WIPO Domain Name Decision D2002-0718 for wwwabb.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ABB Asea Brown Boveri Ltd v.Yvonne Bienen, Bienen Enterprises

Case No. D2002-0718

 

1. The Parties

The Complainant is ABB Asea Brown Boveri Ltd, Affolternstrasse 44, 8050 Zurich, Switzerland.

The Respondent is Yvonne Bienen, Bienen Enterprises, P.O. Box 441, Indian Rocks Beach, FL 33785, United States of America.

 

2. The Domain Names and Registrars

The Domain Name is .

The Registrar is Tucows, Inc.

 

3. Procedural History

The circumstances surrounding the lodging of the Complaint and WIPO�s handling of it are the subject of severe criticism from the Respondent. Moreover, the events at the time of and immediately following the lodging of the Complaint are alleged by the Complainant to constitute evidence of a case of �cyberflying�. It is necessary therefore for the Panel to review those circumstances in some detail.

On July 31, 2002, the Complainant first notified the Complaint in its original form by email to the WIPO Arbitration and Mediation Center (the "Center"), the Registrar and the registrant, whose name and address appears on the Whois Database printup dated June 28, 2002, which is exhibited as Annex A to the Complaint. That Annex shows the then registrant to have been Christer Ekman of 9784 Indian Key Trail, Seminole FL 33776 in Florida. The then registrant�s email address was opensrs@. The Complainant certified that it transmitted the original Complaint by email to Christer Ekman at opensrs@ on July 31, 2002.

Following receipt of that Complaint, again on July 31, 2002, the Center emailed T, the Registrar, requesting confirmation/verification of a number of matters including (i) that the Registrar had received the Complaint; (ii) that the Domain Name was registered with the Registrar; (iii) that the entity identified in the Complaint as the Respondent was the current registrant; (iv) that the Uniform Policy for Domain Name Dispute Resolution ("the Policy") is applicable to the Domain Name; and (v) that the Domain Name will remain locked during the pending administrative proceeding.

On July 31, 2002, (i.e. the same day) the Registrar informed the Center that it had not received a copy of the Complaint, that the Domain Name was registered with the Registrar, that the Respondent identified by the Center, namely Christer Ekman, was not the current registrant, that the Policy is applicable to the Domain Name and that the Domain Name was on Registrar Lock and would remain so pending the administrative proceeding. The Registrar identified the current registrant as being Yvonne Bienen of Bienen Enterprises c/o TravelQuest, Suite 245, 3 Indian Rocks Beach, FL 33785, Florida, with an email address of businessoffice@.

On August 2, 2002, the Center notified the Complainant of the identity of the current registrant (i.e. Yvonne Bienen, Bienen Enterprises) and gave the Complainant five days within which to amend the Complaint. The Center indicated that it would not require a re-filing of the complete Complaint but merely a document providing the amendments.

On August 6, 2002, the Complainant responded in the following terms:-

"To the best of my knowledge the domain name in question was registered in Respondent�s name until Complaint was filed by email to WIPO, with copy to Respondent and Registrar. A Whois Search following your information that domain name was transferred to Yvonne Bienen shows that the domain name record was last updated on July 31, 2002, being the date the Complaint was filed and copied to Respondent and Registrar.

In order to determine whether this is a case of cyberflying please provide me with the exact date and time of the transfer of . In case the domain name was transferred after receipt of Complaint, the registrant, who is bound by the Uniform Domain Name Dispute Resolution Policy as implemented in the terms and conditions of Tucows Inc acted in violation of Section 8(a) of said Policy and as consequence the transfer shall be revoked and not have any effect.

Should you not be able to obtain and forward the requested information by tomorrow, August 7, 2002, it is hereby requested to extend the time to file a Supplement to the Complaint by five calendar days."

On August 7, 2002, the Center acceded to the Complainant�s request for an extension of time and extended the time for filing the amendments to August 12, 2002. The Center also entered into an exchange of emails with the Registrar with a view to finding out whether or not the changes to the Whois Database in respect of the Domain Name on July 31, 2002, had taken place after notification of the Complaint to the previous registrant, Christer Ekman. That exchange of emails commenced with a request from the Center on August 7, 2002 "Could you please inform us when the disputed domain name was transferred to the current registrant (Bienen Enterprises, Yvonne Bienen)? Was it on the following date: "record last updated on July 31, 2002?""

The Registrar�s immediate response was "the domain name was not �transferred�, just the Whois was changed. In order to get the exact date would take some digging from our end. It would have happened before July 31, 2002, as that is when we put the domain name on hold within our system. Please advise me if you wish me to find the exact date."

The same day the Center responded "The Complainant has reasons to believe that the registrant of the domain name in question was changed from Christer Ekman 9784 Indian Key Trail, Seminole FL 33776, USA to the current registrant (Bienen Enterprises, Yvonne Bienen) on or about July 31, 2002. We would be grateful if you could give the exact date of this change/transfer because it is relevant to whether the Complainant may argue that there has been a cyberflight or not".

The same day the Registrar responded:

"On a short notice, there were five changes made to the registration records between the times of 8.45 am and 10.45 am. We put the domain name on hold at 12.40 pm. If you need specifically/exactly what changes were made this will take some time. Please advise."

The Center responded requesting information as to what the changes were and on August 8, 2002, the Registrar responded "No problem. Just give me a bit of time."

Evidently, following correspondence with the Respondent�s representative, the Registrar had second thoughts about providing the information. It indicated to the Center on August 26, 2002, that "there appears to be a breach of privacy issue in this matter" and asked whether it was obliged to provide the Center with the information. The Center responded, but to date, so far as the Panel is aware, the requested information has not been provided.

