WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED. Case No. D2008-1675 1. The Parties
1.1 The Complainant is Western Union Holdings, Inc. of Englewood, Colorado, United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
1.2 The Respondent is Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD. (“Comdot”), LAKSH INTERNET SOLUTIONS PRIVATE LIMITED. (“Laksh”), PLUTO DOMAIN SERVICES PRIVATE LTD. (“Pluto”), COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED. (“Comsys”), all of Mumbai, Maharashtra, India. The exact identity of the Respondent is discussed in greater detail in this decision. 2. The Domain Names and Registrar
2.1 The disputed domain names , , , and (the “Domain Names”) are registered with Lead Networks Domains Pvt. Ltd (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2008. The Complaint identified Private Whois Escrow Domains Private Limited as the Respondent in these proceedings as this was the name in which the Domain Names were registered as at the date of the Complaint.
3.2 On November 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. By November 11, 2008, the Registrar had not responded to that request, and the Center sent a further email asking once again that verification information be provided. Later that day the Registrar finally transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. In particular the Registrar identified the Registrants of the Domain Names as follows:
COMDOT INTERNET SERVICES PVT. LTD.
18/20 Akshay Co-Op. Soc
S.V. Patel Nagar, Mahada Versova
Andheri (West)
Mumbai,
Maharashtra, 400053
IN
Tel: +91 000000
LAKSH INTERNET SOLUTIONS PRIVATE LIMITED.
Room No.30, Fatima Bibi Chawl
Gulshan Nagar, Behram Baug,
Jogeshwari (W),
Mumbai,
Maharashtra, 400102
IN
Tel: +91 9322160169
PLUTO DOMAIN SERVICES PRIVATE LTD.
Bhagatsingh Nagar No.1, Kranti Chawl,
Pragati Society, Room No. 507,
Link road, Goregoan (W)
Mumbai
Maharashtra, 400104
IN
Tel: +91 9821394402
COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED.
522 Shantivan – MAHADA
Oshiwara
Andheri (West)
Mumbai
Maharashtra, 400053
IN
Tel: +91 0000000
3.3 The Center sent an email communication to the Complainant on November 12, 2008, providing the new registrant and contact information disclosed by the Registrar. It contained the following statement:
“There appear to be four distinct entities listed as registrants. Should the Complainant find a common link between the below-listed registrants, the Complaint would proceed as filed. If no such link is found, the Complainant may wish to proceed in the instant case against one registrant, and the other registrants in several separate cases as determined to be appropriate.”
3.4 After providing the details for the “registrants” provided by the Registrar, the Center went on to state as follows:
“In light of this, you are invited to file an amendment to the Complaint or, if no common link between the four entities is found, amend this Complaint and file several separate Complaints as determined to be appropriate.”
3.5 The Complainant filed an amendment to the Complaint (the “Amendment to the Complaint”) on November 17, 2008. In the Amendment to the Complaint (and as is described in greater detail later on in this decision), the Complainant alleged that the four “registrants” identified by the Registrar were in fact the same entity.
3.6 The Center verified that the Complaint together with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.7 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2008.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 5, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.9 The Panel, having reviewed the case file and having commenced preparation of its decision in this case, formed the provisional view that it was likely in this decision to make comments that were critical of the behaviour of the Registrar. In light of this and adopting the procedure followed by the Panel in Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886, it issued a Procedural Order on January 14, 2008 in which the Registrar was given an opportunity to file a submission dealing with these criticisms by no later than January 21, 2009 and extending the time for the filling of a decision in this case by two days to January 22, 2009. A submission was filed with the Center by the Registrar in reply to the Procedural Order on January 19, 2009 (the “Registrar's Submission”). 4. Factual Background
4.1 The Complainant is a United States company forming part of the Western Union Company group. It is the entity within the group that holds intellectual property on behalf of the group.
4.2 Western Union was founded in 1851 and adopted the Western Union name in 1856. In 1871, it began to offer electronic money transfer services by telegram. It continues today to offer various money order, money transfer, and payment services. It has over 335,000 agent locations in more than 200 countries and territories around the world.
4.3 The Complainant is the owner of approximately 950 trade mark registrations comprising or incorporating the words “Western Union”. These include United States Trademark Registration No. 1858889 dated October 18, 1994 for the word mark WESTERN UNION in class 38.
4.4 The exact status and nature of Comdot, Laksh, Pluto, and Comsys, the “registrants” of the Domain Names, and their relationship to one another is discussed in greater detail later on in this decision. For present purposes it is sufficient to note that they prima facie all appear to be private companies registered in India with addresses in Mumbai.
4.5 The Domain Names were registered at various times between February 9 and May 30, 2007 according to the Registrar's WhoIs database.
4.6 In July 2008, the websites operating from the Domain Names all bore the classic signs of having been generated by “domain name monetization” or “domain name parking” or “pay per click” services. The styles of those web sites pages differed, but each displayed the domain name in question in the top left hand corner and in three out of the four cases the words “find something interesting” were displayed. There then followed a series of sponsored links or searches. This links or searches all had a financial services theme save for those in the case of , where the links pre-dominantly related to the Philippines. All the websites also contained search boxes which if used would produce a page of sponsored links. Each of these pages was relatively sophisticated in style and incorporated pictures that often had a financial services flavour (for example, in one case, the picture of a credit card).
4.7 On July 29, 2008, the Complainant's lawyers sent a “letter before action” or “cease and desist letter” to “Private Whois Escrow Domains Private Limited”, then recorded in the relevant Whois database as the registrant in relation to all of the Domain Names. It claimed that the Domain Names had been registered and used contrary to the United States Anticybersquatting Consumer Protection Act (“ACPA”) and also violated the Policy. It demanded that the Domain Names be transferred to the Complainant. The Complainant received no response to this letter.
