WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aluship Technology SP. Z O.O. v. Belize Domain WHOIS Service Case No. D2009-0028 1. The Parties
1.1 The Complainant is Aluship Technology SP. Z O.O., of Gdańsk, Poland, represented by Traple Konarski Podrecki Law Office, of Poland.
1.2 The Respondent is Belize Domain WHOIS Service, of City of Belmopan, Belize. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Domain Contender, LLC1 (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2009. The Complaint named as the registrar for the Domain Name “Belize Domain WHOIS Service”. On January 13, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2009, the Registrar transmitted by email to the Center its verification response confirming that it was the registrar for the Domain Name and that the Respondent was listed as the registrant and providing the relevant contact details. However, it did not specifically identify any billing contact details as is required by paragraph 2(a)(ii) of the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”).
3.2 In response to a notification by the Center that the Complaint was administratively deficient by reason of the fact that the registrar has been misidentified, the Complainant filed an amendment to the Complaint on January 27, 2009. 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” or “UDRP”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.3 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 February 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2009.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 16, 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.
3.5 On March 20, 2009 and having reviewed the case file, the Panel considered it to be appropriate to take the unusual step of issuing a procedural order directed to the Registrar (the “Procedural Order”). The Procedural Order invited the Registrar to file a submission in relation to its conduct. On March 25, 2009 the Panel reissued the Procedural Order in amended form and invited the Registrar to make representations if it required more time to respond to the Procedural Order by reason of these amendments. A copy of the Procedural Order (as amended) is set out at Annex A to this Decision.
3.6 On March 27, 2009, the Registrar filed a response to the Procedural Order. The substantive text of that response (with some minor noted redactions) is attached at Annex B to this Decision. 4. Factual Background
4.1 The Complainant is a company based in Gdansk, Poland engaged in specialised aluminium shipbuilding. It was founded in 2001 but is the successor in business to a number of companies and has a corporate history stretching back to 1990. One if its predecessors in business first started using the “Aluship” name in 1995.
4.2 The Complainant is the owner of two Community trade marks comprising or incorporating the word “Aluship”. They are:
(i) Community Trade Mark Registration No 5480496 in classes 6, 12, 37, 39, 40 and 42 filed on March 15, 2007 for the word “Aluship”.
(ii) Community Trade Mark Registration No 5480488 in classes 6, 12, 37, 39, 40 and 42 filed on March 15, 2007 for a device that takes the following form:
4.3 The Complainant registered the domain name on September 25, 2001 and used it for a corporate website. However, subsequently it also registered the domain name and used that domain name in respect of its activities. In about 2004 the Complainant noticed that the domain name no longer pointed to its corporate website. The exact details of what happened at this time are unclear but it would appear that for one reason or another, the domain name at that time expired.
4.4 The Domain Name was registered on November 26, 2004.
4.5 Who exactly is behind the current registration is unclear. The name given by the Registrar for the Respondent would suggest that the Domain Name is registered in the name of a WhoIs Privacy service. This is an issue that the Panel will come back to in greater detail later on in this Decision.
4.6 By at least December 2008 the Domain Name resolved to a web page that bore all the hallmarks of a domain name “parking” or “pay per click” service. The web page displayed a picture of a ship and links to various “searches”. The subject matter of the links varied but were in large part shipping or maritime related. For example, the top line of the page under the heading “” included for links “Ship”, “Viking Ship”, “Philadelphia Ships”, “bridges”, “Transportation Management”, “Nautical Supply” and “Cheap Air”. Two of four further groups of searches on the page were headed “Nautical Supply” and “Ship”.
4.7 As at the date of the formal commencement of the proceedings on 9 February 2009 (i.e. three weeks after the filing of the Complaint with the Center), the web page operating from the Domain Name had changed somewhat. It still appeared to have been generated by a “pay per click” service but the focus of the displayed search terms were IP or “internet protocol” related, with such links as “Ip”, “Ip Network”, “Ip Address”, “Ip Routing”, “Static Ip” and “Dynamic Ip. A similar page continues to be displayed as at the date of this Decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant refers to its Community Trade Marks and claims that the Domain Name is identical to Community Trade Mark Registration No 5480496 because the Domain Name is said to “entirely incorporate Complainant's mark and identical to Community Trade Mark Registration No 5480488 because “Aluship” is said to be the dominant element of this trade mark.
5.2 The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name and the registration is part of a pattern of serial cybersquatting. Reference is made in this respect to Fredericia Furniture A/S v. Belize Domain Whois Service Lt,WIPO Case No. D2007-1515.