On August 11, 2002, Mr. Peter Jones, the Respondent�s representative, wrote to the Center, (via email and fax) in the following terms:-

"I represent Bienen Enterprises, the owners of .

It has been two weeks and we have heard nothing from WIPO since your initial email notifying "opensrs@" of the existence of a Complaint. What is the status of this matter?

You have already violated the UDRP rules and violated my client�s rights to due process by placing a lock on my client�s domain name on July 31, 2002, before you had properly reviewed what by now you know is an administratively deficient complaint. The Complaint is deficient because it was addressed to the wrong party, the old owner, not the new. It may also be deficient for other reasons.

We demand a full written explanation by email no later than August 16, from the General Counsel for WIPO, specifically answering these questions:-

1. Why was my client not notified of the existence of a Complaint?

2. Why did WIPO notify the previous owner of the Complaint?

3. Why did WIPO place my client�s domain name on hold after receiving a deficient Complaint (violation of Rule 4(a)).

4. Once you deemed the Complaint to be deficient, why did you not notify my client? (Violation of Rule 4(b))�."

The letter then went on to deal with other matters of no relevance to what the Panel has to decide.

The Center responded to Mr. Jones on August 13, 2002, in the following terms:-

"The status is that the proceeding has not yet commenced. The email you have received (from the former registrant) is the Acknowledgement of Receipt of Complaint which we sent July 31, 2002, to the Complainant with a copy to the Respondent as listed in the Complaint. We did not know at that time that the domain name had been/was going to be transferred the same day.

The proceeding will commence the day we notify the Complaint to the Respondent. The notification of Complaint has been delayed because the verification from the Registrar has been delayed in this case (we cannot notify the Complaint before we received such complete verification from the registrar).

The registrar has informed that the domain name in question probably was transferred from Christer Ekman to the current registrant Bienen Enterprises, Yvonne Bienen on the same day the Complainant filed the Complaint with us (by email with a copy to "opensrs@") (July 31, 2002). According to the registrar the domain name was put on hold in the afternoon July, 31, 2002.

Based on the registrar verification we requested the Complainant to amend the Complaint in order to address the said transfer of the domain name. A copy of that email is attached to this email. The said email was not copied to your client, because the identity of the Respondent was unclear. Indeed, any communication by a party shall be copied to the other party in accordance with Rules, Para. 2(h). Therefore, this communication, and also your email of August 11, 2002, below, is copied to the other party. The Complainant was upon request granted 5 days extension to the due date of the amendment in order to address the issue of change of ownership (attached).

You will receive a copy of the said amendment of the Complaint and the Complaint when we will notify the commencement of this case tomorrow."

The correspondence between the Center and Mr. Jones continued, Mr. Jones� primary concern appearing to be that the Center should not have accepted the amendment to the Complaint (see below) identifying the Respondent as "Christer Ekman aka Bienen Enterprises, Yvonne Bienen" when according to the Registrar Verification, the Registrant was "Yvonne Bienen, Bienen Enterprises".

The Center�s response on this topic dated August 21, 2002, was:-

"It is for the Complainant to decide against whom he will direct his Complaint under the UDRP. When we do the compliance review, we merely check that the one listed with the registrar as the registrant is listed in the Complaint, as the only Respondent or among more than one Respondent. In other words, it is no deficiency to list both Ekman and Bienen. The Independent Panel to be appointed will decide who is the correct Respondent."

The amendment to the Complaint comprised a letter sent by the Complainant�s representative to the Center on August 12, 2002, by email, the hard copy arriving a few days later.

The opening paragraph of the letter states that it "forms integral part of the Complaint." It goes on to allege that this is a case of cyberflying (i.e. seeking to evade service of due process under the Policy by effecting a change of name of registrant prior to the locking of the Domain Name). The substantive paragraphs of the letter dealing with this issue read as follows:-

"Complainant has reasons to believe that a case of cyberflying is involved and therefore asked the Center to provide information regarding the alleged transfer of domain name. The Registrar informed Center that on July 31, 2002, during 08:45 and 10:45 5 changes in the record of the domain name in question took place. A true and correct copy of the e-mail correspondence is provided as Annex [K.2] to this supplemental submission. Unfortunately, the full information regarding the type of register changes could not be provided in time. In order to timely respond to the Deficiency Notification within the once extended deadline this supplemental filing is based on the information that was available by August 12, 2002.

The Complaint was filed on the above-mentioned day at 13:49 MEST (Middle European Summer Time) which is 07:49 EDT (Eastern Daylight Time); Time difference is 6 hours. The times mentioned in the e-mails of Registrar are in EDT since business seat of the latter is in Toronto, Ontario (cf. Annex . A.3 to the Complaint), and that time zone is relevant. According to Registrar the first change in the Whois database has been made at 08:45 EDT, and which is almost one hour later than the filing of the Complaint. It is very likely that Respondent made the change(s) with full knowledge of the Complaint.

Even though according to Registrar several changes were made in the Whois database on July 12, 2002, the Registrar confirms that no transfer of the domain name has taken place (E-mail Tucows to Center on August 7, 2002, cf. Annex [K.2]).

The one and only conclusion thereof must be that Respondent as identified in Complaint is and remains Respondent in this administrative proceeding. Complaint, therefore, is not defective and need not be amended. However, for the purpose of the Panel to order the transfer of the domain name to Complainant Respondent shall read as follows: "Christer Ekman aka Bienen Enterprises, Yvonne Bienen".

