WIPO Arbitration and Mediation Center

The Complainants are Bosley Medical Group, a California corporation, and Bosley Medical Institute, Inc. a Delaware corporation, doing business at 9100 Wilshire Boulevard, Beverly Hills, California.

The Respondent is Michael Kremer, an individual with a mailing address at a Post Office Box in Oceanside, California.

The domain name at issue is "bosleymedical.com" (the Domain Name). The registrar with which the Domain name is registered is Network Solutions, Inc. (the Registrar or NSI), located in Herndon, Virginia, USA.

The Registrar provided the following contact details for the Respondent:

Administrative Contact:

Kurt Davey

Quik Internet of San Marcos

Technical, Zone Contact:

Webmaster

Quick International

Billing Contact:

Michael Steven Kremer

Bosley Medical

The WIPO Arbitration and Mediation Center (the Center) received the Complainants Complaint in hardcopy on November 28, 2000. On December 4, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

The Center sent the Registrar, NSI, a Request for Registrar Verification, and on December 4, 2000, the Registrar transmitted to the Center via e-mail a Registrar Verification Response confirming that the Domain Name is registered with NSI and that the Respondent is the current registrant of the Domain Name.

The Center completed a Formalities Compliance Review and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On December 5, 2000, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of December 24, 2000, by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent.

On December 23, 2000, the Center received Respondents Response to the Complaint. On December 27, 2000, the Center notified the parties that it would proceed to appoint the Administrative Panel.

On February 8, 2001, after having received a Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date, appointing Dana Haviland as the sole panelist. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

Although the Complainants submitted a Rebuttal to Respondents Response and the Respondent submitted a Response to Complainants Rebuttal, the Panel declines to consider either pleading. ICANN domain name proceedings are summary in nature, and additional pleadings are acceptable only in exceptional cases where leave from the Panel is sought before filing. See Infinity Broadcasting Corp. v. News Commentary (parties must request leave of the Panel to file additional pleadings). In any event, in this case, the additional pleadings merely continue legal arguments presented by the parties in their Complaint and Response, which adequately set forth their respective positions.

Bosley Medical Group and Bosley Medical Institute, Inc. (Complainants) are California and Delaware corporations, respectively, with their principal place of business in Beverly Hills, California. Complaint, paragraph 2. Complainant Bosley Medical Group "is a world leader in providing medical hair restoration" and Bosley Medical Institute, Inc. is "its management and marketing affiliate". Complaint, paragraph 12(ii). The two companies are under common ownership. Id.

On January 7, 2000, the Respondent registered the Domain Name "bosleymedical.com". Complaint, Annex 1.

Complainants

The Complainants contend that the Domain Name registered by the Respondent is identical to Complainants trademark Bosley Medical. Complaint, paragraph 11. The Complainants claim common law trademark rights and allege that they have applied for registration of the mark with the U.S. Patent and Trademark Office. Complainants contend that their mark is well known by virtue of the fact that Bosley has been providing goods and services for 26 years and that its mark has been advertised extensively. Complaint, paragraph 12(ii). The Complainants further aver that Respondent is well aware of the Complainants mark, having had three hair replacement procedures performed by one of Bosley Medical Groups doctors. Complaint, paragraph 12(xii). The Complaint also alleges that the Domain Name is confusingly similar to the Complainants own domain name "bosley.com" Complaint, paragraph 12(vi).

Complainants next contend that the Respondent has no right or legitimate interest in the Domain Name. Complaint, paragraph 12(iv). Complainants state that the Respondent has never been known by the Domain Name nor given their consent to use the Domain Name. Complaint, paragraph 12(x). Complainants further allege that in September of 1994, Respondent sued his doctor and Bosley Medical Group and "has engaged in disruptive and threatening behavior toward the Complainants and individual doctors employed by the Complainants." Complaint, paragraph 12(xii-xiii). Complainants complain of letters allegedly sent by Respondent to Bosley representatives "threatening to publish negative articles and information about Complainants on the Website." Complaint, paragraph 12(xiii). Complainants also contend that because Respondent has neither posted content on the website nor taken demonstrable preparations to use it for over eleven months, he cannot establish a legitimate right in the Domain Name. Complaint, paragraph 12(xv). Complainants allege that Respondents failure to use the Domain Name shows that he registered it to keep them from using it and to "intimidate or threaten Complainants and their employees with its use." Complaint, paragraph 12(vi).

Citing Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, Complainants contend that even if Respondent intended to use the Domain Name for a website to criticize Complainants, such a use would not constitute a legitimate non-commercial or fair use under Paragraph 4(c) (iii) of the Policy, where the domain name is identical or confusingly similar to a complainants mark.

Finally, Complainants contend that the Respondent has registered and is using the Domain Name in bad faith, i.e., primarily for the purpose of disrupting Complainants business. Complaint, paragraph 12(xix). Complainants allege that bad faith is evidenced by the Respondents failure to make preparations to make legitimate or fair use of the Domain Name. Complaint, paragraph 12(xxi). Complainants further maintain that "even if respondent were to establish the Website he has threatened to establish under the Domain Name, his registration and use of the Domain Name would still be in bad faith" because use of a website to tarnish or criticize a complainant is bad faith within Paragraph 4 (b) of the Policy. Complaint, paragraph 12(xxii).