5.3 The Complainant claims that the Respondent is not commonly known by the “Aluship” name and refers to the web page operating from the Domain Name at that time. It claims that by reason of the web page operating from the Domain Name the Respondent has sought to generate payments from the businesses running the websites to which that page links.
5.4 The Complainant asserts that the source code for the web site operating from the Domain Name included the text “forsale”.
5.5 The Complainant further asserts that this is a case where the burden of proof of showing a right or legitimate interest passes to the Respondent citing Do The Hustle, LLC v Tropic Web,WIPO Case No. D2000-0624.
5.6 Reference is also made by the Complainant to its previous ownership of and claims that this of itself indicates a lack of rights or legitimate interests, citing American Anti-Vivisection Society v. “Infa dot Net” Web Services, NAF Claim No. 95685, Z, Inc. v. Turvill Consultants, NAF Claim No. 404546 and Bill Clark v. HiNet, Inc., NAF Claim No. 405057. The allegation seems to be that the Respondent “opportunistically” registered the Domain Name when the Complainant inadvertently allowed its domain name to lapse.
5.7 On the issue of bad faith, the registration of the Domain Name when the domain name lapsed is said to indicate bad faith. Reference is made in this respect to InTest Corporation v. Servicepoint, NAF Claim No. 95291 and RH-Interactive Jobfinance v. Mooburi Servs., NAF Claim No 137041.
5.8 The Complainant also asserts that the Respondent has used the Domain Name to generate click through revenue by reason of the creation of “a likelihood of confusion as to Complainant's possible sponsorship of or affiliation with or endorsement of the [D]omain [N]ame”. It cites a number of decisions under the Policy in this respect.
5.9 Lastly, the Complainant lists no less than complaint 51 UDRP cases between June 2007 and October 2008 in which the respondent is named as “Belize Domain WHOIS Service”. A full list of these cases is set out at Annex C to this Decision. These decisions are said to indicate a pattern of bad faith registrations by the Respondent. B. Respondent
5.10 The Respondent did not reply to the Complainant's contentions. 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 Name is 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 Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is 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 address each of the requirements of the Policy in turn. However, before it does so it is convenient to deal with the issues in this case that led the Panel to take the unusual step of issuing a Procedural Order directed to the Registrar. A. Procedural Issues and Registrar conduct
6.5 In the Complaint the Complainant makes a number of assertions that appear to proceed on the assumption that the Respondent in each of these cases was the same entity. It appears to have been a position that was accepted by the Panel in Fredericia Furniture A/S v. Belize Domain Whois Service Lt,WIPO Case No. D2007-1515.
6.6 However, the name “Belize Domain WHOIS Service” at first sight suggests that this is a name of a “WhoIs Privacy” service. These are services, usually but not invariably offered by registrars, that “shield” the true or underlying registrant of a domain name. They are, to say the least, controversial. Their supporters put forward many reasons as to why they should be allowed, ranging from the requirements of local data protection and personal privacy laws (said to be applicable to noncommercial use) to the avoidance of spam. Their detractors claim that regardless of their claimed purpose, the services are now used wholesale by cybersquatters to disguise both their identities and the extent of their wrongful commercial activities. Indeed, the scale of the alleged/perceived misuse of these services is such that there have been many cases under the Policy in which panels have found the use of such a service to be a factor indicating bad faith under the Policy (see, for example, Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909, and the other Policy decisions referred to therein).
6.7 It has also been argued that these services are illegitimate given the terms of paragraphs 3.3 and 3.7.7.3 of the ICANN Registration Accreditation Agreement (the “RAA”) between ICANN and each Registrar. However, the Panel is unaware of ICANN having taken any action against registrars providing these services under this or any other ground. As a matter of fact and whether for good or ill, these services have proliferated and are now a widely established feature of the Domain Name System (“DNS”).
6.8 The difficulty that panels face as a consequence of the proliferation of these services lies in the fact that the Policy and Rules were drafted at a time that these services did not exist. Panels are left with at times the unenviable task of interpreting the Policy and Rules in a way which makes sense in the context of a service that was perhaps not in the contemplation of the drafters of those documents.
6.9 An example of the practical difficulties that can arise in this respect are set out e.g., in 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,WIPO Case No. D2008-1675. The current case provides yet a further example. To explain why, it is necessary to consider previous cases under the Policy in which “Belize Domain WHOIS Service” was listed as the “respondent”.
