1056
Nominet UK Dispute Resolution Service
DRS 01056
General Medical Council –v- Dr Rita Pal
Decision of Independent Expert
1 Parties
Complainant: General Medical Council
Country: UK
Respondent: Dr Rita Pal
Country: UK
2 Domain Name
generalmedicalcouncil.co.uk (“the Domain Name”)
3 Conclusion
Based on the facts and analysis set out below, I conclude that the Complainant’s application to have the Domain Name transferred should succeed.
4 Procedural Background
The Complaint was lodged with Nominet on 12 June 2003. Nominet validated the Complaint, notified the Respondent of the Complaint on 13 June 2003 and informed the Respondent that she had 15 days within which to lodge a Response. The Respondent lodged a Response on 3 July 2002. The Complainant did not submit a Reply to that Response.
The Informal Mediation process then commenced, but did not lead to a negotiated settlement. In accordance with Nominet’s practice, the Expert has not been provided with any of the materials, records or correspondence generated during the Informal Mediation stage.
On 12 August 2003, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
On 13 August 2003, I, Simon Carne, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
5 The Facts
The Complainant is a well-known statutory body responsible for ensuring that doctors on the Medical Register are fit to practise. The Complainant was established under the Medical Act 1858; its use of the name “General Medical Council” is set out in the Medical Act 1983.
The Domain Name was registered on 21 July 2002, with KarmaWorks as the Registrant. On 19 February 2003, the Registrant was changed to the Respondent.
6 The Parties’ Contentions
Complaint
1 The substance of the Complaint consists of just six sentences, which (with a little re-ordering) reduce to three basic elements as follows:
· “[The web site at the Domain Name] appears to be aimed at hosting information which is detrimental to the business of the GMC. The content of the site is critical towards the GMC, and clearly aimed at damaging our reputation. [T]he content of the site appears to be aimed at discrediting the GMC and its members of staff.
· We are concerned that people looking for information on the General Medical Council may access this site. We have a large number of users from overseas, and we are also concerned they may access this site by mistake.
· The fact that the site has our name in the title may lead people to assume that the content is written by, or is closely affiliated, with the General Medical Council.”
Response
The Respondent replied in some detail. In summary (again with some re-ordering):
1 The Respondent does not dispute that the Complainant “may have” Rights in the Domain Name.
2 The Domain Name is not being used for commercial purposes. The Domain Name is entirely relevant to the content of the site, giving the Respondent’s use of the Domain Name “legitimacy beyond question.” The Complainant has made no attempt to show that the Domain Name is an Abusive Registration as defined in the Policy.
3 The purpose of the site is one of criticism and the conditions of paragraph 4(b) of the Policy are satisfied, so the burden of showing that the Domain Name is not abusive falls to the Respondent.
4 The Respondent has no intention of disrupting the Complainant’s business. The web site carries a disclaimer stating that the site is not connected with the Complainant. Visitors who arrive at her site in search of the Complainant’s “rather obscurely titled domain” (gmc-uk.org) should have no difficulty in reaching their destination.
5 In the case of britanniabuildingsociety.org (ICANN Case No D2001-0505), the ICANN Panel found that, on the facts of that case, the respondent had gone to great lengths to dispel any confusion about the source of the web site by including a prominent disclaimer and found more generally that there is a legitimate interest in allowing citizens to use domain names to publish criticism of other bodies. With regard to the latter point, the Respondent also cited dorsetpolice.com and dorsetpolice.net (ICANN Cases AF-0942a and 0942b).
6 A Google search of the Complainant’s own domain, gmc-uk.org, shows that approximately 1,200 other web sites link to that domain. A further search for the term “General Medical Council” returns approximately 31,400 results. It is difficult to see how the Domain Name prevents users from finding the Complainant’s web site.
7 The criticisms of the Complainant contained at the web site render it highly unlikely that any visitor to the site could infer that it is connected with the Complainant. The suggestion that overseas visitors may access the site by mistake is an “insulting suggestion.”
8 The Respondent has not offered the Domain Name to anyone else, nor does she intend to.
9 The Respondent had no intention to block the Complainant from using the Domain Name.
10 None of the Respondent’s other web sites has ever been the subject of an Abusive Registration complaint, which rules out any allegation that she is involved in a pattern of abusive behaviour.
11 The contact details supplied by the Respondent are correct.
12 The Complainant had been aware of the site for “some months” and not just “recently”, as asserted in the Complaint.
13 The truth of the content of the web site at the Domain Name is not denied by the Complainant, which amounts to an admission that it is true. Nor does the Complainant explain how any detriment has been suffered by the Complainant. The Complainant is “emphatic that the truth is bad for the GMC’s business” and “simply does not want people to find out about them.”
14 The Respondent is currently in dispute with the Complainant over a number of (other) issues, likely to lead to action in the civil courts. She therefore believes that the Complainant has no real interest in the Domain Name; if they did, they could have purchased it themselves at any time in the preceding five years or made a complaint about her ownership of the Domain Name in the preceding 11 months.
