Article - Complaint site emerges victorious in Domain Name dispute (January 2003)

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A web-site used to criticise global insurance firm Legal & General has survived a challenge to its use of the domain name An arbitration panel set up to consider the case under the Uniform Domain Name Dispute Resolution Policy (UDRP) found in favour of the complaint site, despite their use of the Legal and General trademark in the domain name.[1]

The decision is important as it establishes clear principles for how far complaint sites can impinge on trade marks before losing their domain names. It also appears to extend the ability of complaint sites to use extremely similar domain names to trademarks, as long as there is no attempt to commercialise the site or profit from the sale of the domain name itself.

Complaint sites previously had a poor track record in the UDRP process. However, this decision provides the clearest guidance to date on how the UDRP applies to complaints sites, and despite the result being decided by a split decision, the case is likely to be used to protect a number of similar sites.


The complainant was Legal & General Group Plc, the global insurance provider with major brands in the United Kingdom and the Unites States. Their official web-site is

The respondent was a small organisation called Image Plus, based in the United States. They had registered with Network Solutions. Mr. Zeev Golan (the administrative contact for Image Plus) was a former employee of Legal & General in the United States

The complainant elected to have the dispute decided by a three-member panel. Dawn Osborne, Dana Haviland and John Swinson were chosen as panelists (with John Swinson presiding).

The facts

The complainant is the owner of registered trademarks which incorporate the words ‘legal and general’ in a number of countries, including in the United Kingdom (with eight registered trademarks), Benelux, France, Portugal and Spain.

Legal and General are also the owners of numerous ‘.com’ domain names including, and However, they had failed to register

The respondent registered the disputed domain name on August 27, 1999. The website operating at the disputed domain name is a complaints site, allowing Internet users to post messages about Legal and General. The web-site opens with the words: ‘Welcome to L & G Companies Complaints Club’.

The site encourages complaints with the following invitation: ‘Have you been bothered by one of L & G Companies lately? Are you mad? Are you pissed off? Well, here’s your chance to yell about it. Let it out! Scream at us! Complain about it! It’s not true that nobody wants to hear you complain, because we do! Publicise your experience and let others know. We’ll add your complaints to our website. More importantly, you get whatever’s bothering you off your chest!’

There were about 20 complaints on the website. Most were about customer service or employee related matters. One interesting complaint (noted by the panelists) referred to the domain name dispute:

‘Looks like L&G doesn’t like this site. They are trying to shut it down by starting a WIPO domain dispute case. See for yourself here: Case: D2002-1019 (click). It is a sad day in the world when corporations like L&G use entities like WIPO to shut down free speech instead of improving their faults causing these complaints in the first place. I advise ALL L&G customers to terminate business with L&G and their subsidiaries because obviously this company DOES NOT support free speech.’

Another complaint (also noted by the panelists) appeared to assume that the site was an official customer service site for Legal and General:

‘I spoke to a man on your Help Desk (08700 104080) with a query about my Capital Preservation Plan [number] back in June, and although he could not answer my query he assured me that a reply would be sent out that week. I heard nothing, so I wrote on 26 June to your office at 2 Montefiori Road, Hove ... What do I have to do to get assistance from your widely-advertised Help service? Please e-mail me using [email address], or my postal address which you should have on your computer system.’

Generally the site is a small, very simple, text based site with limited content, providing an opportunity for users to air their grievances with Legal and General. It is not dissimilar to the numerous complaint websites which have blossomed in recent years, although it is definitely at the less sophisticated end of the spectrum.

The complainant’s argument

Legal and General is one of Britain’s top 50 companies with total funds under management of over £120 billion world-wide. In the USA, the Complainant has a strong market position in the area of term assurance, with L&G USA being one of the top ten largest life insurers in the USA.

Legal and General claimed that Zeev Golan was a former employee of L&G USA, and that there was a dispute regarding the termination of his employment. While they acknowledged his right to ‘comment and enable others to comment on the services and products offered by Legal and General’, they submitted that this activity did not represent a legitimate or fair use of the Domain Name.

