WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lou Taylor v. Noelle Van Der Valk

Case No. D2021-2824

1. The Parties

The Complainant is Lou Taylor, United States of America, represented by Sperry IP Law dba Vivid IP, United States of America (“United States”).

The Respondent is Noelle Van Der Valk, Belgium.

2. The Domain Name and Registrar

The disputed domain name <loutaylorinvestigation.com> (the “Domain Name”) is registered with Combell NV (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On September 22, 2021, the Center transmitted an email in English and Dutch to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on September 25, 2021. The Respondent did not comment on the language of the proceeding. The Complainant filed an amended Complaint on September 25, 2021, as well as a request for the proceedings to be conducted in the English language.

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 and 4, the Center formally notified in English and Dutch the Respondent of the Complaint, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2021.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 1, 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

The Complainant is a business manager in the sports and entertainment industries, having offices located in Nashville, Tennessee and Los Angeles, California, United States. Complainant operates a full-service business management firm providing her clients with all aspects of business management services, including: accounting, financial statement preparation, royalty audits, participation rights audits, tour accounting, production accounting and estate planning. Complainant has been exclusively and continuously using her trade name in commerce in connection with the offered services in the sports and entertainment industry since 1992.

The Complainant has common law trademark rights, now that the Complainant’s tradename is being used for trade or commerce in connection with the Complainant’s commercial business management services. Also, Complainant is the owner of the United States trademark JOE TAYLOR (word mark), with registration No. 6151432, with a filing date of January 10, 2020 and a registration date of September 15, 2020, for services in classes 35, 36 and 39 (the “Trademark”).

As a result of exclusively and continuously use, the Trademark is well-known and widely recognized in connection with the offered services.

The Domain Name was registered on August 19, 2021 and resolved to a webpage containing information and criticism related to Complainant (the “Website”). Respondent has taken the Website down upon notice from Complainant.

5. Parties’ Contentions

A. Complainant

Insofar as relevant for deciding this matter, the Complainant contends the following.

The Domain Name is confusingly similar to the Trademark. The Domain Name is using the identical Trademark with the addition of the word “investigation”, which creates a similar commercial impression of the Trademark. The addition of the word “investigation” to an otherwise identical mark is insufficient to cure confusion between the Trademark and the Domain Name. Therefore, the Domain Name is confusingly similar to the Trademark, in which the Complainant has registered and common law trademark rights.

The Respondent cannot demonstrate that it has rights or legitimate interests in its use of the Complainant’s Trademark. The Respondent has no affiliation with the Complainant and does not have a business that uses the name “Lou Taylor”. The Website is not a legitimate criticism site and uses defamatory language in connection with the Trademark throughout the Website. The Respondent does not have the right to register or use the Domain Name for the sole purpose of defaming the Complainant and diverting traffic to the Domain Name because it creates an impermissible risk of user confusion.

The Respondent has registered and used the Domain Name in bad faith. The Website also publishes Complainant’s copyrighted photograph on the homepage and features a webpage called “Behind the ‘Brand’ Lou Taylor”, which is trademark use of the Trademark that may cause consumers to believe that the Complainant authorized or is associated with the Website. Given that the Respondent has no legitimate interest or right in the Domain Name and the content of the Website is solely defamatory of the Complainant, the Respondent is acting in bad faith. Also, the use of the Complainant’s name and Trademark in the Domain Name not only highlights the similarities in the Trademark and the Domain Name, but also underscores the bad faith intent to trade on the Complainant’s good name and Trademark.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The Language of the Registration Agreement is Dutch.

The Complainant requested the language of the proceeding be in English on the grounds that (i) the pre-complaint correspondence was written in English and the Respondent has followed up the correspondence by taking down the Website completely; (ii) The Entirety of the – extensive – Website’s Content is written in English;

The Respondent did not respond to this request.

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Center made a preliminary determination to

1) accept the Complaint as filed in English;

2) accept a Response in either English or Dutch;

3) appoint a Panel familiar with both languages mentioned above.

