WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Funix B.V. v. Domain Administrator Case No. D2009-1048 1. The Parties
Complainant is Funix B.V., Driebergen-Rijsenburg, Netherlands, represented by Holland Van Gijzen Advocaten & Notarissen LLP, Netherlands.
Respondent is Domain Administrator, Shanghai, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with D LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2009. In the Complaint, Complainant indicated that the domain name was registered with Nameview, Inc. (“Nameview”) and that a privacy shield blocked the identity of the actual registrant. On August 4, 2009, the Center notified Nameview that the Complaint had been submitted, transmitted by email to Nameview a request for registrar verification in connection with the disputed domain name, and requested that Nameview, as an ICANN-accredited registrar, confirm that the Domain Name had been placed or was in the process of being placed in Registrar lock for the duration of the UDRP proceedings (as required by paragraph 8 of the Policy). The Center also reminded Nameview of its obligation to conform, where applicable, to the requirements of the ICANN Expired Domain Deletion Policy (the “Deletion Policy”).
On August 5, 2009, Nameview informed the Center that the Domain Name had already been deleted pursuant to directions received from its client, allegedly before the Complaint was received.
On August 11, 2009, the Center informed Nameview that the Domain Name was within the redemption period. In response, Nameview requested that the Center advise Complainant to contact it directly regarding redemption of the Domain Name; the Center so advised Complainant on August 14, 2009. Between August 14 and August 29, 2009, Complainant's attorney and Nameview exchanged a series of emails in which they agreed that Nameview would restore the Domain Name to Complainant upon receipt of payment of USD250 by Complainant. According to Complainant's attorney, Complainant paid the requested fee to Nameview on September 14, 2009.
Notwithstanding Complainant's efforts to redeem the Domain Name with Nameview and its payment of the requested redemption fee, Nameview failed to restore the Domain Name to Complainant. Instead, Nameview apparently allowed the Domain Name to be transferred to a third party. On September 15 and 16, 2009, Complainant's attorney informed the Center that the Domain Name was now registered to Respondent and the registrar was changed to D LLC.
On September 18, 2009, the Center transmitted by email to D LLC a request for registrar verification in connection with the disputed Domain Name. On September 22, 2009, D LLC transmitted by email to the Center its verification response confirming that Respondent (identified only as “Domain Administrator”) is listed as the registrant and providing the contact information. The Center thereafter requested that Complainant file an amended Complaint, reciting the new registrar and registrant information, which Complainant did on September 30, 2009. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 28, 2009.
The Center appointed David H. Bernstein as the sole panelist in this matter on October 30, 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. Because of the procedural complexities of this case, the Center extended the date for decision to November 20, 2009. 4. Registrar Conduct
As the foregoing recitation of the procedural history makes clear, Nameview appears to have violated the Policy by not placing the Domain Name under Registrar lock as required by paragraph 8.1 This does not appear to be the first UDRP case in which this type of conduct by Nameview has occurred.2 Nameview also failed to afford Complainant the opportunity to restore the Domain Name in contravention of paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy.3 That Nameview offered to restore the Domain Name to Complainant strongly suggests that, contrary to Nameview's initial representations to the Center, Nameview did continue to have control over the Domain Name throughout August 2009. Nameview's demand that Complainant pay a USD250 restoration fee may constitute a further violation of the Policy (to the extent those were not the same commercial terms as those previously governing the registration). And, Nameview's subsequent allowance of the transfer of the Domain Name to a new registrant and/or registrar not only violated paragraph 8 of the Policy, but also suggests that Nameview was engaged in bad faith throughout these discussions with Complainant.
Because this Panel lacks jurisdiction over Nameview and has no ability to compel Nameview to respond to information requests, the Panel is unable to determine what actually occurred in this case. However, Nameview's conduct, as reported by Complainant and documented in the exhibits attached to the Amended Complaint, raises significant questions and concerns. The Panel also notes that the Center has previously drawn ICANN's attention to this issue more generally by letter dated April 26, 2008. The Panel is not aware of any reply to that letter. The Panel therefore requests that the Center further notify ICANN of Nameview's potential misconduct in this particular case, including providing ICANN with a copy of this decision along with such case-related communications and pleadings as may be appropriate. The Panel further requests that ICANN investigate Nameview's actions and pursue any appropriate disciplinary measures. 5. Factual Background
Complainant is incorporated under the laws of the Netherlands and owns multiple trademark registrations for the mark FREEONES, which it uses in connection with the distribution of adult entertainment. Its mark is registered in the Benelux trademark registry, through OHIM, and in the United States and elsewhere.4 Its various trademark registrations were filed in 2003 and 2004 and the first registration was formalized in 2004.
Complainant's legal predecessor registered the domain name on March 29, 1998 and thereafter launched its adult entertainment website at that address. See Annex 3. Complainant and its legal predecessors have obtained many other domain name registrations that incorporate the FREEONES trademark in both global top-level and country-code top-level domains. See Annex 6.
The previous respondent registered the Domain Name on January 23, 2003. See Annex 1A. As noted above, the registrant used Nameview's privacy service and, as such, the registrant's identity was not disclosed. See Annex 1B. The Domain Name resolved to commercial websites that competed with Complainant's “www.” website at least as far back as September 2004. In November 2006, the “www.” website was disabled. Respondent registered the Domain Name on September 11, 2009. See Annex 1A. 6. Parties' Contentions A. Complainant
According to Complainant, the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights because Complainant owns the FREEONES trademarks (the “Trademark”). Complainant's “www” website has been online since 1998. Complainant is well-known in the industry and to the relevant public. It markets its business through substantial investments in its website, which generates traffic from all over the world (though predominantly from the United States and Europe). During the first four months of 2009, Complainant's website averaged nearly 60 million visitors a month and it has achieved high rankings in worldwide indices of the most visited adult entertainment websites. See Annexes 7-9. The website has been featured in prominent adult entertainment media and described by Penthouse magazine as the “Internet's largest porn database.” See Annex 11A.
