WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Audacia Capital (Ireland) Plc v. Domain Admin, Whois Privacy Corp

Case No. D2021-2286

1. The Parties

The Complainant is Audacia Capital (Ireland) Plc, Ireland, represented by LK Shields Solicitors, Ireland.

The Respondent is Domain Admin, Whois Privacy Corp, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <audaciabond.com>, <audaciabondscam.com>, and <investinaudacia.com> are registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 21, 2021.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2021.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 24, 2021. 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

Incorporated in 2018, the Complainant is a public limited company established and registered in Ireland. The Complainant has been approved by Euronext Dublin, the largest stock exchange in Europe, for the issue of a EUR 250,000,000 program of Corporate Bonds structured as Listed, securitized Electronically Traded Notes, and with an investment grade BBB+ credit rating. The purpose of the Company is to issue these Euronext Exchange Listed Bonds for companies, and in so doing, allow such companies to raise funds as working capital.

The Complainant maintains no registered trademarks for the AUDACIA mark but has traded under such mark since its incorporation, while an affiliated Gibraltarian company, Audacia Capital Limited, has used said mark since its own incorporation in October 2016. Under such mark, the Complainant has approved significant bond issues including for a prominent luxury British sports car brand. The Complainant’s activities under the AUDACIA mark have received coverage in the financial press.

The disputed domain names were all registered on February 23, 2021. Nothing is known about the Respondent, whose identity remains concealed under a privacy service. According to screenshots produced by the Complainant, the content on the websites associated with the disputed domain names is as follows:

<audaciabond.com> – a text based site asserting that the activities of certain individuals allegedly behind the Complainant are engaged in an “investment scam”. The website seeks contact from those who have been “cheated” by “bond scams, or fund scams” allegedly connected to individuals associated with the Complainant and invites any such affected persons to “contact the UK authorities with your case”.

<audaciabondscam.com> – a text based site with a single graphic reproducing one of the Complainant’s logos under the heading “What Kind of Person would steal every last penny from unsuspecting pensioners”. The website describes the Complainant as the “latest bond scam venture” of an individual allegedly behind the Complainant.

<investinaudacia.com> – a text based site entitled “Don’t Invest in Audacia / Increasing awareness about the Audacia Bond Investment Scam”. This website appears to have identical or at least very similar content to that at the website associated with <audaciabond.com>.

As far as the Panel can tell from this material, in the absence of any explanation from the Respondent, the Respondent’s main gripe appears to be with a particular financial services provider who may have purchased instruments of the kind issued by the Complainant on behalf of certain pensioners.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

Identical or confusingly similar

The Complainant claims unregistered trademark rights in Ireland based upon it and its affiliates having traded under the AUDACIA mark since 2016. The Complainant would be entitled to bring an action of passing off in Ireland in respect of the disputed domain names and the evidence meets all the elements of the relevant test, namely, the presence of goodwill in the relevant mark, the Respondent’s misleading use of such mark and the existence of damage to the Complainant’s goodwill and reputation as a result of such misleading use.

Rights or legitimate interests

None of the exceptions in paragraph 4(c) of the Policy apply to the disputed domain names. The Complainant is not aware of any evidence of the Respondent’s use or preparations to use these in connection with any bona fide offering of goods or services. The Complainant is not aware of evidence of the Respondent being commonly known by the disputed domain names or making a legitimate or fair use of these, without intent for commercial gain, misleadingly to divert consumers or to tarnish the trademark at issue. The Respondent’s motivations are intentionally malicious and designed to undermine or tarnish the Complainant’s trademark. The Respondent failed to investigate or refrain from using a domain name, which infringes on the rights of a third party. The Respondent is making a concerted campaign against the Complainant which is premised on malicious falsehoods and baseless assertions.

Registered and used in bad faith

Policy jurisprudence demonstrates that where a “disclosed” registrant is in turn another privacy or proxy service this may support an inference of the Respondent’s bad faith, e.g., an attempt to shield illegitimate conduct from a UDRP proceeding.