4.8 As a the date of the Complaint the Domain Names continued to resolve to domain name parking pages although the style used in three cases was less sophisticated, with the removal of pictures and the direct display of “sponsored links”. These pages continue to operate as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant in its Complaint refers to the history of the Western Union Company and its trade mark. It claims that “Western Union” is a “well-recognized global brand with 97% brand awareness in the United States”. Reference is also made to a number of past proceedings under the Policy in which it is said the reputation of the brand has been recognised.
5.2 It contends that the only differences between its WESTERN UNION trade marks and the Domain Names are additional words or phrases describing or relating to the Complainant's services and/or the absence or addition of single letters.
5.3 In the case of one of the Domain Names the additional term is “mastercards”. This is said to be a reference to the trade mark MASTERCARD, which is owned by MasterCard International. According to the Complainant, it has obtained from MasterCard a licence “to the domain name providing [the] Complainant with the right to pursue the [domain name] in this proceeding and to maintain the registration of it thereafter”. Further, it is claimed that “the Panel has the right to order this domain name transferred to [the] Complainant, even in the absence of this license agreement”.
5.4 Accordingly, the Complainant maintains that each of the Domain Names is confusingly similar to its WESTERN UNION trade marks.
5.5 The Complaint contends that the Respondent (then understood to be Private Whois Escrow Domains Private Limited) has no authorisation from the Complainant to use the WESTERN UNION marks. It also contends that the Respondent has never used, or made preparation to use, the Domain Names in connection with a bona fide offering of goods or services. The Complaint also contends that the Respondent has never been commonly known by any of the Domain Names and has never acquired any trade mark or service mark rights in them.
5.6 Instead, the Respondent is said to be using the Domain Names “in connection with a portal site that provides links to various third-party services offering services competitive with [the] Complainant” and from which the Respondent generates “Pay Per Click” revenue. It is said that it can be seen from this that the Respondent is making an illegitimate, commercial, unfair use of each of the Domain Names.
5.7 On the issue of bad faith, the operation of the pay per click site is said to involve activity falling within the scope of paragraph 4(b)(iv) of the Policy. Further given the Complainant's international presence and brand recognition it claims that “it is likely that the Respondent knew of the Complainant's mark, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion”.
5.8 In the Amendment to the Complaint, the Complainant puts forward a number of contentions in relation to the change of details in the WhoIs entries in relation to the Domain Names. In particular:
(i) It maintains that where the registrant of a domain name is other than a privacy service that was named in the complaint, it is appropriate to proceed with both the privacy service and the newly identified registrant as respondents (citing Covanta Energy Corporation v. Moniker Privacy Services and Gregory Ricks,WIPO Case No. D2007-0182).
(ii) It claims that the identities given for the four Respondents are fictitious and cites several WIPO cases under the Policy to the effect that in such circumstances the proceedings should be allowed to proceed as if it were brought against one entity.
5.9 In support of its claim that there is only one domain name holder, the Complainant makes reference to the fact that all four Domain Names were registered with the same Indian-based registrar within a span of about three months, all using the same Indian privacy service and “sharing only two sets of domain servers”. Reference is also made to the fact that each entity has an Indian address, contains as part of its name what is claimed to be the “unusual” PRIVATE LIMITED or PVT LTD ending and that all of the Domain Names are used in connection with monetized parking pages.
5.10 The Amendment to the Complaint also claims that the Respondent has abusively used a WhoIs privacy service to disguise its true identity. Lastly, reference is also made to the fact that the named registrants in this case had been involved in no less than 41 cases in which there had been a finding of abusive registration. A long list of these cases is then provided, 23 of which involve Laksh, 17 involve Comdot and one of which involves Comsys. B. Respondent
5.11 No Response was filed in relation to the Complaint. There was also no response to the claims in the Amendment to the Complaint that the listed registrants for the Domain Names in reality represented a single entity. C. Registrar
5.12 The Registrar's Submission is undated but is signed by Mahesh K Maalik, a person who identifies himself as a director of the Registrar. The document does not attach any supporting evidence but it asserts as follows:
(i) The Domain Names are held “under one reseller but in different customer accounts”, and the “registrants as per [the Registrar's] records for [the “Domain Names”] were different companies and hence [the Registrar] identified them as per [its] records”;
(ii) It is not obliged to reveal the name of the reseller;
(iii) Delay on the part of the Registrar in response to verification requests has been due “to administrative procedures in [its] office”;
(iv) “Most of the domains are held under private whois by clients which is a service being provided by all registrars. It takes some time to verify and see that the correct details are handed out so that there are no problems for the UDRP process”. However, later on in the document it asserts that “[t]he registrant of the domain is identified as per [its] records based on the day when [the Registrar] first receive[s] the verification email from the provider”;
(v) The Registrar “immediately placed the [Domain Names] under lock so that the registrant cannot be changed”. It denies that there has ever been an instance where the registrant details have been changed after receiving the verification email.
(vi) The Registrar has been at the “fore front of identifying the names of domain holders and disabling the private who is service as and when [it] receives complaints of Trade Mark violations and find some material in it”; and
(vii) Reference is also made to the fact that in the past the Registrar has identified domain names belonging to the registrants revealed in this case. It denies any suggestion that it is “giving out false registration details” to “frustrate the UDRP proceedings”. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will deal with each of the requirements in turn but, before doing so, it is necessary to consider a number of procedural aspects to this case, and in that context the question of the identification of the Respondent in this case. What follows is a somewhat lengthy discussion, but the conclusions reached enable the rest of the case to be decided relatively easily. It is then necessary briefly to comment on the appropriate remedy in the case of the Domain Name. A. Procedural Issues and Identity of the Respondent Registrar Delay
6.5 The first thing the Panel notes in this case is the 7 day delay on the part of the Registrar to respond to the Complainant's request for registrar verification. No explanation or apology was offered by the Registrar to the Center in relation to that delay. The Panel is disturbed to note that it took so long for the Registrar to respond to that request. Any such delay in responding to a verification request simply plays into the hands of cybersquatters, particularly if the cybersquatter is using the domain name(s) concerned for the purposes of pay per click advertising.
