WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Concierge Auctions LLC v. Registration Private, Domains By Proxy, LLC / Wesley Donehue, Donehue Direct
Case No. D2020-1020
1. The Parties
Complainant is Concierge Auctions LLC, United States of America (“United States”), represented by Moses & Singer LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Wesley Donehue, Donehue Direct, United States.
2. The Domain Name and Registrar
The disputed domain name <conciergeauctionscam.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2020, 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 Complainant on April 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant did not file an amended Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant cured the deficiency on May 26, 2020.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 7, 2020.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 3, 2020. 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
Complainant is the owner of registration for the word service mark CONCIERGE AUCTIONS on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 5,684,443, registration dated February 26, 2019, in international class 35, covering, inter alia, on-line auction services, and arranging and conducting real estate auctions. The aforesaid registration asserts a date of first use and first use in commerce of April 30, 2008.
Complainant operates “luxury real estate auctions” involving properties in the United States and other countries. Complainant operates a commercial website at <conciergeauctions.com> through which it promotes its real estate auction services and conducts auctions.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. The Record of registration for the disputed domain name was created on August 16, 2019.1
Respondent uses the disputed domain name to direct Internet users to a website headed “CONCIERGE AUCTIONS SCAMS”. There is a prominent sub-heading, “THE TRUTH ABOUT CONCIERGE AUCTIONS”. The homepage of the website contains the headline “WSJ ‘Luxury Real-Estate Firm Concierge Auctions Fights Allegations of Fraudulent Bids”, which links to a February 7, 2019 article published by the Wall Street Journal, presently updated as of March 1, 2019.2 The Wall Street Journal headline is followed by five bullet points which extract materials from the published story, including certain quotations. These include a statement by Howard Appel, as follows: “‘People are getting hurt’, said Howard Appel, who with another real-estate investor sued Concierge in 2017 in a federal court in California alleging the company improperly kept their USD 285,000 deposit after the seller reneged on selling a Fiji home they won at auction. They accused Concierge of using phony bidders to drive up the price of the home.”
The website continues with a substantial amount of information regarding litigation and arbitration in which Complainant is or has been involved. Much of the information on the website includes links to court-filed documents.
At the bottom of the homepage Respondent requests: “Check back often to stay informed!
If you, like many others, have personal experience with Concierge Auctions shady and possibly illegal business practices, submit your complaint below.”
There is a “Resources” page which includes “CONCIERGE AUCTION IN THE NEWS”, “CURRENT LAWSUIT DOCUMENTS”, “ADDITIONAL DISPUTES” and “CHAD ROFFERS PERSONAL BANKRUPTCY DOCUMENTS”. With respect to “CONCIERGE AUCTION IN THE NEWS”, the links to news stories appear to be to mainstream news sources. There are stories that include discussions of information critical of Complainant and its business practices.
The Complaint in this proceeding was directed to a privacy shield. Complainant alleged that the actual registrant and real party in interest with respect to the disputed domain name is Howard Appel, a party that has sued Complainant in Federal court in California (HOWARD APPEL, et al., Plaintiffs, v. CONCIERGE AUCTIONS, LLC, et al., Defendants. Case No. 17CV2263 BAS MDD, filed November 6, 2017). Complainant argues that Mr. Appel was the registrant of a domain name substantially similar to the disputed domain name, namely <conciergeauctionlawsuits.com>, and Complainant says this was admitted in a prior court filing, specifically in a motion to quash discovery in a case brought by Complainant against several John Does (i.e., unnamed defendants) in Florida (Concierge Auctions, LLC v John Does 1-10, Cir. Ct, 11th Judicial Circuit, Miami-Dade Florida, Case No. 19-031640-CA-01 (25)), motion to quash filed January 15, 2020. In this Florida civil litigation, Complainant is arguing that Mr. Appel, among other John Does, “operated and/or controlled certain Internet domain names, and allegedly used these domain names in a ‘coordinated campaign of social media and Internet disinformation, defamation and ‘fake news’ – all of which is intended to injure … Concierge’”. (Exhibit B to Complaint, Motion to quash, paragraph 1, referring to litigation complaint, paragraph 28).
The named Respondent in this proceeding, Wesley Donehue, Donehue Direct, is not mentioned by Complainant in its Complaint. Complainant did not amend its Complaint to identify the named Respondent after being notified by the Center of the actual registrant by the privacy provider. There is no relationship between the named Respondent and Howard Appel pleaded by Complainant.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant alleges that it owns rights in the trademark CONCIERGE AUCTIONS and that the disputed domain name is confusingly similar to that trademark.
