britanniabuildingsociety.org

WIPO Arbitration and Mediation Center

The Complainant is Britannia Building Society, a British financial organization whose principal place of business is in Leek, Staffordshire, U.K. Complainant is represented in this matter by Hammond Suddards Edge.

The Respondent describes itself as "the part owners of the mutual known as Britannia Building Society who are known collectively as Britannia Fraud Prevention," Postbus 92, Sluis, Zealand 4524 ZH, Netherlands. Respondent proceeds pro se.

The domain name at issue is <britanniabuildingsociety.org> (the "Domain Name"). The Domain Name is registered with Tucows.com, Inc. (the "Registrar").

Complainant filed its Complaint by email on April 5, 2001, and in hardcopy on April 6, 2001. On April 12, 2001, the WIPO Arbitration and Mediation Center (the "Center") sent a Request for Verification to the Registrar requesting verification of registration data; on April 17, 2001, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

Because of deficiencies noted by the Center, Complainant filed two amended complaints. The First Amended Complaint was received by e-mail on April 12, 2001 and in hardcopy on April 18, 2001. The Second Amended Complaint was received by email by the Center on May 1, 2001, and in hardcopy on May 7, 2001. After verifying that the Second Amended Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center formally commenced this proceeding on May 8, 2001.

Respondent was notified that its Response would be due by May 27, 2001. A series of emails between Respondent and the Center followed, concluding in a May 28, 2001 email from the Center warning Respondent that, if a Response was not received by the end of that day, a Notification of Respondent Default would be issued. The Respondent filed the Response by email later that day. Neither party requested a three-member panel.

The Center proceeded to appoint a Panel comprised of Sir Ian Barker, a New Zealand Judge, as sole panelist. Respondent informed the Center that it "object[ed]" to the appointment of the Panelist "on the grounds of conflict of interest and bias" and "pursuant to Human Rights Act [sic]," and argued that it was, "inconceivable that [Complainant’s Solicitors] Hammond Suddards tentacles do not reach into Sir Ian's interests." Respondent further asserted that, as a member of the judiciary, Sir Ian would be biased against Respondent because he likely "would prefer not to expose lawyers to publicity for misconduct." Sir Ian and the Center firmly rejected Respondent’s allegations of bias. Nevertheless, for unrelated reasons, Sir Ian elected to withdraw as Panelist.

On June 14, 2001, the Center appointed David H. Bernstein as substitute Panelist. Respondent moved to have Mr. Bernstein disqualified as well, arguing that he, too, is biased against Respondent. In the alternative, Respondent requested that Mr. Bernstein recuse himself and that the Center instead appoint a Panelist "who is not entrenched as a corporate lawyer" and is not a member of the judiciary.

The procedures for appointment of a Panel are defined by the Rules, which themselves were promulgated by ICANN. The Rules require approved providers of dispute resolution services (including the Center) to "maintain and publish a publicly available list of panelists and their qualifications." Rule 6(a). Upon receiving a satisfactory complaint, and provided that neither party requests a three-member panel, the Provider "shall appoint . . . a single Panelist from its list of panelists." Rule 6(b) (Footnote 1).

The Rules do provide some limitation on the providers’ authority to appoint a panelist. In particular, Rule 7 mandates that any appointed panelist

"shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist's impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist".

Neither the Policy nor the Rules explicitly creates a procedure through which a party can raise concerns about the suitability of a designated panelist. Rule 8 does, however, contemplate that a party may seek to communicate with a panel through the provider or with the provider itself. More importantly, it is critical that a mechanism be provided to ensure compliance with Rule 7, and also with the prescription of Rule 10(b) that all parties be treated with equality and be given a fair opportunity to present their case. Accordingly, this Panel finds it appropriate for a party with concerns about a panelist’s impartiality to communicate with the provider in order to raise any such concerns and to seek a prompt and fair resolution. In the event the provider declines to disqualify the panelist, it is equally appropriate for the party to move for the panelist’s recusal.

Respondent does not dispute that Mr. Bernstein was on the publicly available list of panelists published by the Center as required by Rule 6(a), or that he submitted the Declaration of Independence and Impartiality required by Supplemental Rule 8 (Footnote 2).Nor does it question his qualifications or allege that he failed to disclose to the Center facts that could raise doubts about his impartiality and independence. Rather, Respondent seeks to have Mr. Bernstein disqualified, or seeks to have him recuse himself, because of intimations of bias or an appearance or partiality arising from his status as a practicing attorney with an international law firm.

