WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media Case No. D2009-0253 1. The Parties
The Complainants are Mark Alan Pearson and Markco Media Limited of the United Kingdom of Great Britain and Northern Ireland, represented by Simons Muirhead & Burton Solicitors, United Kingdom.
The Respondents are Domains by Proxy, Inc. of the United States of America and China Snake Media of the United Kingdom. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2009. On February 26, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 26, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an Amended Complaint on March 5, 2009. The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for the Policy (the “Rules”), and the WIPO Supplemental Rules for the Policy (the “Supplemental Rules”).
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 March 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2009. The Response was filed with the Center on March 28, 2009.
The Center appointed Mr. Tony Willoughby as the sole panelist in this matter on April 14, 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.
As indicated above, the apparent need for an Amended Complaint was triggered by what now seems to be the accepted ritual in cases where the “real” registrant makes use of a Proxy service. This Panel takes the view that there ought to be no “need” for an Amended Complaint in these circumstances, because at the outset the Complaint will have been targeted correctly at the named registrant on the Registrar's WhoIs database, namely the Proxy service. However, paragraph 8 of the Policy, which deals with “Transfers During a Dispute”, and which prohibits transfers “during a pending administrative proceeding” raises this question: when does a “pending administrative hearing” commence? Is it when the Complaint is initiated by the Complainant (in this case February 25, 2009) or is it as provided for in paragraph 4(c) of the Rules, namely “the date on which the Provider [in this case the Center] completes its responsibilities under Paragraph 2 (a) in connection with forwarding the Complaint to the Respondent” (in this case March 9, 2009)? If the correct answer is the latter, the appropriate respondent is indeed the “real” registrant revealed by the post-Complaint change of registrant.
Given that there has been no guidance from ICANN on the point, and given also the uncertainty arising from the wording of the Policy itself, including the Rules, it is appropriate that the Center should take reasonable precautions to ensure that actual notice is provided to any “real” or “underlying” registrant and this it has done.
The Panel proposes to treat the Second Respondent as the substantive Respondent and references hereinafter to “the Respondent” are to be construed accordingly. 4. Factual Background
The First Complainant is the sole director and shareholder of the Second Complainant, a company which was incorporated in England on July 30, 2007. The Complainants are engaged in the provision of discount code services to online retailers and operate via their website connected to the domain names, and , which the First Complainant registered on November 20, 2006.
The First Complainant commenced business under and by reference to the “My Voucher Codes” name in December 2006.
On February 21, 2008, the First Complainant applied for registration of MY VOUCHER CODES (words) and MYVOUCHERCODES (word) as service marks in classes 35 and 38 for various voucher code and related services and internet portal services. The applications were advertised for opposition on August 8, 2008 and proceeded to registration on November 14, 2008.
The Domain Name was registered on September 19, 2008. As at February 18, 2009 the Domain Name was connected to a website offering voucher code services to online retailers. The website features a less than prominent notice reading “We are in [sic] not affiliated or associated with or ”.
On December 11, 2008, the Complainants' representatives sent an email addressed to “The Proprietor, M”. The email address used for this communication was “[ ]@”. The email drew attention to the Complainants' rights and requested transfer of the Domain Name and ancillary undertakings.
The Respondent responded as follows:
“Your proposal is unacceptable, the domain name in question was freely available for purchase by anyone, The running of an affiliate website business is a right enjoyed by anyone, we feel your letter amounts to nothing short of corporate bullying and will report it to the UK DTI.” 5. Parties' Contentions A. Complainants
The Complainants claim registered and unregistered trade mark rights in respect of the names under which they trade, namely MY VOUCHER CODES and MYVOUCHERCODES. The Complainants contend that the Domain Name is identical or confusingly similar to a trade mark or service mark in which they have rights.
The Complainants contend that the Respondent has no right or legitimate interest in respect of the Domain Name. The Complainants recite the examples of what shall constitute rights or legitimate interests in respect of a domain name as set out in paragraph 4(c) of the Policy and contend that none of them is applicable.
The Complainants further contend that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent does not contest the Complainants' trade mark/service mark rights.
The Respondent contends that what it has done has been entirely legitimate. It states that it conducted a search and found that the Domain Name was “freely available for anyone to purchase”. It never set out to imitate the Complainants' site. It built the site using affiliate software available online. It used a different colour scheme from that used by the Complainants and added a logo. It contends that the site looks nothing like the Complainants' site and contends further that there is no risk of anyone being confused. The Respondent points to the notice featured on its site stating that the site is not in any way associated with the Complainants' site.
The Respondent contends that it purchased the Domain Name in good faith and states that it does not wish to give the Domain Name to the Complainants.
The Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking against the Complainants. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, the Complainants must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. B. Identical or Confusingly Similar
The Respondent does not dispute that the Domain Name (as opposed to the site to which it is connected) is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights and the Panel so finds. C. Rights or Legitimate Interests
The Complainants contend that the Respondent registered the Domain Name with knowledge of the Complainants' trade marks and linked it to a website offering voucher code services with the intention of attracting Internet users to the website for commercial gain on the back of the Complainants' reputation and goodwill. The Complainants contend that such a use of the Domain Name cannot give rise to a right or legitimate interest in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
The Respondent does not answer this allegation. The Respondent restricts its Response to (a) the fact that the Domain Name was available for purchase when it was looking for a domain name for a voucher codes website and (b) the content of the website to which the Domain Name is connected, which the Respondent claims is incapable of giving rise to confusion. The Respondent does not appear to dispute that Internet users may visit its site in the belief that they are visiting a site of the Complainants. The Respondent's contention is that once Internet users get to the Respondent's site, they will appreciate that the site is not the Complainants' site because it does not look the same and because it features a notice stating that the site is not associated with the Complainants.
The evidence filed by the Complainants as to their use of the trade mark, MY VOUCHER CODES (as such and as part of the domain names and ), satisfies the Panel that by September 2008 when the Respondent registered the Domain Name, the Complainants' business was well-known in its field having had substantial coverage in the national press since at least October 2007. It would certainly have been known to the Respondent as a leader in the field when the Respondent was planning to launch a voucher code website in September 2008. Indeed, far from denying it, the Respondent points to the disclaimer, which the Respondent placed on its website.
The Respondent's answer that the Domain Name was freely available for purchase is no answer at all. On that basis all unregistered domain names are de facto legitimately available for all and sundry to register, which is manifestly not the case.
While the Respondent has been using the Domain Name for a service offering, it has not been a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy. The provision of the Respondent's service offering by reference to a domain name which, apart from the generic domain suffix, is identical to the domain names used by one of the leaders in the field was calculated to lead to confusion. In the view of the Panel it is inevitable that a not insubstantial proportion of Internet users visiting the Respondent's website at “www.” will have been visiting it in the belief that it is a site operated by the proprietors of the business conducted through the website(s) at “www.” and “www.”, i.e. the Complainants. The Panel is in no doubt that this was known to the Respondent at the outset.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
On the same basis the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
That finding is based solely on the basis of “initial interest confusion” and the commercial opportunities thereby afforded to the Respondent.
The Panel notes the Respondent's argument that visitors to the site, on reaching the site, will be well aware that the site has nothing to do with the Complainants, but the Panel doubts that that will necessarily be the case. If, as the Respondent clearly anticipated, a disclaimer was necessary to obviate confusion, the disclaimer provided could hardly have been less evident to the visitor. E. Registered and Used in Bad Faith
The Panel dismisses the Respondent's allegation of Reverse Domain Name Hijacking. 7. Decision
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 Second Complainant, Markco Media Limited.
Tony Willoughby
Sole Panelist
Dated: April 24, 2009
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