The Respondent is Michael Bailey of Carlton North, Victoria, Australia / Domains By Proxy of Scottsdale, Arizona, United States, represented pro se.

2. The Domain Name and Registrar

The disputed domain name <lostdogshome.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 4, 2013.

The Center verified that the Complaint together with the amended 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 March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. The Response was filed with the Center on March 7, 2013.

The Center appointed Michael J. Spence as the sole panelist in this matter on April 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.

On April 15, 2013 the Complainant filed a Supplemental Filing with the Center and the Center acknowledged receipt of the Supplemental Filing on the same date. The Panel has determined that the Supplemental Filing is not material to the principal issue in the case and has decided not to admit the Supplemental Filing in rendering its decision.

4. Factual Background

The Complainant is one of Australia’s largest animal welfare organisations and has operated since 1910 under the trade mark THE LOST DOGS HOME. It operates six animal shelters in Australia, caring for over 31,000 dogs and cats each year, and manages a significant National Pet Register. The Respondent is an animal rights activist who is critical of the work of the Complainant. He operates a website under the disputed domain name that criticizes the work of the Complainant and encourages the Complainant to adopt management practices that he regards as more humane.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trade mark; that the operation of a criticism site does not give rise to rights or legitimate interests in the disputed domain name, especially where there is nothing in the disputed domain name to indicate the nature of the site; and that the registration or continued use of the disputed domain name is in bad faith.

B. Respondent

The Respondent contends that it is “making a legitimate non-commercial or fair use of the domain name(s), without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark(s) or service mark(s) at issue” and that such use give rise to rights or legitimate interests in the disputed domain name and is not in bad faith. It further contends that the disputed domain name has been registered since 2008.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name contains the Complainant’s trade mark almost in its entirety, with the omission only of the definite article. Notwithstanding the descriptive nature of the Complainant’s trade mark, it has a well established reputation in Australia. There can therefore be no doubt that the disputed domain names are identical, or confusingly similar to, the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

In this case there can be no doubt that the disputed domain name has been adopted to attract potential customers and supporters of the Complainant’s business. The core question, therefore, is whether the use of a disputed domain name that is identical or confusingly similar to a trade mark, by a party who is not a competitor of the owner of the mark, for the operation of a criticism site, where the nature of the site is not apparent from the disputed domain name itself, can give rise to rights or legitimate interests in the disputed domain name.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes it clear that there are two main views on this issue to be found in Panel decisions. The first view is that: “[t]he 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.” The second view, which has been favoured by US Panels, is that “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.”

This is a case that rests on the precise point of divergence between these two views. On the one hand, it is a case in which the Respondent is using almost the exact trade mark as the disputed domain name. On the other hand, it could not be clearer from the website itself that it is not operated by the Complainant and is intended to criticize the work of the Complainant. The criticism contained on at least the home page of the website as at April 25, 2013 is expressed in language that is measured and thoughtful and there is no attempt on that page to discourage potential donors from dealing with the Complainant. Much of the material on the website is behind a user registration requirement and is not available to the casual visitor.

Given the Panel’s finding below on the third element of the Policy in relation to the disputed domain name, it is strictly unnecessary to make a finding in relation to this second element. Nevertheless, on balance, it is the Panel’s finding that in this case the first of the views outlined in the WIPO Overview 2.0 should be adopted.

The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy offers examples of the registration or use of a disputed domain name which may be evidence of bad faith. Those examples are not exhaustive. Nevertheless, they make it clear that there is a distinction between the first and third elements of paragraph 4(a), and that something more than confusingly similarity between the disputed domain name and Complainant’s trade mark must be found to constitute bad faith. In this case, the Complainant contends that this additional element is constituted by the Respondent’s likely knowledge that internet users would be diverted from the Complainant’s website to the Respondent’s. In doing so, it makes the claim that the Respondent is a “competitor” and that it “tarnishes” the Complainant’s trade marks and “discourage[s] and attack[s] donations.”.

In the view of the Panel, the approach to the bad faith element that ought to be adopted in this case is that of the Panel in Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693. In that case, the panel said: “Here Respondent is in this Panel's view using the disputed domain name for purposes of constitutionally protected political speech. In this context, the Panel is reluctant to use a basis for a finding of bad faith other than those expressly enumerated in the Policy. Those expressly enumerated criteria of bad faith reflect the Policy's principal concern with conduct that takes unfair advantage of trademark owners for purposes of commercial advantage.”. Notwithstanding the Respondent’s allusion on the website operated under the disputed domain name to his former association with an alternative animal welfare shelter, it is clear in this case that the Respondent is not in any sense a competitor of the Complainant. Rather, he is an animal rights advocate advancing a particular view of how not-for-profit animal shelters ought to be operated, whose right to free speech ought to be given considerable weight by the Panel. Moreover, “tarnishment” of a trademark must be distinguished from the use of the trade mark for the identification of a trade mark owner in the process of legitimate criticism of the trade mark owner. Absent any evidence of an intent to gain commercial advantage, the Panel does not believe that mere knowledge of the likely diversion of internet users from the Complainant’s website is sufficient, of itself, to constitute bad faith. The Panel cannot find evidence of any such intent in this case.

The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.

7. Decision

For the foregoing reasons, the Complaint is denied.

Michael J. Spence
Sole Panelist
Date: April 25, 2013