6.6 A delay of 7 days is also difficult to reconcile in any sensible fashion with the three day deadline placed upon a dispute resolution service provider such as the Center, under paragraph 4 of the Rules.
6.7 The Panel also notes that ICANN's Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution of December 2008 suggests that registrars should provide the relevant information within two days.1
6.8 Sadly, the Registrar's delay in this case would appear to be far from atypical. An examination of the cases commenced with the Center in 2008 that involved the Registrar, and are available on the Center's publicly-available database of decisions at the time of this decision, would suggest that delays by this Registrar in responding to the Center's requests of 7 days and above are common place. In particular:
WIPO Case No. D2008-0025 - Comdot case - 14 day delay
WIPO Case No. D2008-0213 - Comdot case - 9 day delay
WIPO Case No. D2008-0477 - Comdot case - 22 day delay
WIPO Case No. D2008-0658 - Laksh case - 16 day delay
WIPO Case No. D2008-0682 - Laksh case - 14 day delay
WIPO Case No. D2008-0687 - Laksh case - 14 day delay
WIPO Case No. D2008-0691 - Laksh case - 10 day delay
WIPO Case No. D2008-0784 - Laksh case - Immediate response
WIPO Case No. D2008-0804 - Laksh case - 14 day delay
WIPO Case No. D2008-0817 - Laksh case - 15 day delay
WIPO Case No. D2008-0871 - Non “registrant” case - 11 day delay
WIPO Case No. D2008-0877 - Laksh case - 14 day delay
WIPO Case No. D2008-0893 - Laksh case - 21 day delay
WIPO Case No. D2008-0952 - Laksh case - No Reply
WIPO Case No. D2008-1036 - Laksh case - 19 day delay
WIPO Case No. D2008-1112 - Laksh case - 14 day delay
WIPO Case No. D2008-1119 - Laksh case - 13 day delay
WIPO Case No. D2008-1178 - Compsys case - 11 day delay
WIPO Case No. D2008-1212 - Compsys case - 1 day delay
WIPO Case No. D2008-1250 - Laksh case - 7 day delay
WIPO Case No. D2008-1284 - Comdot case - 3 day delay
WIPO Case No. D2008-1316 - Laksh case - 3 day delay
WIPO Case No. D2008-1329 - Laksh case - 3 day delay
WIPO Case No. D2008-1468 - Pluto case - 7 day delay
WIPO Case No. D2008-1483 - Pluto case - 6 day delay
WIPO Case No. D2008-1605 - Pluto case - 15 day delay
WIPO Case No. D2008-1617 - Pluto case - 10 day delay
WIPO Case No. D2008-1627 - Pluto case - 10 day delay
6.9 It can be seen from this that only in two out of the 28 cases listed did the Registrar act in accordance with ICANN's suggested two day deadline. Further an examination of the published decisions in these cases reveals that in many instances, the information was only provided after many emails from the Center chasing the Registrar for a response. Why it is that the Registrar has been so tardy cries out for an explanation. One possibility is that it has not put the resources in place to deal properly with requests under the Policy. Another is that it is in no hurry to provide information where a delay is in the interests of its customers.
6.10 The Registrar's response to this issue in the Registrar's Submission is wholly inadequate. It claims that the delay in the current case (and perhaps earlier cases) was due to “administrative procedures”, but does not provide any explanation of what these administrative procedures might be. It is difficult to see what they could be. Other registrars are quite capable of responding in a timely fashion to verification requests from the Center and there is no apparent reason why the Registrar could not also do so. The assertion of the Registrar that “it takes time to verify and see that the correct details are handed out” makes little sense. As is explained in greater detail later on in this decision, where, as here, a registrar operates a “WhoIs privacy service”, it is required to identify the registration details that it holds on any underlying “true” registrant that lies behind that service. It is difficult to see why this information cannot be promptly retrieved and provided to the applicable provider (at the very least) within ICANN's suggested two day deadline. No lengthy “verification” or “checking” process should be required. Indeed, the fact that the Registrar claims it needs to go through such a “verification” or “checking” process is of itself concerning (a point that the Panel will return to in the context of a discussion of paragraph 8(a)(i) later on in this decision).
6.11 It is clear that the Panel has not been told the whole story of what is going on here. Whatever is the true reason for these persistent delays, the Registrar's behaviour is deeply concerning. In order for the UDRP process as a whole to function efficiently, timely registrar verification is essential and all the more so given the now apparently wide-spread offering by registrars and others of privacy and proxy registration services which may obscure the identity and contact information of any underlying “true” registrant. Even more concerning is that there is no statement in the Registrar's Submission that the Registrar is seeking to address these problems and no reassurance is provided that these delays will not reoccur in future cases. Multiple Registrants
6.12 The next procedural issue that the Panel has to consider is the fact that prima facie there are four different registrants in this case. This raises the question whether or not these proceedings can continue in respect of all of the Domain Names, or whether they can proceed against one only and that it is necessary for the Complainant to file separate proceedings in respect of the other Domain Names.
6.13 The Policy, Rules, and WIPO Supplemental Rules do not expressly provide for multiple parties in proceedings. Reference is made through out to the “complainant” and “respondent” in the singular. However, there are cases in which multiple complainants have been permitted, particularly where different complainants each have different interests in the same underlying mark (for example, cases of both trade mark owner and licensee interests in a domain name or where different complainants each have different interests in more than one mark combined in a single or number of domain names registered by the same entity). In the opinion of the Panel this is often a sensible practice. It may dispel any doubt as to whether the proceedings of a trade mark licensee are brought with the consent of the licensor and avoids the at least historically difficult question as to whether or not a licensee has sufficient rights for the purposes of the Policy (as to which question see paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”)). For one example of a case in which the issue was expressly addressed and multiple complainants were allowed, see ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,WIPO Case No. D2008-0936.