If, however, the second party is to be distinguished from the Respondent, and not just a different name, this subsequent change of Respondent is a clear case of cyberflying where Respondent tries to evade jurisdiction which is in violation of Sect. 8(a) of the Policy. "

The letter goes on to demonstrate close topical links between the original registrant, the original registrant�s representative, the current registrant�s representative and the current registrant. The original registrant�s address is 9784 Indian Key Trail, Seminole FL33776 with the telephone number 727 517 2000 and email address "opensrs@". The original registrant�s representative is Thomas Rask of 9784 Indian Key Trail, Seminole, FL33776, telephone number 727 517 2000 and fax number 727 517 2001. Peter Jones, the current registrant�s representative, is at c/o TravelQuest which has an address at 9722 Indian Key Trail, Seminole, FL33776 and telephone number 727 517 2000 and fax number 727 517 2001. Apart from the TravelQuest address (the current registrant uses a TravelQuest PO Box Number) the contact details for the current registrant are substantially identical. On August 13, 2000, WIPO formally notified the Complaint and commencement of administrative proceeding to Christer Ekman aka Bienen Enterprises, Yvonne Bienen at the original registrant�s address and the TravelQuest address given in the current Whois Database and by email to the Respondent (above identified) at "opensrs@", "Peter@", "businessoffice@" and "postmaster@". The notification was copied to the Complainant and to the Registrar. In this notification the Center indicated that the amendment to the Complaint had been received on August 12, 2002, and that the commencement of the administrative proceeding is August 14, 2002, and that the Response is due by September 3, 2002.

On August 14, 2002, Mr. Peter Jones on behalf of Yvonne Bienen, the Respondent, sent an email to the Complainant and the Complainant�s representative stating inter alia: " Cyberflying: only applies during a pending administrative proceeding. My client did not receive notification of this proceeding at all (I have confirmation of this in writing from [the Case Manager]) and the previous owner received notification after they had quit their claim to the domain name in favour of my client. So you will have to establish grounds for relief against Bienen Enterprises and Yvonne Bienen. �.. You state: �It is very likely that Respondent made the change(s) with full knowledge of the Complaint�. It may be true that the previous owner of the name did so, but my client did not. But how do we know what you say is true? You offer no proof."

The Response was received by the Center by email on August 24, 2002, and in hard copy form a few days later. On the procedural issues, the Respondent (as the Response would have it, "Yvonne Bienen, Bienen Enterprises") makes the following complaints:-

1. When WIPO found the original Complaint to be defective, it notified the Complainant, but not the original registrant, who was identified as the Respondent in that version of the Complaint. The Respondent quotes from Rule 4(b):

"If the Provider finds the Complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified �"

2. WIPO violated Rule 4(b) by accepting the amendment to the Complaint in the form put forward by the Complainant and identifying the Respondent as "Christer Ekman aka Bienen Enterprises, Yvonne Bienen", when the Deficiency Notification identified the registrant as being "Yvonne Bienen, Bienen Enterprises".

3. The letter comprising the amendment to the Complaint is not labelled as an amendment to the Complaint and is not therefore part of the Complaint. Nonetheless WIPO decided to treat it as an amendment to the Complaint.

4. The letter comprising the amendment to the Complaint is dated August 13, 2002. Rule 4(b) allows five calendar days for correction of the Complaint. WIPO has no power to grant extensions and in any event the letter is a day out of time because the extension was only until August 12, 2002.

5. The putting of the Domain Name on Registrar Lock before WIPO had verified the validity of the Complaint violated the Respondent�s due process rights under any reasonable legal system. The Respondent cites an example of how this can lead to injustice, namely the launching of a totally misconceived complaint based on false allegations which leads to the freezing of a domain name at a time when the lawful registrant needs to point it to new servers or wishes to transfer it, but is unable to do so.

6. For the purpose of paragraph 3(b)(xiii) of the Rules the Complainant agrees to submit to "the jurisdiction of the courts where the principal office of the concerned registrar is located, as shown by the address of the registrar�s Contact Us page at the time of the submission of the Complaint to the WIPO Center". The Respondent contends that the Complainant has not clearly and unequivocally named the mutual jurisdiction. The principal office of the Registrar may be different from the address shown on the Registrar�s contact web page. It is therefore an open question which jurisdiction has been specified.

The Response indicates that the Respondent has not been sent copies of certain of the exhibits to the amendment to the Complaint.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panel�s Decision is September 12, 2002.

On notification of appointment of the Panel by the Center, the Complainant alleged that the undersigned Panelist was biased against it apparently on the grounds that the undersigned Panelist has recently issued a decision against the Complainant in relation to the domain name , a domain name registered in the name of an organisation known as The Australian Barley Board. The undersigned Panelist knows of no reason why the decision in that case might be said to have been perverse and knows of no reason why he should disqualify himself. The undersigned Panelist stands by his Statement of Impartiality and Declaration of Independence and declines to recuse himself.

On September 9, 2002, the Panel issued a procedural order ("the First Procedural Order"), a copy of which is annexed to this decision, directing that the exhibits to the amendment to the Complaint not seen by the Respondent be sent to the Respondent and that the Respondent be given a further 4 days within which to lodge submissions in relation to those exhibits. Moreover, in the course of reading the papers, the Panel noticed that the �properties� for the electronic version of the Response identified Thomas Rask, the original registrant�s representative, as author of the Response and the procedural order invited the Respondent to disclose the nature of the relationship between Mr. Rask and Mr. Jones, the Respondent�s representative. The date for issuance of the Panel�s decision was put back to September 20, 2002.

