WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Akoustic Arts v. Whois Privacy Service / F J Pompei

Case No. D2019-2136

1. The Parties

The Complainant is Akoustic Arts, France, represented by Ab Initio, France.

The Respondent is Whois Privacy Service, California, United States of America (“United States”) / F J Pompei, Massachusetts, United States.

2. The Domain Name and Registrar

The disputed domain name <akousticarts.com> is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, 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 September 6, 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 September 11, 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 September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Respondent submitted a Response on October 2, 2019.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 9, 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.

4. Factual Background

The Complainant is a limited company (société par actions simplifiée) incorporated in France on June 14, 2010. It operates in the field of audio devices and sound systems and, specifically, is involved in the conception, production and distribution of directional sound speakers for consumers and professionals. It has conceived a speaker termed the “A” which claims certain unidirectional properties. The Complainant provides an extract from its website at “www.akoustic-arts.com” specifying multiple awards which it says it has received between 2015 and 2018 in respect of what it terms “ultradirectional sound”.

The Complainant is the owner of French registered semi-figurative trademark No. 3547328 consisting of a monochrome image featuring a large stylized letter “A” with an identical inverted letter, together with the words AKOUSTIC ARTS (R) in smaller typeface, filed on January 4, 2008 in Nice classes 35, 38, and 41. The Complainant is also the owner of French registered trademark No. 4487250 for the word mark AKOUSTIC ARTS, filed on October 1, 2018 in Nice classes 9, 15, 35, 37, 41, and 42.

The disputed domain name was created on April 4, 2017. According to a certified report by a Huissier de Justice prepared on behalf of the Complainant dated October 12, 2018, the disputed domain name at that date redirected to a website at “www.holosonics.com” which is the website of a company named Holosonics Research Labs, Inc. Said website promotes “Audio Spotlight PrivateSound™ technology” as implemented in directional speakers and states that the Respondent is the inventor of such technology.

At some point between October 12, 2018 and the date of filing the Complaint, the Complainant noted that the disputed domain name had ceased to redirect to the said Holosonics website and now redirected to a page at “www.wikipedia.com” entitled “Sound from ultrasound”. Said page sets out the history of directional sound, notes the Respondent’s academic work in this area and describes the Respondent’s commercial activities relating to “Audio Spotlight […] by his company Holosonics”.

At some point between the date of filing of the Complaint and the date of the filing of the amended Complaint, the Complainant noted that the disputed domain name had ceased to redirect to the said page at “www.wikipedia.com” and now redirected to a webpage at “www.indiegogo.com”. This website appears to relate to crowdfunded projects and the page concerned relates to a project proposed by the Complainant. The page appears to contain complaints from backers of the Complainant’s project, alleging delays and lack of progress updates.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.

The Complainant states that it has received numerous awards and significant media recognition in its field from its design and prototyping phase in 2014 onwards, providing a link to its website featuring said awards and a selection of media coverage in Francophone publications dating from between January 2015 and October 2018.

The Complainant notes that it has rights in its French registered trademarks and states that it also bases the Complaint on its use of the domain name <acoustic-arts.com>, registered since November 12, 2006 and its use of its registered company name since June 14, 2010. The Complainant notes that the disputed domain name is made up of the same elements as its marks and asserts that these are perceptible aurally, visually and conceptually. The Complainant adds that the disputed domain name has been used in connection with the website of a competitor in the directional speaker business.

The Complainant asserts that the Respondent is not affiliated with the Complainant and has not been authorized to register and/or use its AKOUSTIC ARTS trademark as a domain name, adding that the Respondent is not known under such name and is not using the term in relation to a bona fide offering of goods. The Complainant asserts that its name is a distinctive and arbitrary expression and that its selection and use by the Respondent cannot be a coincidence and demonstrates malicious intent. The Complainant notes that only the Complainant’s trademarks are disclosed by a search for the mark AKOUSTIC ARTS on multiple online trademark databases.

The Complainant asserts that the disputed domain name has been used to redirect users to a website promoting competitive products and that the Respondent has been taking unfair advantage of the Complainant’s reputation with intent for commercial gain to misleadingly divert consumers and to disrupt the Complainant’s business. The Complainant contends that the Respondent selected and uses the disputed domain name only because it is identical to the Complainant’s marks, domain name, company and trade name, adding that it is inconceivable that the Respondent would have registered the disputed domain name without actual knowledge of the Complainant’s rights in such term, given its reputation and the common field of activity between the Parties.

The Complainant asserts that the redirections put in place at the disputed domain name show that the Respondent has registered it to take advantage of the Complainant’s reputation in order to promote the Respondent’s own activities and submits that it prevents the Complainant from registering the disputed domain name to reflect its own activity. The Complainant adds that Internet users are likely to consider that the disputed domain name has in some way been endorsed or connected with the Complainant’s activity given that the Complainant’s audio systems are recognized in this sector. The Complainant notes that the Respondent has concealed its identity by use of a privacy service and that this can be indicative of bad faith.