Complainant argues that whether or not the Respondent is Howard Appel, Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has never authorized Respondent to use its trademark in the disputed domain name; (2) Respondent has not made preparations to use or used the disputed domain name in connection with a bona fide offering of goods or services; (3) Respondent is not commonly known by CONCIERGE AUCTIONS, and does not have trademark rights in that term; (4) the contents of the website identified by the disputed domain name make clear that it is operated by Howard Appel, who is engaged in a coordinated campaign of media disinformation against Complainant; (5) Respondent had knowledge of Complainant’s well known mark when it registered the disputed domain name, and; (6) Respondent is not using the disputed domain name for legitimate noncommercial or fair use purposes, but rather to make false and defamatory statements regarding Complaint to tarnish Complainant’s trademark for purposes of obtaining leverage over Complainant in pending litigation.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent’s primary purpose in registering the disputed domain name was to tarnish Complainant’s trademark; (2) Respondent has engaged in a pattern of registering Complainant’s trademark in domain names; (3) “if one takes the time to read these materials [on Respondent’s website], it becomes readily apparent that the materials do not supply factual support for respondents false, misleading and defamatory claims.” Instead, the material primarily consists of complaints and other litigation documents from old, closed litigations, all of which were either won by Concierge Auctions, or settled favorably to Concierge Auctions; this cannot be used to prove anything, or even to represent that current allegations exist; (4) Respondent is using the disputed domain name and its website to gain commercial leverage over Complainant in the context of ongoing litigation; (5) Complainant places precedential reliance on AlgaeCal Inc. v. AlgaeCal Fraud, WIPO Case No. D2013-1248, and; (6) the materials referenced to and/or linked on Respondent’s website are either out of date or incomplete, they do not indicate that Complainant successfully defended or favorably settled most of them, and the original Wall Street Journal article was revised after submissions from Complainant, although Respondent’s website continues to refer to the original version on its website. According to Complainant, it “has not lost a single case. Indeed, there is not even a single case where allegations against Complainant have reached the stage of adjudication on the merits.”
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email, fax, and physical addresses provided in its record of registration. It appears that delivery of the Complaint to Respondent was successful. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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 in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark CONCIERGE AUCTIONS, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark CONCIERGE AUCTIONS.
The disputed domain name directly incorporates Complainant’s trademark, adding the letters “cam”. When viewed with the “s” at the end of Complainant’s trademark, the added term appears as “scam”, a slang or informal term referring to fraudulent activity.3 The direct incorporation of Complainant’s trademark in the disputed domain name is sufficient to give rise to confusing similarity within the meaning of the Policy. Moreover, while effective addition of the term “scam” may signal to Internet users that the associated website is not operated by Complainant, the use of Complainant’s trademark nonetheless gives rise to confusion that may generate visits to Respondent’s website. The Panel will consider the content of the associated website in the context of the second and third elements of the Policy.
The panel determines that Complainant owns right in the trademark CONCIERGE AUCTIONS and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant has alleged that a certain individual, Howard Appel, is the real party-in-interest in registration of the disputed domain name and operation of the associated website. However, Howard Appel was not the registrant disclosed by the Registrar, and the documents Complainant provided from an ongoing litigation in Florida involve objection by counsel for Mr. Appel to furnishing information, including information regarding ownership of similar domain names. These documents do not appear to concede ownership of the disputed domain name by Mr. Appel. In light of this ongoing Florida litigation, the Panel is not prepared to draw an inference regarding ownership, particularly since another party (real or fictitious), Wesley Donehue, Donehue Direct is the disclosed registrant of the disputed domain name.
There is evidence on the record of this proceeding that Mr. Appel is dissatisfied with Complainant and its services, and that he is involved in litigation with Complainant. If Mr. Appel was the owner and/or operator of previously operational websites with domain names similar to that involved in this proceeding, and the website associated with the disputed domain name is substantially similar to those other websites, it might be reasonable to infer that there is some association between Mr. Appel and the website associated with the disputed domain name. However, the predicate fact of ownership of the other websites by Mr. Appel appears to remain the subject of litigation, and the Panel will not draw a factual inference regarding a matter that is disputed in related litigation.
Complainant neither added Wesley Donehue, Donehue Direct to its Complaint, though invited to do so by the Center, nor did it attempt to explain what his/its relationship might be to Complainant or Mr Appel.