The alleged bias is twofold. First, Respondent claims that Mr. Bernstein has an unspecified connection to London, presumably because his law firm, Debevoise & Plimpton, maintains an office there and/or because Mr. Bernstein holds a master’s degree from the London School of Economics and Political Science. London is widely recognized as the financial capitol of the United Kingdom, the country in which Complainant primarily operates, and Respondent’s position appears to be that anyone with any connection to London is per se biased. Second, Respondent argues that Mr. Bernstein is a "corporate lawyer," and that, given the circumstances of this case, such status is per se grounds for disqualification or recusal because "[n]o corporate lawyer is going to enjoy permitting a web site operator to publish justified material exposing corporate lawyers for criminal conduct that they thought would never be exposed." As Respondent further explains in its Response:

"The Respondent [] objects, and believes that a conflict exists, for any individual adjudicating this case who may be involved as a solicitor, lawyer, advocate, Counsel or Judge or in any way involved in the legal system. The stakes are high in this case for the lawyers and their purported clients".

Respondent argues that the Center should have disqualified Mr. Bernstein for bias. The Rules provide for disqualification when there is "justifiable doubt as to the Panelist's impartiality or independence." Rule 7. Decisions regarding recusal or disqualification are left in the first instance to the Panelist, who must resolve any such issues prior to executing a Declaration of Independence and Impartiality, and thereafter to the discretion of the Provider. Id.

In this case, the Center has ruled on Respondent’s request. On June 18, 2001, the Center sent the following email to the parties:

"The Center acknowledges receipt of the Respondent's e-mail communication of June 15, 2001, in which the Respondent objects to the appointment of Mr. David H. Bernstein in this case, asserting that "the tentacles of Hammond Suddards Edge are far reaching and Mr. Bernstein has connections with London and is a corporate lawyer.

The Center finds the objections presented by the Respondent not valid. Accordingly, this case will proceed with Mr. David H. Bernstein as the Panelist".

The Panel has now reviewed the Center’s determination and agrees that neither disqualification nor recusal is appropriate. As a threshold matter, the Panel notes that unsubstantiated allegations of bias are not sufficient to warrant disqualification or recusal. Rather, a party challenging a panelist’s appointment must present specific evidence showing that a panelist may be biased. Moreover, it is not sufficient if such evidence creates some hint, insinuation or innuendo of doubt; rather the evidence must show "justifiable doubt" -- that is, that a reasonable, objective person would be justified in doubting the panelist’s impartiality after consideration of the proffered evidence.

Although the Rules do not provide specific examples of circumstances that might give rise to recusal and the Panel is not aware of any UDRP decisions that have addressed these issues, similar issues have been considered by courts for many years in connection with judicial assignments. Drawing on these authorities, the Panel finds that justifiable doubt as to a panelist’s impartiality or independence may arise, inter alia, if the panelist has demonstrated personal bias for or against one of the parties, possesses a financial interest in the outcome of the dispute, or represents or has represented one of the parties or a third party in a dispute with one of the parties. In these circumstances, although a panelist may believe that he or she could rule impartially, the panelist should, at the bare minimum, fully disclose the circumstances so that the provider can consider whether there is justifiable doubt, and the parties can be heard on any objections they may have.

None of Respondent’s allegations can be fairly said to give rise to a "justifiable doubt" about Mr. Bernstein’s impartiality and independence. The thrust of Respondent’s motion is that a "corporate" lawyer cannot rule independently in a case in which one of the parties is represented by counsel and the other party has made allegations about that counsel on the website located at the domain name in question. Respondent does not, however, make any particularized assertions about the relationship between the Panelist and the firm of Hammonds Suddards Edge, nor does Respondent explain how Mr. Bernstein’s connections to London are relevant to this dispute. In short, Respondent has failed to identify any factual nexus or rational connection between the Panelist and the matters in dispute.

