Affinion Publishing LLC v. Link Domain/ Daniel Concepcion
Case No. D2008-0316
1. The Parties
Complainant is Affinion Publishing LLC, of Nevada, United States of America, represented by the law firm Davis & Gilbert LLP, United States of America.
Respondent is Link Domain/ Daniel Concepcion, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <privacyguard.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2008. On March 19, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 19, 2008, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The registrar’s notification indicated that Respondent had used a privacy service in registering the disputed domain name. Apparently pursuant to its standard procedures, eNom notified its registrant (Respondent) and the Center of Respondent’s identity. Complainant filed an Amended Complaint on March 28, 2008, adding Link Domain as Respondent.
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2008. Respondent did not submit any response. Accordingly the Center notified Respondent’s default on April 25, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 2, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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 an “affinity marketer”, which according to its most recent annual report means that Complainant provides “comprehensive marketing services and loyalty solutions to many of the largest and most respected companies in the world.” Complainant is affiliated with a company called Trilegiant Corporation. Complainant owns two trademarks registered on the principal register of the United States Patent and Trademark Office (USPTO) for PRIVACYGUARD (registered 1994 based on a first use in commerce in 1991) and PRIVACY GUARD.COM (registered 2002 based upon a first use in commerce in 2001). Complainant uses these trademarks in connection with services related to identity theft protection, providing consumer credit reports, and credit monitoring.
The record reveals little about Respondent beyond name and contact information. The disputed domain name was first registered in 2002 and, according to archives viewed by the Panel on the Wayback Machine at “www.archives.org”, continuously since that time has resolved to a website featuring articles about privacy, identity theft, and consumer protection against fraud. For example, titles of articles that appear on a recently accessed viewing of the disputed domain name include “Can Consumers Fight Back Against Credit Fraud,” “The Differences between Spyware and Adware,” and “Spyware-Is Someone Watching You?” Other contents of this website are discussed in Section 6-B below.
At the “About Privacy Guard.net” tab of this website is stated:
“PrivacyGuard.net is purely an information web site about the privacy issues facing internet users. This site does not sell any services or products. PrivacyGuard.net is not affiliated with or endorsed by privacyguard.com or the Trilegiant Corporation.”
Based upon a review of the archives the second sentence appears to have been added in 2007.
Complainant sent Respondent cease-and-desist letters in September and October 2007 but received no reply.
5. Parties’ Contentions
A. Complainant
Complainant contends as follows:
Rights in a mark
Complainant has valid and enforceable trademark rights in the phrase ‘Privacy Guard’ by virtue of its two USPTO-registered trademarks. Except for the different generic top level domain identifier (gTLD) .net, the disputed domain name is identical to one mark and confusingly similar to the other.
Rights or legitimate interest
Respondent has never been known by the disputed domain name, either individually or as a business. Complainant’s registered trademarks give Complainant the right to “stop third parties from using ‘Privacy Guard’ in a confusingly way.” Respondent’s use of the disputed domain name is not bona fide under the Policy because:
“Respondent’s use of the Domain Name is neither a fair use nor a bona fide offering of goods or services. While Respondent has altered the content located at the Domain Name on at least two occasions in a blatant attempt to avoid a finding of bad faith, Respondent has used the Domain Name to direct Internet users to a web farm that contains a search engine and links to multiple third party sites, some of which relate to privacy protection, free credit reports, and related services, directly in competition with Complainant, while other links are completely unrelated offering services relating to dating, education, and hotel reservations. See Exhibit 6. In light of this activity, it is apparent that Respondent is using the PrivacyGuard® mark and Domain Name for the purpose of diverting Internet traffic to Respondent’s website for Respondent’s own financial gain through revenue for impressions and click-throughs. Both Complainant and Internet users are harmed through Respondent’s misleading practices designed to piggyback on Complainant’s good name and reputation. Such blatant, wrongful and parasitic conduct will not grant Respondent any rights or legitimate interests in the Domain Name under the Policy. See e.g., Chanel[, Inc. v. ESTCO Technology Group,
WIPO Case No. D2000-0413] (“[T]he Panel disagrees that it is fair use for Respondent to use Complainant’s famous trademark in order to attract the public to [its website]. . . . This is not fair use but instead infringing use.”)”