Respondent

Respondent states that he registered the Domain Name in January 2000, intending to publish the public court record of a case brought by the People of the State of California against Bosley Medical Group. Response, paragraph 5. Respondent acknowledges that he sent the Complainants notice that they were the subjects of such a site but avers that he did not do this for the purpose of "harassing" Complainants. Response ,paragraph 6. Respondent maintains that he is not the author of the letter attached as Annex 10 to the Complaint. Response, paragraph 6. Respondent states that he never registered the domain name for a commercial purpose or for resale but instead to make public documents more accessible. Response, paragraph 6. Respondent maintains that he has made preparations to use the Domain Name but that, due to his lack of technical expertise, it has taken time to get the site up and running. He claims that the site "is ready for publication pending the results of this proceeding." Response, paragraph 13.

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The evidence shows that the Domain Name "bosleymedical.com" registered by the Respondent is identical or confusingly similar to the Complainants mark. Although the Complainants have claimed common law trademark rights, it is not necessary to determine their rights in the mark in this proceeding, because of the Panels findings with respect to Respondents rights in the Domain Name below.

A party may demonstrate its rights or legitimate interest in a domain name under paragraph 4(c) of the Policy in any of the following ways:

- (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 bonafide 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 evidence demonstrates that the Respondent has legitimate rights or interests in the Domain Name. The Respondents contention that he has registered the site to make information regarding Bosley Medical more widely accessible, without any intent for commercial gain, is clearly fair use. See Compusa Management Company v. Customized Computer Training, NAF No. FA0006000095082 (respondent has a First Amendment right to offer criticism of goods and services offered by the complainant); TMP Worldwide Inc. v. Jennifer L. Potter, ICANN Case No. D2000-0536 (using a website to exercise First Amendment right to comment on her experiences in dealing with complainant is legitimate). The fact that the Domain Name itself does not contain explicit criticism of the Complainant does not defeat the Respondents rights of free speech and fair use under the Policy to use the Domain Name for a criticism website. Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (domain name registrants need not utilize the formulation "trademarksucks.com" to designate a website for consumer criticism or commentary)

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of 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 website or other on-line location, by creating a likelihood of confusion with the Complainants 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.

Complainant has failed to establish bad faith registration and use of the Domain Name. None of the above four examples of bad faith has been shown. Although these factors are not exclusive, Respondents contention that he registered the Domain Name to post public court documents rebuts an inference of bad faith registration. Moreover, his continued preparation to use the site solely as consumer commentary rebuts an inference of bad faith use.

The Panel does not accept Complainants argument that registering a domain name which is confusingly similar to its mark with the intention of criticizing the complainant is not fair use but a violation of 4(c)(iii) of the Policy. Complainants citations to Estee Lauder, Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 in support of their position that Respondent is a competitor are unpersuasive. In Estee Lauder, the Panel found that the respondent had a commercial purpose behind its site criticizing the complainant, i.e., to gain clients for its product liability practice. Further, this Panel declines to accept those cases broad definition of "competitor" to include not only commercial or business competitors, but anyone acting in opposition to another. If that were the rule, all consumer commentary sites whose domain names incorporate the trademark holders mark would violate the Policy where their criticisms may have an adverse effect on the trademark holders business, a result inconsistent with the express fair use defense set forth in the Policy. Here, the Respondent has no commercial purpose and is a commentator exercising his fair use and free speech rights, not a competitor. See, Compusa Management Company v. Customized Computer Training, NAF No. FA0006000095082 (although respondent registered the domain name for the purpose of disrupting the business of complainant, he was a commentator, not a competitor).

The Complainants citations to Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 and Telstra Corp. Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 do not support their contention that Respondents inactivity (alleged failure to develop a website) constituted bad faith. The findings of bad faith in those cases rested on their particular facts.. In Wal-Mart, the Panel found that the respondent registered the domain name to extract money from the respondent for past "consulting services," while in Telstra the respondent failed to submit his response and hid his identity, making it impossible for the Panel to find a legitimate use in good faith. Here, Respondents introduction into evidence of an example of his site and assertions regarding preparation of the site, including the purchase of software to develop the site prior to the commencement of this proceeding, satisfy the Panel that the registration and use of the Domain Name were in good faith.

Finally, the Panel notes that Complainants do not assert that the Respondent seeks to publish false information, do not offer any evidence that potential users have been diverted from their own site, and do not show any effort to obtain rights in the Domain Name before the Respondent notified them of his criticism website. The Panel therefore reluctantly concludes that the purpose of this proceeding is less to protect the Complainants trademark rights than to squelch Respondents criticism of Complainants a practice sometimes called "cyber-bullying". See, Compusa Management Company v. Customized Computer Training, NAF No. FA0006000095082. The ICANN domain name proceedings were intended to provide a swift and inexpensive remedy for cybersquatting, not to provide trademark holders with a monopoly over every permutation of their marks in domain names or a weapon to employ against domain name registrants exercising legitimate free speech and fair use rights.

For the foregoing reasons, it is the decision of the Panel that the Complainants have not satisfied their burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, since it appears that the Respondent has legitimate fair use and free speech rights with respect to the use of the Domain Name for a criticism site. The Complainants claim for transfer of the Domain Name "bosleymedical.com" is therefore denied.

Dana Haviland
Panelist

Dated: February 28, 2001