The Panel also rejects Respondent’s objection that the Center did not follow Respondent’s instructions with respect to the appointment of a panelist. In its Response, Respondent stated that it did not want the Center to appoint as a panelist "a solicitor, lawyer, advocate, Counsel or Judge." The Center properly disregarded this request. That is because the Rules do not give the parties any say in the appointment of the panelist in a single-panelist case (Footnote 3). Rather, if a party seeks to have some influence over the composition of the Panel, it may instead request a three-person panel, to which each of the parties can nominate a panelist and can express its views on the proposed presiding panelist. Rules 3(b)(iv), 5(b)(iv), 6(e). Utilizing this procedure, a party can ensure that at least one of the panelists will meet its criteria.

Respondent did not avail itself of this procedure. It thus has no basis (absent justifiable doubt as to the Panelist’s independence and impartiality) for complaining now about the Center’s choice of Panelist.

Complainant is a financial services organization governed by the United Kingdom’s Building Society Act of 1986. It has approximately 1.25 million members and is well known throughout the United Kingdom. All its trading operations, advertisements and promotions are conducted under the name "Britannia Building Society." See generally, Britannia Building Society v. Prangley (June 12, 2000; UK Chancery Division; Raffee, J.).

Complainant holds a registration for the mark "Britannia" in the United Kingdom. Its primary internet address is <britannia.co.uk>. It is also the proprietor of the domain names <britanniabuildingsociety.co.uk> and <britanniabuildingsociety.com>, having recently acquired the latter through legal proceedings in the United Kingdom. Id.

Respondent describes itself as a collective of members of Complainant. Respondent registered the domain name <britanniabuildingsociety.org> on May 11, 2000, and maintains a website at that address that is highly critical of the practices of Complainant’s management.

Complainant submits that its mark is famous throughout the United Kingdom and is exclusively distinctive of the Complainant. It further asserts that the "distinctive part of the domain name britanniabuildingsociety, is (save for the absence of a space between the three words) identical to the Complainant’s trading name," and that, as such, it is "inconceivable that anyone typing the domain name into their browser for the first time would not expect to access the Complainant’s website." Complainant therefore asserts that the Domain Name is identical or confusingly similar to a mark in which it has rights for purposes of paragraph 4(a)(i) of the Policy.

Complainant further argues that Respondent has "no legitimate rights to or interest in the Domain name," as required by paragraph 4(a)(ii) of the Policy, and states that it can "conceive of no manner in which the Domain Name could be used in a legitimate manner by any person, company or organisation other than the Complainant."

Finally, the Complainant submits that the domain name has been registered in bad faith in order "to exploit the Complainant’s rights in the name ‘Britannia Building Society’ in an attempt to attract or divert internet users to the Respondent’s website for the purpose of disrupting the Complainant’s business and in order to make unproven allegations of criminal activity and potentially defamatory remarks." Complainant accuses Respondent of registering the domain name in bad faith for purposes of paragraph 4(a)(iii) because a person seeking information on Complainant’s activities might "be drawn into the Respondent’s website and be exposed to contrary and critical views."

Respondent replies that (1) Complainant lacks standing to bring this Complaint because it does not represent the members of the Britannia Building Society under UK law; (2) Complainant has no rights in the trademark "Britannia Building Society"; and (3) Respondent has "every right" to the name "Britannia Building Society" and is making legitimate use of the domain name to

"provide a facility for [Britannia Building Society’s] co-owners to learn confidentially without the threat of expulsion, censorship or theft of documents about unlawful acts by the group who currently manage the mutual known as Britannia Building Society incompetently and fraudulently for their own aims, procure appointees to cover up that conduct, and retain a firm of solicitors ready willing and able to ignore their fiduciary duties to the society per se for the benefit of the funds received from those whose conduct they sustain".

Respondent further asserts the Complainant is attempting a Reverse Domain Name Hijacking.

The burden for the Complainant under paragraph 4(a) of the ICANN Policy is to prove:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The domain name has been registered and used in bad faith.

Before turning to the merits, the Panel must first address Respondent’s argument that Complainant lacks standing because those pursuing the case in its name do not actually represent Britannia Building Society.