From the standpoint of rights or legitimate interests, there is a party with no known relationship to Complainant registering Complainant’s trademark in the disputed domain name and using it to operate a website with information about Complainant. This party, Wesley Donehue, Donehue Direct, may or may not have some form of relationship with a person, Mr. Appel, who is dissatisfied with Complainant and its services.4
Respondent is using the disputed domain name, which is confusingly similar to Complainant’s trademark, to post information regarding Complainant and its business practices. Complainant does not in most cases dispute that Respondent is posting factual information in the sense that Respondent is posting or linking to actual court-filed documents and records, and is linking to news stories by third-party sources. Instead, Complainant argues that Respondent is doing this in a deceptive way because Respondent is not reporting on the outcomes of disputes in which Complainant was or is involved, but primarily is reporting about allegations that were not proven, or that remain the subject of litigation.
One of Complainant’s principal contentions is that Respondent posted a Wall Street Journal article that was quite unfavorable to Complainant and failed to later update that with a “less unfavorable” version of that article that was posted by the Wall Street Journal after objection from Complainant. Complainant appears to argue that Respondent was obligated to update the Wall Street Journal article on its own website.5
The website linked to the disputed domain name is headed “CONCIERGE AUCTIONS SCAMS”, with a subheading “THE TRUTH ABOUT CONCIERGE AUCTIONS”. Beneath these headings are bullet points that excerpt or summarize segments from the unflattering Wall Street Journal article about Complainant. Notwithstanding updates or corrections by the Wall Street Journal, the later version of the article could hardly be characterized as portraying Complainant in a favorable light.
The Panel must consider whether, on its face, the materials on Respondent’s website constitute legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to tarnish Complainant’s trademark.
The Panel will assume, for the sake of argument, that Respondent has some commercial motive for maintaining the subject website, and is not doing solely to inform the public. Whatever Respondent’s relationship is with Complainant, he/it appears to be attempting to place commercial pressure on Complainant, for example by requesting visitors to the website to provide additional negative information about Complainant.
The Panel will assess Respondent’s website as a potential matter of nominative fair use. As previously explained by this Panel, see, e.g., Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399, there is a three-part test to determining whether a third-party may use a trademark for nominative fair use purposes. First, whether that third party could readily identify the subject product or service without identification by the trademark. Second, whether that third party uses only so much of the trademark as is necessary to accomplish the identification. Third, whether that third party avoids suggesting that it is affiliated or associated with the trademark owner or its product or service.
In this proceeding, the Panel considers that Respondent has no reasonable alternative to using Complainant’s trademark (in full or in part) in order to identify Complainant’s real estate auction services. Describing Complainant in a way that does not use its name at all would be confusing or impractical.
On its website, Respondent’s use of Complainant’s trademark appears to be limited to identifying Complainant, and Respondent is not using any specialized logos or design features associated with Complainant (see, e.g.,Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002)).
Third, Respondent’s website could not reasonably be misinterpreted as suggesting an affiliation between Respondent and Complainant. The principal heading CONCIERGE AUCTION SCAMS should immediately dispel any such association.
While Respondent meets the main criterion for nominative fair use as far as its website is concerned, this leaves the question whether it is reasonable for Respondent to use Complainant’s trademark in the disputed domain name itself. Respondent could arguably establish a fair use reporting or informational website using a different domain name that does not include Complainant’s trademark. This would be less likely to be identified (e.g., by search engines) as associated with Complainant’s business and would certainly be preferred by Complainant. At the same time, it would be less likely to come to the attention of individuals looking for information about Complainant and its business, so less likely to accomplish Respondent’s purpose.
By effectively adding the term “scam” to Complainant’s trademark, Respondent puts Internet users on notice that the website to which it is linked is not associated with Complainant, and that the Internet user should expect to find negative information. This use supports a finding of fair use by Respondent, provided that Respondent’s use is not manifestly abusive toward Complainant and its trademark, such that Respondent’s use might be considered a deliberate attempt at tarnishment of the trademark. Merely referring to a trademark product or service using information that is unflattering to the trademark owner is not actionable tarnishment. Were that the case, the doctrine of fair use would be significantly undermined.
It is useful here to compare the circumstances in this proceeding with the decision most relied on by Complainant in its Complaint, that is, AlgaeCal Inc. v. AlgaeCal Fraud, supra (hereinafter “AlgaeCal”). A few passages from that decision are worth setting out.