Bad Faith
Respondent registered the disputed domain name after Complainant’s trademark rights matured and its registration therefore misdirected customers and prospective customers of Complainant to Respondent’s website, from which Respondent derives “click-through” revenues. Respondent’s failure to respond to Complainant’s cease-and-desist letters is further evidence of bad faith.
Respondent’s registration of the disputed domain name prevents Complainant from using its own marks in a corresponding domain name under the .net gTLD, and disrupts Complainant’s business by misdirection and misleading of customers. Internet users who assume Complainant has the .net gTLD domain name because of its marks will be misleadingly diverted to Respondent’s site and may assume that Respondent is affiliated with or sponsored by Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Complainant must prove the elements set out in paragraph 4(a) of the Policy:
(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 to the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
Complainant bears the burden of proof on each of these elements. Unlike civil litigation in the United States of America, Respondent’s default does not automatically result in judgment for the Complainant and does not constitute an admission of any pleaded matter. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview), paragraph 4.6, Consensus View.
A. Identical or Confusingly Similar
Complainant has established that is holds nationally registered marks for the phrase ‘Privacy Guard’ and has therefore established this element of the Policy. As Complainant argues, a different top level domain name does not obviate confusion when the dominant feature of the disputed domain name is the dominant feature of Complainant’s mark.
B. Rights or Legitimate Interests
Whether Respondent lacks rights or legitimate interests in the disputed domain name, however, is a much closer question, as the content of the website that has been maintained at the disputed domain name may bring Respondent within two of the safe harbors of paragraph 4(c) of the Policy.
First, contrary to Complainant’s contentions nearly all of the website currently is and appears from the archives always to have been non-commercial. Most pages on the website contain articles on subjects similar to those noted above. This site is not however entirely non-commercial. Its home page includes links to commercial sites that offer consumers the opportunity to verify and correct their credit reports. Other pages include links identified as “Ads by Google” that may qualify as opportunities for “click-through” revenue to Respondent, as Complainant alleges. Not all of the site deals with consumer privacy, there is a consumer blog for baldness that includes more Ads by Google related to hair loss products and links to unrelated products such as automobile insurance. Another blog, on obesity, includes Ads by Google for weight-loss products. The Panel was unable to access the page annexed to the Complaint, said to be from Respondent’s website, which appears similar to the standard sort of page an Internet user will find at parked or inactive domain names, consisting almost entirely of commercial hyperlinks, or any other page with a similar format and content.
The overall look and feel of this site, both today and at various times during its six years of existence, is consistent with the description on the site’s home page: “an information website about the privacy issues facing internet users.” By the Panel’s estimation the Ads by Google and privacy hyperlinks comprise less than five per cent of the total content of the site. The non-commercial content is substantial. The site is certainly not a run-of-the-mill collection of hyperlinks, or “web farm” as alleged in the Complaint. Nor is it a collection of hyperlinks attached to a small amount of static content that might suggest that the text is merely a pretext for establishment of the site.1 While not entirely current the non-commercial text and commentary have changed periodically, again dispelling a suggestion that the site’s title is a pretext. The site’s content does not indicate that the disputed domain name is being used to divert Complainant’s customers or to tarnish its trademarks. The Ads by Google with links to consumer credit services could be said to be incidental2 to the site’s informational purpose.
In cases in which a respondent seeks to invoke paragraph 4(c)(iii) of the Policy when it has used the disputed domain name for a criticism site, any commercial use has been held to destroy that defense.3 But those cases address a different point and are based upon a different rationale. In criticism cases, it is conceded that the respondent not only knew of complainant and its marks but in fact selected the complainant’s mark intentionally to attract Internet users who are seeking the complainant, in order to broaden the audience for the criticism. In those cases any commercial use undercuts resort to paragraph 4(c)(iii) of the Policy, by suggesting a profit motive rather than an exercise of free speech. In this proceeding, in contrast, the determinative issue is whether Respondent selected the disputed domain name in order to take advantage of the good will attaching the Complainant’s marks, indeed, as explained in the following section whether Respondent had knowledge of these marks at all. Incidental commercial content, a small fraction of the total website, provides only incidental evidence of such knowledge and does not by itself render the defense inapplicable. This case is more akin to a fan site case, in which minor commercial activity does not by itself, disqualify a defense under paragraph 4(c)(iii).4
Looking at this website as a whole, there is substantial reason to find that the site is non-commercial, does not intentionally divert Complainant’s customers, and does not tarnish its marks, bringing the site within paragraph 4(c)(iii) of the Policy.