Legal and General argued that in using and selecting a domain name which is so closely identical to their trademark, the respondent had not chosen a domain name which makes fair use of the trademark. This is the traditional argument made against complaints sites, stemming from the decision in DFO, Inc. v Christian William.[2]

In that case, Denny’s restaurant chain was attempting to win back the domain. The site had become a chat site where patrons of the restaurant discussed customer service issues and other matters. The arbitration panel found that the respondent had not made fair use of the domain name because they had chosen a domain name which was very close to the trademark (only missing the apostrophe) when other more relevant domain names had been available. They said:

‘But even though the Respondent’s main argument for being able to use the ‘DENNY’S’ service mark is, in effect, a ‘fair use’ argument (UDRP para 4 (c) (iii)), the Respondent did not choose a domain name that made fair use of the DENNY’S service mark to identify his website for what it was, i.e., a DENNY’S restaurant chat group with no official affiliation with DENNY’S restaurants. Any number of ways of styling such a fair use domain name come readily to mind.’[3]

Legal and General also argued that the disputed domain name did not contain words which made it clear that the website was not the official website of Legal and General (such words are often used in complaints sites, such as ‘chat’, ‘discuss’, ‘sucks’ or ‘stinks’).

Further, they noted that the website did not contain a disclaimer stating that the website was not an official ‘Complaints’ site owned or operated by Legal and General. This had been an important argument in many previous complaint site cases, including the Denny’s case discussed above.

Legal and General’s specific arguments were:

(a) The disputed domain name is identical, or at the very least confusingly similar to the Complainant’s trademark because the only difference between the Complainant’s trademark and the disputed domain name is the use of ‘and’ rather than ‘&’ and the additional hyphens in the domain name.[4]
(b) The Respondent has no rights or legitimate interests in the disputed domain name because the domain name is not being used in connection with the bona fide offering of goods or services; the Respondent is not commonly known by the domain name; the Respondent is not making a legitimate non-commercial or fair use of the domain name; and the manner in which the domain name is being used tarnishes the Complainant’s trademark.
(c) The disputed domain name is being used as a site where users can lodge Complaints about the services provided by various sections of the Complainant’s business in the United Kingdom and United States. This use of the disputed domain name is not ‘legitimate’ or ‘fair’.
(d) There is evidence that at least one customer may have confused the website as a bona fide Complaints site provided by the Complainant. The Complainant is concerned that as a result of any misconception that the website is that of the Complainant’s, that its customers are posting confidential information about the financial products they have purchased from the Complainant, (including the customer’s own personal data).
(e) The Respondent has used a domain name nearly identical to the Complainant’s trademark in order to attract customers of the Complainant away from official sites in order to expose them to material critical of the Complainant, thereby tarnishing the Complainant’s trademark.
(f) Further evidence that the disputed domain name is diverting consumers away from the Complainant is the position in which the site appears following a variety of search engine searches the Complainant has carried out. For example, the result of a search on for ‘Legal and General’ and ‘Complaints’ placed the Respondent’s site first in the results.
(g) The Respondent registered and is using the disputed domain name in bad faith, because the Respondent is a former employee of the Complainant’s American counterpart (Legal & General America, Inc.), the Registrant must have known of the existence of the Complainant’s trademark and deliberately registered a domain name which is almost identical to the Complainant’s trademark and other domain names registered by the Complainant; and (ii) given that the Respondent knew about the existence of the Complainant; the Respondent must have registered the disputed domain name primarily with the intention of disrupting the business of the Complainant.

