WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Agaplesion gemeinnützige Aktiengesellschaft v. Domain Administrator, Fundacion Private Whois

Case No. D2012-2510

1. The Parties

The Complainant is Agaplesion gemeinnützige Aktiengesellschaft of Frankfurt am Main, Germany, represented by Rechtsanwälte Senfft Kersten Nabert van Eendenburg, Germany.

The Respondent is Domain Administrator, Fundacion Private Whois of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <agaplesiongag.org> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2012. On December 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2012, 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.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2013.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 12, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a charitable corporation (“gemeinnützige Aktiengesellschaft”, abbreviated “gAG”) in the German health care sector.

The Complainant is the owner of the German word mark No. 30711282 AGAPLESION registered on August 27, 2007 and has marketed its services upon foundation of the company ten years ago under the website “www.agaplesiongag.de”.

The disputed domain name was registered on July 5, 2012. On the corresponding website, the planned construction of a new clinic of the Complainant in Hamburg on formerly public space is criticized.

5. Parties’ Contentions

A. Complainant

The Complainant asserts the following:

The disputed domain name is almost identical and confusingly similar to the Complainant’s German word mark AGAPLESION. The suffix “gag” to “agaplesion” in the disputed domain name represents the legal form of the Complainant’s company (gemeinnützige AG), Agaplesion gAG.

At first sight, the website “www.agaplesiongag.org” gives the false impression of belonging to the Complainant. The Respondent uses the disputed domain name without exception to criticize the Complainant with untrue statements and in a polemic way. The only purpose of the disputed domain name is the anonymous defamation of the Complainant, for example by associating the Complainant’s company to practices used by the Nazi regime in Germany. Such conduct constitutes registration and use of the disputed domain name in bad faith and cannot establish any rights or legitimate interests of the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The Complainant has requested that the language of the proceedings be German, because the website of the Respondent has been written exclusively in this language.

In the Panel’s view, the fact that the website corresponding to the disputed domain name is in German is not sufficient to change the language of the proceedings from English to German, all the more as the Registrar has confirmed that the Registration Agreement as used by the Respondent for the disputed domain name is in English and the Complainant has not submitted any German translation of its Complaint. It may furthermore be assumed that both parties understand English.

B. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s company name (abbreviated “Agaplesion gAG”) and corresponds to the Complainant’s trade mark AGAPLESION with the suffix “gag”. Considering that the Complainant’s website can be found under the domain name “www.agaplesiongag.de”, it is obvious to the Panel that the suffix “gag” is meant to be an abbreviation for the Complainant’s legal form (gAG) and does not refer to the English word “gag”. Against this background, the suffix “gag” is insufficient to avoid a finding of confusing similarity.

The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

In the event that a domain name is confusingly similar to a trademark and is being used for a genuine
noncommercial free speech web site, there are two main views (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.4). There is also some division between proceedings involving United States (U.S.) parties (based on First Amendment issues) and proceedings involving non-U.S. parties, with few non-U.S. UDRP panelists adopting the reasoning in View 2 below.

View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e. <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g. <trademarksucks.tld>), some panels have applied View 2 below.

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 such use is fair and noncommercial.

Some UDRP panels have opted to assess questions of whether a respondent may have a legitimate interest in using a trademark as part of the domain name of a criticism site by reference to additional considerations, including whether: (i) the domain name has been registered and is used genuinely for the purpose of criticizing the mark owner; (ii) the registrant believes the criticism to be well-founded and lacks intent for commercial gain; (iii) it is immediately apparent to Internet users visiting the website at the domain name that it is not operated by the owner of the mark; (iv) the respondent has refrained from registering all or most of the obvious domain names reasonably suitable for the owner of the mark; (v) where appropriate, a prominent and appropriate link is provided to the relevant trademark owner's website; and (vi) where there is a likelihood that email intended for the complainant will use the domain name in issue, senders are alerted in an appropriate way that their emails have been misaddressed (cf. WIPO Overview 2.0, paragraph 2.4 for a list of UDRP cases as well as the prevalent UDRP cases supporting Views 1 and 2, respectively).

Considering the facts of the present (non-U.S.) case, this Panel is inclined to adopt View 1 as set forth above and reflected in many other UDRP decisions. In so doing, this Panel follows the rationale of the “initial interest confusion” doctrine, as View 1 has occasionally been referred to in the courts. As stated in the Dello Russo case (Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627), in language that equally applies here:

“Respondent’s selection of Complainant’s name for her criticism site allows her to make use of Complainant’s service mark in a manner that would lead an ordinary Internet user initially to believe that Respondent was Complainant or that Respondent had Complainant’s permission to distribute her message. Such use is not legitimate under paragraph 4(a)(ii) of the Policy, and the safe harbor of paragraph 4(c)(iii) is not available because Respondent undeniably intended ‘to misleadingly divert consumers’.”

While public criticism on the Internet (and demands for more public space as in the case at hand) is certainly not prohibited in democratic societies, certain factors support View 1 and a finding of initial interest confusion here. First, the website created by the (anonymous) Respondent includes the very prominent title “DIE AGAPLESION AG” (the company name of the Complainant without the “g” in “gAG” for “gemeinnützig”, i.e. without indication of the charitable legal form of the Complainant). Beneath this large title, the Respondent added in much smaller print the phrase “RECHERCHEN ZU EINEM EVANGELIKALEN KLINIKKONZERN”, i.e. “investigations regarding an evangelical health clinic group”. The website then contains an appeal by the Respondent for more open public space next to a clinic run by the Complainant in Hamburg. Finally, it must be taken into account that the Respondent has not filed any Response in these proceedings.

Besides the initial interest confusion caused by the disputed domain name, the Respondent’s prominent use of the Complainant’s company name in the title DIE AGAPLESION AG might cause additional confusion among Internet users looking for the Complainant. In other words, it is not immediately apparent to Internet users visiting the Respondent’s website that it is not operated by the Complainant (see above). In the Panel’s view, any criticism of the Complainant by the Respondent via Internet would need to be expressed by using a domain name which clearly indicates the critical nature of the corresponding website, by adding a respective pre- or suffix to the domain name.

The plain use of the Complainant’s company name and trademark for a criticism website, on the other hand, is not sufficient to establish any rights or legitimate interests of the Respondent in this Panel’s opinion.

To summarize, it has not been shown that the Respondent has any rights or legitimate interests in the disputed domain name, and the Complainant has thus fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For similar reasons, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith. By analogy to typo-squatting cases, where bad faith is presumed from the intentional similarity to the Complainant’s mark, the Respondent’s registration and continued use were undertaken intentionally and expressly to disrupt the Complainant’s activities to expand the audience for its criticism by misleading Internet users as to the “source, sponsorship, affiliation, or endorsement” of its website, by means of the initial confusion discussed in the preceding section (cf. The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No. D2009-0022, Sect. 6.E).

The Panel thus finds that paragraph 4(a)(iii) of the Policy is also fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <agaplesiongag.org> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: February 26, 2013