The Complainant notes that the Respondent is described as the founder of “Holosonics” on the related website and asserts that the Respondent purposely registered the disputed domain name to redirect the public to the Respondent’s own competitive website. The Complainant suggests that following the filing of the Complaint, the Respondent changed the redirection on the disputed domain name to the page on “www.wikipedia.com”, which, while indirect, still promotes his name, work, technology and products and does not mention the Complainant. The Complainant points to the later redirection of the disputed domain name to the page at “www.indiegogo.com”, asserting that this was done to damage its image and popularity. It concludes that the disputed domain name was registered and used to prevent the Complainant from reflecting its mark in the corresponding domain name, to disrupt the Complainant’s business and to attract users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark, submitting that successive redirections are further evidence of bad faith.

B. Respondent

The Respondent requests that the Complaint be denied, contending that the Complainant has failed to meet the requirements of both paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

The Respondent asserts that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent notes that the disputed domain name was registered some 11 years after the Complainant registered its main domain name, indicating that the Complainant must have had no interest in the disputed domain name.

The Respondent submits that it came to his attention in 2016 that the Complainant was using false and misleading information to solicit investment and direct purchases via a crowdfunding campaign on “www.indiegogo.com”, including stating that its technology was its original patented invention which created a revolution in acoustics and claiming published performance which, based on all known science, was not remotely feasible. The Respondent adds that the Complainant had duplicated devices published in major journals since the 1980s which had been published in a hobbyist magazine and online.

The Respondent states that it registered the disputed domain name to educate consumers about the origin of the technology and therefore pointed it to the article on “www.wikipedia.com” described in the factual background section above. The Respondent accepts that its company, Holosonics, is mentioned on said page as a company which has done work in this field but explains that it is only mentioned in passing among other larger companies, adding that it derived no advertising or similar benefit.

The Respondent goes on to assert that the Complainant collected substantial funding from crowdfunding in 2016, promising delivery of working products in September 2016, adding that it is the Respondent’s belief that no devices have been delivered some three years later. The Respondent explains that it redirected the disputed domain name to the crowdfunding page at “www.indiegogo.com” in 2019 as this is now full of customer complaints and demands for refunds, asserting that the Complainant is not engaged in any legitimate business. The Respondent submits that the disputed domain name has not been used to divert customers from the Complainant or for the Respondent’s own commercial gain.

The Respondent contends that the Complainant has failed to prove any of the non-exclusive examples of evidence of registration and use in bad faith in terms of paragraph 4(b) of the Policy. The Respondent asserts that the disputed domain name was registered in order to educate the public on the true nature of the technology and was directed to the page at “www.wikipedia.com” in order to provide an independent, objective source of information, adding that it was directed to the Complainant’s own crowdfunding page, which, by no action of the Respondent, contains customer complaints and accusations of fraud. The Respondent submits that its use of a privacy service is not, in itself, an indication of bad faith, noting that it has not engaged in any of the conduct cited as bad faith in relevant decisions under the Policy.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under this element of the Policy, the Panel must first consider whether the Complainant has UDRP-relevant rights. Secondly, the Panel must compare any such rights to the disputed domain name in order to assess identity or confusing similarity.

In the present case, the Panel finds that the Complainant has rights in the registered trademarks cited in the factual background section above. Comparing the Complainant’s word mark (and textual elements of its semi-figurative mark) to the second level of the disputed domain name, the Panel finds that these are almost alpha-numerically identical, the only difference being a space in the trademark which is of no consequence because spaces are not permitted in domain names for technical reasons. This is sufficient for the Panel to find confusing similarity between the disputed domain name and the Complainant’s trademark as the applicable Top-Level Domain in a domain name, in the present case “.com” is typically disregarded under this test (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Respondent does not offer any substantive opposition on this topic, noting that his primary submission is that the Complainant has failed to prove its case in terms of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent is not affiliated with the Complainant and has not been authorized to register and/or use its AKOUSTIC ARTS trademark as a domain name, is not known under such name and is not using the term in relation to a bona fide offering of goods or services. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.

The Respondent’s case is that it registered the disputed domain name in order to educate consumers about the origin of the technology said to be used by the Complainant and, furthermore, to alert the public to a variety of criticisms of the Complainant’s claims in respect of such technology and issues surrounding the Complainant’s commercial activities. In other words, the Respondent is seeking the safe harbor of paragraph 4(c)(iii) of the Policy, namely that it 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.

