Greenpeace wins UDRP complaint by oil company at WIPO

The Complainant was Neste Oil Oyj of Finland. The Complainant is a Finnish oil refining and marketing company producing transportation fuels and petroleum products. Neste Oil Oyj  is listed on the NASDAQ OMX Helsinki. The Complainant owns more than 45 trade mark applications and registrations for or incorporating NESTE OIL, the first of which is its registration in Finland dating back to September 15, 2005. The Complainant also owns the domain name nesteoil.com.

The Respondent was Föreningen Greenpeace and was internally represented. The Respondent is an environmental campaigning organization based in Stockholm, Sweden.

The domain dames nestespoil.com and nestespoilreturns.com were registered with Active 24 AS and Enom, Inc., respectively.

The Complaint was denied with a 2-1 majority. There was a dissenting opinion by one of the panelists.

The Complaint for  nestespoil.com  was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 26, 2012. On June 5, 2012, the Complainant filed with the WIPO an amendment to the Complaint incorporating  nestespoilreturns.com. The Panel accepted the Amended Complaint and requested WIPO to provide the Respondent with 20 days to file its response to the Amended Complaint.

On March 19, 2012, the Respondent registered the Domain Name nestespoil.com, which previously resolved to a website containing statements criticising the Complainant for the negative impact that its business has on the environment. Links on the Nestespoil Website automatically redirected Internet users to the www.greenpeace.fi website. The Nestespoil Website currently displays the Swedish message “Kontot avstängt. Detta konto är tillfälligt avstängt.”, meaning that the account has been disabled or suspended. The Domain Name nestespoilreturns.com was registered on May 29, 2012, after Greenpeace filed its Response on May 20, 2012. As at the date of this Decision, the website at nestespoilreturns.com appears to be the same as the Nestespoil.com Website but with the addition of the words “THIS PARODY SITE IS BULLIED BY NESTE OIL” inserted prominently over the top of such content. Every link on the Nestespoil Returns Website redirects Internet users to a page of the Greenpeace Website, which contains a parodic version of the Complainant’s annual report titled the “Neste Spoil Annual Report 2011”.

The Panel found the the “Identical or Confusingly Similar” element of the UDRP was met by the Complainant.

The Panel found the the Complaint failed at the second element of the UDRP: Rights or Legitimate Interests.

The Panel noted that there has been much discussion in previous decisions about whether using a domain name for the purposes of operating a criticism website can constitute a legitimate non-commercial purpose, such that it would confer a right or legitimate interest in the domain name on the complainant. Many of these decisions draw a distinction between cases with a connection with the United States (e.g., where one or both of the parties reside in the US, where the registrar is located in the US etc.), and those cases with no connection to the US. This distinction appears to have been drawn on the basis that the right of free speech is a constitutional right in the US, which is not the case in other jurisdictions. In the present case, neither the Complainant nor the Respondent have any connections with the US; the only connection with the US being the location of the registrar of the Additional Domain Name.

The Panel found this to be an artificial distinction and agreed with the decision of the panel in Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, WIPO Case No. D2007-1379, in which the panel rejects the distinction on the following grounds:

– there have been non-US cases which have preferred the free speech approach, and conversely US cases that have rejected the free speech approach;

– the Internet is an international medium and it is desirable to have uniform implementation of the Policy;

the principle of freedom of speech is not confined to the US. For example, the principle of freedom of expression is enshrined in the European Convention on Human Rights and the Universal Declaration of Human Rights; and

– the Policy should take into account general principles of law that are widely accepted throughout the world and not be dependent on particular national laws.

Based on the content of the Websites and the nature of the Respondent’s operations throughout the world, the Panel was convinced that the Respondent was not operating the Websites with an intent for commercial gain. The links/buttons on the Nestespoil Returns Website automatically redirect Internet users to a page of the Respondent’s Greenpeace Website dedicated to its “Nestespoil” campaign, rather than the separate webpage where donations are solicited. The webpage that Internet users are redirected to when clicking links on the Nestespoil Returns Website did not contain any links to the Respondent’s webpage where donations are solicited. While the Nestespoil Website is no longer active, evidence provided by the Complainant suggests this was also the case with the Nestespoil Website. The Panel considered that a finding that Internet users being redirected to a page of a website which solicits donations on a different page of the website, with the webpage to which Internet users are redirected containing no links to the webpage where donations are solicited, amounts to commercial gain would be too remote. The Panel was convinced that the Respondent registered and is using the Disputed Domain Names with a view to voicing its concerns about the environmental impacts of the Complainant’s business (in which it genuinely believes), as opposed to obtaining commercial gain or for any other dishonest purpose.

The Panel also found that the Respondent has not registered and is not using the Disputed Domain Names with a view to mislead or divert Internet users to its Greenpeace Website. The Panel has accepted above that there is no such diversion for commercial gain in the present case. The fact that neither the Nestespoil Website nor the Nestespoil Returns Website contained any advertisements, sponsored links or direct calls for donations further precludes a finding that the Respondent registered or is operating the Disputed Domain Names with a view to mislead or divert Internet users to its website.

In addition, the Panel did not consider that the Respondent was operating the Websites to tarnish the Complainant’s trade mark.

Accordingly, the Panel found that the Respondent was using the Disputed Domain Names for legitimate, noncommercial purposes, and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names.  So the Complaint failed and the Panel did not need to consider the third element of the UDRP.

Dissenting Opinion:
Strangely there was a dissenting Panelist in this case. Nathalie Dreyfus Panelist’s opinion was that the Respondent had no rights or legitimate interests in respect of the Disputed Domain Names simply because  Greenpeace had not been endorsed by Neste Oil to register the Domain Names (has she read any of the “sucks” UDRP decisions or maybe the latest Occupy decision?) and also because she thought that it would be hard for Internet users to distinguish between the Respondent’s Websites and Complainant’s website. Right… Because when you are redirected to a Greenpeace website you expect to find an oil company’s website.

Then she tried to explain unsuccessfully that in this case trade mark rights protection supersedes freedom of speech and tried to distort freedom of speech rights and find in favor of trademark rights. She also found bad faith in the donations that Greenpease is accepting in their website.