Complainant has submitted a certified Complaint in which it claims to be Britannia Building Society and authorizes Hammond Suddards Edge to act on its behalf. See Rules 3(b)(ii), (xiv). Alone, those assertions are sufficient to establish Complainant’s standing absent persuasive proof submitted by Respondent that Complainant was not whom it said it was or was not represented by Hammond Suddards Edge. Respondent’s argument here, though, is not that Complainant or its counsel is an imposter, but rather that the management of Britannia Building Society has no right to pursue this case because it is being undertaken without the consent of all of the Society’s members. Respondent’s standing objection thus appears to be part of its broader dispute with Complainant over corporate control.

The legitimacy of corporate actions is not an issue that can be resolved in a proceeding under the Policy. If Respondent wishes to challenge the Complainant’s right to bring this (or any other legal or other action), it should do so in a more appropriate forum. Policy ¶ 5. For purposes of the Policy, it is sufficient that the parties agree that Complainant represents the nominal management of Britannia Building Society. The Panel therefore concludes that Complainant has standing to pursue this action.

Respondent argues that the domain name is not identical or confusingly similar to Complainant’s mark because Complainant has no trademark rights in the phrase "Britannia Building Society." According to the Respondent, under UK law, a mark including the words "building society" cannot be registered because "building society" is a regulatory term that can only be affixed to an entity by the government.

Even if Complainant cannot establish trademark rights in the entirety of the phrase "Britannia Building Society" (an issue I need not reach), its rights in the registered mark "Britannia" are alone sufficient to show confusing similarity under the first prong. As numerous prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See, e.g., Quixtar Investments, Inc. v. Dennis Hoffman, Case No. D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> arelegally identical); Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,Case No. D2000-1774 (WIPO Feb. 26, 2001) (incorporation of Nikon mark into domain name <nikondealers.com> satisfies first prong of Policy). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO Sept. 19, 2000) (for purposes of the first prong of the Policy, <wal-martsucks.com> is confusingly similar to Wal-Mart trademark). Accordingly, Complainant has satisfied its burden under the first prong.

Complainant has failed to prove that Respondent lacks a legitimate interest in the Domain Name. In particular, it has failed to prove that Respondent is not entitled to the protections of paragraph 4(c)(iii) of the Policy, which provides that a Respondent has a legitimate interest if it is

"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 Panel concludes that Respondent is making a legitimate noncommercial use of the domain name because Respondent maintains its website as a site critical of the policies of the management of Britannia Building Society. SeeBridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers,Case No. D2000-0190 (WIPO July 6, 2000); Compusa Management Co. v. Customized Computer Training, Case No. FA0006000095082 (NAF Aug. 17, 2000). Although Complainant does allege that Respondent has registered and used the Domain Name misleadingly to divert customers to its highly critical site, with the probable intent of tarnishing the mark at issue, such allegations fail to undermine the legitimacy of Respondent’s use.

The Respondent’s actions cannot be characterized as consistent with an "intent for commercial gain to misleadingly divert consumers." That phrase refers to the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales. SeeUniversal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Houghton Mifflin Company v. The Weathermen, Inc., Case No. D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion "for commercial gain" and thus no loss of legitimacy. That some internet users might initially be confused into thinking that, because of the use of the mark in the Domain Name, <britanniabuildingsociety.org> is Complainant’s official web site is of no moment. First, any such confusion would immediately be dispelled by Respondent’s prominent disclaimer and the link that is displayed to Complainant’s official site. Second, and in any event, such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the internet. A user who misleadingly stumbles upon Respondent’s site while looking for Complainant’s official site need only click the "back" button to return to her search, or the link helpfully provided by Respondent.

As for Complainant’s assertion of "tarnishment," that phrase, too, 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, Case No. D2000-1415 (WIPO Jan. 23, 2001); cf. Etam, plc v. Alberta Hot Rods, Case No. D2000-1654 (WIPO 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, Case No. D2000-0662 (WIPO 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. Policy ¶ 5.

The web site Respondent operates at the Domain Name is, and so far as the Panel can tell from the record always has been, maintained as a genuine criticism site (Footnote 4). The goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. Use of the Policy to provide such insulation would radically undermine freedom of discourse on the internet and would undercut the free and orderly exchange of ideas that the Policy seeks to promote.

Complainant claims that Respondent registered the domain name in bad faith for the purpose of disrupting Complainant’s business, Policy ¶ 4(b)(iii), and that Respondent is making a bad faith effort to attract internet users to its website by creating a likelihood of confusion as to its source, Policy ¶ 4(b)(iv). Complainant’s arguments fail.