6.10 “Belize Domain WHOIS Service” is a name that has now appeared in a great many cases under the Policy. The Complainant lists in the Complaint no less 51 cases between June 2007 and October 2008 in which “Belize Domain WHOIS Service” is listed as the respondent. These 51 cases are listed at Annex C to this Decision.
6.11 So far as the Panel can discern, in each and every one of the cases identified by the Complainant, “Intercosmos Media Group d/b/a directNIC.com” was the registrar of the relevant domain name.
6.12 The Panel has also conducted a search of the Center's domain name decisions database in respect of decisions between June 2007 and 2008 using the term “directNIC.com”. It has been unable to locate a single decision during that period in which directNIC.com was registrar and a domain name privacy service other than “Belize Domain WHOIS Service” was identified in relation to the domain name in issue.
6.13 The Registrar in this case is not listed as “Intercosmos Media Group d/b/a directNIC.com “, but instead as “Domain Contender, LLC”. However, information on the website operating from Domain Contender, LLC's website would suggest that “Domain Contender” forms part of the Intercosmos Media Group2.
6.14 It is reasonable to infer from the above that Domain Contender, LLC is either the same entity as Intercosmos Media Group d/b/a directNIC.com or forms part of the same corporate group as Intercosmos Media Group d/b/a directNIC.com and/or that Domain Contender, LLC and Intercosmos Media Group d/b/a directNIC.com are under common control.
6.15 Further, it would appear that there are other cases under the Policy involving Domain Contender, LLC in which the respondent was also identified as “Belize Domain WHOIS Service”. Examples include Parrot S.A. v. Whois Service, Belize Domain WHOIS Service,WIPO Case No. D2007-0779 and PRODUITS BERGER v. Whois Service, Belize Domain WHOIS Service,WIPO Case No. D2007-1372. The Panel has been unable to identify a case involving the Domain Contender, LLC where the domain name in question was registered in the name of a WhoIs privacy service other than “Belize Domain WHOIS Service”.
6.16 One possible conclusion from these facts is that “Belize Domain WHOIS Service” is simply the WhoIs service used by a number of Registrars that form part of the Intercosmos Media Group. This of itself would be unremarkable. There is no reason why as a matter of principle different registrars should not form part of the same commercial group, nor (assuming in the Registrar's favour that domain name privacy services are legitimate) that they might offer essentially the same domain name privacy service.
6.17 The problem and concern here arises out of the fact that (as far as the Panel can tell) there is not a single case under the Policy where “Belize Domain WHOIS Service” was the registrant where the registrar (whether that be Domain Contender LLC or directNIC.com) in fact revealed any true or underlying registrant. If “Belize Domain WHOIS Service” were directNIC.com or Domain Contender, LLC's own domain privacy service, their behaviour as registrars would be in marked contrast to the behaviour of many if not most other registrars that operate “WhoIs privacy services”. The usual best practice of other registrars when receiving a verification request from a Policy Provider is to disclose the identity of any true underlying registrant in relation to the domain name that is the subject matter of those proceedings.3
6.18 There are very good reasons why reputable registrars will usually do this. First, paragraph 2(a)(i) of the Rules obliges registrars to supply dispute resolution Providers with at least a registrant's billing contact4. A registrar that refuses to disclose any true underlying registrant and provides only the “WhoIs Privacy” details available in the public register will necessarily have failed to comply with that obligation.
6.19 However, there is a second and far more fundamental reason for disclosure. That is that regardless of the exact requirements placed upon a registrar by the RAA, the Policy and the Rules, any registrar that fails to provide such information is as a matter of fact providing a means whereby cybersquatters may be able to disguise their identity even should UDRP panels repeatedly find against them. This directly obstructs the effectiveness of the operation of the Policy. Arguably any WhoIs privacy policy provides such an obstruction, but refusal to disclose this information in the context of proceedings under the Policy is activity of a quite different character. It makes the WhoIs database, at least so far as third parties are concerned, essentially meaningless. For a business to arrogate to themselves the right to circumvent a principal feature of the DNS without any authority or sanction from ICANN is to say the least disturbing. For a registrar to be involved in or to condone such activity not only is disturbing but threatens to bring the Policy into disrepute.
6.20 If that were not sufficient, such activity on the part of a registrar also opens up the prospect of even more serious registrar abuses. For example, a registrar can use a WhoIs privacy service as a mechanism to disguise its own abusive registrations and/or to disguise the fact that it has facilitated or connived in the wholesale abuses of others.
