The disputed domain names, <davidfoox.net> and <davidfoox.org>, (the “Domain Names”) are registered with Abacus America Inc. dba Names4Ever (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2008. On March 13, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 26, 2008, (following several reminders from the Center) 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 27, 2008. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on March 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2008. The Response was filed with the Center on April 17, 2008.

On April 11, 2008, the Center received a supplemental filing from the Complainant and on April 17, 2008, the Center received a second supplemental filing from the Complainant. The Center informed the Complainant that the Panel would be informed of these filings and that it would be for the Panel to decide whether or not to receive them into this administrative proceeding.

The Center appointed Tony Willoughby as the sole panelist in this matter on April 24, 2008. 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.

The Panel has been given no reason why the supplemental submissions of the Complainant should be admitted into this administrative proceeding and declines to look at them.

4. Factual Background

The Complainant and his wife, Jessica Foox, are described in the Respondent’s literature as being “young and rising artists”. According to the Respondent “their shows sell on average 80% of their works, due to the high demand and quality of their work”.

The Respondent is in reality not “Bill Hicks”, the registrant’s name appearing on the Registrar’s Whois database, but Sideroom Limited, in whose name the Response was filed and which is described in the Response as being “a small New Zealand company run by volunteers to promote young emerging artists”.

In the latter part of last year (2007) the Complainant and his wife approached the Respondent with a view to exhibiting their works in the Respondent’s gallery and the parties agreed to terms including terms relating to an advance marketing exercise to promote the exhibition. The marketing commenced in December 2007.

On February 15, 2008, the exhibition commenced. However, for reasons, which have not been disclosed to the Panel, on February 23, 2008, the Complainant and his wife removed their works from the Respondent’s gallery three weeks ahead of when the Respondent expected the exhibition to end.

On February 25, 2008, the Respondent issued to the Complainant an invoice for the sums it claims it was owed (some NZ$ 21,320) and on February 27, 2008, the Complainant and his wife left New Zealand.

The Respondent registered the Domain Names on February 28 and 29, 2008 respectively in the name of a deceased comedian, “Bill Hicks” of a non-existent address featuring the street name, “Shitbag Avenue”.

The Domain Names both link to a website promoting the business of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical to the name under which he trades as an artist and in which he has rights.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant recites the examples of what a respondent may show to demonstrate rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, which are set out in paragraph 4(c) of the Policy, and asserts that none of them is applicable.

Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith. The Complainant refers to the false name and address under which the Domain Names were registered and points out that the telephone number on the Whois record is the telephone number of Sideroom Limited.

The Complainant asserts that the Respondent registered the Domain Names with a view to using them to defame the Complainant and to tarnish his reputation. The Complainant says that Internet users will be misled into accessing the Respondent’s site rather than a site of the Complainant and that the Respondent’s intention is to disrupt the Complainant’s business.

B. Respondent

The Respondent contends that the Complainant has shown no trade mark rights in respect of his name.

The Respondent asserts that it does have a right or legitimate interest to use the Domain Names to inform interested parties as to the truth about the Complainant and his wife. The Respondent admits that “Bill Hicks”, the name under which the Domain Names were registered, is a nickname for Sideroom Limited and explains that the Shitbag Avenue address, a fictitious address, was used as a temporary place holder, because it was unsure of its true address. It states that that situation has now been rectified.

The Respondent explains that the Complainant and his wife caused significant damage to the Respondent by withdrawing early from the exhibition and by refusing to pay to the Respondent the sum, which the Respondent claims that it is owed. The Respondent asserts that that was the purpose behind its registration of the Domain Names and that it has no intention of using the Domain Names to tarnish the Complainant or defame him, but simply “to explain the truth about [his] actions”.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:

(i) The 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 Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

B. Identical or Confusingly Similar

While it is true that the Complainant produces little evidence to support the contention that he has trade mark rights in respect of his name, ironically, the evidence supplied by the Respondent makes up for that deficiency. It is plain from the marketing materials created by the Respondent to support the Complainant’s exhibition that the Complainant has developed an appreciable reputation and goodwill under and by reference to his name. The posters put out by the Respondent in support of the Complainant’s exhibition are branded FOOX and the editorial materials all speak of the Complainant’s commercial success as an artist operating under his name, David Foox.

The Panel is satisfied that for the purpose of the present proceedings the Complainant has unregistered trade mark rights in respect of his name and that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

On the Respondent’s own admission, the only justification that the Respondent has for having registered the Domain Names is that by then (the dates of registration of the Domain Names) the Complainant had given the Respondent grounds for believing that the Complainant would not be honouring his obligations to the Respondent and, in consequence, it was reasonable for the Respondent to register the Domain Names with a view to linking them to a website reporting on the Complainant’s behaviour.

