Miltenyi Biotec GmbH v. Rachel A. Liu-Williams [2015] AUDND 29 (28 October 2015)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Miltenyi Biotec GmbH v. Rachel A. Liu-Williams

Case No. DAU2015-0033

1. The Parties

The Complainant is Miltenyi Biotec GmbH of Bergisch Gladbach, Germany, represented by Tigges Rechtsanwälte, Germany.

The Respondent is Rachel A. Liu-Williams of Melbourne, Victoria, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name is registered with Web Address Registration Pty Ltd (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 7, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or "auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2015. At the request of the Respondent, and with the consent of the Complainant, the due date for the Response was extended to October 16, 2015. The Response was filed with the Center on October 4, 2015.

The Center appointed Andrew F. Christie as the sole panelist in this matter on October 14, 2015. 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 was established in 1989, by its managing director, Mr. Stefan Miltenyi. It is now one of the biggest German companies in the biotechnological industry sector. The Complainant develops and manufactures more than 3,000 products that are used primarily in the field of immunology, stem cell biology, neuroscience and cancer. These products have been used in more than 35,000 clinical treatments to date, and have been cited in many publications by leading immunologists and stem cell researchers.

The Complainant's headquarters are in Germany, and its global business operations take place via 31 subsidiaries in North America, Europe and the Asia Pacific region, employing a multinational team of more than 1,200 biomedical scientists, physicians, engineers and supporting groups. The Complainant works with an extensive distributor network covering another 52 countries, in order to provide its customers around the world with its products for research, clinical and manufacturing needs. Each year there are in excess of one million visitors to the Complainant's websites resolving from 75 domain names.

The Complainant has numerous registrations for the trademarks MILTENYI and MILTENYI BIOTEC in about 40 countries, dating from at least as early as December 17, 2013. These registrations include International Registration number 1220816, for MILTENYI, designating, inter alia, Australia, registered on March 31, 2014.

In 2001 the Complainant started its business expansion into the Asia-Pacific region. Its subsidiary company in Australia is called Miltenyi Biotec Australia Pty Ltd. Since 2003 the Complainant has spent in excess of AUD 1 million on advertising its products and services in different media, and since 2010 it has generated a total of over AUD 18 million in revenue. There has been continuous use of the Australian company name and the trademarks MILTENYI and MILTENYI BIOTEC during the last 14 years in Australia, and each product sold in Australia bears the Complainant's trademarks and name.

The Respondent worked with an Australian company, Technical Solutions Group Pty Ltd ("TSG"), which was a service provider to the Complainant's Australian subsidiary. The business relationship between the TSG and the Complainant's Australian subsidiary was terminated by the Complainant's Australian subsidiary, due to a dispute about the quality of services rendered. The business activities of TSG ended in late 2012, and in early 2013 the Federal Court of Australia ordered that it be wound up as insolvent, resulting in the dismissal of all its employees, including the Respondent.