The respondent’s argument

Image Plus made the following response:

(a) The Complainant referred to cases in misleading ways using quotes that have been taken out of context and which are not accurate.
(b) The Respondent has rights and a legitimate interest in using the disputed domain name to establish a website for publicising Complaints about the Complainant.
(c) The Complainant has failed to provide any evidence of bad faith.
(d) It is clear from reviewing the comments on the website that users of the website are not confused about any association with the Complainant, as many comments are written in the third person, referring to the Complainant as ‘they’ and ‘their’. This indicates that users understand that they are not actually communicating with the Complainant (otherwise they would use terms such as ‘you’ and ‘your’). There is only one single entry that appears to have confused the website with an official site of the Complainant where it refers to ‘your’.
(e) It is hard to believe that a prudent Internet user would be confused as to the source or sponsorship of the website when the home page reads ‘Are you mad? Are you pissed off?’
(f) The Complainant never requested that the Respondent make changes to the website content. As a show of good will the Respondent has removed all references on the website to any trademarks of the Complainant and the Complainant was notified of this.
(g) Using a domain name solely consisting of a complainant’s trademark does not constitute bad faith. Bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy. The Complainant must prove registration and use in bad faith.
(h) The website for the disputed domain name does not contain any of the Respondent’s views - only those made by customers of the Complainant.

Similar cases

In addition to the Denny’s case discussed above, there is a significant history of complaints site cases being decided under the UDRP.

Five specific cases were discussed in the submissions by the parties:

In The Stanley Works v Phil O’Neil[5] the respondent was a former distributor of hardware products for The Stanley Works hardware chain. The two parties were involved in extensive litigation and Mr O’Neil had registered the domain names and and established websites using those domain names which contained content relating to his grievances with the company.

However, the case was a fairly simple one for the arbitrators as there was evidence in an email that Mr O’Neil had stated ‘the only way of making me go away is to purchase this site from me’.

The panel ruled that his purpose had been primarily to disrupt the business activities of the complainant and, because of the confusingly similar nature of the domain names, ordered the transfer of the domain names to the complainant.

In OAG Worldwide, Inc. v. Mark Nelson[6] the complainant was a well-known company that provided independent airline scheduling information. It had trademarks for Official Airline Guide, Official Airline Guides and OAG. The respondent had registered and subsequently offered to sell the domain name for $1.5 million to the trademark owner. The complainant argued that this action showed bad faith registration, and that the respondent’s non-use of the site demonstrated a lack of legitimate rights or interests in the domain.

The respondent replied that OAG had affirmatively abandoned the trademark ‘Official Airline Guide’ by undertaking a comprehensive re-branding campaign in 1996, and that the complainant thus had no rights or claim to the name ‘Official Airline Guides’. The statutory standard for trademark abandonment in the USA is three years, where the abandonment is accompanied by an intent to never use the mark again. Further, OAG had commenced cancellation procedures with the USPTO for the ‘Official Airline Guide’ mark. In a second submission to the panel OAG insisted that it had an incontestable claim to the ‘Official Airline Guide’ mark regardless of the cancellation procedures.

The three panelists unanimously ordered that the domain name registration be transferred to the complainant. In ruling on the trademark issue, the panelists quoted author Dr McCarthy on the subject of abandonment, who asserted that where intent to resume use was in dispute, more weight should be given to the public’s view of the matter rather than the actual intent of the mark’s owner. That is to say, would the public expect the mark in its new incarnation to be a new company or the old one beginning to use it again? Here the panel found that clearly the Official Airline Guide mark was still associated with the complainant.

The respondent’s exorbitant offers to sell the domain and non-use of the site made the other two requirements for a transfer order - bad faith registration and lack of legitimate rights or interests - clear to the arbiters. It might be suggested that the respondent’s conduct in these respects encouraged the particular interpretation of trademark law that was employed.

Nevertheless this case highlights the fact that an extended period of non-use of a trademark does not necessarily mean abandonment for the purposes of domain name disputes.

In Mission KwaSizabantu v. Benjamin Rost[7] the complainant was a non-profit South African mission, and the respondent a private German citizen who owned the sites, and, which all hosted information criticising the activities of the complainant’s organisation.

KwaSizabantu was explained by the complainant as a Zulu word meaning ‘the place where people are helped’. The complainant further claimed to have common law rights in the name and a number of its variations.

Since the facts of the case were not significantly disputed and it was conceded that the complainant had trademark rights, the issue was whether the respondent’s conduct satisfied the two remaining requirements of the UDRP.

The Panel found the respondent did not have legitimate rights or interests in the domain name. The relevant provision states that a domain registrant must be: ‘making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.’