That justification is in the form of a bare unsupported assertion. Nonetheless, the Panel accepts that that was the Respondent’s motivation for having registered the Domain Names. The fact that the Respondent gave the “Shitbag Avenue” address when registering the Domain Names gives a pretty clear idea of the Respondent’s attitude towards the Complainant. The Panel is unimpressed with the excuse provided by the Respondent for having used the “Shitbag Avenue” address, namely that when registering the Domain Names, it was not certain of its address. The Panel notes that the Respondent had no difficulty remembering its address when issuing invoices to the Complainant three or four days earlier. Additionally, “Shitbag Avenue” is an unlikely choice of name for a temporary holding address. It was clearly intended to convey a message.

The Panel is in no doubt that when registering the Domain Names the Respondent was outraged at what it perceived to be the abominable behaviour of the Complainant and intended to use the Domain Names to link to a website regaling visitors to the site with the enormity of what the Complainant had done. The ‘Shitbag Avenue’ address is a fair indication to the Panel of the abuse likely to be visited upon the Complainant.

Whether or not that abuse was justifiable the Panel is unable to begin to assess. The Panel has only heard one side of the story, the Respondent’s side of the story. The Panel could have sought further information on the topic and it is possible that the Complainant’s further submissions address the issue. However, the Panel is of the view that whether or not the Respondent’s criticisms of the Complainant are justified is of no relevance to the decision and merits in this particular case, which the Panel has to address.

Even assuming that the Respondent’s cause for complaint is entirely justified, does that give the Respondent a right or legitimate interest in Domain Names comprising the Complainant’s name and mark? The Panel answers that question in the negative.

This issue is a contentious one and is addressed in two forms (one relating to criticism/gripe sites and one relating to tribute/fan sites) in the WIPO Overview of WIPO Panel views on Selected UDRP questions (the “WIPO Overview”). Sections 2.4 and 2.5 of the Overview read as follows:

“2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?

This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto RicoWIPO Case No. D2000-0477 among others, Transfer.

In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech web site, there are two main views. There is also some division between proceedings involving US parties and proceedings involving non-US parties, with few non-US panelists adopting the reasoning in View 2.

View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.

Relevant decisions: Skattedirektoratet v. Eivind NagWIPO Case No. D2000-1314, Transfer Myer Stores Limited v. Mr. David John SinghWIPO Case No. D2001-0763, Transfer Triodos Bank NV v. Ashley DobbsWIPO Case No. D2002-0776, Transfer The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro LopezWIPO Case No. D2003-0166, Transfer Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc.WIPO Case No. D2004-0136, Transfer.

View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.

Relevant decisions: Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack MyersWIPO Case No. D2000-0190, Denied TMP Worldwide Inc. v. Jennifer L. PotterWIPO Case No. D2000-0536, Denied Howard Jarvis Taxpayers Association v. Paul McCauleyWIPO Case No. D2004-0014, Denied.

Imposing further conditions as to domain name and use: Covance, Inc. and Covance Laboratories Ltd. v. The Covance CampaignWIPO Case No. D2004-0206, Denied.

2.5 Can a fan site constitute a right or legitimate interest in the disputed domain name?

This section only deals with fan sites that are clearly active and non-commercial. There are many UDRP cases in which the respondent claims to have an active non-commercial fan site but the panel decides otherwise. See Helen Fielding v. Anthony Corbert aka Anthony CorbettWIPO Case No. D2000-1000, Transfer.

View 1: An active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be non-commercial and clearly distinctive from any official site.

Relevant decisions: Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe RossWIPO Case No. D2001-1042, Denied 2001 White Castle Way, Inc. v. Glyn O. JacobsWIPO Case No. D2004-0001, Denied.

View 2: Respondent does not have rights to express its view, even if positive, on an individual or entity by using a confusingly similar domain name, as the respondent is misrepresenting itself as being that individual or entity. In particular, where the domain name is identical to the trademark, the respondent, in its actions, prevents the trademark holder from exercising the rights to its mark and managing its presence on the Internet.

Relevant decisions: David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno CenicollaWIPO Case No. D2000-1459, Transfer Galatasaray Spor Kulubu Dernegi, Galatasaray Pazarlama A.S. and Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S. WIPO Case No. D2002-0726, Transfer”

The Panel endorses View 1 under the first of those two questions and View 2 under the second and does not necessarily dissent from the other two views expressed. In case that may sound perverse, the Panel simply points out that if the domain name in issue were, say, <ilove[trademark].com> or <[trademark]sucks.com>, the Panel might well find that a respondent had a legitimate interest in using it for a fan or criticism site. It all depends upon the name selected. In this case the domain name is identical to the Complainant’s mark.