6.14 The issue so far as respondents are concerned is more difficult. It cannot be the case that a complainant can bring a complainant in relation to a number of domain names against a number of registrants where there is no plausible connection between the registrants. To join together what are in reality separate proceedings against separate parties into a single complaint merely because each involve the same complainant is essentially an abuse of the Policy. It risks placing an unfair burden on what may be wholly unrelated registrants to answer what are in reality separate complaints, and on panelists who are engaged on a fixed fee basis in accordance with the scale set out in Annex D to the Supplemental Rules. Therefore, if it is to be allowed at all, some further connection between the registrants is required. In this respect, the fact that the domain names share the same mark and were registered using the same proxy or privacy registration service would without more appear to be insufficient to establish the requisite connection between registrants (see, for example, Boehringer Ingelheim Pharma GmbH & Co. KG v. Domains by Proxy, Inc / Pradeep Dadha / Jonathan Valicenti,WIPO Case No. D2006-0465).
6.15 This still leaves open the question what is the correct approach where the same WhoIs privacy service entries are provided in relation to different domains. The Policy and Rules were drafted at a time that these services did not exist, and neither the Policy nor the Rules were drafted with these services in mind. It has been argued that the legality of these services is questionable given the obligation of registrars under paragraph 3.3 of the ICANN Registration Accreditation Agreement (the “RAA”). However, that is not an issue on which this Panel is minded to comment in this case. Whatever the legitimacy of such services, the reality is that they have proliferated. These services are, for good or ill, now a widely established feature of domain name registration services and panels are required to deal with the consequences of this so far as the operation of the Policy and the Rules are concerned.
6.16 One of the difficulties caused by these services is that where a potential complainant believes that multiple abusive domain names have been registered with a single service, it cannot from the WhoIs record tell in advance how many entities are behind these domain names and therefore the number of complaints it may need to file. A complainant cannot be criticised in such a case for filing a single set of proceedings with the Center against the WhoIs privacy service. Indeed, it may in practice have little choice but to do so in order to facilitate access to the identity of any “true” underlying registrant. But then what should the Center, panel, and complainant do where, as here, the registrar in response to the Center's verification request reveals different registrant details for different names?
6.17 The Center's typical position in such circumstances was briefly summarized in its email of November 12, 2008. In short, it left it to the Complainant to make certain choices and to the Panel to make certain determinations, but noted that if the Complainant chose to proceed with a single Complaint and the as yet unappointed Panel held that there was no connection between the registrants, the Panel might elect to proceed in respect of one domain name only. It therefore invited the Complainant “to file an amendment to the Complaint or, if no common link between the four entities is found, amend this Complaint and file separate Complaints as determined to be appropriate [by the Complainant]”.
6.18 The Complainant in this case contends, citing Covanta Energy Corporation, supra, that the proceedings should proceed with both the privacy service and the revealed registrants listed as Respondents.
6.19 The Panel accepts that in the Covanta case the panel proceeded on the basis that the privacy service and the individual disclosed in response to the Center's verification request should be jointly treated as the respondent. Indeed, it is fairly common practice in proceedings where a registrar reveals the “true” registrant behind the privacy service, for both the privacy service and the revealed registrant to be named in the heading of the proceedings.2
6.20 Nevertheless, as is explored in Mrs. Eva Padberg, supra, the Panel believes that the heading used in proceedings under the Policy is simply a matter of administrative convenience. Further, whilst the Panel in Covanta reached its conclusions as to who was the respondent given a consideration of paragraph 1 of the Rules, the question of whether an entity has been correctly named as the respondent for the purposes of the filing of a complaint and what is the entity against whom the assessment of rights or legitimate interests and bad faith is to be judged, are not necessarily the same thing.
6.21 The Complainant may not disagree with any of this and its point is perhaps somewhat more straight forward: i.e., if it was legitimate (or at least no criticism can be levelled against the Complainant) to have filed a single set of proceedings in relation to all of these Domain Names because the same entity was recorded in the Registrar's WhoIs database at the time of registration, why should it be forced to start its proceedings again with all the associated delay that this involves because when any “true” registration details are revealed these indicate what may be different entities behind the registrations?
6.22 In the Panel's opinion this is a powerful point3. But similarly, it is also unfair to genuinely unrelated “true” registrants to require them to participate as co-respondents in a single consolidated proceeding, or to expect a panel to have to decide in single case what are essentially multiple proceedings.
6.23 Perhaps in such a case the complainant may not necessarily be required to commence fresh proceedings, and the Panel could direct that upon the payment of appropriate additional fees, the matter could be subdivided into “split” proceedings with each referred to a different panelist or panelists. This approach might have the advantage of allowing the matter to proceed relatively rapidly. It would allow for continuity of “pending” proceedings under paragraph 8(a) of the Policy, and (depending on the circumstances of the case) there might not be the need for the parties to file fresh submissions. However, it is an approach that would require a wide reading of the powers granted to the Panel under paragraph 10 of the Rules and/or the agreement of the complainant pursuant to paragraph 19(d) of the Rules.