The single panellist on this adjudication construed this clause as requiring that the domain name must not ‘misleadingly divert consumers’ or ‘tarnish the relevant trademark’, leaving the ‘for commercial gain’ constraint as an entirely separate possible violation. It held the respondent satisfied the clause on both these counts.

The Panel also found that the respondent had used the domain name in bad faith by satisfying the clause which stated that bad faith could be shown by the use of the domain name ‘primarily for the purpose of disrupting the business of a competitor.’

Here the panellist held that ‘business’ could include the complainant’s activities and that the meaning of ‘competitor’ was ‘one who acts in opposition to another’. He thus held that the respondent (a private German citizen) was a competitor of the complainant (a South African religious organisation) and that the site containing information about the complainant was primarily for the purpose of disrupting their activities. (The panellist’s broad definition of ‘competitor’ is unlikely to be followed in any other decisions, as it is clear that the intention of the UDRP is to deal with business competitors fighting over market share).

The domain name was transferred to the complainant.

In Compagnie de Saint Gobain v Com-Union Corp,[8] a share-holder activist group registered and established a discussion forum at the site, critiquing the performance of the Saint Gobain corporation. On this occasion the panel took the view that the decision to register such a similar domain name to that used for the official site was itself evidence of bad faith:

‘It goes without saying that shareholders or other interested parties have the right to voice opinions, concerns and criticism with respect to a listed company and that the Internet constitutes an ideal vehicle for such activities.
The issue at hand is however not as Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression.
When registering the Domain Name, Respondent knowingly chose a name which is identical and limited to the trademark of Complainant and which is identical to the domain name registered by Complainant in the .com gTLD. The Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names.’

The panel chose to transfer the domain name to the complainant.

In The Royal Bank of Scotland Group plc v and Umang Malhotra,[9] the respondent set up as a complaints/critique site, while involved in substantial litigation with Natwest bank (a wholly owned subsidiary of the Royal Bank of Scotland).

Although the panel eventually denied transfer of the domain name, they did discuss the issue of commercial use at length. They noted that the respondent had demanded payment of US$2 million as a condition of transferring the domain name. This resulted in the panel stating that:

‘If the Respondent were acting merely as an altruistic collector of complaints from persons dissatisfied with [the Complainant], he would possibly not be seen as using the website commercially. But he has combined the complaint-gathering role with a possible method of recovering money which [he thinks is due]. In doing so, ... he has rendered the use of the site commercial and has transcended any free speech leeway’.

A closer examination of the facts reveals that the respondent had made three demands:

‘1) a statement by Natwest Bank that it will use its best efforts to improve its services to its customers;
2) that the individuals employed by Natwest who are involved in Mr Malhotra’s (the respondent) transactions be reprimanded and/or statements issued concerning the need to improve their service to bank customers; and
3) $2,000,000.00’

However, in this case, transfer was denied on the basis that the disputed domain name was not confusingly similar to the complainant’s marks. It was argued by the respondent that this case actually supports the argument that use of a disputed domain name as an ‘altruistic collector of complaints’ without commercial gain is permitted under the UDRP.

The decision

The panel was required to apply the core test in Paragraph 4 (a) of the Uniform Domain name Dispute Resolution Policy:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.

In this case they concentrated on the requirement in (b), although they also dealt briefly with (a).

The respondent asserted that they had a legitimate interest, relying on paragraph 4(c)(iii) of the UDRP which states:

‘you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue’

In order to rely on Paragraph 4(c) of the UDRP, the onus switches from the complainant to the respondent, to rebut the complainant’s assertion of lack of rights or legitimate interest in the domain name.

This issue had been discussed in detail in Mission KwaSizabantu v Benjamin Rost.[10] On that occasion the panel had set down the following rules for applying Paragraph 4(c)(iii):

  1. the Respondent’s use is legitimate non-commercial or fair use of the domain name;
  2. this use is without intent for commercial gain;
  3. this use is without intent to misleadingly divert consumers; and
  4. this use is without intent to tarnish the trademark of the Complainant.