The Policy declares it to be evidence of bad faith if a party has registered a website primarily "for the purpose of disrupting the business of a competitor." Policy ¶ 4(b)(iii) (emphasis added). The Panel acknowledges that other Panels have disagreed as to the breadth of that phrase. Compare Mission KwaSizabantu v. Benjamin Rost, Case No. D2000-0279 (WIPO June 7, 2000) (holding that publisher of critical website was "competitor" of complainant because "[t]he natural meaning of the word ‘competitor’ is one who acts in opposition to another"), with Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, Case No. D2000-1772 (WIPO April 10, 2001) (rejecting Mission KwaSizabantu approach and holding that "a respondent can ‘disrupt[] the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner").This Panel reaffirms the holding of Tribeca Film Center that a competitor for purposes of the Policy is a person or entity in competition with a complainant for the provision of goods or services, and not merely any person or entity with an interest oppositional to that of a mark holder. To rule otherwise would render so many parties "competitors" as to dilute the Policy’s bad faith requirement beyond recognition. Complainant nowhere argues that Respondent is its "competitor" in the narrow sense adopted here, and thus has failed to establish bad faith under this prong.

Complainant similarly fails to prove a bad faith effort by Respondent intentionally to divert internet users to its website by creating a likelihood of confusion with Complainant’s mark. To the contrary, as noted above, Respondent goes to great lengths to dispel any possible confusion about the source of the website, including a prominent disclaimer at the top of the site and a link to Complainant’s actual site. This conduct is paradigmatic of good faith, not bad.

Respondent asks, without elaboration, for a declaration that Complainant is engaging in Reverse Domain Name Hijacking. Such a finding requires a showing of bad faith. See Rule 1. Although Complainant has failed to justify relief under the Policy, there is no evidence that its claim was brought in bad faith. The Domain Name is identical to a mark in which Complainant holds rights, and Complainant may have been misled by some prior Panel decisions that erroneously found that a bona fide criticism site does not constitute a legitimate, good faith use of a domain name. See¸ e.g., Mission KwaSizabantu v. Benjamin Rost, Case No. D2000-0279 (WIPO June 7, 2000); Quirk Nissan, Inc. v. Maccini, Case No. FA00060000 94959 (NAF June 29, 2000); Monty and Pat Roberts, Inc. v. J. Bartell, Case No. D2000-0300 (WIPO May 8, 2000) (Footnote 5). Thus the Complaint was not so far outside the bounds of plausibility as to constitute a bad faith or harassing attack on Respondent’s registration of the Domain Name.

Moreover, the concept of Reverse Domain Name Hijacking is itself an equitable remedy. In order to demonstrate that the equities do, in fact, weigh in its favor, a party typically must itself follow and respect the rules of the tribunal and otherwise act equitably. Respondent here has not. Despite clear instructions in repeated emails from the Center, Respondent engaged in a series of harassing emails and violations of the Rules, including Rules 2(h)(iii), 5(b)(ii) and 8. In light of Respondent’s behavior in this proceeding, it is not entitled to the equitable remedy of a finding of Reverse Domain Name Hijacking.

This Panel has previously remarked that "[t]he ‘legitimate interest’ and ‘bad faith’ factors should adequately insulate true protest sites from vulnerability under the Policy." Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO, Sept. 19, 2000). The present case proves that contention to be true. Respondent is using the domain name in question to maintain a site that is highly critical of Complainant, Complainant’s practices and Complainant’s solicitors. Whatever other legal liabilities Respondent’s activities may eventually impose upon it – and the parties trade accusations with gusto – Complainant has not borne its burden of demonstrating that relief under the Policy is warranted. A genuine criticism site, undertaken by its proprietors with no intent other than to protest, ridicule and mock its targets, does not fall astray of the dictates of the Policy, regardless of the outrageousness of the allegations it contains or the vigorousness with which they are made.

Because Complainant has failed to prove that Respondent lacks a legitimate interest or has registered and used the domain name in bad faith, the Panel declines to order transfer of the Domain Name.

David H. Bernstein
Sole Panelist

Dated: July 6, 2001