6.24 There is also little guidance on this issue in previous cases, and the Panel is not aware of a panel previously making an order of the sort suggested above. The Covanta case involved a single domain name, so the question of how to deal with different respondents did not arise. The Panel also notes that in Boehringer Ingelheim Pharma GmbH & Co. KG, supra, a domain name privacy service revealed two registrants and the panel proceeded in relation to one registrant and that the complaint against the other be “dismissed from this proceeding without prejudice [to the filing of a future complaint]”. Identification of the Respondent
6.25 Ultimately, the Panel does not consider it necessary to consider these questions further in this case. This is because the Panel believes that the Complainant is right when it asserts that the Domain Names are controlled by a single entity (regardless of whether or not the registration details provided are fictitious), or alternatively that the registrants are so closely connected that the Complaint can still proceed as if there were a single respondent. The Panel agrees with the Complainant that the situation is similar to that which arose in General Electric Company v. Marketing Total S.A,WIPO Case No. D2007-1834. In that case the panel stated as follows:
“The Panel finds that the circumstances in this case indicate that the 7 named registrants are, essentially, the same. As noted by the Complainant, several registrants share identical mailing addresses, and previous panels have found that some or all of these entities function as aliases for the Respondent. For example, panels have found that Maison Tropicale S.A., Caribbean Online International Ltd., Click Consulting Ltd., Web Advertising Corp., and Marketing Total S.A. are all one and the same entity. See, e.g., Diamonique Corporation v. Maison Tropicale S.A.,WIPO Case No. D2007-1093; see also Educational Testing Service v. Caribbean Online International Ltd., Keyword Marketing, Inc., Maison Tropicale S.A. and Wan-Fu China, Ltd.,WIPO Case No. D2007-0500. In addition, panels have found that Keyword Marketing Inc. and Web Advertising, Corp. (found to be essentially the same as the Respondent) are the same. See E, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc.,WIPO Case No. D2006-1380; Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc.,WIPO Case No. D2007-0678. The Complainant also notes that the domain names at issue point to nearly identical web pages.”
6.26 Similar cases (also cited by the Complainant) are Barnes & Noble College Bookstores, Inc. v. Oleg Techino,WIPO Case No. D2006-1537 and Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc.,WIPO Case No. D2003-0283.
6.27 In the current case before the Panel, the addresses given for the registrants are not identical, but the Panel is of the view that nevertheless there is sufficient evidence before it to enable it to find that the Domain Names are in reality controlled by the same entity.
6.28 First, there are the facts that the addresses given are all in Mumbai (and two are in the same district of Mumbai), that all the Domain Names are in some way Western Union related and that all the Domain Names were registered within a short period of time. Any suggestion that it is simply coincidence that four independent entities located in Mumbai should decide to register domain names of this particular sort at the same time, is inherently improbable. In the absence of any credible explanation to the contrary, the obvious inference is that the entities behind the registrations are in some way connected.
6.29 Second, there are the addresses given for two of the four registrants. Each address is expressed to be c/o (i.e., “care of”) some third party “society”. It, therefore, seems unlikely that these are addresses from which entities under the registrants' names conduct trading activities. In the case of two addresses the telephone numbers given are also clearly false, comprising no more than a series of zeros. Therefore, it would appear that even once the WhoIs privacy service entry is stripped away, at least three registrants are still going to some lengths to disguise their location and identity.
6.30 Third, an assessment of the cases before the Center involving the registrants in 20084 suggests that the modus operandi of the “registrants” has been at all times essentially identical. In each case the domain name was used in connection with a domain name parking site, the same registrar and domain name parking service is used, the registrants do not respond to any pre-action correspondence from rights holders and the registrants do not file a response to any proceedings commenced under the Policy.
6.31 Fourth, there is the express allegation of the Complainant in the Amendment to the Complaint that the listed entities essentially disguise a single owner of the Domain Names. There was no response to that allegation. This is highly telling. For someone to allege that an entity is a front for another person or organisation is a serious charge. A finding that this is the case by a panel could, for example, have serious knock on affects for the registrant in other cases. If the allegation were incorrect, one would expect at least one of the registrants to dispute this.
6.32 This last point does not involve any reversal of the burden of proof that is placed upon a complainant, and the Panel is not suggesting that a failure to respond to a complaint necessarily involves an acceptance of the allegations contained in the complaint. Whilst there have been some early cases under the Policy that suggested that this may be so, it is now a minority view and one with which this Panel does not agree (see the WIPO Overview paragraph 4.6). It is simply that the Panel considers it to be extremely unlikely as a matter of fact that not one of four registrants facing an allegation that they can be treated as one entity, would take any step to deny that allegation if that allegation were untrue. This is so even if the registrants had no intention of otherwise contesting an allegation of abusive registration.
6.33 Fifth, there is the fact that a curious pattern emerges from the list of cases involving the Registrar set out above. The list of cases above is set out in Center case number order. The Center provides consecutive numbers to cases when complaints are filed. Therefore, the case number order also in broad terms reflects the order in which the Registrar has provided responses to verification requests.
6.34 From the list is clear that with the exception of one case (i.e., D2008-0871), only Comdot, Laksh, Compsys, and Pluto were respondents in any Registrar case in 2008, and these cases broadly fall into three phases. There are some early cases in which only Comdot was the respondent, followed by a long series of cases in which (apart from three cases all commenced in about August 2008) Laksh is nearly always the respondent, and then a third phase in which only Pluto has been the respondent. This is quite remarkable. It is extremely improbable that the cases would line up in such a regular order by chance given that the complainants in these cases are unconnected. The only sensible suggestion is that there is some connection between the registrants.
6.35 Perhaps one way to explain this pattern away is to say that there is a connection here but it takes the form of arms lengths transfers of entire portfolios between the various registrants in 2008. Of course, that simply begs the question why the registrants would have entered into these transactions. However, leaving this to one side for the moment, there is another problem with this “explanation”. In this case, four different registrants have been named in relation to the Domain Names. How is it that this might have occurred? Has there been a further recent transfer in which the portfolios of the registrants have now been split up between the various registrars? And if this is so, why were four related “Western Union” domains split up between four different entities? Are we to believe that a four way split, which is the outcome that is likely to be most procedural disruptive to the Complainant, merely occurred by chance.
6.36 The Panel is not saying that these are the only possible “innocent” explanations for what has happened. It is simply that it is difficult to conceive what that explanation might be without embarking upon a journey of conjecture involving increasingly improbable steps. In the absence of any other explanation from any of the registrants as to what is going on here, the most probable explanation for this pattern is that a single respondent has chosen from time to time to adopt different names to disguise the fact that there is a single entity behind the registrations but that so far as the Domain Names are concerned different names were chosen with a view to disrupting these proceedings.