Second, this site has been used for the same purpose since 2002, all under a domain name that is descriptive of its principal content. While it is now relatively well settled that there is no estoppel defense under the Policy,5 six years’ active use (five years’ active use prior to Complainant’s cease-and-desist letters) may constitute “use . . . [of] the domain name or name corresponding to the domain name in connection with the bona fide offering of goods and services,” and therefore within paragraph 4(c)(i) of the Policy. See Prestige Estates Projects Private Ltd. v. Prestige Avenues Limited, Raja Jupudi, WIPO Case No. D2007-1754.
Given the Panel’s finding in the following section, it is unnecessary to decide whether Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy. But the circumstances set out above make one thing readily apparent: This is not a clear case of cybersquatting.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy Complainant must establish that Respondent registered and used the disputed domain in bad faith. These are separate elements of cybersquatting. Complainant offers no proof that six years ago Respondent registered the disputed domain name with knowledge of Complainant’s marks or an intent to take advantage of those marks, both of which are normally required to establish registration in bad faith.6
Complainant’s first contention on this issue is a reference to United States of America trademark law, that Complainant by virtue of its marks has the exclusive right to their use for privacy-related services. Even assuming – and the site’s content makes it highly doubtful that this is in fact the case – that Respondent intended to use the disputed domain name for competing privacy services in 2002, there is no evidence that Respondent actually knew of Complainant’s marks, and no evidence from which the Panel could infer such knowledge.
Panels under the Policy have rarely employed the doctrine of constructive notice applicable under United States of America trademark law. See WIPO Overview, paragraph 3.4. The occasional exceptions to this Consensus View almost always included other circumstances that strongly suggested actual knowledge: a famous mark, a distinctive mark, a mark not in any way descriptive of the goods or services offered, immediate and obvious competition with the complainant from the domain name owner, typosquatting – in short, other earmarks of cybersquatting.7 There are no such indicators in this case.
Complainant next contends that “Respondent is a cyber squatter who has registered the domain name to prevent Complainant from doing so.” While this parrots the language of one of the examples of bad faith, paragraph 4(b)(ii) of the Policy, Complainant omits any mention of a further requirement from that clause: “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” (emphasis supplied). Complainant offers no proof that Respondent has ever been a party to a Policy proceeding and the Panel’s own research indicates that he has not been.8 There is no demonstrated pattern of cybersquatting.
Complainant has failed to establish that Respondent registered the disputed domain name in bad faith.
It may be, as Complainant alleges, that some or all of Respondent’s use of the disputed domain name constitutes infringement of Complainant’s marks. That is a matter for the national courts, not the Panel. Should Complainant pursue such a claim it will have available to it procedural devices, such as full discovery and cross-examination, not permitted in Policy proceedings, and perhaps a different legal standard.
7. Decision
For all the foregoing reasons, the Complaint is denied.
2 Ads by Google are not always attributable to a site owner, at least in a close case. See Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings,
WIPO Case No. D2008-0004.
7 That is true of the case cited by Complainant in support of a finding of constructive notice, TheSportsman's Guide Inc. v. JoyRide,
WIPO Case No. D2003-0153. Other circumstances dictated the panel's finding of bad faith in that case. As noted in the quotation from the Complaint above, the panel there stated "The registration and use of domain names which the Respondent had reason to knowwere confusingly similar to the Complainant's trademark" (emphasis added).
8 Complainant similarly provides no evidence to support its charge that Respondent "altered" its website's content to avoid a bad faith finding. Even if true this would only support a finding of use in bad faith, not registration in bad faith.
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