The Complainant is Gary Wilson, United States of America (“United States”), represented by Fitch, Even, Tabin & Flannery, United States.
The Respondents are Privacy Inc. Customer 0154207478, Canada / Daniel Burgess, Family Life Services, United States / Dr. Nicole Prause, Liberos LLC, United States, represented by Poltrock & Giampietro, United States.
The disputed domain name <realyourbrainonporn.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019. On July 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2019, 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 July 13, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Response was filed with the Center on August 7, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 19, 2019. 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 Complainant is an individual residing in Ashland, Oregon, United States who has operated a website at “www.yourbrainonporn.com” since November 2010 providing “informational and educational services” about “the effects of viewing pornography and ways to address pornography-related disorders” (the “Complainant’s website”). The Complainant’s website is linked to similarly named social media sites. The Complaint reports more than 370,000 visitors monthly to the Complainant’s website, which promotes books, videos, and articles by Mr. Wilson and others about pornography and recovering from pornography addiction, prominently including Mr. Wilson’s 2014 book, “Your Brain on Porn”. This book has been published in English, Dutch, Hungarian, and Arabic.
The Complainant claims YOUR BRAIN ON PORN as a common law mark, and the Complaint attaches evidence showing that publications and related works have been marked with the brands YOUR BRAIN ON PORN and YBOP since 2014. According to the Complaint, more than 44,000 copies of the Complainant’s works have been sold in the English language, in print or electronic versions. The Complaint also includes evidence of awards, presentations, and substantial media recognition associated with the YOUR BRAIN ON PORN brand in the United States and internationally.
The Complainant holds United Kingdom Trade Mark Registration Number UK00003384454 (registered June 7, 2019) for YOUR BRAIN ON PORN as a figurative mark featuring those words. The Complainant also applied for United States trademarks for YOUR BRAIN ON PORN, YOURBRAINONPORN.COM, and YBOP as standard character marks on April 18, 2019. The applications are pending. The online database of the United States Patent and Trademark Office (“USPTO”) includes a non-final action letter on Application Number 88391933 (for YOUR BRAIN ON PORN) indicating that the phrase “your brain on porn” as a whole “appears registrable” but that the word “porn”, an abbreviated form of “pornography”, is “merely descriptive” and would have to be disclaimed. However, the USPTO letter also observes that the application may be preempted if a prior pending application is granted. That application was filed by the Respondent Dr. Prause, as discussed further below.
According to the Registrar’s WhoIs database, the Domain Name was created on March 13, 2019 and registered in the name of a domain privacy service, as indicated by the first named Respondent in the caption above. The domain privacy service has expressed no interest in the Domain Name in this proceeding. After receiving notice of this dispute, the Registrar identified the registrant as Daniel Burgess and his organization as Family Life Services of Sunnyvale, California, United States. No currently registered domestic or foreign company or partnership of that name appears in the online database operated by the California Secretary of State. The postal address listed by the Registrar corresponds to a space in a mobile home park in Sunnyvale, California. Family Life Services is not identified on the website associated with the Domain Name (the “Respondent’s website”). Mr. Burgess is not named on the “Experts” page or elsewhere on the Respondent’s website. The Complaint and attached social media posts by Mr. Burgess indicate that he is a licensed marriage and family therapist in California, but the Response filed in his name does not provide information about Mr. Burgess, “Family Life Services”, or the nature of their involvement in the Respondent’s website.
The Response states that the Respondent’s website was “formed by a group of psychologists and scientists”, both practitioners and researchers, “who were concerned that much inaccurate information attacking pornographic web sites was being disseminated.” The Response explains that researchers in this controversial field are often harassed and even threatened, which suggests one reason for obscuring sponsorship of the Respondent’s website.
Nevertheless, more than twenty scientists and therapists appear in the “Experts” section of the Respondent’s website, each of them with a “Contact” link. Many of the experts’ biographical summaries mention their clinical practices; one even provides a direct link to the website of his clinic, the West Coast Centre for Sex Therapy. Many of the experts cite their published books, with direct links to a page on Amazon.com where the book can be purchased. Examples include Marty Kein’s “His Porn, Her Pain: Confronting America’s PornPanic with Honest Talk About Sex”; David Ley’s “The Myth of Sex Addiction” and “Ethical Porn for Dicks: A Man’s Guide to Responsible Viewing Pleasure”; Roger Libby’s “The Naked Truth about Sex” and “Sex from Aah to Zipper”; Doug Braun-Harvey’s “Sexual Health in Recovery: A Professional Counselor’s Manual”; and “Treating Out of Control Sexual Behavior: Rethinking Sex Addiction”, co-authored by listed expert Michael VigoritoDoug.
