Having examined this further material, it is clear that the third paragraph on section 6B of the decision is incorrect. The Panel will therefore further consider the matter in light of that material, and, additional to the Panel’s instructions contained in the attached communication, and pursuant to general Panel powers with respect to the conduct of this UDRP proceeding, hereby makes the following administrative orders:
Orders:
1. The Center to serve, electronically, Ethan Chumley with copies of the Complaint, the Response and all relevant correspondence.
2. The Complainant has leave to join Ethan Chumley as a Co-Respondent.
3. The Parties and Ethan Chumley have leave to file, within seven calendar days of electronic service, January 16, 2012 of copies of this Order, further filings (such filings to be submitted electronically to the Center, at domain.disputes@wipo.int, and copied to the other party, by no later than 5pm Geneva time on the relevant date) limited to the following:
a. The Complainant's allegation that Ethan Chumley and/or Armstrong Steel is the true owner of the disputed domain name and controls the operation of the website at the disputed domain name.
b. The identity of Jeffrey Knight and his relevance to these proceedings.
4. In the interim, these UDRP proceedings shall remain pending subject to issuance of any further instructions or decision by the Panel in due course.
Desmond J. Ryan
Sole Panelist
Date: January 9, 2012
For reasons that will be addressed in the Decision, the Panel is minded to add Ethan Chumley as a Respondent in these proceedings. Accordingly, Respondent Chumley is given seven days to respond to the original Complaint, with due regard to the word limits expressed in the Rules, i.e., submissions should be no more than 5000 words. Respondent Chumley is hereby given until February 23, 2012 to respond to the Complaint.
The Decision Due Date has been extended to March 1, 2012.
Desmond J Ryan Am
February 16, 2012