First, the alleged activities of the respondent in the AlgaeCal case as summarized by the panel:
The Complainant states that the Respondent’s website contains content, including various assertions, concerning the Complainant and its products that are defamatory, false, misleading and unsupported. […] the Complainant has provided hard-copy printouts, of various illustrative pages containing articles from the Respondent’s website, which provide such content. The articles are entitled “Forged COAs Check Your AlgaeCal Samples”, “Some AlgaeCal Formulas Might Be Nothing More than Coral Calcium”, “AlgaeCal Clinical Studies and Major Conflict of Interest”, “AlgaeCal Plus and Brazil Live Coral Calcium”, “If AlgaeCal is Contaminated With High Lead Levels Then So is Garden of Life Raw Calcium”, and “How AlgaeCal Tricked the FDA to Get Away With Making Unapproved Health Claims”.
[…] Complainant provides a copy of the Respondent’s article, which also appears on its website,
entitled “Forged COAs Check Your AlgaeCal Samples”. This article states “evidence has been found showing that AlgaeCal was forging certificates of analysis to hide the heavy metal levels of their raw ingredient”, but also stated “the evidence including lab results and Lot # involved in this cover up will be posted as it is gathered”, i.e. that presently it has no evidence to corroborate its claims. Further unsupported statements exist in the other articles [...]
Further, […] the Respondent states that the information on its site is based on “first-hand knowledge that I have learned from a friend that used to work for AlgaeCal” and which result from the “illegal and unethical actions” of the Complainant that “sickened my friend and eventually lead to my friend leaving AlgaeCal because the greed and deceit became unbearable”. Further, the Respondent states in this section of its website: “My friend has not authorized any of the info on this blog, and in fact I have taken matters upon myself to publish all of the info found on this website because I believe the world should know the truth behind this potentially dangerous product that has been sold to consumers all around the world. [...] As you will see almost all of the info found on this site will be inside information that I have copied from my friend’s computer without them knowing. Even though my friend would not approve of me publishing this info I feel that the world deserves to know the truth behind AlgaeCal.” The Complainant asserts that these statements are all false and misleading.
Regarding defamatory content, the panel in AlgaeCal said:
The Complainant has ardently objected to what it views as defamatory content on the Respondent’s website, repeatedly stating that, in its opinion, the content contained false, misleading and unsupported allegations regarding the Complainant and its products, particularly including allegations that are highly suggestive of illegal behavior, criminal conduct and products being tainted with poison or other dangerous ingredients.
In this Panel’s view, UDRP administrative panels simply do not have the authority nor, given the summary nature of UDRP proceedings and the rather limited procedural tools available to them, are they equipped to ascertain whether any specific content posed to a website is truthful or not, and, if untruthful, is actionably defamatory and injurious to a complainant. Such conclusions are properly determined through a sufficiently exhaustive factual-based investigation accomplished through litigation in a court of competent jurisdiction.
All this Panel can do is categorize the general nature of the content, regardless of its truth, i.e., whether, for purposes of paragraph 4(c)(iii) of the Policy, a disputed domain name is being used in conjunction with a site that is generally intended to provide critical comment or not – regardless of its accuracy, and thus falls within the safe harbor of being a legitimate noncommercial or fair use; or whether the intent of a respondent evidences some mendacious motive through which the use is actually one designed to achieve commercial gain or to tarnish the mark(s) at issue.
Accordingly, the Panel will not opine as to the accuracy or lack thereof of any of the content posted to the Respondent’s website, but notes that, in the absence of any Response, all the Complainant’s contentions are undisputed and will be viewed by the Panel as such, thus lending considerable credence to the validity of those contentions.
Regarding rights or legitimate interests, the panel in AlgaeCal said:
“[…] at a very cursory level, the Respondent’s website would appear to be a ‘gripe’ site providing negative commentary about the Complainant and its products – regardless of the accuracy of such commentary, which constitutes a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. However, upon closer examination and as discussed in the following section below, the Respondent’s intention, as manifested through the collective nature of its activities, is not to merely provide critical comments but rather to damage the Complainant’s marks and reputation, and disrupt the Complainant’s business. This does not constitute legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c)(iii).”
This Panel agrees with the reasoning of the panel in AlgaeCal, though applied here in a different context with a different result.
First, it is beyond the scope of a UDRP proceeding to make a searching determination regarding the truthfulness of specific content on websites and whether such content is actionably defamatory. This is a matter for civil litigation. Civil litigation is ongoing between Complainant and parties that it alleges are acting in an unfair and defamatory manner toward it; this may or may not include Respondent.