The home page of the Respondent’s website makes it clear that a principal function of the website is to encourage interaction with these professionals. At the very top of the home page is the invitation, “Visit with real experts on pornography!”, above page links including “Experts”. An “Experts” photo link lower on the home page encourages users to “Reach out to us individually on our ‘experts’ page”.
The largest portion of the Respondent’s website is devoted to research summaries and links concerning “sex film science”, with a recurring theme of contradicting or “falsifying” assertions about the negative social or medical effects of viewing pornography. Some of this commentary directly references the Complainant’s “Your Brain on Porn” website or publications. While the Respondent’s website is presented as an informational and educational site, the sponsors clearly express an interest in publicizing “model falsifications” of widely disseminated anti-pornography predictions, as stated in the introduction to the “Research” section of the website and as suggested by this statement on the home page:
“While there are dozens of anti-pornography organizations, there is no advocacy group for sex film’s positive health effects”.
The Complaint and the Response both make clear that their competing websites are only the latest stage in a long-running campaign of polemics between the Complainant and his supporters, on the one hand, and Mr. Burgess, Dr. Prause, and their sympathizers, on the other. Before registering the Domain Name, Mr. Burgess called the Complainant a “fraud” on the Complainant’s Facebook page and used Twitter to characterize the Complainant’s YBOP brand as signifying “Your Brain On Pseudoscience”. In a February 2018 Twitter dialogue, Mr. Burgess accused the Complainant as follows: “Gary you recklessly reports, conflates and concules [sic] porn is as addictive as drugs”.
The record shows that the Complainant and Nicole Prause, PhD a sexual psychophysiologist in Los Angeles, California and one of the experts on the Respondent’s website, have also engaged in heated exchanges via social media and website discussions since 2015. The Response claims that there are nearly 10,000 references to Dr. Prause on the Complainant’s website and that the Complainant has made or repeated ad hominem attacks on Dr. Prause and other sex researchers on the Complainant’s website and social media sites, as well as on a website operated by the Complainant’s wife.
Dr. Prause d/b/a “Liberos LLC” applied on January 29, 2019 to register YOUR BRAIN ON PORN and YOURBRAINONPORN.COM as United States standard character trademarks. According to the USPTO database, the application has been amended and published for opposition, and the Complainant has filed an opposition, which is set for trial.
In May 2019, while the registrant of the Domain Name was still concealed behind a domain privacy service, the Complainant’s counsel sent cease-and-desist letters to the experts listed on the Respondent’s website. Correspondence attached to the Complaint shows that two of the experts had participated in the website at the request of Dr. Prause and then requested to have their names removed after receiving the Complainant’s demand. Counsel for Dr. Prause (the same law firm representing the Respondent in this proceeding) denied that Dr. Prause “personally” owned the Domain Name but declined to identify the registrant and rejected the Complainant’s demands.
For some time following the demand letters, the Respondent’s website displayed a disclaimer of affiliation with the Complainant. The Respondent has since removed that disclaimer.
The Complaint attaches evidence that the Respondent’s website includes coding for search engine optimization (“SEO”) that tracks the Complainant’s website, such as “YBOP” and “YourBrainOnPorn”, without adding the adjective “real”, so that search engines may mistake the Respondent’s website for the Complainant’s and deliver results that place the Respondent’s website higher than the Complainant’s. The Complaint also states that the words “your brain on porn” and the initials “YBOP” misleadingly appear in the browser tab for the Respondent’s website. That is not the case at the time of this Decision, but the Panel notes that those words and initials do appear in the browser tab in archived screenshots of the Respondent’s website maintained by the Internet Archive’s Wayback Machine.
The Complainant claims YOUR BRAIN ON PORN as a common law mark and relies as well on its recently registered United Kingdom figurative trademark and its United States trademark applications. The Domain Name is confusingly similar, according to the Complainant, because it incorporates the mark entirely and adds the word “real”, signifying genuineness.
The Complainant argues that it is the senior user of the mark and that the Respondent has no permission to use it to disparage the Complainant’s views and promote its own services. The Complainant dismisses the “faintly visible” disclaimer that appeared for a time on the Respondent’s website as ineffective to remedy the Domain Name’s false impression of association with the Complainant.