The Respondent has used the disputed domain names in an intentional and transparent effort to interfere with, disrupt and damage the Complainant’s business and undermine the AUDACIA trademark. It has engaged in a concerted campaign of publishing numerous falsehoods and defamatory statements. Irreparable damage will be caused to the Complainant and its trademark if the Respondent is allowed to persist. Policy jurisprudence demonstrates that a consideration of bad faith will take account of any intentions to publish defamatory, libelous and / or fraudulent content. The Respondent’s actions to date go far beyond mere bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The first element of the Policy is analyzed in two steps. First, the Complainant must show that it hasUDRP-relevant rights in a trademark. Secondly, the disputed domain names are each compared to such trademark, typically in a straightforward side-by-side analysis in which the generic Top-Level Domain (“gTLD”) of the disputed domain names concerned is usually disregarded as required for technical reasons only. Confusing similarity may be found if the trademark is recognizable within the disputed domain name concerned, whether or not accompanied by other terms.

The Complainant claims unregistered rights in the AUDACIA trademark. In order for such a claim to be made out, the evidence before the Panel must show that this term has become a distinctive identifier associated with the Complainant’s goods and services. As is noted in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), relevant evidence of such may include a range of factors, such as (i) the duration and nature of use of the marks, (ii) the amount of sales under the marks, (iii) the nature and extent of advertising using the marks, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

In the present case, the Panel notes that the AUDACIA mark has been used in commerce by the Complainant’s affiliate since 2016 and by the Complainant itself since 2018. The mark has achieved public recognition by virtue of the Complainant’s listing on a major stock exchange and as a consequence of the various bond issues with which it has been concerned. It has likewise received media coverage in the financial press. Finally, the Complainant’s accounts demonstrate that it has engaged in substantial financial activities under its corporate name, which the Panel is content to accept as equivalent to a demonstration of “the amount of sales under the mark”. Taken together, the evidence before the Panel is sufficient to support the Complainant’s claim to UDRP-relevant unregistered trademark rights in the AUDACIA mark. In these circumstances, it is not necessary for the Panel to examine the Complainant’s secondary claim that it has UDRP-relevant rights by virtue of its alleged entitlement to bring a passing off claim under local law.

Turning to the comparison exercise, the Panel notes that the AUDACIA mark is present and recognizable in each of the disputed domain names. As noted above, this is sufficient for a finding of confusing similarity under the first element whether or not such mark is accompanied by other terms in the disputed domain names. It is of no significance to the first element analysis whether any such other terms may be regarded as negative or pejorative, such as the word “scam” in <audaciabondscam.com> (see the discussion in section 1.13 of the WIPO Overview 3.0).

The Respondent has not engaged with the administrative proceeding and has not opposed the Complainant’s assertion of unregistered trademark rights or its submissions as to confusing similarity. It should also be noted that the Respondent appears to be specifically referencing the Complainant by way of its corporate name, and thus in turn is referencing its AUDACIA trademark via the disputed domain names, and this too can be relevant to the first element assessment under the Policy (see section 1.15 of the WIPO Overview 3.0).

In all of the above circumstances, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights and therefore that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain names:

“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.”
The Complainant’s case on this topic is that the Respondent is using the websites associated with the disputed domain names to publish intentionally malicious content designed to undermine or tarnish the Complainant’s trademark. The Complainant also asserts that the Respondent cannot avail itself of any of the provisions of paragraph 4(c) of the Policy, whereby the evidence might show that the Respondent has rights or legitimate interests in the disputed domain names. For its part, the Respondent has maintained its silence in this proceeding. Nevertheless, it is clear to the Panel that the websites associated with the disputed domain names contain content critical of the Complainant. The disputed domain names therefore require to be considered in terms of the provisions of paragraph 4(c)(iii) of the Policy, namely whether (based on the Panel’s evaluation of all the evidence presented) the Respondent is exercising its right to noncommercial criticism of the Complainant and is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The use of a domain name for noncommercial free speech can in principle support a legitimate interest under the Policy (see section 2.6 of the WIPO Overview 3.0). To support such fair use, the Respondent’s criticism must be genuine and noncommercial, and not a pretext for cybersquatting, commercial activity, or tarnishment. Where the domain name concerned is not identical to the complainant’s trademark but comprises the mark plus a derogatory term (the example often cited is “sucks”) panels tend to find that the Respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false.

The Panel has before it three disputed domain names, the websites for which feature broadly similar content as described in the factual background section above. The Complainant has not asserted that the material is commercial in nature. Furthermore, contrary to the circumstances in the case cited by the Complainant, Dukascopy Bank SA v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1459, the websites in the present case do not contain links to the Complainant’s competitors and there is no evidence that the Respondent is seeking to obtain commercial gain directly from Internet users, or from diverting them to any such competitors.

