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October 18, 2016 / Nate Harris

Criticism site owner’s failure to respond leads to inference of bad faith

Summary of San Lorenzo S.p.A. v. Domains by Proxy, LLC / Lenka Jirsova

(WIPO Case No. D2016-1555)

Filed: July 29, 2016; Decided: October 7, 2016 (Panelist: Wolter Wefers Bettink)

Disputed domain name: <mynewsanlorenzoyacht.com>

screen-shot-2016-10-16-at-8-17-59-pm

Screenshot of <mynewsanlorenzoyacht.com> captured October 16, 2016

Summary

A respondent posts a criticism site extensively documenting his friend’s allegedly bad experience with a yacht maker. The panel questions the respondent’s motives when he fails to respond to the complaint filed by the yacht maker.

The Parties

Complainant Sanlorenzo S.p.A. of Ameglia, Italy (“Sanlorenzo”) is a builder of yachts, founded in 1958, with shipyards in various locations in Italy. It is the exclusive licensee of the registered mark SANLORENZO in a number of countries, including Czechia (the country formerly known as the Czech Republic) and Slovakia.

The Respondent, Lenka Jirsova of Prague, Czechia, registered the domain name on July 8, 2015. He hosts a website in connection with the domain name showing a pleasure yacht with the caption “My new San Lorenzo Yacht,” and the words “Building a new boat: Trouble? Or pleasure?”

The site also contains the following text about the founder of Sanlorenzo:

“We are pretty sure that when Mr. Giovanni Janetti was establishing foundations of the Sanlorenzo brand in 1958, he never imagined that one day his brand will become related to ‘mediocre-quality’ instead of ‘elegance’!”

“My name is Vojtech. I am a 47-year-old IT specialist. I own and manage a communications company which maintains and services GSM operators’ base stations in Slovakia.”

“I have decided to put up this website in order to share our experiences and raise boating enthusiasts’ awareness.”

The site also contains pages complaining about the supposed ordeal a friend of his underwent while waiting for his Sanlorenzo yacht to be built.

Jirsova did not respond to the complaint.

Identical or Confusingly Similar

The Panel finds that Sanlorenzo, as the exclusive licensee of the SANLORENZO mark, has rights in the mark.  It further finds that the disputed domain is confusingly similar to the SANLORENZO mark, since “mynew” and “yacht” do not avoid confusion.

Rights or Legitimate Interests

The Panel recognizes that using a disputed domain for a genuine noncommercial free speech website criticizing the mark owner’s goods/services may constitute a legitimate interest.  The Panel further notes that it need not judge the accuracy of the claims made on the website; such questions are better suited for court proceedings.  “That said, the Panel is troubled by the absence of a response, which is in marked contrast to the extent and specificity of the claims the Respondent makes on the website.”

In the Panel’s view, Sanlorenzo’s denial of the various accusations on the website would “have warranted a certain reaction” from Jirsova; his failure to react accordingly “makes it difficult for the Panel to find that the present circumstances fall within the scope” of free-speech protections afforded by the Policy.

The Panel is therefore “left to infer” that Jirsova may be using the disputed domain “in an unfair effort to exert pressure on the commercial dispute apparently ongoing between the parties.”

Registered and Used in Bad Faith

According to Sanlorenzo, the pictures on the website are accompanied by misleading or false comments, which indicates Jirsova’s intent to tarnish the SANLORENZO mark by presenting an “incomplete picture” of the dealings between the parties. The Panel notes again that Jirsova would have been expected to rebut Sanlorenzo’s assertions of bad faith. In the absence of such a rebuttal, the Panel accepts Sanlorenzo’s allegation of bad faith.

Decision
The Panel orders that the disputed domain name be transferred to Sanlorenzo, as requested in the Complaint.

Commentary

The Panel here appears to draw a distinction between pure “free speech” criticism webpages–for which no further explanation may be required from the respondent beyond the speech itself– and those created as part of a larger “commercial dispute.” When the case is the latter, as it is here, the Panel seems to expect that a respondent will renew its grievances in the face of the complainant’s denial.

I don’t know that it’s fair of the Panel to infer, in the absence of a response, that the site is intended to “exert pressure” on the commercial dispute (i.e., to obtain a better settlement or other outcome), and then rely on that inference to find bad faith and a lack of a legitimate interest in the domain.  For one thing, it’s not even clear that the dispute is ongoing, or susceptible to pressure– the supposedly-faulty-yacht-owning  friend may be done dealing with Sanlorenzo, and he and the respondent may simply want to warn others, as the website indicates.

Is there often an element of payback in a negative public review?  Of course.  But if Jirsova’s account is accurate, then the free speech is not exerting unfair commercial pressure. Almost any criticism of commercial entities is going to involve some attempt at pressuring the entity to change its practices– that’s one of the goals of free speech.

Here, it seems as though the Panel is really inferring that the respondent’s failure to respond suggests that the claims on his website are inaccurate.  Of course the Panel has explicitly indicated it will not weigh the credibility of those claims. So what is it inferring, exactly?

 

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