In the Legal and General case, the panel found that the disputed domain name was virtually identical to the complainant’s trademark. The respondent’s website did not include an express disclaimer that the Respondent’s website was not associated with the complainant.

At this point of the decision, cracks begin to emerge between the panel members, which ultimately lead to the writing of a majority decision (Haviland and Swinson) and a dissent (Osborne).

The majority found that because the respondent’s website had wording critical of Legal and General, it would be clear to most users that the website was not controlled or authorised by Legal and General.

As discussed above, one site visitor did appear to be under the impression that the site was the official complaints web site, and even provided personal details regarding his complaint. The majority noted that ‘the Respondent has not taken any express steps after this occurred to avoid further confusion.’ However, it does not appear that this action (or lack of action) had any material bearing on the outcome of outcome.

The majority concluded that the respondent was not making a commercial gain from the website, as there were no advertisements or links to other websites to be found.

The majority decision then discusses, at length, the two competing approaches to the interpretation of 4(c)(iii) of the UDRP.

The first approach is known as ‘The ‘Domain Name itself is misleading’ approach, and it has been applied in numerous UDRP decisions.[11]

This approach suggests that the unauthorised use of a trademark in a domain name, without any distinguishing material in the domain name, creates confusion with the trademark owner’s business and is not fair use merely for the purpose of criticism. If no criticism is apparent from the domain name itself, then the respondent cannot rely on paragraph 4(c)(iii). Under this approach, it is not sufficient that the criticism may be apparent from the content of the site.

Under this approach, it is also irrelevant whether or not the website has disclaimers. The focus is solely on the domain name, not the website. The majority noted one peculiar feature of this approach:

‘However, some cases applying this rationale go further, and state that any criticism of the Complainant on the Respondent’s website proves that the Respondent’s intent is to tarnish the Complainant’s trademark, and so paragraph 4(c)(iii) cannot apply.’

The second approach is known as the ‘Complaints Site’ approach. This approach focuses on the content located at the website rather than the disputed domain name.[12]

If the website is a genuine ‘Complaints’ website, then paragraph 4(c)(iii) may be satisfied. However, this depends on the individual circumstances of the case. The panel provided the following hypothetical example:

‘Under this approach, all the circumstances are carefully considered, and paragraph 4(c)(iii) will not be satisfied, for example, if the website is merely a sham website created after the respondent unsuccessfully attempted to sell the domain name, or if the website mostly includes links to competitors’ websites.’[13]

In the legal and General case, the majority of the panel preferred the ‘Complaints Site’ approach. They found that there was no per se rule that use of an exact trademark of another as a domain name for a legitimate complaints website is not legitimate use of the domain name. ‘To decide otherwise, in the view of the majority of the Panel, would be to nullify paragraph 4(c)(iii)’.

They found that the respondent’s website was non-commercial and the use of the disputed domain name was non-commercial. They also concluded that the website is not misleading: ‘In the view of the majority of the Panel, it would be clear to most users that the Respondent’s website was not controlled or authorised by the Complainant, and that it was a third party criticism website. That one user may have been confused does not in the view of the majority of the Panel change the character of the website’.

However, the real motivation for the decision to adopt the ‘complaints site’ approach rather than focussing on the domain name itself is evident in the following passage of the majority decision:

‘Moreover, that some Internet users might initially be confused into thinking that, because of the use of the mark in the disputed domain name, <> is the Complainant’s official website is, in the view of the majority of the Panel, of no moment. First, any such confusion would, in the view of the majority of the Panel immediately be dispelled by the content on the Respondent’s website. Second, and in any event, such a low level of confusion is, in the view of the majority of the Panel, a price worth paying to preserve the free exchange of ideas via the Internet. A user who stumbles upon the Respondent’s site while looking for the Complainant’s official site need only click the ‘back’ button to return to his or her search.’[14]

Despite protestations that the majority were basing their decision on the wording of paragraph 4(c)(iii) and not on the basis of first amendment principles or free speech concepts, it is clear that the preservation of free speech did play a role in the decision.

In these circumstances it was of course helpful that the respondent had never attempted to commercialise the domain name or offer it for sale.