The links on the websites appear to relate, in one case, to a news story on the BBC News website relating to a pensioner who allegedly suffered at the hands of a certain financial adviser, and in other cases, to news stories on the website of an entity which operates a membership scheme and which states that it provides assistance to victims of investment scams. The fact that this entity provides a commercial service appears to the Panel merely to be incidental to the publication of the Respondent’s “news” content. The Respondent’s content does not actively invite viewers to use this third party’s service and, on the contrary, suggests that affected persons should “contact the UK authorities with your case”. In any event, it would be for the Complainant to show that the entity concerned is linked to the Respondent or at least that the Respondent is likely to have or is seeking some commercial interest in this entity’s activities on the balance of probabilities. The Complaint is silent on that issue.

The Complainant does not elaborate as to its position on the Respondent’s content beyond asserting that it is malicious and damaging, and tarnishes the Complainant’s AUDACIA mark. However, the impression which the Panel has received from the content concerned is that the Respondent genuinely believes that the Complainant’s business, and/or certain named persons within it, are connected to the matters of which it complains. The Panel is in no position to assess whether such belief is accurate and reasonable on the one hand, or malicious, false and defamatory on the other, nor does it require to make any such assessment in terms of its analysis under the Policy (see, for example, the comments of the panel in MUFG Union Bank, N.A. v. William Bookout, WIPO Case No. DME2014-0008). The Panel notes that the critical views set out on the websites associated with the disputed domain names appear on balance to be genuinely held and genuinely expressed, and that there is no evidence either on said websites (or for that matter elsewhere on the record, and particularly in the Complainant’s submissions) which would satisfy the Panel that such content is primarily a pretext for cybersquatting, commercial activity, or tarnishment.

On the question of tarnishment, the panel in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 noted the following:

“[…] [Tarnishment] has a specific meaning that does not apply here. Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (Jan. 23, 2001); cf. Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (Jan. 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (Sept. 19, 2000) (protection for genuine criticism sites is provided by Policy’s legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues.”

In these circumstances, the Panel rejects the Complainant’s assertion that the Respondent’s motivation is solely to tarnish the Complainant’s AUDACIA mark. On the contrary, the Respondent’s motivation is to criticize the Complainant’s business activities. That is not the end of the matter, however, as some previous panels under the Policy have recognized a limit to fair use of a domain name for the expression of genuine noncommercial criticism. These panels, the present Panel included, generally consider that the use for such purpose of an identical domain name to the trademark concerned (i.e., <trademark.tld>) constitutes an impermissible risk of user confusion, given that such domain name effectively impersonates the trademark owner. Likewise, many panels consider that a domain name used for the same purpose consisting of a trademark together with one or more additional terms may also constitute impersonation if such domain name fails to make clear that the registrant is not affiliated or authorized by the trademark holder (or indeed if the domain name itself actively suggests such affiliation or authorization where none exists). On these issues, see the discussion in section 2.6.2 of the WIPO Overview 3.0 and on the “impersonation test” in Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633 (“Dover Downs”).

Applying the “impersonation test” in the present case, the Panel notes that none of the disputed domain names consist only of the format <trademark.tld>. Each contains the Complainant’s trademark along with one or more additional words. As described by the panel in Dover Downs, “[…] the test does not bar registrants from using a domain name that contains a trademark plus an additional, distinguishing term. Registrants remain free to select such a domain name so long as the domain name makes clear that the registrant is not affiliated with or authorized by the trademark holder.” Accordingly, the question for the Panel here is whether any of the disputed domain names would be perceived by the public as being authorized or affiliated with the Complainant, thus constituting an impermissible risk of confusion, even where used in connection with genuine noncommercial free speech.

In the Panel’s opinion, the disputed domain name <audaciabondscam.com> clearly signals to the viewer through the word “scam” that critical content is likely to be present on the associated website. However, the Panel considers that each of <audaciabond.com> and <investinaudacia.com> strongly suggest an affiliation with, or authorization by, the Complainant. They are precisely the type of domain names, which the Complainant would use for its own purposes, particularly <investinaudacia.com>. The Respondent’s message on the website associated with the latter domain name is the opposite, i.e., that Internet users should not invest in the Complainant’s offerings. In any event, neither <audaciabond.com> nor <investinaudacia.com> signal to the viewer that critical content is likely to be present. Indeed, the Panel considers that using such disputed domain names to entice Internet users who are likely to be expecting the Complainant’s official content to a site, which contains the Respondent’s critical views, however genuinely held, cannot be considered fair use. The Panel finds, therefore, that <audaciabond.com> and <investinaudacia.com> fall foul of the “impersonation test”.