On September 15, 2002, Mr. Jones responded to the First Procedural Order. He made no submissions in relation to the exhibits referred to in the First Procedural Order, but in response to the request regarding his relationship with Mr. Rask he stated that when he needs to log on to his emails he uses a cubicle in Mr. Rask�s office to connect his laptop to the network. He went on to say that he did not have time to investigate how it was that "these so-called �properties� you speak of � show what they show." The bulk of this communication relates not to the substance of the First Procedural Order, but to the fact that the Center failed to comply with Rule 3(b)(iii) of the Rules. Instead of sending the First Procedural Order to Mr Jones at his preferred email address, "peter@", the Center sent it to the email address, "businessoffice@", which in his response to the First Procedural Order Mr. Jones states is the Respondent�s email address. Mr. Jones complained that this failure to comply with the Rules denied his client, the Respondent, due process since it resulted in him having very little time to respond to the First Procedural Order. Mr. Jones went on in very aggressive vein to attack the lack of impartiality of the Center in the matter.

The Panel concluded that the best way of rectifying the situation was to give the Respondent further time to respond to the First Procedural Order and issued a further Procedural Order ("the Second Procedural Order"), a copy of which is also annexed to this decision. With a view to assisting the Respondent in identifying the reason why Mr. Rask is identified as the author of the Response, the Panel attached to the Second Procedural Order the Word document comprising the Response, so that the Respondent and Mr. Jones could see the �properties� for themselves. Significant, in light of Mr. Jones� response to the Second Procedural Order (see the following paragraph), is the fact that in the Second Procedural Order the Panel identified the email address, "businessoffice@", as an address of Mr. Jones.

Mr Jones responded to the Second Procedural Order on September 21, 2002. He denied that "businessoffice@" is an email address of his. He reiterated that it is an email address of the Respondent. He pointed out that there has been a misunderstanding between him and the Panel over the �properties� of the Response Word document. He said that the reason for Mr. Rask being identified as the author of the Response is because he uses software licensed to Mr. Rask "as run off a central file server" in Mr. Rask�s office.

The rest of this response to the Second Procedural Order comprises a request that the Panel recuse himself and an attack on the Center. The request that the Panel recuse himself is based on allegations that the Panel is biased in favour of trademark owners, is insufficiently experienced to hold the position of panelist in these disputes and that in one of the 100 or so decisions in which the Panel has been involved the Panel has participated in a majority decision which Mr. Jones describes as "shocking". The Center has responded to this aspect of Mr. Jones response by denying the request. Notwithstanding the Center�s intervention, if the undersigned Panelist thought it proper that he should stand aside at this stage, he would do so. He does not think it appropriate that he should do so. The Panel is not biased and does not believe that he has given either party cause to suspect his neutrality. All the information which Mr. Jones cites in support of his request (the Panelist�s resume and the Panelist�s previous decisions) was available to the Respondent from the outset. Indeed, the Respondent had the opportunity to support the Complainant�s similar request, but did not do so. The undersigned Panelist stands by his Statement of Impartiality and Declaration of Independence and declines to recuse himself.

The Panel now deals with the Respondent�s procedural complaints which according to the Respondent merit a finding of violation by the Center of the Rules, violation of the Respondent�s due process rights and dismissal of the Complaint on the grounds that it remains administratively defective and was not amended in a timely fashion as required by the Rules.

Using the above numbering of the Respondent�s complaints in this regard (ie numbers 1-6 on pages 6 and 7) the Panel finds as follows:-

1. Rule 4(b) provides that if the Center finds the Complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. "Promptly" means immediately and it is a fact that while the Center notified the Complainant of the deficiency immediately, it did not notify the registrant until after the Complainant had amended the Complaint with a view to correcting the deficiency.

The Panel was surprised to note that the Rules call for notification of administrative deficiencies to the Respondent at this early stage prior to commencement of the administrative proceeding. The deficiencies can only be corrected by the Complainant and there seems little point in notifying the Respondent until the Complaint is in a form which meets the requirements of the Policy and the Rules. Indeed, the Panel notes that the equivalent provision in the STOP Rules for the .biz domain is in substantially identical terms to rule 4(b) of the Rules save that there is no requirement for the Respondent to be notified of administrative deficiencies at that stage.

The Center has given as its reason for not notifying the Respondent that at that stage until the Complainant identified a Respondent which included the name of the registrant on the Registrar�s Whois Database, it had no clear idea as to the identity of the Respondent. Mr. Jones on behalf of the current registrant ripostes that in that event the Center should have notified all potential candidates.

There are two potential conclusions on this issue. One is that there has been a breach of rule 4(b), the other is that there has been no breach in that WIPO notified the Respondent promptly on having the Respondent identified to it by the Complainant.

In the view of the Panel, the point is an arid one. If there was a breach of rule 4(b) (and the Panel makes no finding to that effect), it was inadvertent. The reason for delaying notification was understandable. None of the potential candidates for the title of "Respondent" suffered any prejudice by the delay.

Certainly, if it was a breach, it was not a breach meriting dismissal of the Complaint. To the extent that there might have been a breach, the breach has been rectified.

2. The fact that no less than five changes were made in the Whois Database on July 31, 2002, not surprisingly made things very difficult for both the Center and the Complainant. The changing of the information on the Whois Database may have been a complete coincidence. On the other hand it may, as the Complainant asserts, have been a deliberate case of cyberflying. In the view of the Panel, it was not unreasonable for the Complainant to take the view that it was a case of cyberflying and to indicate that it regarded the name of the current registrant to be an alias or alter ego of the original registrant. The Complainant chose to indicate this by identifying the Respondent as Christer Ekman aka Bienen Enterprises, Yvonne Bienen.

The Panel believes that it was reasonable for the Center to accept the formulation put forward by the Complainant. The formulation incorporates within it the name of the current registrant on the Registrar�s Whois Database and acceptance of the Complaint in that form has not in any way precluded the Respondent from putting forward such arguments as the Respondent chooses.