Although the UDRP talks about attempts to ‘tarnish’ a trademark, the majority found that the goals of the UDRP were ‘limited’ and did not include ‘insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain’.

The decision to deny the complaint was therefore handed down on December 30, 2002

The dissent

As mentioned above, there was a dissent. The dissenting panellist disagreed with the majority on the questions of legitimate interests in the Domain Name and bad faith. Indeed, the dissenting panellist was a strong supporter of ‘the domain name is itself misleading’ approach.

‘The Complainant’s trademark has a significant reputation in its field. The Respondent has, in the opinion of the Dissenting Panelist, no rights or legitimate interests in respect of the Domain Name which consists essentially of the Complainant’s principal trading name and its registered trademark. The Dissenting Panelist recognizes that the Respondent has a right to free speech and a legitimate right to host a Complaint site about the Complainant on the Internet. However, in the view of the Dissenting Panelist this is a completely different thing to and should not be confused with having a legitimate right to the Domain Name in question in this case.’

The dissenting panellist also appeared to take more notice of the single Internet user who had mistaken the site for an official complaints site:

‘By choosing a domain name reflecting the main trading name of the Complainant, the Respondent intends to disrupt the business of the Complainant and to divert traffic intended for the Complainant’s site to its own. That the Respondent has been, in part, successful in this aim is shown by the fact that there has been confusion where a member of the public thought that the Respondent’s site was part of the genuine site of the Complainant. This also shows that members of the public looking for the Complainant’s site may arrive at the Respondent’s site instead by mistake. In the opinion of the Dissenting Panelist this is in no doubt due to the fact that the Complainant’s main trading name has been taken in the Domain Name. It is also perhaps partly due to the fact that the Domain Name is very similar to the UK Internet address of the Complainant <>. The Respondent could have chosen a domain name which on face value would not be thought to be owned by the Complainant and would not have disrupted and diverted the Complainant’s business.’


While the existence of the dissent detracts a little from the weight of this decision, there is no doubt that this case will be relied upon by those complaint sites who have domain names containing trade-marks. A clear list of ‘dos and ‘don’ts’ can be extracted from this line of decisions:

Complaint sites - Dos and Don’ts



Include a disclaimer noting that the site is not the official corporate site of the trademark owner.

Commercialise the site through the use of advertising, product placement or commercial links.

Correct any postings which indicate confusion between the complaints site and the official site.

Attempt to sell the domain name to the trademark owner for a price higher than reasonable out of pocket expenses

Use a distinguishing word such as ‘complaints’, ‘discuss’, ‘sucks’ etc. in the domain name. (This is optional following the Legal and General case).

‘Tarnish’ the trademark (this is distinct from exercising free speech through discussion of customer service issues etc).

The full decision is available at:

Chris Connolly,

[ Galexia Dots ]

[1] The case is Legal & General Group Plc v. Image Plus, Case No. D2002-1019 at

[2] WIPO Case No. D2000-0181 at

[3] At Point 9.

[4] Legal and General noted that a hyphen was held not to be a distinguishing factor in MBS Computers Ltd v Richard Workman aka Portable World Computers, NAF Case No.FA0096632.

[5] NAF Case No. 94233 at

[6] NAF Decision Claim Number: FA0202000105183 at

[7] WIPO Case No. D2000-0279 at

[8] WIPO Case No. D2000-0020 at

[9] WIPO Case No. D2001-0212 at

[10] WIPO Case No. D2000-0279 as noted above.

[11] See: Annette A. Antoun d/b/a The Paxton Herald v. Stephen Millard, NAF Case No. FA00114770; Lloyds TSB Bank Plc v Paul Brittain, WIPO Case No. D2000-0231; Valero Energy Corporation v. American Distribution Systems, Inc., D/B/A Default Data.Com And Brian Wick, WIPO Case No. D2001-0581; Compagnie Générale des Matières Nucléaires v Greenpeace International WIPO Case No. D2001-0376.

[12] See: Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.

[13] At Point 6B

[14] At Point 6B.