15 The Complaint has been made in bad faith and is an attempt at Reverse Domain Name Hijacking as defined by paragraph 16 of Nominet’s Dispute Resolution Procedure. This is supported by the fact that the Complainant does not appear to have begun any complaint through ICANN against General Motors Corporation on account of their ownership of the domain name gmc.com.
Reply
The Complainant did not submit a Reply.
7 Discussion and Findings
General
To succeed, a Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, normally, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy). By way of an exception, where the web site in question is used solely as a tribute or criticism site, without the Complainant’s authorisation, and the Domain Name, not including the suffixes (.co.uk in this case), is identical to the name in which the Complainant asserts Rights, without any addition, the burden of proof shifts to the Respondent to show that the Domain Name is not an Abusive Registration.
Complainant’s Rights
In this case the first limb of that task is straightforward. The Complainant has been given the name General Medical Council by UK statute. I, therefore, find that the Complainant has Rights in respect of a name or mark, which is identical to the Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:
“a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
It is common ground between the parties that the web site located at the Domain Name is operated in criticism of the Complainant and that the Domain Name is identical (apart from the suffixes) to the name in which the Complainant asserts Rights. Accordingly, the burden of proof shifts to the Respondent to show that the Domain Name is not an Abusive Registration, ie that the Domain Name was not registered, acquired or used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
The leading case in relation to tribute and criticism sites is scoobydoo.co.uk (DRS 389) in which the Appeal Panel decided that:
“[T]he purpose of paragraph 4.b is to dissuade people from taking the name of another without adornment and without permission and with a view to making direct reference to that person whether for tribute or criticism. The clear meaning of the rule is that such a registration is prima facie abusive, unless the Respondent can show otherwise. Accordingly, the burden is on the Respondent to show that the Domain Name is not an Abusive Registration.
…
[I]n the context of a tribute site, the vice is in selecting a domain name, which is not one’s own name, but which to one’s knowledge is identical to the name of another, which one has selected precisely because it is the name of that other and for a purpose which is directly related to that other. For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise. In this case the domain name could have been ‘ilovescoobydoo.co.uk’, for example.
Taking the Domain Name in these circumstances arguably amounts to impersonation of the owner of the name or mark. Substantial numbers of people will have visited the Respondent’s website … believing that they were visiting the site of the Complainant, a phenomenon sometimes referred to as ‘initial interest confusion’. … Notwithstanding the Respondent’s denial of any advantage, the Panel is of the view that on the balance of probabilities there must have been an advantage to the Respondent of some kind. Whether or not that ‘advantage’ has led to financial gain is irrelevant. The question is as to whether the advantage he has taken has been fair.”
Following the Panel’s logic in scoobydoo.co.uk, I am satisfied that, if the Respondent had adopted the Domain Name icriticsethegeneralmedicalcouncil.co.uk (“I criticise the General Medical Council”), I would be satisfied by the evidence before me that the Complainant had failed to show that the Domain Name was an Abusive Registration. In this case, the Respondent has used the unadorned name of the Complainant, thereby reversing the burden.
In attempting to meet the burden of proof, the Respondent has invoked paragraph 4(a)(i)(c) which identifies as possible evidence that the Domain Name is not an Abusive Registration that the Respondent has made “legitimate non-commercial or fair use of the Domain Name”. The Respondent asserts that her use of the Domain Name meets all three of those criteria. In support of her assertion, the Respondent invokes paragraph 4(b), which says that fair use may include sites operated in criticism of a person or business. This is, however, a circular argument. The argument merely establishes that the conditions which transfer the burden of proof to the Respondent have been met. The argument does nothing to demonstrate that the registration is not abusive.
Although I reject this particular argument, I must express some sympathy with the Respondent, because the wording of paragraph 4 of the Policy (“Fair use may include … criticism”) almost encourages a respondent to argue as the Respondent has done, ie that the site is for criticism, which (in the absence of any additional grounds for complaint) is fair use, which is one of the criteria by which a respondent can establish that the Domain Name is not an Abusive Registration. Nevertheless, I cannot accept the argument, because to do so undermines the whole purpose of paragraph 4(b) which is to reverse the burden of proof, once the conditions are met, not to remove any further burden.
On the facts of this case, it seems to me that the critical issue is whether the Respondent’s selection of the name generalmedicalcouncil.co.uk, enabled the Respondent to take an unfair advantage (as opposed to a fair advantage) of the Complainant’s Rights, or cause an unfair detriment to those rights (as opposed to a fair detriment), that could be obtained by using, for example, the name
icriticisethegeneralmedicalcouncil.co.uk, or similar. It is this that the Respondent is, in my view, required to prove and this that she has not done.
Notwithstanding the Respondent’s assertion of her good faith in redirecting visitors to the Complainant’s own site, if that is what they are looking for, this would not be necessary if the Domain Name was not one which (before accessing the associated site) could not have given rise to any confusion. I am of the view that on the balance of probabilities there must have been an advantage to the Respondent in using the Complainant’s unadorned name, for example to attract visitors to her criticism site. The absence of any financial gain from that advantage is irrelevant.