The Complainant concludes that the Respondent has registered and used the Domain Name in bad faith, to misleadingly attract Internet users for commercial gain. The Complainant points out that the Respondent launched the website with an April 18, 2019 press release shown as being distributed from “Ashland, Oregon”, which viewers would associate with the Complainant, who resides there. The Respondent Mr. Burgess, who registered the Domain Name, is located in Sunnyvale, California, not Oregon. The Complaint includes evidence of the Respondent’s prior awareness of the Complainant, as both Mr. Burgess and Dr. Prause criticized the Complainant and the Complainant’s website on social media long before the Domain Name was registered. The Complainant points to the Respondent’s conduct in SEO and web browser tab coding, and its obfuscation of the source or affiliation of the Respondent’s website, as deliberate efforts to mislead Internet users.
The Respondent does not deny that the Domain Name is meant to refer to the Complainant’s website and book. The Respondent observes, however, that the Complainant does not have a trademark registration for the term “your brain on porn” and challenges the Complainant’s claim to a common law mark. The Respondent argues that the term is merely descriptive and is used by others, pointing out that it appears in two other book titles, “This Is Your Brain on Porn” by Karen Kropf and “Your Brain on Porn” by Luke Gilkerson. These follow the well-known pattern of the “This is your brain on drugs” public service campaign of the 1980s in the United States (depicting an egg cracked and fried). That pattern has been emulated since in “your brain on alcohol” and other addiction memes, or parodies thereof, in print and social media. The Respondent concludes that such a “highly descriptive” term as the Domain Name could not function as a trademark and would not, in any event, exclusively identify the Complainant. The Respondent also contends that the substantive modifier “real” in the Domain Name avoids confusion because it signals Internet users that “they are not headed to a website likely to be controlled by [the] Complainant”.
The Respondent claims a legitimate interest in using the Domain Name to “educate the public” and host criticism of the Complainant’s views. The Respondent states that “[t]here is no commercial aspect [of] this site whatsoever”. The Respondent’s position is articulated as follows:
“It is well settled that a critic has the right to use the target’s mark in the domain name of a critical site. Determinations regarding legitimate, noncommercial and fair use under the Policy require a balancing of trademark holder and other public interests. [The] Respondent provides information to the public regarding the effects of the use of pornography. These activities are protected not only by the First Amendment to
the United States Constitution, but also Paragraph (4)(c)(iii) of the UDRP Policy. [The] Respondent is engaged in legitimate noncommercial and fair use in their domain name, which criticizes [the] Complainants’ views”.
The Respondent denies any intent to mislead Internet users, employ the Domain Name for commercial gain, disrupt the Complainant’s website or activities, or otherwise act in bad faith within the meaning of the Policy.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is 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 name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Mr. Burgess is properly named as a Respondent because he registered the Domain Name. There is no evidence in the record that Family Life Services is a legal entity; it may be a trade name or alter ego for Mr. Burgess.
The Amended Complaint also names Dr. Nicole Prause and Liberos LLC as Respondents. They do not appear in the Registrar’s WhoIs database in relation to the Domain Name, but there are reasons to believe that Dr. Prause is a leading person in the “group of psychologists and scientists” that is responsible for the Respondent’s website, according to the Response. She is the second-listed expert on the site, with her affiliation shown as “Liberos”. Two of the experts who replied to the Complainant’s demand letter said they participated at her invitation. The law firm that responded on her behalf to the Complainant’s demand letter is the same law firm that represents the Respondent in this proceeding. Dr. Prause “DBA Liberos LLC” applied for United States trademark registration of YOUR BRAIN ON PORN. The online database of the California Secretary of State shows that Liberos LLC is a California limited liability company, for which Nicole Prause is the registered agent.
The Panel finds substantial evidence that Mr. Burgess, Dr. Prause, and Liberos LLC share involvement in the control of the website associated with the Domain Name, as well as common interests in this proceeding, and there has been no showing of material prejudice to them in the event that the proceeding continues with Dr. Prause and Liberos LLC as named Respondents. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
Accordingly, the Panel allows the Complaint against multiple respondents as styled in the caption above and refers to these parties collectively hereafter as the “Respondent”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds a United Kingdom trademark registration for a figurative mark prominently featuring the term “Your Brain on Porn”. (The fact that this mark was registered nearly two months after the Domain Name was registered is not relevant for this standing requirement of the first element of the Complaint, although it may be relevant under other elements.)