6.21 Given the seriousness of these issues, the Panel in this case took the unusual step of issuing an order in these proceedings that was directed to the Registrar5 (i.e. the Procedural Order). It put to the Registrar the points set out above, suggested that Belize Domain WHOIS Service appeared to be the Registrar's own WhoIs privacy service and stated that as matters stood, the Panel was likely to be critical in this decision of the Registrar's conduct. It, therefore, offered the Registrar a chance to respond and comment in relation to the same.
6.22 In response to this order the Registrar filed a short document in the name of an individual who identified himself as “counsel for directNIC”. In that document the Registrar:
(i) appeared to accept that directNIC and Domain Contender, LLC were connected companies;
(ii) asserted that “Belize Domain WHOIS Service” was not the WhoIs Privacy service of directNIC or Domain Contender, LLC;
(iii) claimed that the WhoIs Privacy service of directNIC or Domain Contender, LLC was “Direct Privacy LTD” and provided an example that suggested that “Direct Privacy LTD” operated out of a post office box (i.e. PO Box 12068) in George Town, Grand Cayman; and
(iv) asserted that since “directNIC is not Belize Domain WHOIS Service, the policies of Belize Domain WHOIS Service should not be imputed to directNIC”.
6.23 The Registrar followed these statements with an assertion that WhoIs privacy services were allowed by ICANN, and that “directNIC [had] consulted with ICANN when creating the first whois privacy service ever”.
6.24 There then followed the rather odd statement:
“As the panel surely is aware, in compliance with intellectual property laws, directNIC is not able to operate its whois privacy service in the manner that Godaddy operates because their whois privacy service has 3 patents. See . Consequently, rather than illegally operate in the same manner as other privacy services, directNIC operates in its own fashion and fully comporting with the ICANN's instructions”.
How that statement (even if true) was relevant to any of the issues that the Panel had raised in the Procedural Order was not explained.
6.25 No evidence was offered by the Registrar in support of these various statements and with all due respect to the directNIC, Domain Contender, LLC and its counsel, these statements are far from an adequate response to the Procedural Order.
6.26 First, the Registrar makes no attempt to refute the suggestion that in the period identified by the Complainant there was not a single case in which an entity other than “Belize Domain WHOIS Service” was identified as a WhoIs Privacy Service provider either for directNIC or Domain Contender, LLC.
6.27 Second, the Registrar does not attempt to refute the suggestion that during the same period only Domain Contender, LLC was named as the registrar in every case before the Center that identified Belize Domain WHOIS Service as Respondent.
6.28 If neither directNIC nor Domain Contender, LLC were associated with “Belize Domain WHOIS Service” this is a strange state of affairs. Essentially, it would appear that the Registrar is claiming that in that entire period no one using either directNIC or Domain Contender, LLC's own WhoIs privacy services was subject to a complaint under the Policy in contrast to at least 53 persons6 who used the “Belize Domain WHOIS Service” during the same period.
6.29 However, even if this is what did happen, this then raises equally serious concerns and questions about directNIC and Domain Contender, LLC's conduct.
6.30 First, even if “Belize Domain WHOIS Service” represents some arms' length third party “service” provider, directNIC and Domain Contender, LLC appear thereby to be admitting that they have knowingly allowed false details to be recorded in their WhoIs registers. “Belize Domain WHOIS Service” is apparently not the true registrant of the domain names, and it would appear not to be even the proper name of any legal entity (no incorporated entity is identified, just the name of a “service”). In many respects the position is even worse than would have been the case had this been the Registrar's own privacy service and no disclosure had been given. At least in such a case a complainant would know the entity that is disguising the identity of any true or underlying registrant. It is also not at all clear how either directNIC or Domain Contender, LLC can reconcile this with their obligations under the RAA.
6.31 Second, who is paying directNIC and Domain Contender, LLC for the registration of the domain names? As has already been explained the Registrar has an obligation to disclose registrant billing contact details to UDRP service providers. This appears not to have been done in this case (or are we being asked to believe that it is “Belize Domain WHOIS Service” is the one who is making all the payments?).
6.32 Third, there is the fact that every entity that used the “Belize Domain WHOIS Service” happened to use directNIC and Domain Contender, LLC as a registrar rather than some other registrar. This would be unremarkable if “Belize Domain WHOIS Service” was directNIC and Domain Contender, LLC's own “in-house” service but if (as directNIC would have the Panel believe) it is some independent third party, the position becomes very odd indeed. It is highly improbable that this can have happened in all of the noted 53 cases by chance. It is perhaps only explicable if one comes full circle back to the allegation inherent in the Complaint that “Belize Domain WHOIS Service” in fact represents one person7.