The disputed domain name was registered on January 30, 2014. It currently resolves to a website in which accusations are made alleging that the Complainant is financially unstable, is unwilling to pay any invoices, and purposely harms smaller businesses.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Complainant's trademarks MILTENYI BIOTEC and MILTENYI, because it consists of those word elements. The domain suffix ".net.au" is used and understood as a country code representing the geographical region Australia, and is easily understood as the country code Top-Level Domain ("ccTLD") for Australia. It can be disregarded as it is merely descriptive and of no distinguishing value, and the comparison therefore reduces to "miltenyibiotec", which is the Complainant's trademark and company name. The disputed domain name causes confusion because Internet users will expect and assume business contact details and information on the Complainant, and could therefore easily misapprehend the disputed domain name as belonging, or being connected, to the Complainant, particularly as the Complainant's name and trademark are placed prominently at the top of the website.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent does not own any trademark rights in or licences to use the Complainant's trademarks MILTENYI and MILTENYI BIOTEC; (ii) neither the Respondent nor any other party sought or obtained consent from the Complainant to register the disputed domain name; (iii) the Respondent is not affiliated with the Complainant in any way; (iv) the Respondent is not using, and has not prepared to use, the disputed domain name in connection with a bona fide offering of goods or services; (v) the Respondent is not commonly known by the disputed domain name, and does not use it as part of a legal name, corporate name or any other identifying manner; (vi) the disputed domain name is not used in connection with the services of the Respondent's own business as described under her website at "www.rachal.com.au", which relate to, amongst other things, "business consulting, Voodoo, Black Magic, Life Coaching and Self-Development & Counselling"; (vii) the Respondent cannot claim to have established any publicity or profiling under the disputed domain name; (viii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; (ix) the Respondent is using the disputed domain name for the purpose of accusing the Complainant of being financially unstable, unwilling to pay any invoices, and purposely harming smaller businesses by not paying outstanding invoices, these being unsubstantiated and abusive accusations that are unlawful conduct pursuant to the German law of Torts and the Australian Defamation Act 2005; (x) by adopting the disputed domain name the Respondent is effectively impersonating the Complainant, which cannot be described as "fair" or "legitimate"; (xi) a respondent's right to criticize a complainant does not extend to registering a domain name that is identical or confusingly similar to the complainant's trademark or that conveys an association with the mark; (xii) the Respondent registered the disputed domain name deliberately and with the Complainant's rights in mind; (xiii) there is no adequate disclaimer on the website to which the disputed domain name resolves as to the source of the website and/or its content, nor is there a convenient link to the Complainant's actual website for visitors who have mistakenly arrived at the Respondent's website looking for the Complainant; (xiv) the information on the website to which the disputed domain name resolves does great harm and damage to the Complainant's reputation; and (xv) the use of a website for "criticism" is not fair if the registrant knows that the criticism is unfounded, and since no third party, except the Respondent, has yet claimed to be affected by the Complainant's accused conduct, the Respondent must have recognized her accusations to be unfounded.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) bad faith registration or use of a domain name is affirmed where the domain name was registered primarily for the purpose of disrupting the business or activities of the Complainant, which applies in this case; (ii) the Respondent's intention from the outset was to express on the Internet certain views that are vilifying the Complainant's business practices, and deliberately selected the disputed domain name aware that it was identical to the Complainant's corporate and trading name; (iii) the Respondent's registration and continued use of the disputed domain name are undertaken intentionally and expressly to disrupt the Complainant's activities and to expand the audience for her accusations by misleading Internet users as to the source, sponsorship, affiliation or endorsement of her website; and (iv) the Respondent prevents the Complainant from reflecting its trademarks in a corresponding domain name.

B. Respondent

The Respondent does not dispute that the disputed domain name is identical to a trademark in which the Complainant has rights. However, the Respondent contends: (i) that the website resolving from the disputed domain name exists only to alert others to the Complainant's business practices and does not exist for commercial gain; (ii) that no reasonable observer would believe the website resolving from the disputed domain name is an official website of the Complainant as it would not put up an official website criticizing itself; and (iii) the Complainant has shown no evidence that it actually needs to use the disputed domain name and is instead using this process in an attempt to silence legitimate criticism of the Complainant's business practices.

The Respondent disputes the claim that she is not making a legitimate fair use of the disputed domain name because: (i) the Complainant's argument is based on the incorrect assumption that the statements made on the website resolving from the disputed domain name are false and therefore not fair use; (ii) as the statements on the website are true, they are legitimate criticism of the Complainant's business practices and therefore qualify as fair use; and (iii) no reasonable person would believe that the Complainant would set up a website criticizing itself so there is no need to add a disclaimer.