The Panel does not believe that there has been any procedural defect on the part of the Center, still less any defect meriting dismissal of the Complaint. As foreshadowed by the heading to this decision and section 1 above, the Panel proposes to treat the Respondent as Yvonne Bienen, Bienen Enterprises, the current registrant and the entity represented by Mr. Jones, the signatory to the Response.

3. The Panel does not understand this complaint. The opening paragraph of the letter of August 12, 2002, makes it clear that that letter is intended to be a response to the Complaint Deficiency Notification and to form an integral part of the Complaint.

4. This complaint is misconceived. The letter in question was dated August 12, 2002, and was received by the Center in time on August 12, 2002.

In the exceptional circumstances of this case, arising from the Whois Database changes made on the day of the original Complaint, and the delay in obtaining from the Registrar precisely what happened on the Whois Database on that day, it was fair and reasonable that the Complainant be granted an extension of time of that Order. It is within the Panel�s experience that the Center commonly grants extensions of time when appropriate and in the view of the Panel, as indicated, this was an appropriate occasion on which to grant an extension. If, as the Respondent asserts, the Center has no power to grant extensions (and the Panel doubts that that is the case), the Panel nonetheless has express power to do so by virtue of rule 10(c). If and to the extent that it is necessary for the Panel to endorse that extension of time, the Panel now does so.

The Respondent has not been prejudiced in any way by the extension of time granted to the Complainant. The amendment was notified to the Respondent at the time of notification of the Complaint on August 13, 2002, and the Respondent has had an opportunity of responding to it and has taken advantage of that opportunity.

5. The hypothetical situation that the Respondent postulates applies to all cases under the Policy. All domain name registrants accept by signing up to the Policy that they must submit to an administrative proceeding of this kind on a complainant asserting the matters set out in paragraph 4(a) of the Policy. Additionally, all registrants accept by virtue of paragraph 8 of the Policy that, once a Complaint has been lodged in respect of the domain name, pending resolution of the dispute the registrant is restricted in what he may do in so far as transfer of the domain name is concerned.

While there is scope for abuse by irresponsible complainants, the operation of the Policy could be rendered unworkable by irresponsible registrants if there was no domain name locking mechanism. The fact is that if there is any delay between notification of the Complaint and the locking of the domain name, an irresponsible registrant can create considerable administrative delays and difficulties.

In the view of the Panel, it was not unreasonable for the Center to act as it did. Indeed, the Panel does not see how the Center could sensibly have behaved otherwise.

6. Paragraph 9 of the Complaint sets out the details of the Registrar including the Registrar�s address in Toronto, Canada, being the address given at the Registrar�s Contact Us page. On page 5 of the Response the Respondent admits the contents of paragraph 9 of the Complaint. The Panel dismisses this allegation as wholly misconceived. The relevant jurisdiction is clear. Nothing that the Panel has to say on this point will in any way circumscribe how a court seized of the matter may decide, but for the purpose of this administrative proceeding the Panel is satisfied that the Mutual Jurisdiction paragraph in the Complaint complies with paragraph 3(b)(xiii) of the Rules.

In the result, the Panel is satisfied that the Complaint (as re-formulated by the Complainant by the amendment dated August 12, 2002) meets the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment has been properly made.

The Response includes the following paragraph:

"Respect for rules requires that everybody abide by the rules, and that sanctions be imposed on those who do not. To let these clear violations stand without comment would send WIPO down the road of zero credibility."

The Panel comments that even if, contrary to the Panel�s finding, the allegations had established clear violations of the Rules, the violations need to be looked at in context. To take too legalistic an approach to the Policy and the Rules would risk undermining the purpose of these administrative proceedings, which is to provide a relatively swift and effective alternative to litigation in relation to allegations of cybersquatting. It is, of course, of crucial importance that the norms of natural justice should be observed and, here, they have been. The Respondent is in no doubt as to what the allegations against her are and has been given a fair opportunity to respond to them. To have dismissed the Complaint at this stage on purely procedural grounds of this nature would have been of benefit to nobody. There having been no consideration of the merits, the Complainant would simply have rectified the alleged deficiencies and re-filed the Complaint.

 

4. Factual Background

The Complainant is a global 30 billion dollar group serving customers in electric power generation transmission and distribution, industrial and building systems, and rail transportation. Of the group�s total sales, 56% are in Europe, 26% in the Americans and 24% in Asia, Australasia and Africa. The Complainant is the proprietor of substantial rights in the trademark/service mark ABB including registered trademark rights in the United States.

The Complainant is the proprietor of the domain name , which was registered on February 27, 1990, and the Complainant operates a website at "www.".

The Domain Name was first registered by Christer Ekman on or before July 16, 2000. On June 4, 2002, the Complainant�s representative wrote to Christer Ekman complaining about the Domain Name (albeit erroneously referring to it variously as "www." and "www"). The letter asserted infringement of the Complainant�s IP rights and demanded immediate cessation of use of the Domain Name and the transfer of it to the Complainant. Thomas Rask replied on behalf of Mr. Ekman on June 11, 2002. He ridiculed the erroneous identification of the Domain Name, but suggested a call with a view to resolving any outstanding disputes there might be in relation to his client�s domain names. At that time (and up to at least July 23, 2002) the home page of the website at "www." indicated that it was the "future home of the World Wide Web Association of Breasts and Buttocks.

The Complainant replied direct to Mr. Ekman on June 17, 2002, agreeing that there should be an amicable solution and inviting Mr. Ekman to come forward with a proposal. On the same day, Mr. Rask replied offering to settle the matter on the basis of a payment by the Complainant to the Respondent of US$6,000 representing "our losses in abandoning the planned website including ".