6.33 If this last conclusion is correct, this would also mean that directNIC and Domain Contender, LLC have been content to sit back and allow a single individual or entity to use its services for large scale abusive purposes. The content of directNIC's submission would suggest that neither directNIC nor Domain Contender, LLC are concerned about this or intend to take any steps to stop this occurring in future. As this Panel stated in Western Union Holdings, Inc., supra.
“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 abettor 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.”
6.34 Whatever is actually going on in this case, this is an unfortunate state of affairs. It is difficult to escape the conclusion that directNIC and Domain Contender, LLC are at the very least content to allow their WhoIs registers to be used in such a way that undermines the effectiveness of the Policy. Ultimately, the policing of registrar behaviour is a matter not for the Panel but for ICANN. Nevertheless, where it comes to a Panel's attention that a registrar by reason of its conduct has breached provisions of the Policy or otherwise sought to frustrate the operation of the Policy, this is something that should be drawn to ICANN's attention. In the circumstances, the Panel invites the Center to bring contents of this Decision to the attention of ICANN. It is then for ICANN to take such steps as it considers appropriate in relation to directNIC and Domain Contender, LLC's conduct. B. Identical or Confusingly Similar
6.35 This aspect of the case is straight forward. The Complainant is the owner of a registered Community Trade Mark for the word “Aluship” and the only difference between the Domain Name and that mark is the “.com” TLD. In the circumstances, the Domain Name is essentially identical to a trade mark in which the Complainant has rights.
6.36 Further, the Panel accepts that the Domain Name is confusingly similar to the Complainant's Community Trade Mark that takes the form of a device. It accepts that the most prominent element of the device is a depiction of the word “Aluship”.
6.37 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
6.38 The Panel accepts that the Domain Name in this case was registered by the Respondent for use with a “domain name parking” or “pay per click” service and for possible sale. The evidence in this respect is overwhelming. There is the actual use of the Domain Name in relation to such services and the fact that the source code for the webpage operating from the Domain Name indicated that the Domain Name was for sale.
6.39 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 registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party'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 of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a third party 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).
6.40 Similarly there is nothing per se illegitimate in dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of the domain name to take advantage of the third party's rights and reputation in a trade mark represented in that domain name, then that is quite a different matter.
6.41 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainant's marks in mind and has it deliberately used it to take unfair 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.
6.42 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 Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.43 The Complainant contends that this is a case where it has made out a prima facie case as to a lack of rights and therefore the burden of proof in this respect passes to the Respondent. The Panel accepts that there are many cases in which panels have adopted this approach. However, the Panel prefers not to do so. For the reasons set out in greater detail under the heading of bad faith below, there is sufficient material before the Panel to come to a positive conclusion on the balance of probabilities as to the Respondent's motivations in this case. They are such that the Respondent does not have a right or legitimate interest in the Domain Name. D. Registered and Used in Bad Faith
6.44 The Complainant contends that this is a case of opportunistic registration in that the Respondent registered the Domain Name when the Complainant allowed it to expire. It claims that the Respondent has then used the Domain Name for the purposes of pay per click revenue generation and with possible onward sale. Its activities are said to fall within the example of bad faith provided at paragraph 4(b)(iv) of the Policy.
6.45 The Panel accepts this to be correct. 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 pages 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).
6.46 The generation of revenue from domain name parking activities is not necessarily activity in bad faith under the Policy. 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.).
6.47 Sometimes that knowledge and intent can be inferred from the size of the reputation of the relevant complainant's mark, the territories to which it extends and the location of the Respondent. In this case there is no such evidence. Admittedly in this case the Complainant is placed in a quandary. Belize is unlikely to represent the location of the underlying “respondent”. Maybe the location of the Registrar is a better guide, but this is far from certain. Nevertheless, the Complainant has made no real attempt to explain the scope and extent of its activities.
6.48 However, there are other bases upon which knowledge and intent can be inferred. In this case there is first the term “Aluship”. It does not appear to be an ordinary English word or for that matter an ordinary word in any language. As such it is a choice of term that calls out for an explanation, and in the absence of any such explanation from the Respondent the only inference the Panel can draw is that it was chosen because of its association with the Complainant.