Second, on its face the website operated by Respondent is a “gripe” site in which negative commentary and information are being offered about Complainant. As a general matter, this type of website content constitutes legitimate noncommercial or fair use of the disputed domain name, as the panel in AlgaeCal noted, falling within a “safe harbor”. Here, Respondent is engaged in a form of nominative fair use for purposes of commentary or providing information about Complainant.
In AlgaeCal, the panel was concerned with the collective nature of the respondent’s activities which he found were intended to damage the complainant’s marks and reputation, and to disrupt its business. In AlgaeCal the respondent was fabricating and posting extremely damaging and unsupported allegations regarding poisons in the complainant’s products.
The information before this Panel is of a different character than the information considered in AlgaeCal. In this proceeding, the information posted by Respondent includes a Wall Street Journal article, along with a number of filings from court actions against Complainant, and a number of third party news reports concerning Complainant. Complainant also alleges that Respondent’s posting of documents regarding a previous bankruptcy of one of its principals is irrelevant and therefore deceptive. But that bankruptcy involved substantial unpaid debt,6 and to this Panel it is not clear why that information is irrelevant to Complainant’s current business.
There is a difference between posting, as in this case, what may be an un-updated version of an unflattering Wall Street Journal article, posting actual court filings in proceedings (albeit without posting updated filings or outcomes), and third party news reports. Although Respondent in this case does not appear to have Complainant’s best interests at top of mind, that is not a requirement of fair use. Respondent or someone associated with Respondent may have a grievance against Complainant, and may be involved in litigation with Complainant, but that does not prevent Respondent from expressing negative views about Complainant.
Complainant has brought a civil action in Florida against unnamed John Does based on an alleged coordinated media campaign to damage Complainant and its business. Registration and use of the disputed domain name in this proceeding appears to involve the same coordinated media campaign. In addition, Complainant is involved in civil litigation in federal court in California brought by Howard Appel, who it alleges is the real party in interest behind registration and use of the disputed domain name in this proceeding. Presumably Complainant could have sought a preliminary injunction in either of those civil proceedings to compel Mr. Appel or a party acting on his behalf to take down, at least temporarily, the website associated with the disputed domain name. Complainant has instead sought to use the UDRP to solve the problem which it has yet to solve in the courts.
The Panel finds that Complainant has not established that Respondent is not making a fair use of its trademark, and has not established that Respondent lacks rights or legitimate interests within the meaning of paragraph 4(c)(iii) of the Policy.
For the sake of completeness, the Panel will address the third element.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the respondent] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The activities undertaken by Respondent in this proceeding do not fall squarely within the enumerated elements under paragraph 4(b). Those enumerated elements are illustrative, not exhaustive.
Complainant has argued that Respondent engaged in a pattern of registering the trademarks of third parties in domain names. Yet Respondent was not able to identify Respondent prior to the verification report from the Registrar, and Complainant did not thereafter amend its Complaint to list Respondent or its potential association with registration of Complainant’s trademark or other third party trademarks in domain names. Therefore, no pattern of registration of the trademarks of third parties has been made out with respect to Respondent.
There is no indication that Respondent registered the disputed domain name for purposes of selling it to Complainant or a third-party. It may be that transfer of the disputed domain name will ultimately form some part of a settlement between civil litigants.
There is no indication that Respondent is a competitor of Complainant, or that Respondent set out to injure the business of a competitor.
Use of the disputed domain name may result in user confusion and divert some Internet users seeking to find Complainant’s website to Respondent’s website. The potential confusion will be dispelled on reaching Respondent’s website. The possibility of such confusion does not preclude a finding of rights or legitimate interests in a domain name (see above). Standing alone potential confusion is insufficient for a finding of bad faith when legitimate noncommercial or fair use is present.
In AlgaeCal, the panel found that bad faith registration and use was present notwithstanding the facial appearance of “gripe” site fair use because the totality of the circumstances suggested the respondent had set out to intentionally damage the complainant’s reputation by fabricating reports regarding illegal behavior and criminal conduct, including supplying poisoned products.