By July 31, 2002, at the latest, the website previously at "www." had been discontinued. Visitors to the current site are informed that the site is under construction.

 

5. Parties� Contentions

A. Complainant

The Complainant recognises the possibility that Christer Ekman and Yvonne Bienen could be different people and contends that if that is the case, Christer Ekman is in breach of paragraph 8 of the Policy, the transfer having taken place after notification to him of the Complaint.

That said, the Complainant�s primary position is that the transfer of the Domain Name to Yvonne Bienen on July 31, 2002, was a sham designed to frustrate the Complaint. The Complainant contends that Yvonne Bienen is just another name for the original registrant. It is on this basis that on amending the Complaint the Complainant identifies as the Respondent "Christer Ekman a.k.a. Bienen Enterprises, Yvonne Bienen".

In support of this allegation of �cyberflying� the Complainant points to:

1. the fact that the changes to the Registrar�s Whois database on July 31, 2002, took place within an hour or two of the Complainant notifying the Complaint to Christer Ekman;

2. the Registrar�s email of August 7, 2002, to the effect that the changes to the Registrar�s Whois database, which took place on July 31, 2002, did not involve a transfer of the Domain Name;

3. the fact that the contact details/addresses for Christer Ekman, the Respondent and their representatives are substantially identical.

The Complainant contends and the Respondent admits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that Christer Ekman has no rights or legitimate interests in respect of the Domain Name. The Complainant refers to the correspondence and asserts that Christer Ekman "did not produce evidence of a legitimate interest" in that correspondence and that "the name of the Respondent is Christer Ekman and therefore different from the confusingly similar domain name."

The Complainant contends that Christer Ekman pretends to be in business relations with the owners of the websites to which "" was originally re-routed. This is a reference in part to the website of a plastic surgeon, a Dr. Thomas Roberts, who has sent an email to the Complainant confirming that the link to his website by Christer Ekman was unauthorised. The other link was to a pornographic website.

The Complainant contends that Christer Ekman has not made any bona fide offering of goods or services under the abbreviations WWWABB and ABB.

The Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant contends that Christer Ekman is acting in bad faith on the basis that he intentionally attempted to attract for commercial gain Internet users to his website or other online location by creating a likelihood of confusion with the Complainant�s mark. The Complainant is alleging that when registering the Domain Name Christer Ekman deliberately registered a mis-spelt version of the Complainant�s web address ie "www." but without the �dot� between the www prefix and the second level of the Domain Name.

In addition, the Complainant contends that Christer Ekman registered the Domain Name primarily for the purpose of selling it to the Complainant for a sum in excess of his out of pocket expenses within the meaning of paragraph 4(b)(i) of the Policy. The Complainant refers to the offer to sell the Domain Name for US$6,000.

The Complainant also cites in support of the bad faith claim the linking of the original website to Dr. Roberts� website without his permission.

The Complainant also refers to the worldwide fame of the Complainant and says that his knowledge of the Complainant�s rights can be imputed to Christer Ekman and that in any event a simple trademark search would have obviated the current problem.

The Complainant asks that the Domain Name be transferred to the Complainant.

B. Respondent

The matters put forward on behalf of the Respondent are in essence as follows:-

(i) The Complaint should be dismissed in light of the procedural defects referred to above. [This the Panel has already dealt with.]

(ii) The Respondent is a different entity from the original registrant. There is nothing in the fact that the contact details for the original registrant and his representative are the same. [NB The Panel notes that nothing is said in the Response and the responses to the procedural orders about the fact that the contact details for both the Respondent and the Respondent�s representative are in substance the same as those for the original registrant and the original registrant�s representative.]

(iii) The changes to the Registrar�s Whois database on July 31, 2002, were not made with notice of the Complaint. It was a complete coincidence that the changes were made on the same day that the Complaint was being filed. At the time of those changes the original registrant (and still less the Respondent) had not received notification of the Complaint.

(iv) Accordingly, the sins (if any) of the original registrant should not be visited on the Respondent who has �just begun operations�. She has not had time to acquire common law rights. She has courteously refrained from developing her website until this dispute is resolved. The Respondent requests that if the Panel determines that the actions of Mr. Ekman do have a bearing on the case, the Respondent be given an opportunity to gather more information about what he did. [NB Given the fact that the Respondent�s representative is a regular visitor to the office of Mr. Ekman�s representative, Thomas Rask, the Respondent has had ample opportunity to discover what Mr. Ekman did and could readily have set out that information in the Response. The Panel refuses the request.]

(v) The Respondent is under no obligation to say why she acquired the Domain Name and the Respondent elects not to do so, her business plans being confidential to her.

(vi) The failure of the Respondent to come forward with any explanation of what she intends should not give rise to any adverse inferences being drawn by the Panel. The Response contains the following paragraph:

"There is a presumption in domain name dispute cases that Respondents have to disclose their purpose for registering a domain name, that not doing so somehow makes the registration suspicious. The panel may therefore wonder why the Respondent acquired the domain name in the first place. We believe that holding a Respondent�s silence on this matter against them is unfair for two reasons. Firstly, businesses have a right to keep their business plans for themselves. There has been no bad faith use of the domain name by Respondent, and that is all that matters. Secondly, in cases where legal action has been threatened (as is the case here), any good attorney would advise their client to say less until the dispute can be settled."