The Complainant also cites its pending United States trademark applications, but as these are not registrations, they do not by themselves represent “rights” on which the Complainant can rely for standing. More to the point, the Complainant claims common law rights in the term “Your Brain on Porn”. A Complainant may assert rights in an unregistered mark in a UDRP proceeding, but this requires proof:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”. (WIPO Overview 3.0, section 1.3)
Here, the Complainant has adduced substantial evidence of trademark use of YOUR BRAIN ON PORN since publishing a book by that name in 2014. The term has been attached not only to the Complainant’s website and book but also to videos, lectures, workshops, and ancillary materials, some with a figurative logo (displaying the “TM” symbol) or the initials YBOP and some with the words alone. The Complaint includes information about book sales, site visits, and downloads, as well as media recognition.
The Respondent argues that the term is merely descriptive, but this argument is undercut by two facts: (1) the Respondent Dr. Prause herself has a pending trademark application for precisely the same term as a standard character mark, and (2) a USPTO examiner, reviewing one of the Complainant’s pending trademark applications for the same term, has opined in a non-final action letter that the phrase is “registrable”. It remains to be seen whether the USPTO will grant either the Complainant’s or the Respondent’s pending trademark applications for YOUR BRAIN ON PORN, but, also noting the Respondent’s clear knowledge of and intent to target the Complainant, the Panel finds sufficient evidence on this record that the Complainant has common law rights in the term to afford standing under the Policy.
The Domain Name incorporates the Complainant’s registered and common law YOUR BRAIN ON PORN mark in its entirety and adds the word “real” at the beginning of the string. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id.,section 1.7. The Complainant contends that “real” is a dictionary word that emphasizes genuineness and so does not avoid confusing similarity. The Respondent counters that “real” distinguishes the Domain Name sufficiently to avoid confusion because it highlights the critical nature of the Respondent’s website, which attacks the Complainant’s “fraudulent” credentials and lack of genuine scientific support. The Panel is not persuaded that Internet users will interpret the Domain Name in this manner, believing that “real” means “as opposed to”. After all, one of the most widely quoted Twitter accounts in recent years is @realDonaldTrump, which is an authentic account at the time of this Decision.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s YOUR BRAIN ON PORN mark for Policy purposes and concludes that the Complainant has established the first element of the Complaint.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and a lack of permissive use. This should shift the burden to the Respondent.
The Respondent relies on paragraph 4(c)(iii), arguing that it is making a legitimate noncommercial or fair use of the Domain Name for education and criticism, repeatedly emphasizing that “there is no commercial aspect of the site whatsoever”. This is not entirely true, however. The Respondent’s website certainly offers information and links to published research, but it also encourages users to interact with the listed experts, many of whom are therapists who consult with patients as their business. As such, the website has some characteristics of a specialist professional directory with direct links to experts who can in some cases turn inquiries into clients. One of the experts even provides a direct link to his clinic’s website with a “book appointments” tab. At least five of the listed experts include direct links to Amazon.com pages to purchase their books. There is no “shopping cart” function on the Respondent’s website, but it is literally one click away. And with taglines such as “Visit with real experts on pornography!” the website does appear to promote the professional services of those experts who have clinical practices, to an audience of persons who may well be interested in availing themselves of their services.
The Response effectively acknowledges that the Domain Name refers to the Complainant’s website and other publications branded YOUR BRAIN ON PORN:
“They have an absolute right to use Complainant’s mark to call attention to the subject of the criticism contained on the site. Respondent is not attempting to trick the public into thinking they are the same or sponsored by Complainant. There is no evidence that anything like this has happened. In fact, the name of their domain does exactly the opposite. It informs the public that Respondent espouses exactly the opposite of Complainant’s views. This use of Complainant’s mark as a part of their domain name is fully protected by both the United States Constitution and Paragraph 4(c)(iii)”.
However, incorporating the Complainant’s mark in its entirety raises a high risk of implied affiliation, and simply prefacing it with the word “real” does not firmly convey the impression of criticism or opposition rather than authenticity (see the example of @realDonaldTrump noted above in discussing confusing similarity). “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner”. WIPO Overview 3.0, section 2.5. The Domain Name alone is ambiguous, but WIPO UDRP panels assessing fairness have looked to circumstances beyond the domain name itself, such as the following:
“(i) whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit, (ii) whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded, (iii) whether it is clear to Internet users visiting the respondent’s website that it is not operated by the complainant, (iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties, (v) where appropriate, whether a prominent link (including with explanatory text) is provided to the relevant trademark owner’s website, (vi) whether senders of email intended for the complainant but (because of user confusion) directed to the respondent are alerted that their message has been misdirected, (vii) whether there is an actual connection between the complainant’s trademark in the disputed domain name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual, and (viii) whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline)”. WIPO Overview 3.0, section 2.5.2.