The Panel approaches the question in this way. What is the consequence of a third party adopting for itself the name/trade mark (without any addition or adornment) of a trade mark owner and using it to connect to a website? The inevitable consequence is that there will be initial interest confusion. A substantial proportion of Internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant’s objective of bringing them there will already have been achieved.

Where, as here, the intentions of the Respondent are evidently to cause initial interest confusion and to exploit that confusion to express the Respondent’s views of the trade mark owner (whether negative or positive), the Panel is clear that such a use of a domain name cannot be anything other than abusive. It amounts to deliberate impersonation of the rights owner with a view to expanding the coverage of the Respondent’s views. In the view of the Panel, using a domain name with the intent of causing confusion (initial interest or otherwise) is an abuse.

Those who take a different view talk of the right to free speech, but the right to free speech is circumscribed by a whole raft of legal obligations, (e.g. to avoid incitement to crime and to avoid defamation). This Panel sees no reason why the right to free speech should justify the deception of Internet users. In most civilized societies the end cannot be allowed to justify the means. If the Respondent wishes to publicise its views of the Complainant, it can do so in any number of ways without taking the Complainant’s name.

An issue arises as to whether the Policy is broad enough to catch non-commercial uses of a domain name. The Panel has no idea precisely how the Respondent proposes to use the Domain Names; the Panel’s decision must be guided by the evidence of use presently on record. In the present case, the Panel anticipates that any criticism of the Complainant may well be accompanied by promotion of the Respondent’s commercial activities. Currently, the Domain Names are linked to a site, which promotes the Respondent’s business.

Even if the Panel is wrong on that latter score, the Panel is nonetheless satisfied that a use of a domain name to cause confusion to Internet users by impersonating the trade mark owner cannot give rise to a right or legitimate interest whether the motivation is commercial or non-commercial. Essentially, any use which gives rise to a right or legitimate interest must be fair and impersonation is not fair.

D. Registered and Used in Bad Faith

The Panel has already found that in use the Domain Names are likely to confuse Internet users. A substantial proportion of Internet users visiting any site to which the Domain Names are connected will be doing so in the hope and expectation of reaching a site of or authorized by the trade mark owner.

If, as the Panel has found to be likely, Internet visitors, when they reach the Respondent’s site, will find not only criticism of the Complainant, but also promotion of the Respondent’s business, the Respondent’s behaviour will have fallen precisely within the terms of paragraph 4(b)(iv) of the Policy, which reads as follows:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

Even if there is no commercial element to the Respondent’s website, what is the Internet visitor likely to find there?

The Panel can understand the Respondent’s desire to explain why the exhibition terminated earlier than advertised. It might be necessary to minimise any damage done to the Respondent’s reputation. How that could be achieved through the present use of the domain names is something of a puzzle to the Panel and particularly in circumstances where the Respondent is apparently ready to use terms such as ‘shitbag’ in relation to the domain names which are confusingly similar to the Complainant’s marks. Such use appears directed more at tarnishing the Complainant’s reputation than at minimizing any damage done to that of the Respondent.

This Panel addressed a similar issue in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376. The complainant was a French based company engaged in the nuclear fuel industry, which operated under the acronym COGEMA with its website at “www.cogema.fr”. The respondent was the governing body of the worldwide Greenpeace environmental movement. The respondent registered the domain name, <cogema.org>, “in order to engage in legitimate and peaceful protest on the internet.”

In that case, the panel commented as follows:

“In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website.”

This passage was cited and adopted by the panel in British Nuclear Fuels plc v. Greenpeace International,WIPO Case No. D2001-1318, a similar case involving the British equivalent of Cogema and Greenpeace. In pointing out that the list of examples of bad faith registration and use set out in paragraph 4(b) of the Policy is a non-exhaustive list and in finding bad faith registration and use in that case, the panel concluded:

“A vigorous but straightforward critic of the Complainant has all the freedom of speech guaranteed by the European Human Rights Convention without needing to engage in the adoption and manipulation of the Complainant’s name as a domain name which has occurred here.”

While the European Human Rights Convention is unlikely to have any impact in New Zealand, the domicile of the Respondent and the country where the events of which the Respondent complains occurred, the Panel is satisfied that the “manipulation of the Complainant’s name as a domain name which has occurred here” is an abuse within the broad ambit of the Policy. Of course, if the Panel is correct in anticipating that any use of the Domain Names by the Respondent for its stated purpose would be accompanied by a commercial promotion of the Respondent’s business, as is currently the case, the Respondent’s behaviour falls clearly within the ambit of paragraph 4(b)(iv) of the Policy.

Either way, the Panel is satisfied that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <davidfoox.net> and <davidfoox.org>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: May 30, 2008