The Respondent contends that the disputed domain name was not registered and is not being used in bad faith because: (i) the use of the Complainant's name was selected because the Complainant's questionable business practices are the subject of the website; and (ii) the website does not claim to represent the Complainant and no reasonable person would think that the Complainant would put up a website to criticize itself.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant provided evidence that its trademark MILTENYI BIOTEC was registered as a Community Trade Mark in Europe. As paragraph 1.1A of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition ("auDRP Overview 1.0") explains, the Policy does not restrict a complainant's trademark rights to a trademark registered with the Australian trademark authority. Thus, a trademark registered outside of Australia satisfies the requirements of the Policy.

When the ccTLD identifier ".au" and the Second Level Domain ("2LD") identifier ".net" are ignored, the disputed domain name consists of the Complainant's registered trademark MILTENYI BIOTEC (without the space between the words). Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The disputed domain name is used to resolve to a website making accusations about the Complainant's business practices. The website consists of a single page, with large font-size text in either white or red against a black background. The title of the page, in white text, reads "Miltenyi Biotec P/L". Underneath the title, in red, is the text: "Miltenyi Biotec Doesn't Pay its Bills!!! Miltenyi Biotec - Financially Unstable??? Miltenyi Biotec – Unethical Business Practices Miltenyi Biotec Effects Customers Miltenyi Biotec makes the MACSQuant Miltenyi Biotec Effects Suppliers Miltenyi Biotec Hides Behind Its Lawyers, Clayton Utz". This is followed by further text, in white, making various assertions about the Complainant, and ends with a table purporting to be a list of creditors whom the Complainant has not paid. At the date of this decision, there was only one entry in the list – the Respondent's company, TSG. At the end of the list is the sentence "If you have been a victim of Miltenyi Biotec and would like to contribute to this list please click here", with the words "click here" hyperlinked to another site at which details can be entered.

This is a clear-cut case of the Respondent using the disputed domain name to resolve to a website at which the Respondent makes comments critical of the Complainant (a "criticism site" or, as it is sometimes called, a "gripe site"). The Respondent appears to be using the disputed domain name solely for this purpose, and not as a pretext for some other purpose, such as to obtain a commercial benefit. In this sense, therefore, the Respondent is using the disputed domain name for "genuine" criticism ("genuine" characterizing the motives, but not necessarily the content, of the criticism).

The question that arises is whether the Respondent's use of the disputed domain name to engage in genuine criticism of the Complainant thereby gives rise to rights or legitimate interests in the domain name. According to paragraph 2.4 of the auDRP Overview 1.0 (which is dated July 2014): "It appears that no auDRP case has yet addressed the issue of whether a respondent has rights or legitimate interests in a domain name that is used in relation to a website on which the owner of the corresponding trademark or name is criticized. In those cases where the respondent did raise such an argument, panels have not needed to address the issue, either because the respondent's claim was contradicted by the evidence (showing that the respondent's website was 'not a genuine criticism site in any genuine sense at all and was not genuinely promoting the cause of free speech') or because the respondent's use was obviously commercial in nature (and thus the respondent could not satisfy the requirement in paragraph 4(c)(iii) [ ] that the respondent's use was 'without intent for commercial gain'). In those cases where the facts suggest the respondent might have been able to raise the issue, panels have not been required to address it because the respondent was in default and did not raise the argument."

At the date of this decision, it appears that there is no consensus view (indeed, no view) of auDRP panels on the issue of whether use of a domain name to resolve to a genuine criticism site gives rise to rights or legitimate interests in the domain name. In a situation where there is no consensus view of panels under the auDRP, it makes great sense to consider the consensus views of panels under the domain name dispute resolution policy on which the auDRP is based – namely, the Uniform Domain Name Dispute Resolution Policy ("UDRP"). There have been numerous decisions of UDRP panels addressing use of the disputed domain name to resolve to a criticism site. According to the paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), there are two main views: (i) the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark, especially when the domain name consists solely of the trademark (i.e., ); and (ii) irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial (this being a view generally adopted only in cases involving parties solely from the United States of America ("US") or the selection of a US mutual jurisdiction).