I turn now to the arguments that the Respondent has submitted, following the numbering that I used in the summary above, in attempting to meet the burden of proof imposed upon her.
1 This submission relates to the Complainant’s Rights about which there is no dispute.
2 Whilst I accept the Respondent’s submission that the Domain Name is not being used for commercial purposes and that the Domain Name is entirely relevant to the content of the site, this does not give the Domain Name the “legitimacy beyond question” asserted by the Respondent, as the quoted extracts from the Appeal Panel’s decision in scoobydoo.co.uk demonstrate.
3 I accept the Respondent’s submission that the conditions of paragraph 4(b) of the Policy are satisfied.
4 The Respondent’s submission that the web site carries a disclaimer stating that the site is not connected with the Complainant and that visitors who arrive at her site in search of the Complainant’s web site should have no difficulty in reaching their destination are not sufficient to sustain the Respondent’s argument that she has no intention of disrupting the Complainant’s business. There are many ways to disrupt a business other than by obstructing access to its web site. For example, winning customers away from a competitor is a form of disruption (which may or may not be legitimate or fair, depending on the circumstances).
In this case, it is plain that the Respondent’s intention is not merely to criticise the Complainant for the sake of airing the criticism. The Respondent’s site claims, for example, that certain of the Complainant’s workers are not trustworthy. These assertions are plainly designed to influence, at the very least, people whom the Complainant may need to have dealings with. The assertions are perhaps also designed to influence the Complainant to replace those workers the Respondent says are not to be trusted.
In reaching my conclusion on this particular point (ie whether or not there is an attempt to “disrupt” the Complainant’s business, fairly or otherwise), I make no finding that the content of the Respondent’s web site is in any way incorrect. I have no evidence on which to make such an assessment, nor is the Nominet Dispute Resolution Service an appropriate forum in which to make such assessments. I simply find that the Respondent’s intention is to bring about change and that the Respondent’s mechanism for achieving this is one that amounts to “disruption” (even if the Respondent’s objectives are laudable and whether or not the content of the web site is accurate).
5 The ICANN rules for determining disputes relating to domain names do not apply domain names with a .uk suffix and are not the identical to the rules under Nominet’s Policy for domain names which do have a .uk suffix. Accordingly, it would not be surprising if, from time to time, different results are achieved depending on which procedure governs the domain name that is the subject of a dispute. If the principle underlying the decision in britanniabuildingsociety.org were applied to this case, it would lead, in my view, to a result which was contrary to several decisions made under the Nominet Policy, including the Appeal in scoobydoo.co.uk.
6 The Respondent’s argument here is similar, in principle, to the argument at 4 above, ie that Domain Name does not prevent users from finding the Complainant’s web site, and fails to assist the Respondent’s case for the same reason.
7 I have much sympathy with the Respondent’s argument that the criticisms of the Complainant contained at the web site render it highly unlikely that any visitor to the site could infer that it is connected with the Complainant. Like the Respondent, I am also at a loss to see any basis for the Complainant’s assertion that overseas visitors may be particularly prone to access the site by mistake. It is open to argument that (any or all) visitors to the site might suffer initial confusion as a result of finding the Domain Name (for example via a search engine) and might have to pause to ponder whether the site is the Complainant’s or not. Based on the facts before me, it seems likely that any confusion would brief and insignificant.
8-11 The Respondent’s submissions relating to the absence of any attempt to sell the Domain Name or block the Complainant from using it, the absence of a pattern of Abusive Registrations and the correctness of her contact details are not relevant to this case. No such allegations have been made against the Respondent in these respects and there is no need to defend them.
12 In the context of this case, it is not necessary to determine whether or not the term “recently” can be taken to cover “some months.” The Complaint’s assertion as to when it first learned about the site are irrelevant.
13 For the reasons explained at paragraph 4 above, the determination of this dispute does not turn on whether the content of the web site at the Domain Name is true or not. The issue is whether the Domain Name makes unfair use of the Complainant’s Rights in order to publicise the Respondent’s criticisms. The Respondent is correct in saying that the Complainant does not explain how any detriment has been suffered, but as the Respondent has acknowledged, the burden of proof rests with the Respondent to demonstrate that the Domain Name is not an Abusive Registration and not the other way around.
14 On the basis of the evidence before me, I consider the Respondent is right in her belief that the Complainant has no real interest in the Domain Name. This is not, however, of any assistance to the Respondent, for the reason set out in the first quoted paragraph above from the scoobydoo.co.uk decision. The clear meaning of the rule in paragraph 4(b) is that taking the name of another without adornment and without permission and with a view to making direct reference to that person whether for tribute or criticism is prima facie abusive, unless the Respondent can show otherwise.
15 In light of my finding that the Domain Name is an Abusive Registration, the allegation that the complaint has been made in bad faith and is an attempt at Reverse Domain Name Hijacking falls away.
8 Decision
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, I direct that the Domain Name, generalmedicalcouncil.co.uk, be transferred to the Complainant.
Simon Carne
Date: 2 September 2003