(vii) If the intentions of the original registrant are material, nothing that Mr. Ekman did was in breach of the Policy. Mr. Ekman says that he attempted to create a website and association for people who appreciate women�s �breasts and derrieres�. The name of the site was "World Wide Web Association of Breasts and Buttocks". While the Complainant may not like the subject matter of the original registrant�s website, operating such a site does not infringe the Complainant�s trademark rights, which are limited to other fields of business. There was no likelihood of confusion among the public as to who was responsible for the site.

(viii) As to the specific allegations under paragraph 4(a) of the Policy, the Respondent:

(i) admits that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(ii) denies that the Respondent has no rights or legitimate interest in respect of the Domain Name

(iii) denies that the Respondent acquired the Domain Name in bad faith. There is a specific denial that the Respondent acquired the Domain Name �in order to confuse the public�. There is an assertion that Mr. Ekman �did not knowingly infringe on any of the Complainant�s trademarks�. The Respondent states that making unauthorized links to websites is not in breach of any law or any UDRP rule. Mr. Jones observes that Dr Roberts has not yet notified Mr. Ekman of his disapproval of the link. As to the offer for sale made on behalf of Mr. Ekman, the Respondent says that this is no evidence of registration of the Domain Name with intention to sell it. The proposal was nothing more than a response to the Complainant�s request that Mr. Ekman should put forward a proposal. The Respondent argues that it is plain from the correspondence that Mr. Ekman did not ignore the concerns of the Complainant, but tried to respond to their concerns and tried to resolve the matter peacefully. The Respondent has not herself made any use (still less, bad faith use) of the Domain Name.

(ix) As to the Complainant�s suggestion that the problem could have been resolved by the Respondent conducting a trademark search, Mr. Ekman has apparently told Mr. Jones, the Respondent�s representative, that he did in fact conduct a search for "wwwabb" at the US Patent and Trademark Office and turned up nothing.

 

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

Identical or confusingly similar

The Respondent admits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and the Panel so finds.

Respondent�s Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, while the burden of proof is upon the Complainant, once the Complainant has made out a prima facie case, it is for the Respondent to answer that case by reference to paragraph 4(c) of the Policy or by demonstrating some other reason why the Respondent has rights or legitimate interests in respect of the Domain Name. The heading to paragraph 4(c) of the Policy, "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint", postulates the need for such a demonstration where the Complainant has made out sufficient of a case for the Respondent to answer.

In essence, the Complainant�s primary case is that the Respondent is an alias for the original registrant, Christer Ekman, that nothing done by Christer Ekman in relation to the Domain Name indicates any relevant right or legitimate interest. The name was selected because it represents a mis-spelling of the Complainant�s web address and with a view to causing confusion to Internet users and/or selling the Domain Name at a profit to the Complainant. The name World Wide Web Association of Breasts and Buttocks was selected simply to �justify� the selection of the Domain Name. The Domain Name was never intended to be used for a bona fide business offering or a bona fide fair or non-commercial purpose.

If the Complainant�s allegations are correct, clearly the Respondent can have no rights or legitimate interests in respect of the Domain Name. On one view those allegations are entirely speculative. There is no hard evidence to support them. On the other hand, while there is no hard evidence, there is circumstantial evidence.

First, it would be extraordinary for someone engaged in the world of the Internet to select the Domain Name, commencing as it does with the letters �www�, without having regard to the possibility that Internet users wishing to visit a website at www., but forgetting to insert the �dot�, might not visit the Respondent�s site by mistake. It makes one wonder whether the choice was made for that purpose or at any rate in order to alarm the Complainant so as to provoke an offer for the Domain Name.

Secondly, while awareness of the possibility that Internet users might be diverted to the Respondent�s site is far from conclusive as to the Respondent�s interests/motives, it does invite investigation into the use actually being made of the Domain Name. A site devoted to an organisation named World Wide Web Association of Breasts and Buttocks raises further questions. It is an extraordinary name. It is not a name that flows easily. It sounds artificial. It makes one wonder whether it is a sham.

Thirdly, while the fact that the name has an artificial air to it is by no means conclusive that the name is a sham, it does nonetheless invite investigation into the organisation�s activities. As at July 2002, the site was said to be in course of development. The Domain Name was registered on or before July 16, 2000, i.e. over two years ago. Two years (at least) after the Domain Name was registered the official site of this awkwardly named organisation was still under development. The site linked to two contrasting sites, a pornographic site and a genuine medical site, the latter link having been made without the permission of the owner of the medical site. In all the circumstances, the delay in getting the site off the ground and its content during the development stage makes one wonder whether it is intended to be a genuine site. Apart from the reference to the name of the organisation at the website, no other details of the organisation appear to be available.

Fourthly, on the same day that the Complaint is first launched, the original registrant effects a Whois change in relation to the Domain Name (not a �transfer� according to the Registrar). This makes one wonder whether the Whois change is anything other than a device to avoid the Complaint.

Fifthly, while the Respondent claims to be entirely independent of the original registrant, it transpires that the Respondent�s representative and the original registrant�s representative share office facilities. Again, this on its own is conclusive of nothing, but it raises legitimate questions.

Sixthly, the Respondent and the Respondent�s representative (Mr. Jones), despite Mr. Jones� denial in his response to the Second Procedural Order, share the email address, "businessoffice@". Mr. Jones admits that it is the email address of the Respondent and on page 2 of the Response Mr. Jones not once but twice identifies it as his own personal email address. The inference is that Mr. Jones and his client are extremely closely associated (perhaps one and the same) and both are closely associated with the original registrant�s representative. One wonders why Mr. Jones should deny what in the Response he asserts (twice) is a fact.