The Panel recognizes that the personal and public values that support an entitlement to speak freely ("free speech") are found, in varying degrees, in most countries. Without a doubt, an entitlement to free speech exists in, and is highly valued by citizens and residents of, Australia. In the Panel's opinion, resolution of a perceived conflict between an entitlement to free speech and an entitlement to a domain name registered in a ccTLD is one of the (perhaps few) instances in which considerations specific to the relevant nation state should be taken into account in making decisions under the Policy. Thus, the Panel has given careful consideration to the Respondent's contention that she has a right or legitimate interest in the disputed domain name by virtue of using it to resolve to a website at which she ventilates her criticisms of the Complainant.

Having given careful consideration to the matter, the Panel concludes that, under the auDRP, use of a domain name that consists solely of the complainant's trademark (i.e., ) for the purposes of engaging in criticism of the complainant does not, of itself, give rise to rights or legitimate interests in the domain name. The reason for this conclusion is that, as was said in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, "the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views". While it is true, as the Respondent says, that it is unlikely that a visitor to the website to which the disputed domain name resolves would think that it is a website belonging to the Complainant once the content has been read, the fact is that prior to landing at the website a visitor may not know that it is not a website belonging to the Complainant. Indeed, the fact that the disputed domain name consists solely of the Complainant's trademark would lead a potential visitor to the website to think otherwise. This use of the Complainant's trademark is not, therefore, a legitimate use.

The Panel emphasizes that this conclusion is limited to the facts of the case before it – and, in particular, to the fact that the disputed domain name consists solely of the Complainant's trademark (once the ccTLD and the 2LD are ignored).

The Respondent has not asserted – and, on the record currently before the Panel, could not make out – any ground on which she has rights or legitimate interests in the disputed domain name other than the ground of engaging in genuine criticism of the Complainant. For the reasons given above, the Panel has concluded that this ground does not provide the Respondent with rights or legitimate interests in the disputed domain name on the particular facts of this case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(b)(ii) of the Policy provides that it shall be evidence of the registration and use of the domain name in bad faith that the respondent registered the domain name in order to prevent the owner of a name or trademark from reflecting its name or mark in a corresponding domain name. According to paragraph 3.1B of the auDRP Overview 1.0, auDRP panels generally have found that registration of a domain name which consists solely (once the 2LD and TLD extensions are ignored) of the complainant's trademark or name has the effect of preventing the complainant from reflecting its mark or name in that domain name – and hence is evidence of bad faith.

The disputed domain name in this case consists solely of the Complainant's trademark. The Panel concludes that the Respondent's registration of the disputed domain name has the effect of preventing the Complainant from reflecting its mark in the disputed domain name. Thus, pursuant to paragraph 4(b)(ii) of the Policy, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

D. Complainant's Eligibility

The Complainant has requested transfer of the disputed domain name. Registration, and hence the transfer, of the disputed domain name would appear to be subject to eligibility requirements specified by the .au Domain Administration. The Panel notes that the Complainant's trademark MILTENYI is registered in Australia, but that its trademark MILTENYI BIOTECH does not appear to be registered in Australia at the date of this decision. The Panel also notes that the Complainant's Australian subsidiary is named Miltenyi Biotech Australia Pty Ltd, but that the Complainant has not requested transfer of the disputed domain name to that company. Accordingly, it is not clear to the Panel whether or not the Complainant satisfies the eligibility requirements for transfer of the disputed domain name to it.

The Panel is of the view that its responsibility does not extend to determining, definitively, whether or not the party to whom it orders transfer of the disputed domain name in fact satisfies the eligibility requirements for such a transfer to take place. Rather, that responsibility rests elsewhere. Thus, while the Panel will order transfer of the disputed domain name to the Complainant as requested, it recognizes that such an order may be subject to the responsible entity requiring the Complainant either to demonstrate that it satisfies the eligibility requirements or to nominate another person (being a person that does satisfy the eligibility requirements) to be the person to whom the disputed domain name should be transferred under this order.

7. Decision

For all 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 be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: October 28, 2015