In this case, the individuals responsible for contributing content to the Respondent’s website appear to express genuinely held opinions, although the authors remain anonymous. They primarily furnish summaries and links to peer-reviewed articles published in scientific journals. There is no evidence of a pattern of cybersquatting, fraudulent email appropriation, or exploitation of the Domain Name for pay-per-click advertising or direct commercial competition.
Those responsible for the website have not avoided a risk of confusion with the Complainant, however, and in some respects have deliberately amplified that confusion, as follows: the Respondent’s website does not identify the website operator; it only briefly included a disclaimer of affiliation with the Complainant; the Domain Name registration was made through a domain privacy service; the Respondent’s press release regarding the website launch might lead Internet users to associate the website with the Complainant; the Respondent does not deny that the SEO coding is designed to cause search engines to confuse the Respondent’s website with the Complainant’s; and until recently, the Respondent’s website was coded to display the Complainant’s YOUR BRAIN ON PORN and YBOP marks in the browser tab of the Respondent’s website. While it should be clear to a site visitor actually reading the website content that the Respondent is critical rather than supportive of the Complainant, some of the Respondent’s practices in this case seem to be calculated to attract Internet users interested in the Complainant and heighten rather than avoid the effects of initial interest confusion.
However, if confusion is the chief fairness concern with the Respondent’s use of the Domain Name, it must be balanced against the Respondent’s claimed noncommercial interest in using the Complainant’s mark for genuine criticism of the Complainant. See WIPO Overview 3.0, sections 2.6, 2.5.3. Depending on the facts of the case and where, as here, all Parties reside in the United States, UDRP panels have tended to give weight to United States constitutional First Amendment principles of free speech in respecting the interests of a respondent using a domain name for a criticism site despite the inherent risk of confusion with the trademark owner, unless the respondent is found to be using the supposed “criticism site” as a pretext for cybersquatting, commercial activity, or tarnishment. See id., section 2.6.1; MUFG Union Bank, N.A. v. William Bookout, WIPO Case No. D2014-1821.
Here, the asserted noncommercial character of the Respondent’s website is not as pure as the Respondent claims. Site visitors are invited to interact individually through the website with experts who in some cases are therapists who make a living selling their professional services to clients. Several of the experts not only mention their publications but link to the relevant Amazon.com page for a convenient one-click purchase. There is in this sense a commercial advertising aspect to the Respondent’s website, particularly for the experts who are in private practice.
On balance, though, the Panel finds this commercial aspect to be subsidiary to the predominantly informational and advocacy purposes of the Respondent’s website. Several of the Respondent’s experts articulate their views and findings in books, but the Respondent’s website is not focused on selling books. Some publications, such as those listed above, are actually linked to Amazon.com, while others, such as Victoria Hartmann’s “I Like Dead People – Inside the Mind of Death Fetishists” and Charles Moser’s contribution to the “Handbook of Psychology”, are only mentioned rather than linked. The book references amount to a small fraction of the content on the website. And while the Respondent’s website publishes information about its experts and facilitates contacts with them, it does not directly sell their services. Moreover, those services do not compete professionally with the Complainant, who is not a licensed therapist.
The Panel finds that the limited and almost incidental commercial aspect of the Respondent’s website does not overshadow its primarily noncommercial nature as a genuine criticism site. See WIPO Overview 3.0, section 2.5.3 (“specific case factors have led panels to find that fair use need not always be categorically noncommercial” … panels look for “unambiguous evidence that the site is not primarily intended for commercial gain”). Even with the evidence of the Respondent’s efforts to heighten a risk of user confusion, which also detracts from its “fair use” of the Domain Name, the Panel finds on balance that the Respondent’s interests in critical expression outweigh the risk of confusion with the Complainant’s mark.
The Panel concludes that the Respondent prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following suggested by the Complainant (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Respondent’s use of the Domain Name for at least some commercial purposes, as discussed above, could well suffice to establish bad faith for purposes of paragraph 4(b)(iv), supported by the cited evidence of the Respondent’s apparent efforts to exacerbate a risk of user confusion. However, given the Respondent’s ability in this case to rely on the justification of fair use for a criticism site and the Panel’s conclusion on the second element, which is dispositive of the Complaint, there is no need to reach a conclusion on the third element.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: September 2, 2019
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