6.37 For all these reasons the Panel is of the view that the case can and should proceed on the basis that Pluto, Laksh, Comdot, and Comsys can all be treated as a single respondent, and the term Respondent in the rest of this decision is to be interpreted accordingly.
6.38 The Panel is not dissuaded from that conclusion by the assertions of the Registrar in the Registrar's Submission. The Registrar reveals that all the registrations are “held under one reseller”, which suggests yet another common connection between the Domain Names. It claims that the Domain Names are held in “different customer accounts” and that the registrations for the Domain Names are held by “different companies”, but the reference to different companies is qualified by the statement that this is “as per [the Registrar's] records”. In other words, the Registrar has been careful to limit its comments to what appeared in its records, and it has declined to make any positive statement as to who it is that actually controls the Domain Names. Change in Registration Details
6.39 This in turn raises another important issue so far as the conduct of the Registrar is concerned. If the domain name registration details for the Domain Names were adopted to disrupt these proceedings, when exactly did this happen? One possibility is that the real registrant adopted the current names at sometime subsequent to the Complainant's lawyer's letter of July 29, 2008 and before the filing of the Complaint. The other is that this was done in response to the Complaint itself. If the latter is the case, it would mean that the Registrar has allowed the Respondent to act in breach of paragraph 8(a) of the Rules.
6.40 How paragraph 8(a) operates and how this can be reconciled with the operation of a WhoIs privacy service was touched upon by this Panel in Mrs. Eva Padberg, supra. In simple terms paragraph 8(a) provides that once proceedings are “pending” under the Policy, then those proceedings cannot be defeated by the transfer of the domain name to a third party. Inherent in the claim that domain name privacy services are legitimate, is the assertion that it is legitimate to maintain a registration database that is different from the one used for the purposes of the public WhoIs database in which the “real” or true registrant is recorded. However, if this is so, then it must be on this real registration database that paragraph 8(a) bites.
6.41 It therefore follows that once a registrar has been given notice of proceedings in relation to a domain name that is subject to a WhoIs privacy service, it must take steps to ensure that the underlying database which records the “true” registration details for that domain name is not changed. To allow such a transfer is not only to allow a breach of the Policy by the registrant but involves a breach of the Policy by the registrar (which is bound to comply with the Policy by paragraph 3.8 of the RAA).
6.42 This is an issue on which the Registrar in its Registration Submission appears to be emphatic. It claims that the Domain Names were placed on hold on receipt of the verification request and that there has never been “an instance that the registrant details have been changed after receiving the verification email”. The problem is the force of this statement is undermined by the Registrar's own statements as to delays.
6.43 According to the Registrar there are certain undisclosed “administrative procedures” that need to be complied with and a supposed need to “verify and see that the correct details are handed out”. Inherent in these statements appears to be the admission that what appears on the Registrar's database may not be the information that is actually provided as that information is subject to “verification” or “correction”. There is also the fact that the Registrar claims that the Domain Names were sold through a “reseller”. The issue of the activities of “resellers” is something that the Panel will come back to later on in this decision, but for present purposes it raises the question to what extent the reseller has access to and control over the true registration details for the Domain Names. Last but not least, perhaps the easiest way for the Registrar to have addressed the question of paragraph 8(a) would have been simply to disclose when it is that the registration details for each of the Domain Names took their current form. Unfortunately, the Registrar does not do this.
6.44 Ultimately, the position is unsatisfactory. The Panel is left in a position where there is insufficient evidence before it to justify a finding that paragraph 8(a) of the Policy has been breached in this case. Nevertheless, what happened in this case remains far from clear and the Registrar's response on this issue rather than clearing up this matter once and for all (as it could easily have done) instead raises more questions than it answers. Luckily, it is not necessary to consider this matter further for the purposes of this decision. B. Identical or Confusingly Similar
6.45 There is little doubt in this case that the Complainant is the owner of numerous trade marks around the world that incorporate the term, “Western Union”. These include at least one mark that comprises the words “Western Union” alone.
6.46 Further, the Domain Names can only be sensibly understood as the terms “Western Union” (on one occasions misspelt as “westernuniopn” and on another as “westenunion”) which on three occasions has been combined with terms associated with the world of finance (i.e., “money transfer”, “insurance”, and “mastercards”). None of these terms (nor the “.com” TLD) so distract from the words “Western Union” so as to prevent the Domain Names from being confusingly similar to the Complainant's WESTERN UNION mark. The fact that one of those terms (i.e., “mastercards”) incorporates a trade mark of another entity does not on the facts of this case make any difference to the assessment (see, for example, Citigroup, Inc., MasterCard International Incorporated v. Domain Proxies, LLC,WIPO Case No. D2008-0951 and Compagnie Gervais Danone v. Domain Management, Syed Hussain,WIPO Case No. D2008-1239).
6.47 In the circumstances, the Panel finds that each of the Domain Names is confusingly similar to a trade mark in which the Complainant has rights. The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
6.48 The Panel accepts the Complainant's claims that the Respondent has never engaged in a substantial business activity under the “Western Union” name or anything similar. Accordingly, it has not as a consequence of such activity established a right or legitimate interest in this term.
6.49 The only activity in which the Respondent appears to have been engaged is the operation of web pages from the Domain Names. As has already been described, these web sites have all show the classic hallmarks of a parking site. How these sorts of sites operate is described in greater detail in the context of bad faith later on in this decision. In the view of the Panel there is no real doubt that in this case the Respondent has registered these Domain Names with a view to earning a share of the click through revenue generated by the domain name parking page in question.
6.50 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.51 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Names with the Complainant's marks in mind and has it deliberately used it to take advantage of the reputation of those marks? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use, and a separate assessment of the question of rights and legitimate interests adds very little.