In all of these circumstances, the Panel finds that the Complainant has failed to carry its burden in respect of the requirements of paragraph 4(a)(ii) of the Policy as regards <audaciabondscam.com>. The Complaint therefore fails in respect of this particular disputed domain name. The Panel also finds that the Complainant has carried its burden in respect of the requirements of paragraph 4(a)(ii) of the Policy as regards the disputed domain names <audaciabond.com> and <investinaudacia.com>.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

In the present case, the third element assessment of the Policy mirrors that of the second element above. With regard to the disputed domain name <audaciabondscam.com>, the Panel has found that this does not fall foul of the “impersonation test” outlined in Dover Downs, supra. The disputed domain name has been registered with a view to making a prima facie genuine noncommercial criticism of the Complainant and clearly signals to viewers that its associated website is likely to contain such critical material. Said disputed domain name is not associated with any apparent pretext of cybersquatting or tarnishment, as it is understood by the Policy. In any event, there is no need to discuss the question of registration and use in bad faith any further as regards this particular disputed domain name as the Complaint against it has failed on the second element assessment.

The Panel has found that the remaining disputed domain names, <audaciabond.com> and <investinaudacia.com> constitute an impersonation of the Complainant and have fallen foul of the “impersonation test”. The panel in Dover Downs, supra, indicated that a failure to pass this test does not automatically constitute registration and use in bad faith and added that a complainant must nevertheless bring forward evidence for the purposes of the third element assessment. The present Panel considers that, in appropriate circumstances, a failure to pass the impersonation test may properly lead to a finding of registration and use in bad faith (see, for example, the discussion on the third element analysis in Netblocks Group v. Collin Anderson, WIPO Case No. D2020-2240 in which the domain names concerned had prima facie misrepresented to Internet users that the associated website was connected with the complainant).

The registration and use of domain names for noncommercial criticism may indicate a good faith intent, and would not necessarily lead to a finding of registration and use in bad faith under the Policy’s third element. However, where any such domain names are intentionally designed to masquerade as an official domain name of the trademark owner, largely in order to secure maximum dissemination of a respondent’s critical views by causing confusion to those Internet users who will identify them as just such an official domain name, that could not, in this Panel’s opinion, be regarded as good faith registration and use. The fact that such domain names are intended for the purpose of exercising freedom of speech cannot cure the inherent deception which a respondent deliberately seeks to bring about in the situation described (see Netblocks Group v. Collin Anderson, supra). Both <audaciabond.com> and <investinaudacia.com> have been registered and used with a deliberate intent to cause this kind of misidentification so as to extend the Respondent’s message beyond those who wish or are expecting to receive it. The former disputed domain name describes a financial instrument of the kind which the Complainant issues, and appends this to the Complainant’s mark. It is a domain name that users would expect to be linked to an official site of the Complainant. The latter disputed domain name represents a call to action of the sort which users would only expect to emanate from the Complainant or an affiliate. Each of these disputed domain names was deliberately selected and used by the Respondent with the bad faith intention that visitors would in the first instance be deceived by it.

For completeness, the Panel notes that it does not regard the Respondent’s selection of a privacy service as the registrant of the disputed domain names to constitute registration and use in bad faith in and of itself in the circumstances of the present case. There is no indication that the Respondent selected such a service with a view to avoiding the consequences of the Policy, nor in any event has the Respondent been successful in avoiding such consequences by that means.

In all of the above circumstances, the Panel makes no finding on this topic regarding the disputed domain name <audaciabondscam.com> and finds that the requirements of paragraph 4(a)(iii) of the Policy have been made out in respect of the disputed domain names <audaciabond.com> and <investinaudacia.com>.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <audaciabond.com>, and <investinaudacia.com> be transferred to the Complainant.

For the foregoing reasons, the Complaint is denied regarding the disputed domain name <audaciabondscam.com>.

Andrew D. S. Lothian
Sole Panelist
Date: September 7, 2021