By www.DefendMyDomain.com

In the recent domain name dispute decision of Darren Entwistle, Telus Corporation v. Finian Commission (WIPO D2009-0961, September 1, 2009), a single member Panel was faced with a dispute over the domain www.darrenentwistle.com. Darren Entwistle is the President and CEO of TELUS, a leading national telecommunications company in Canada. TELUS provides a wide range of communications products and services including data, Internet protocol (IP), voice, entertainment and video and maintains a web site at www.telus.com. Respondent provided a response, but it is unclear from the decision how detailed it actually was.

Under 4(a) of the Policy, the Complainants must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights; (ii) The Respondent has no rights or legitimate interest in respect of the domain name; and (iii) The domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel acknowledged that Mr. Entwistle does not have any federal trademark rights and instead needed to establish sufficient common law rights. The Panel  relied on the prior decision of Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, which sets out six factors needed to establish a nexus between an individual’s name and its use and association in trade and commerce. They include:

1) the extent to which the commercial community identifies the individual with the company;
2) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company;
3) the extent of the personal ownership of the company by the individual;
4) the degree of personal control that the individual exercises over the enterprise;
5) the extent to which the individual is identified with any major achievements of the enterprise; and
6) whether the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

The Panel then reviewed the evidence and found that Complainant sufficiently proved all of those six factors to show a nexus between Complainant and his company. AS a result, the Panel found that Complainant had shown sufficient common law rights, and finding that the domain was identical to the mark.

Moving to the second element, the Panel found that respondent was not known by the disputed domain. The Panel then relies on prior domain decisions which stood for the proposition that “it is not appropriate to use the name of the entity whom one wishes to criticize on the basis of ‘fair use’ to divert Internet traffic to the site.” The Panel seems to acknowledge that the disputed domain was used to criticize, but in the same respect it finds that since “the website at the disputed domain name also provides links to goods and services of third party entities for the purpose of monetary gain, the Respondent cannot be said to be making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, paragraph 4(c)(iii) of the Policy.” Thus the Panel found that Complainant satisfied the second element as well.

Moving to the final element the Panel addresses Respondent contentions that this proceeding is an attempt at stifling free speech through censorship. The Panel, relying on three prior decisions, explains that the one may be entitled to criticism, but not when it is using a domain which is identical to someone’s trademark. Regardless, the Panel notes that use of the domain to denigrate Complainant, while having commercial links on the same web site cannot be found to be pure criticism.

Ultimately, the Panel found that Complainant satisfied all three elements and ordered the domain be TRANSFERRED.