6.52 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the unequivocal answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Names and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
6.53 The Panel has little difficulty in concluding in this case that the Domain Names have been registered and used in bad faith.
6.54 First, there is the use of the Domain Names in connection with a “domain name parking” or “pay per click” service. It is now well-known how these sorts of page operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA,WIPO Case No. D2007-1143).
6.55 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (see for example Express Scripts, Inc., supra.).
6.56 In this case the Complainant has put forward evidence of the extensive world wide activities of the Western Union Group (including that in India) and the substantial reputation of the WESTERN UNION mark. There is also the fact that three of the Domain Names include additional terms that are associated with financial services, a field in which the Complainant is involved. One of these additional terms is “money transfer”, an activity for which the Complainant is particularly renowned. In short, the Panel considers it highly improbable that the Respondent was not aware of the Complaint's mark at the time that the Domain Names were registered.
6.57 This combined with the subsequent use of the Domain Names means that the only sensible explanation of events is that when the Respondent registered the Domain Names it did so with full knowledge of the Complainant's mark and with a view to using the similarity between that mark and the Domain Names to draw Internet users to a domain name parking page for financial gain.
6.58 This is sufficient for the Panel to reach a conclusion on bad faith in the Complainant's favour. However, there are also other factors in this case that point in that direction.
6.59 As has already been explained, it is clear in this case that the Respondent (and indeed each of the original registrants that the Panel has been prepared to treat as a single entity for the purposes of these proceedings) has a track record of registering domain names that incorporate the domain names of others with a view to generating revenue through the mechanism of domain name parking services. Cases before the Center in 2008 have already been listed earlier in this decision. It is also clear from the Amendment to the Complaint that similar cases involving Laksh, Compsys, Comdot, and Pluto have also been heard before the National Arbitration Forum both in 2008 and 2007.
6.60 In short, it is fair to say that previous cases show the Respondent to be a serial cybersquatter that appears to have adopted a business model that involves the exploitation of the trade mark rights of others with a cynical disregard for those rights.
6.61 Further, there is the use of the Registrar's WhoIs privacy services to hide the Respondent's identity and the use of different names to disguise the fact that the domain names are controlled by the same entity. As this Panel described in First SBF Holding, Inc. v. XC2,WIPO Case No. D2008-0409, the use of a WhoIs privacy service ordinarily does not of itself justify a finding of bad faith, but it can in some cases be a factor that points in that direction. In this case, it seems to be an integral part of the scheme that the Respondent has devised to take advantage of the rights of others.
6.62 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.63 There is one last point that needs to be recorded about the Registrar in this case. Registrars cannot reasonably be expected to examine every domain name registration of their clients so as to ensure they will not infringe the rights of others. Nevertheless, the facts of this case are extraordinary. They suggest that, with one exception, every case brought before the Center in 2008 in relation to domain names registered with the Registrar involved the same entity engaged in each case in the same type of activity. There were 28 of these cases before the Center. There were others before the National Arbitration Forum. The cases in 2008 also appear to be merely the latest cases in a series of cases that stretch back in time even further. It is fanciful to suggest that the Registrar did not know what was going on here. And notwithstanding this, the Registrar seems to have been content to allow the Respondent to use its domain name privacy service in order to disguise its activities.
6.64 There must come a point where the evidence of the activities of a customer becomes so overwhelming that any claim from a registrar that it is not responsible for the actions of that customer rings hollow. The registrar ceases to be the innocent provider of registration services that have been used for improper purposes and instead becomes a knowing aider and abetter of the wrongful activities of a serial cybersquatter. A registrar that is allowed to act in this fashion risks bringing the domain name registration system into disrepute.
6.65 In this case there are hints in the Registrar's Submission that the problem may not lie with it, but with a “reseller”. According, to the Registrar all the Domain Names in this case were held under one reseller, and the implication seems to be (although this is not stated expressly) that this may be true for all domain names held in the names of Laksh, Compsys, Comdot, and Pluto.
6.66 The exact relationship between the reseller and the Registrar is not explained, but ordinarily a reseller is a person or entity that will have entered into some form of agreement with a registrar where the reseller is provided with a user interface through which it may register, renew, and transfer domain names using the registrar's own system5. In short, what is happening in such cases is that a registrar is devolving part of its responsibilities as a registrar to another entity.
6.67 The fact that registrations are made indirectly through a reseller rather than directly by a registrar, does not absolve a registrar from its responsibilities under the Policy (see Grundfos A/S v. Bridge Port Enterprises Limited,WIPO Case No. D2008-1263). If a registrar enters into a commercial agreement in which it hands over control over the registration process to another, then it is accountable for the actions of that entity.
6.68 Therefore, it is no answer to a complaint about the Registrar in this case to assert, if this is what the Registrar intends, that the blame here is to be laid at the door of some unnamed reseller. It may well be the reseller, rather than the Registrar, that has direct contact with the entity that is behind the Domain Names in this case, but it is the Registrar that remains responsible for any abuses of the domain name registrant that may thereby result.
6.69 There is also another aspect of the reseller issue that is at least curious. That is the assertion in the response by the Registrar that it is not obliged to reveal the name of that reseller. Why it is that the Registrar is so coy about this fact is far from clear. If a single reseller has been involved to some degree in virtually every registration that has resulted in a finding of abusive registration before the Center in a year, why is it that the Registrant appears to be so anxious to keep the identity of that reseller secret?
6.70 These facts when considered together with the other concerns about the Registrar's conduct mentioned earlier in this decision are disturbing. Even on the most generous of interpretations, they show that the Registrar has in place inadequate procedures for dealing with complaints under the Policy. They also raise questions as to what extent it has proper control over the activities of its resellers and the extent to which it and/or one of its resellers have actively facilitated the activities of serial cybersquatters.