Taking all the above into account, the Panel takes the view on the balance of probabilities that the Complainant has made out a strong prima facie case that the Respondent, if not an alias of the original registrant, is an accomplice of the original registrant and that the transfer was a device to frustrate the Complaint. Furthermore, the Panel takes the view on the balance of probabilities that the Complainant has made out a strong prima facie case that the original registrant felt the need to undertake this artifice, because he knew that the Complainant�s complaint was well founded. In other words the Respondent has a case to answer.

In the face of this strong prima facie case and notwithstanding paragraph 4(c) of the Policy and the clear encouragement there for respondents to come forward with information/evidence demonstrating their rights or legitimate interests, the Respondent has elected to say nothing. The Respondent is said to have just commenced operations, but we are not told what they are.

In those circumstances the Panel feels entirely justified in coming to the conclusion that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name is and there is nothing about that Domain Name which suggests any association with the Respondent, Yvonne Bienen, or her organisation, Bienen Enterprises.

The Panel goes further. The Panel concludes on the balance of probabilities that the unanswered strong prima facie case of the Complainant is made out. The Panel is in no doubt that the �transfer� was no transfer at all and was an elaborate but incompetent attempt to frustrate the Complaint and pervert the course of this administrative procedure.

Bad Faith

For the reasons given above, the Panel finds that the Respondent should be treated as being the same entity as the original registrant. The name, Yvonne Bienen, is either an alias of the original registrant or an alter ego of the original registrant, being the name of another entity selected by the original registrant to suit his cyberflying purpose.

Accordingly, the Panel finds that when registering the Domain Name the original registrant had the Complainant and its web address, "www.", in mind. The Panel also finds that the original registrant�s purpose in adopting the name "World Wide Web Association of Breasts and Buttocks" was nothing more than an empty justification for having selected a domain name featuring the acronym �wwwabb�.

Why did the original registrant do it? The Panel doubts that the underlying reason was to cause confusion to Internet users within the meaning of paragraph 4(b)(iv) of the Policy. After all, what possible benefit of any consequence could the original registrant have had for diverting would-be visitors from the Complainant�s website? The benefit would have been relatively trivial.

No, the Panel has come to the conclusion on the balance of probabilities that the original registrant registered the Domain Name in the hope and expectation that the Complainant would make a substantial offer for its transfer. By linking his website to, amongst others, a pornographic site the original registrant calculated that he would provoke a more immediate offer and command a higher price. He must have been disappointed that it took as long as it did for the Complainant to learn of the existence of the Domain Name.

In coming to that conclusion the Panel has taken into account the extraordinary lengths to which the original registrant, with the assistance of the Respondent (see below), has gone to obscure his involvement. Clearly, the original registrant realised that while the Domain Name was in his hands he stood little chance of retaining it under this administrative procedure. Incidentally, the Panel has ignored the $6,000 offer for sale. On its own that was proof of nothing.

No doubt, circumstances could arise where an innocent transferee of a domain name registered and used in bad faith by the original registrant is able to distance himself from the original registrant to such an extent that he is not tainted with his predecessor�s bad faith. This is not such a case. The Panel is satisfied that the Respondent is an alias or alter ego of the original registrant.

If the Panel has come to the wrong conclusion and the Respondent is independent of the original registrant and has a legitimate interest in respect of the Domain Name, the fault lies at the Respondent�s door for having deliberately, and with knowledge of the attendant risk, elected not to disclose what that legitimate interest might be. To have come forward with that information was such an obvious and easy course for the Respondent to take in the circumstances of this case that her omission to do so confirms the Panel in his view that the Respondent must have something material to hide. The reasons given by the Respondent for not having come forward with that information (commercial need for secrecy and concern for her legal position) are unconvincing. The Panel finds it difficult to believe that had she been �innocent� in the matter, sufficient information could not have been provided to establish her innocence without adversely affecting her commercial/legal position.

But not only has the Respondent omitted to provide information which could, if her case is of any substance, have ensured that the Complaint failed, she also appears to have induced the Registrar to withhold from the Panel detailed and relevant information as to the Whois database changes on July 31, 2002. On August 8, 2002, in response to a request for that information from WIPO the Registrar stated "No problem. Just give me a bit of time." By August 26, 2002, the Registrar was resisting the handing over of the relevant information on the basis that �there appears to be a breach of privacy issue in this matter�. On the papers before the Panel it appears that the first person to raise any question of a privacy issue was Mr Jones on behalf of the Respondent in his email to the Registrar of August 13, 2002, in which he said "Are you legally required to provide this kind of information to WIPO? If not, please explain to me how handing over private information to any third party fits in with your privacy policy?"

The Panel believes it very probable that it was Mr Jones who was responsible for the Registrar�s change of mind. The Panel can think of no good reason why it should have been in the interest of the Respondent to have adopted that course if the �transfer� was a genuine transfer. Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy.

 

7. Decision

In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel directs that the Domain Name be transferred to the Complainant.

Finally, the Panel cannot leave this case without commenting on the behaviour of the Respondent and her representative, which has been a disgrace, a grotesque abuse of this administrative proceeding. It commenced with the cyberflight, continued with the intervention, which resulted in the Registrar failing to come forward with relevant information regarding the cyberflight, and ended with the Response and the responses to the procedural orders, barely a page of which had any bearing on the merits of the dispute. The vast bulk of the Respondent�s submissions were devoted to trivial technicalities, not one of which had any bearing on the Respondent�s ability to argue her case. In the result, what should have been a relatively simple and straightforward case became an unnecessarily expensive and time-consuming procedural nightmare for everybody else involved. If this were a court case, one would have expected the court to sanction the Respondent in costs. Sadly, the Policy does not give the Panel that option in this case.

 

 

Tony Willoughby
Sole Panelist

Dated: September 29, 2002

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