The final determination of the language of the proceeding lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination.

The panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Dutch, but none was filed. Noting the Complainant’s request, these factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, and the Panel finds sufficient factors supporting that the decision is rendered in English, the Panel will render its decision in English.

6.2 Substantive Issues

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.

The Complainant has shown that it has rights in the Trademark valid in various jurisdictions, including the United States of America.

As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for identity or confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.

The Domain Name comprises the Complainant’s trademark LOU TAYLOR, the term, “investigation”, and the “.com” generic Top-Level Domain.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “loutaylor”, “investigation” and “.com”. The element “loutaylor” is identical to the Trademark. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the additional term does not prevent a finding of confusing similarity.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark under the first element of the Policy.

Therefore, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Panel has carefully considered the factual allegations that have been made by the Complainant and that are supported by the submitted evidence.

Although the Respondent did not reply, it is to the Panel to assess whether the Respondent has rights or legitimate interests in the Domain Name. Pursuant to paragraph 4(c) of the Policy, the Respondent may have rights or a legitimate interest e.g. in the following situations:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making 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.

Based on the evidence before the Panel, there seems to be no use for goods or services.

In addition, the Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Lou Taylor” is the Respondent’s name or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.

The Panel considers that UDRP case law recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.

As set out in WIPO Overview 3.0, section 2.6.1 such criticism must be genuine and noncommercial and it should not be a pretext for cybersquatting, commercial activity, or tarnishment.

Furthermore, as set out in WIPO Overview, section 2.6.3, if the domain name consists of the mark plus a derogatory term (e.g., <trademarksucks.tld>), that UDRP 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 main question before the Panel is whether the Website is prima facie a noncommercial, genuinely fair, and not misleading or false website.

While the Complainant claims that the content on the Website shows the Respondent’s bad faith and intent to damage the Complainant’s business, and tarnish the Complainant’s trademark, the Panel considers such claim seems to misinterpret the nature of this dispute under the Policy. As the panel considered in Empresas Carozzi S.A. v. Perfect Privacy, LLC / Carolina Macedo, WIPO Case No. D2017-1549 “[t]he nature of the Policy does not extend to issuing a determination on whether a complainant should be entitled to obtain relief against critical accusations of misconduct, even when the grounds for said accusations have not been proven. The Policy is limited to finding whether a respondent is exercising their legitimate free speech rights, as part of a noncommercial use of a domain name, without an intent for commercial gain to misleadingly divert consumers”.

Although, the term “investigation” is not a clear derogatory term, it suggests at a minimum a form of accusation, which could still be justified under the circumstances as outlined above. The Panel considers that the composition of the Domain Name with such term would not create an impermissible risk of user confusion with the Complainant’s trademark, and comes close to the scenario covered in WIPO Overview 3.0, section 2.6.3.

The Panel has carefully assessed the contents of the Website.

The contents of the Website prima facie describes Respondent’s criticism about the Complainant, without any apparent commercial motive. Overall, the Panel considers that the Website also does not create a misleading or false impression as to it being an official website of the Complainant or its purpose. Although the Panel considers that the Respondent could have made it more clear on the home page of the Website that the purpose of the Website is to communicate criticism about the Complainant, the Panel notes that the Website starts with “welcome to the investigation of Lou Taylor”, and that this will provide the Internet user with sufficient understanding that the Website is some sort of a criticism site. In addition, the Website contains a disclaimer pointing to the informative purpose of the Website. Accordingly, the Panel concludes that the Website is prima facie noncommercial, genuinely fair, and does not appear to be a pretext for cybersquatting, commercial activity, or tarnishment.

Therefore, the second element of the Policy has not been satisfied.

C. Registered and Used in Bad Faith

The Panel refers to its considerations under section 6.B and therefore will not decide on the third element.

7. Decision

For the foregoing reasons, the Complaint is denied.

Willem J. H. Leppink
Sole Panelist
Date: December 2, 2021