6.71 Ultimately, these questions involve issues of registrar regulation and Internet governance that go beyond the function of the Panel or the Center in individual cases. They are for ICANN. In the circumstances, the Panel invites the Center to forward a copy of this decision to ICANN, with a view to ICANN undertaking such investigation of the activities of the Registrar and taking such steps (if any) as it considers appropriate in all the circumstances of the case. E. Remedies
6.72 The remedies that are open to a panel if it finds in favour of a complainant are either to order the transfer of the disputed domain name to the complainant or to order that the domain name be cancelled. Usually the panel will order transfer.
6.73 However, a difficulty can arise where a domain name comprises two different marks belonging to two different entities. In Lilly ICOS LLC v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794, the panel in a case brought by the owner of the CIALIS mark but in respect of domain names that also incorporated the marks of others, stated:
“The Panel considers that the transfer of names and would violate third parties rights. In the absence of a letter of support from the owner of the marks or a co-action, the transfer is not the appropriate remedies (Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions,WIPO Case No. D2003-0725)”.
6.74 In this case the Domain Name, incorporates the MASTERCARD mark. The Complainant contends:
“Complainant has obtained from MasterCard a license to the domain name providing Complainant with the right to pursue the [domain name] in this proceeding and to maintain the registration of it thereafter. (A copy of this confidential license agreement is available to the Panel upon request.)”
6.75 The implication seems to be that these rights may arise out of a broader commercial arrangement between the Complainant and MasterCard under which the Complainant may be able to use the MASTERCARD mark in combination with the WESTERN UNION mark. If that is the case, then the position is therefore somewhat different from the Lily ICOS case where there was no such commercial arrangement. Nevertheless, the Panel believes that the requirements are the same in both scenarios. What is required is some evidence of the fact that the other entity whose mark is incorporated in the domain name has agreed not only to the commencement of proceedings under the Policy, but the transfer of the domain name into the name of the complainant. It may be that this is clear from the terms of a licence agreement, but a panel does not need to see this. Some other credible evidence of the other mark holders consent is sufficient. The Lily ICOS case suggests some form of letter of consent, and in most cases this is likely to be the easiest way of dealing with this issue.
6.76 The Complainant contends that even without that consent it is entitled to transfer of this Domain Name. It cites four cases in this respect. These are MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,WIPO Case No. D2008-0325; Citigroup, Inc., MasterCard International Incorporated v. Domain Proxies, LLC,WIPO Case No. D2008-0951; Microgaming Software Systems Limited v. Private Whois Escrow Domains Private Limited/LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-0893; and Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246.
6.77 However, the Panel is of the view that these cases are scant authority for this proposition. Citigroup, Inc., MasterCard International Incorporated, supra is a case where the owners of both marks were joint complainants in this case. In Microgaming Software Systems Limited, supra, the complainant had submitted a signed letter from the owner of the other mark consenting to the proceedings. Similar evidence of the consent of the other rights holder was provided in Six Continents Hotels, Inc., supra (see footnote No. 1 to that decision).
6.78 That leaves the case of MasterCard International Incorporated, supra. In that case (as far as the Panel can tell) the domain name was transferred without the express consent of the other rights holder, but there is no discussion of the issue in the decision. There is, however, a statement in the final paragraph of the decision that the order for transfer would be “without prejudice to any rights which may be asserted by the third party owner” of the owner of the other mark in that case. This statement may be intended to leave the door open to the possibility of the non-expressly-consenting third party rights holder being able to initiate a separate proceeding in respect of the transferred domain name against the successful complainant (or perhaps a subsequent owner) based on that third-party's trade mark rights. However, this Panel has some difficulty understanding what the statement is intended practically to achieve as the third-party rights holder would presumably retain such right in any event. In the circumstances, the Panel is of the view that the view expressed in the Lily ICOS case is to be preferred.
6.79 Nevertheless, ultimately, the Panel is of the view that this does not matter. Whilst it would have much preferred (and other panels may require) more fulsome evidence of the other mark's owners consent, a statement contained in a complaint can in appropriate circumstances be treated as evidence for the purposes of these proceedings (see, for example, First SBF Holding, Inc., supra). Where an assertion of fact is made in relation to a matter that one would expect to be in the knowledge of the person signing a submission and that statement is not inherently incredible, then that is something that a panel can take into account. It may be outweighed by limited evidence to the contrary, but can be persuasive in the absence of this evidence. In this case the Complaint has been signed by the Complainant's lawyer, who has acted for the Complainant in many other cases under the Policy. Further, it is not inherently unlikely that Western Union might have entered into some form of agreement in relation to the use of the MASTERCARD name and that this agreement may extent to the use of and proceedings in relation to the domain name that incorporates that mark. The Panel notes, for example, that the Complaint advertises a MasterCard product on its own website. The Panel, therefore, accepts the Complainant's contention that MasterCard has consented to the Complainant seeking transfer of the Domain Names in this case. 7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , , and be transferred to the Complainant.
7.2 In light of the Panel's comments as to the Registrar's conduct in paragraphs 6.5 to 6.11, 6.39 to 6.44 and 6.64 to 6.73 above, the Panel further invites the Center to bring the contents of this decision to the attention of ICANN.
Matthew S. Harris
Sole Panelist
Dated: January 20, 2009
1 Accessible at: “/en/compliance/draft-advisory-best-practices-udrp-complaint-31oct08-en.pdf”.
2 Panels may also decide to treat the “true” underlying registrant as the sole respondent depending on the individual circumstances, in which case the decision heading would typically be modified accordingly.
3 And the Panel also notes that to force a complainant to accept that the revealed registrants be treated as the “true” respondent for the purposes of the proceedings raises difficult questions as to how mutual jurisdiction should then be assessed in accordance with paragraph 1 of the Rules.
4 A list of the cases involving the Registrar is already provided earlier on in this decision, and the Panel has been unable to identify any other case before the Center in which either Pluto, Compsys, Laksh, or Comdot were listed as the registrant.
5 See for example, the entry for “Domain Name Reseller” on Wikipedia as at January 20, 2009.
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