Regarding bad faiththe panel in AlgaeCal said:
[…] the Respondent posted to its website highly prejudicial allegations against the Complainant and its products – information which the Respondent expressly indicated on its website was then unsupported (i.e. “evidence including the lab results ... involved in this cover up will be posted as it is gathered”). Yet, in spite of a lack of referencing any evidence to justify its allegations, the Respondent intentionally posted the information to damage the Complainant’s reputation and disrupt its business, specifically that the Complainant engaged in illegal behavior, criminal conduct and provided products laced with poison. The potential damage that could result is patently obvious given the highly inflammatory nature of the allegations and the sharp visceral reaction each allegation will likely, if not nearly automatically, beget in the minds of the Complainant’s potential customers who are exposed to those allegations. These allegations -- regardless of whether they are true or not, just by being expressed, will simply drive those customers will away from the Complainant’s products and thus decrease the Complainant’s sales. The Panel, from the lack of any Response, infers that is the exact intent which the Respondent had in mind when it posted this content and no other plausible, let alone legitimate, reason exists to justify its action.
[…]
All these facts taken together causes the Panel to seriously question the Respondent’s true intention: whether to offer negative commentary through a legitimate complaint site, or use its complaint site as a subterfuge to embark on a deliberate campaign to seriously injure the Complainant’s marks and reputation, and damage its business. Once the Panel viewed the facts of record here in their entirety, its conclusion became plainly evident: the latter is far more likely to reflect the Respondent’s true underlying intention than the former and, once implemented by the Respondent, resulted in bad faith registration and use of the name.
The information before the Panel in this case is of a different kind or character. Without doubt the information on Respondent’s website is intended to call into question Complainant’s business practices. It may be that there is an association between Respondent and a party such as Howard Appel who has a grievance with Complainant and wants to place pressure on Complainant to provide redress for that grievance. But Respondent does not appear to have fabricated news reports or court documents.
Complainant’s principal argument is that Respondent purports to tell the “truth” but does not report the “whole truth”. It is possible to organize and present factual information in a manner that distorts the record to such an extent that an unjustifiable attempt to injure a trademark subject of the information is present, i.e. actionable tarnishment. In this Panel’s view, Respondent’s website does not “on its face” go so far. As reported by the Wall Street Journal, Complainant has been the object of an atypical volume of litigation complaints. Respondent does not actionably distort facts by referring to those complaints, even if it might present additional facts more favorable to Complainant.
The UDRP panel process is not a forum for adjudicating the relative quality of website informational content, especially as is the case here where the information derives from published public sources.
It may be that Complainant has a valid civil cause of action against someone, perhaps Respondent, perhaps Mr. Appel, for libel, slander, intentional interference with business, or otherwise. Presumably that cause of action will require Complainant to demonstrate willful disregard of the truth or falsity of information by someone. But, as noted by the panel in AlgaeCal, the type of evidentiary assessment involved in such causes of action is beyond the scope of the UDRP.
The Panel finds that Complainant has failed to demonstrate that Respondent registered or is using the disputed domain name in bad faith within the meaning of the Policy.
7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: August 17, 2020
4.4.1 WIPO Center practice
As a matter of panel-endorsed practice, in cases involving a privacy or proxy registration service initially named as the respondent, on timely receipt from the registrar (or privacy or proxy service) of information relating to an underlying or beneficial registrant, further to its compliance review and case notification responsibilities, the WIPO Center will (a) provide any disclosed underlying registrant information to the complainant, and (b) invite the complainant to amend the complaint to reflect such information.
Noting the definition of “respondent” in the UDRP Rules, where underlying registrant information is disclosed/provided to the complainant, the complainant chooses not to amend its complaint, and instead to retain the WhoIs-listed registrant as the named respondent, the WIPO Center would not normally treat this as a complaint deficiency. Complainants do however tend to amend their complaints in such scenarios to reflectany disclosed underlying registrant information, in particular to avoid raising possible decision enforcement questions by the registrar.
According to the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), at para. 1, Definitions,“Respondent means the holder of a domain-name registration against which a complaint is initiated.”
2 Panel visit of August 16, 2020 to “www.conciergeauctionscam.net”. According to Complainant, the updated version of the article was not posted before the filing of the Complaint.
3 As defined by Merriam Webster, “a fraudulent or deceptive act or operation”, https://www.merriam-webster.com/dictionary/scam.
4 The demonstrated fact before the Panel is that Wesley Donehue, Donehue Direct, is registrant of the disputed domain name, and that Complainant has not specifically listed Mr. Donehue as Respondent, nor has it explained what relationship he may have to Complainant.
5 The Panel notes that the website identified by the disputed domain name now is linked to the updated version of the Wall Street Journal article. See note 2, supra.
6See, e.g., Michael Braga, Herald-Tribune, “Chad Roffers Files for Bankruptcy Protection”, Inside Real Estate, Aug. 13, 2012.