6.49 Second, there is the nature of the pay per click links that initially appeared from the website. As has already been explained, these were predominantly maritime related. Further, for the reasons that are explained in the Owens Corning case supra, where a pay per click web page displays links that are not associated with any descriptive or generic term which happens also to be incorporated within a trade mark, this of itself can provide evidence of a registrant's knowledge and intent.
6.50 In this case the Domain Name can perhaps be read as incorporating the word “ship” (although it can equally be interpreted as incorporating the word “hip” and yet no “hip” related links appeared) and that might point away from a finding of knowledge and intent. However, in this case there is also the unusual fact that subsequent to the commencement of proceedings the pay-per-click links changed to those that were “IP” or “internet protocol” related. This is very odd and suspicious. If the initial links were created simply by reference to the generic nature of a term incorporated in the Domain Name, why this sudden change? The obvious inference is that the proceedings led to someone changing the relevant algorithm) so that “ship” related links were no longer displayed. Why would the Respondent do this if the original registration and use were innocent?
6.51 In the circumstances, there is sufficient evidence before the Panel to conclude that the Respondent had the necessary knowledge and intent and that the Domain Name has been registered and used in bad faith. The Complainant has therefore made out the requirements of paragraph 4(a)(iii) of the Policy.
6.52 The Complainant also contends that the mere fact of opportunistic registration of an expired registration indicates bad faith. It cites the cases of InTest Corporation, supra and RH-Interactive Jobfinance, supra that are said to support that proposition.
6.53 There are cases that point in the other direction and might even suggest that it is somehow “safe” to register a domain name because it has expired. Two of these were examined by the three member panel in Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case Case No. D2008-0321. The panel having examined those cases came to the conclusion that “[i]t is simply not possible to lay down a general rule that the mere fact that a domain name has been allowed to lapse means that it is somehow safer to register”. Should it have gone further and said that this sort of registration was positive evidence of bad faith?
6.54 InTest Corporation, supra, does contain a statement along these lines but there is little or no reasoning to support it. Nevertheless, it is an approach that seems to have been adopted in a number of cases. A recent example is Commission for Art Recovery, Inc. v. Alexandr Zaharov,WIPO Case No. D2008-1591.
6.55 The rationale for that approach is hinted at in the other case cited by the Complainant, i.e., RH-Interactive Jobfinance, supra. In that decision the panel stated that from the circumstances of registration it could be inferred that the respondent had actual knowledge of Complainant's previous use of the domain name and rights in the relevant mark. The panel in Rug Doctor L.P. v. Domain Strategy, Inc.,WIPO Case No. D2002-0355 went even further, concluding that the circumstances of registration “raise[d] an overwhelming presumption that the purpose of the registration and use is to trade upon the confusion created not only with Complainant's trademark, but with the residual reputation of Complainant's web-site”.
6.56 Russell H. Fish v. Robert Farris d/b/a Virtual Clicks,WIPO Case No. D2005-1035 is another case where there was registration after expiry, but it appears that a somewhat more compelling factor for the finding of bad faith in that case was a finding that the respondent had also “simulated” the content of the prior owner (as was hinted to in Rug Doctor L.P., supra).
6.57 There are also a number of cases where although the domain name was registered after it had lapsed, this did not form part of the substantive reasoning of the panel in that case. An example of one of these is The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743.
6.58 The conclusion that the Panel reaches from this review of the various cases is that ultimately there is no special presumption or inference of bad faith to be drawn from the mere fact that a domain name is registered shortly after it has lapsed. As is usually the case, the assessment of bad faith comes down to an assessment of knowledge and intent. In some cases there may be some adverse inference against the Respondent to be drawn from the fact that the domain name was registered upon expiry. One can see for example how this might be a sensible inference where the registration very quickly followed expiry, the domain name had no obvious generic meaning and the traffic to the website operating from that domain name up to the date of expiry had been significant. But ultimately it will all depend upon the facts of the case and the evidence before the panel.
6.59 In this case the evidence is minimal. It is not even clear when the earlier registration expired. In the circumstances, the Panel draws no inference from the known circumstances surrounding the re-registration of the Domain Name. However, this ultimately does not matter. There is otherwise sufficient evidence in this case to show that the Domain Name was registered with knowledge of the Complainant's use of the “Aluship” name and with an intent to take advantage of the reputation that the Complainant had built up in that name. 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 name, be transferred to the Complainant.
7.2 Further the Panel invites the Center to bring the contents of this Decision to the attention of ICANN in light of the contents of paragraphs 6.5 to 6.34 above.
Matthew S. Harris
Sole Panelist
Dated: April 1, 2009
Full & Egal Universal Law Academy