It is convenient to mention here that the names Kung Fox and Bill Hicks are both pseudonyms/aliases for a New Zealand company, Sideroom Limited, in whose name the Response was filed.

The Panel proposes to treat Kung Fox, Bill Hicks and Sideroom Limited as one.

2. The Domain Names and Registrars

The disputed domain names, <davidfoox.info>, <jessicafoox.com>, <jessicafoox.info>, <kungfoox.org> and <kungfox.com> are registered with Wild West Domains, Inc. (the “First Registrar”) and the disputed domain name, <davidfoox.com>, is registered with Abacus America Inc. dba Names4Ever (the “Second Registrar”).

Together the disputed domain names are hereinafter referred to as the “Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2008. On March 28, 2008, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On March 29, 2008, the First Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of five of the Domain Names and providing the contact details. It also informed the Center that it is not the registrar of the sixth of the Domain Names, <davidfoox.com>.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 31, 2008.

By emails of April 3, 2008 and April 10, 2008, the Second Registrar confirmed to the Center that the Respondent is listed as the registrant of the sixth Domain Name and provided the contact details.

In the course of April 2008, the Complainant corresponded with the Center seeking to demonstrate that the Respondent is one entity using various pseudonyms/aliases. The Respondent has acknowledged this to be the case, so it is unnecessary to detail the nature of those communications here. On April 21, 2008, the Respondent confirmed to the Center its contact details for all the Domain Names

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 April 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2008. On May 13, 2008, the Respondent confirmed to the Center that it wished the Center to treat as its Response in this proceeding its Response in the David Foox v. Bill Hicks, WIPO Case No. D2008-0397, a related proceeding between the same parties.

The Center appointed Tony Willoughby as the sole panelist in this matter on May 14, 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.

As indicated, this administrative proceeding is a second proceeding under the Policy between these parties. The earlier proceeding David Foox v. Bill Hicks, WIPO Case No. D2008-0397, concerns the domain names, <davidfoox.org> and <davidfoox.net> and the underlying facts are identical in both cases. The reason there are two cases rather than one is simply that when the Complainant filed the first complaint, he was unaware that the Respondent had also registered the Domain Names in addition to the domain names the subject of the earlier complaint.

The Panel in this case was also the Panel in the earlier case so in substance the two decisions are identical.

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”. They conduct their business under their own names and the collective name Kungfoox.

The Respondent is in reality neither “Bill Hicks” nor “Kung Fox”, the registrants’ names appearing on the Registrars’ Whois databases, 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 Name, <davidfoox.com>, on February 28 in the name of a deceased comedian, Bill Hicks, of a non-existent address in Auckland, New Zealand featuring the street name, “Shitbag Avenue”. The remainder were registered on March 2, 2008, in the name of “Kung Fox”, of a non-existent address in California, United States of America featuring the street name, “Slippery Highway”.

All bar one of the Domain Names link to a parking page featuring commercial advertising links. The Domain Name, <davidfoox.com>, is connected to a webpage headed “David Foox”. Underneath that heading is a legend in smaller type reading “the truth about David Foox” and “Welcome to the offical site dedicated to telling you the TRUTH about David Foox. There is no such thing as defamation if it is the TRUTH!Stay tuned.”

The Complainant’s website is connected to the domain name, <kungfoox.com>. The site is operated by the Complainant and his wife.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical to the personal and business names under which he and his wife trades as artists and in which they have 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. The Complainant also points to the false names and addresses under which the Domain Names were registered.

Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith.

The Complainant asserts that the Respondent registered the Domain Names with a view to using them to defame the Complainant and his wife and to tarnish their 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 either he or his wife has trade mark rights in respect of their names, ironically, the evidence supplied by the Respondent makes up for that deficiency. It is plain from the exhibited marketing materials created by the Respondent to support the Complainant’s exhibition that the Complainant and his wife have developed an appreciable reputation and goodwill under and by reference to their personal names and their business name, Kung Foox. 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 commercial success of the Complainant and his wife as artists operating under their names, David Foox and Jessica Foox, and their collective, Kung Foox.

The Panel is satisfied that for the purpose of the present proceedings the Complainant and his wife each have unregistered trade mark rights in respect of their personal names and the name of their collective, Kung Foox, and that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant and/or his wife have 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” and ”Slippery Highway” addresses 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”, in particular, 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. 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 Rico WIPO 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 Nag WIPO Case No. D2000-1314, Transfer. Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763, Transfer. Triodos Bank NV v. Ashley Dobbs WIPO 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 Lopez WIPO 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 Myers WIPO Case No. D2000-0190, Denied. TMP Worldwide Inc. v. Jennifer L. Potter WIPO Case No. D2000-0536, Denied. Howard Jarvis Taxpayers Association v. Paul McCauley WIPO Case No. D2004-0014, Denied

Imposing further conditions as to domain name and use: Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign WIPO 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 Corbett WIPO 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 Ross WIPO Case No. D2001-1042, Denied. 2001 White Castle Way, Inc. v. Glyn O. Jacobs WIPO 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 Cenicolla WIPO 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 five of the Domain Names are identical to the Complainant’s names and the sixth, <kungfox.com>, differs from the name of his collective and his trading domain name by one missing letter.

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 or names (or close variants thereof).

An issue arises as to whether the Policy is broad enough to catch non-commercial uses of a domain name. Currently, five of the Domain Names are linked to a commercial advertising parking site, no doubt awaiting the outcome of this decision, and the sixth, <davidfoox.com>, is connected to the criticism page (not yet fully developed) described above. The Panel has no idea precisely how the Respondent ultimately 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.

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 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>, so it claimed, “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 per se may be of limited application 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.info>, <jessicafoox.com>, <jessicafoox.info>, <kungfoox.org>, <kungfox.com> and <davidfoox.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: May 30, 2008