The major problem with the Respondent’s case on this topic is that when the disputed domain name was first identified by the Complainant, on or around October 12, 2018, it was pointing to the Respondent’s own commercial website which promoted a range of products in competition with those of the Complainant. This could not be seen as an attempt to use the disputed domain name in connection with noncommercial criticism of the Complainant or its activities, nor could it give rise to any rights or legitimate interests on the basis of a bona fide offering of goods or services. The Panel finds it particularly notable that the Respondent does not seek to address or explain this use to any extent in an otherwise detailed Response. Instead, the Respondent merely refers to the subsequent redirections of the disputed domain name to the content at “www.wikipedia.com” and “www.indiegogo.com”. Could either of these later uses be said to constitute noncommercial criticism, such that the safe harbor of paragraph 4(c)(iii) of the Policy would be available to the Respondent?

Section 2.6.1 of the of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that to support such fair use (if it is even present here, which it is not), the respondent’s criticism must be genuine and noncommercial, adding that in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment. The present Panel takes the view that this is one such case.

The Respondent’s use of the disputed domain name to point to his own website in competition with the Complainant and his failure to address this in the Response, when directly raised by the Complainant, speak volumes to the Panel. While the timeline of the various different uses from the date of registration of the disputed domain name to date is not completely clear, it is significant that the initial use which the Complainant discovered was entirely commercial and competitive in nature. The second use, which was to point to a page on “www.wikipedia.com”, still arguably conferred a commercial benefit upon the Respondent, however indirect, and in any event such redirection would vest no rights in the Respondent. Its academic work in the field, its technology and its business, all feature prominently on this page notwithstanding the fact that there are also mentions of other larger companies. It is not enough for the Respondent merely to say that it did not receive any direct advertising or similar benefit. Any benefits to it from adopting the Complainant’s name and mark in the disputed domain name would still be of a commercial nature. Furthermore, it would be difficult to view this page as constituting genuine criticism. The final and relatively recent use of the disputed domain name to point to the “www.indiegogo.com” page dates from the period between the filing of the Complaint and the amended Complaint. Little weight can be given to a change of use such as this, which may well have been made by the Respondent in contemplation of the present administrative proceeding.

The Panel considers that it is reasonable to infer from all of the circumstances that the Respondent’s alleged purpose of making genuine noncommercial criticism of the Complainant, which in any event appears never to have been implemented, was merely a pretext for competitive commercial activity. It seems more likely than not to the Panel that, upon discovery by the Complainant of the disputed domain name, the Respondent attempted to change the pointing of the disputed domain name purely in order to attempt to access the safe harbor allowed by paragraph 4(c)(iii) of the Policy.

The Panel adds for completeness that even if it had found that the alleged noncommercial criticism was not pretextual in this case, this would not have changed the outcome of its assessment under this element of the Policy. The Panel is of the view that the Respondent’s case fails what has recently been referred to as “the impersonation test” (see: Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633) the detail of which is found in section 2.6.2 of the WIPO Overview 3.0. As noted in that section, panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)). The section goes on to say that even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. This Panel would have adopted this view in the present case even had there been no apparent pretextual use and had the source of any criticism, and the nature of the criticism itself, been clear from the face of the website associated with the disputed domain name.

In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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.”

The Respondent argues that the Complainant has failed to make out any of these examples of evidence of registration and use in bad faith. However, the Panel considers that the Complainant has made out an adequate case in terms of both paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Dealing with 4(b)(iii) first, the record shows that the Complainant is a competitor of the Respondent. The first use of the disputed domain name put forward in evidence was to point to the Respondent’s commercial website in competition with the Complainant. This would inevitably cause disruption to the Complainant’s business. The Respondent indicates that its motive was not to disrupt the Complainant’s business but to educate users in the technology and to criticize aspects of the Complainants’ business. However, in light of the original use of the disputed domain name, which the Respondent entirely fails to address in the Response, the Respondent has not persuaded the Panel that his true motive was to engage in genuine nonpretextual, noncommercial criticism of the Complainant. Indeed, as a matter of fact, the Respondent did not engage in any direct criticism at all.

Turning to paragraph 4(b)(iv) of the Policy, the Panel is clear that the Respondent used the disputed domain name to attract Internet users to various online locations by creating a likelihood of confusion with the Complainant’s mark as to source, affiliation or endorsement of such locations. The initial use of the disputed domain name was to point to the Respondent’s own commercial website. This demonstrates a clear commercial purpose, and, as noted above, there is a more indirect but still potentially commercial purpose to be found within the Respondent’s later use of the page at “www.wikipedia.com”. The subsequent use of the disputed domain name to point to the page at “www.indiegogo.com” comes too late in the day to alter the Panel’s finding as to the Respondent’s true motivation in registering and using the disputed domain name and in any event, as noted above with reference to section 2.6.2. of the WIPO Overview 3.0, would not cure the Respondent’s bad faith.

In all of the above circumstances, the Panel finds that the disputed domain name was registered and has been used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 <akousticarts.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: October 23, 2019