The Complainant is Mr. Harry Henien of Dubai, United Arab Emirates, represented by Baker & McKenzie Geneva, Switzerland.
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Stratford Coin & Bullion of Aventura, Florida, United States of America, represented by Joyce Ciaramella, United States of America.
The disputed domain name <harryhenien.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2013. On May 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 30, 2013, the Registrar 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 10, 2013 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 13, 2013.
The Center verified that the Complaint together with 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 with the amended Complaint, and the proceedings commenced on June 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2013. The Center notified the Respondent Default on July 9, 2013.
The Center received an email communication from the Respondent’s Representative on July 11, 2013, stating that the Respondent’s previous representative had passed away and she did not receive notice of the Complaint. The Respondent requested a time extension to file a Response.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 18, 2013. 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.
On July 25, 2013, the Panel issued Administrative Panel Procedural Order No. 1 allowing a Response to be filed by August 1, 2013, provided that the Response is accompanied with documentation supporting the Respondent’s new representative’s standing to file the Response on behalf of the Respondent. On August 1, 2013, a Response was duly filed together with proof of standing.
The Complainant is an individual named Harry Henien of Dubai, United Arab Emirates. He is currently acting as a Director of a wealth management company. In 2010, the Complainant and the Respondent entered into a business relationship, but a dispute arose between the parties and they are no longer in contact. The Complainant holds trade mark number 643222 for HARRY HENIEN from the Swiss Federal Institute of Intellectual Property, with priority date of April 22, 2013.
The Respondent Stratford Coin & Bullion is incorporated in Florida, United States of America, and is primarily in the business of trading in precious metals and coins. The Disputed Domain Name was created on February 17, 2012.
The Complainant’s contentions can be summarised as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the Complainant’s trade mark or service mark, in which the Complainant has rights:
The Disputed Domain Name is identical to the Complainant’s trade mark number 643222 for HARRY HENIEN from the Swiss Federal Institute of Intellectual Property, with priority date of April 22, 2013. It is also the Complainant’s personal name which is actively in use.
(ii) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
The Respondent is aware that the Disputed Domain Name corresponds to the Complainant’s trade mark and to the Complainant himself, as evidenced by the references made on the Website as well as the Respondent’s previous business dealings with the Complainant.
Further, the Respondent does not own any trade marks for “Harry Henien”, is not commonly known by the name “Harry Henien”, and has not done business under that name. The Complainant also has not authorised the Respondent to own or use any domain name incorporating the HARRY HENIEN trade mark.
The Disputed Domain Name cannot be considered a criticism site. It is evident that the Disputed Domain Name was registered solely for the purpose of harming the Complainant’s reputation and to confuse Internet users and the Complainant’s clients who were looking for information on the Complainant, but were mistakenly diverted to the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith:
The Respondent registered the Disputed Domain Name in bad faith as an act of “revenge”, which does not merit legal protection. The Respondent’s use of a privacy or proxy registration service to conceal its true identity is further evidence of its bad faith registration and use of the Disputed Domain Name.
The Respondent’s contentions can be summarised as follows:
a) The Disputed Domain Name was legally registered on February 17, 2012. The statements made on the website at the Disputed Domain Name are truthful, verifiable and accurate. This is evidenced by the case Stratford Coin & Bullion Inc and Youssry Henien, Harry Henien & others [2011] FOLIO 671 exhibited in the Response.
b) The Complainant absconded with over USD 1 million belonging to customers domiciled in countries all over the world.
c) The Panel should not place weight on the Complainant’s superfluous resume and questionable accomplishments.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel notes that the Complainant did not register the HARRY HENIEN mark until April 22, 2013, more than a year after the Disputed Domain Name was registered. The date of registration (or first use) of the mark is irrelevant for the purpose of finding rights in a trade mark under the first element of the Policy.
It is a well-established rule that in making an enquiry as to whether a mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied.
As demonstrated by the Complainant’s evidence, the Disputed Domain Name is used for the purposes of criticizing the Complainant. This case raises an unsettled question of law under the Policy. In situations where a domain name, identical or confusingly similar to a mark, is being used for a genuine noncommercial free speech website, there are two main views (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.4). The first view appears to be that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the Complainant’s trade mark. This is especially the case if the respondent is using the mark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trade mark owner (“View One”). The second view is that irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trade mark as part of a domain name of a criticism site if such use is fair and noncommercial (“View Two”).
In this case, the Panel is inclined to follow View Two.
Under paragraph 4(c)(iii) of the Policy, in order to satisfy the Panel that the Respondent has rights or legitimate interests in the Disputed Domain Name, the Respondent must show that it is making a legitimate noncommercial and fair use of the Disputed Domain Name without intent for commercial gain to (i) misleadingly divert consumers or (ii) tarnish the trade mark or service mark at issue.
The website at the Disputed Domain Name appears to be a classic criticism website. The content is openly critical to the Complainant’s business conduct, comprising of a statement warning others from doing business with the Complainant and also providing a link to a United Kingdom court judgment between the parties. Moreover, the Respondent’s actions do not show evidence of “misleadingly divert[ing] consumers” for commercial gain. Under the Policy, to “misleadingly divert consumers” refers to the kind of confusion that arises, for example, when a competitor diverts consumers to its site and, potentially, diverts sales. A person or entity merely with an interest oppositional to that of a mark holder is not considered a “competitor” in competition with the complainant for the provision of goods or services (Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, WIPO Case No. D2001-0467). While the Respondent has interests against the Complainant, there is no indication of an attempt to misleadingly divert consumers by offering goods and services that compete with those of the Complainant.
In addition, the Respondent has not shown an intent to tarnish the Complainant’s trade mark for commercial gain. As stated in paragraph 3.11 of the WIPO Overview 2.0, tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trade mark. It would not normally extend to the mere posting of information about a complainant, or to the posting of genuine, noncommercial criticism regarding the trade mark holder. In this case, the Respondent’s activities appear to be directed towards noncommercial speech, to which the Respondent believes is well-founded. This does not appear to be the case of a commercially motivated criticism by or on behalf of a competitor of the Complainant. Further, upon reaching the website at the Disputed Domain Name, it is immediately apparent to Internet users that the website is not operated by the Complainant. As a result, the Panel does not find that the Respondent has been using the Disputed Domain Name for commercial gain with intent to tarnish the Complainant’s trade mark.
Given the above, the Panel finds that the Respondent has shown that it has rights or legitimate interests in the Disputed Domain Name.
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Name was registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Date: August 15, 2013