Complainant states that the Domain Name is confusingly similar to its FREEONES mark. Complainant argues that the transposition of the letter “e” for the letter “n” is a foreseeable misspelling of its Trademark.
Complainant also asserts that Respondent has no rights or legitimate interests in the Domain Name. Although Complainant does not know the identity of Respondent, Complainant contends that, from what it can tell based on the WhoIs information disclosed and Complainant's searches of publicly accessible sources, Respondent is not commonly known by the Domain Name. For example, Complainant has not located any enterprise that trades under the names “Freeones” and/or “Freeoens” and it appears that no other entity has acquired registration rights in the Domain Name. Complainant states that it has no commercial links to third parties and it has not licensed the FREEONES name or Trademark for use in connection with the Domain Name. Complainant also contends that, as of the time of the initial Complaint, the Domain Name did not resolve to an active website and thus, as such, Respondent was not making a bona fide use of the Domain Name. Complainant contends that Respondent's sole reason for registering this particular Domain Name was to benefit from the goodwill and familiarity of the Trademark.
Complainant asserts that the Domain Name was registered and is being used in bad faith, as shown in part by the conduct between Respondent and Nameview. Complainant asserts that Nameview agreed to allow Complainant to restore the deleted Domain Name for a fee of USD250, pursuant to the Deletion Policy, but instead, allowed the Domain Name to be transferred to Respondent when it should have been placed under Registrar lock pending resolution of the UDRP dispute proceedings. Complainant also disputes that the Domain Name was deleted before August 4, 2009, and states that it checked the WhoIs data registry that same day before it submitted the Complaint.
Complainant contends that the slight misspelling of the Trademark in the Domain Name is typosquatting and that registration of a typosquatted domain name constitutes evidence of bad faith registration. Complainant argues that the Trademark is well-known in the United States and internationally and that Respondent must have known of the Trademark. Complainant contends that Respondent has used the Domain Name to divert Internet users from Complainant's website to Respondent's competitive website. B. Respondent
Respondent did not reply to the Complaint.5 The Panel may, therefore, accept as true all of the Complaint's factual allegations. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Although Respondent's default does not automatically lead to a finding for Complainant, the Panel may draw any inferences it deems appropriate from Respondent's failure to reply to the Complaint in accordance with the Rules, paragraph 14(b). The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. 7. Discussion and Findings
This case presents an ironic twist, since many UDRP cases have involved brand owners complaining about having their potential customers redirected to so-called adult entertainment sites by cybersquatted domain names. E.g., Telstra Corporation Limited v. Telsra com/Telecomunicaciones Serafin Rodriguez y Asociados,WIPO Case No. D2003-0247; Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487. Here, the owner of an adult entertainment business complains that it has been the victim of cybersquatting. That Complainant's business involves adult entertainment does not, though, make it any less deserving of the protections of the UDRP.6 Purveyors of adult entertainment can have valuable trademarks, and their marks are just as capable of being violated through cybersquatting as are other brand owners' marks. Indeed, it has been noted that the adult entertainment business has long been on the cutting edge of technological innovation, see Peter Johnson, Pornography Drives Technology: Why Not to Censor the Internet, 49 Fed. Comm. L.J. 217, 217-23 (1996) (discussing pornography's role as an outlier at the vanguard of new technological advances in the Internet and how it has spurred technological revolutions in various media dating back centuries before the advent of the electronic age), so it is not surprising that such businesses have also been victims of cybersquatting and other technologically-advanced ways of violating intellectual property rights. .
Thus, despite the ironic posture of this Complaint, this Complainant is entitled to all the same privileges and protections of the UDRP as other trademark owners. Accordingly, Complainant is entitled to transfer of the Domain Name if Complainant can prove:
(i) “[Respondent's] domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) [Respondent has] no rights or legitimate interests in respect of the domain name; and
(iii) [Respondent's] domain name has been registered and is being used in bad faith.”
Policy, paragraph 4(a).
Because of the apparent misconduct by Nameview, the previous registrar, and the previous registrant, and the Panel's inference that Respondent has acted in collusion with Nameview and/or the previous registrant in arranging for transfer of the Domain Name during the pendency of this proceeding, a showing of no legitimate interests and bad faith by either the prior registrant or Respondent will suffice to satisfy the second and third elements of 4(a). In this case, it does not matter whose interests and bad faith the Panel considers because Complainant has shown that both the prior registrant and Respondent lack any legitimate interests and have acted in bad faith with respect to the registration and use of the Domain Name. A. Identical or Confusingly Similar
Complainant owns various trademark registrations for the FREEONES mark and has submitted copies of its trademark registrations. These registrations constitute prima facie evidence of the validity of the mark. See AIDA Cruises Branch of Societá di Crociere Mercurio S.r.L., v. Enspire Technologies (Pvt) Ltd.,WIPO Case No. D2008-1471. Complainant thus has satisfied its burden of showing that it has rights in this Trademark.
Complainant also has established that the Domain Name is confusingly similar to its Trademark. It is well established that the transposition of two letters – here “e” and “n” in the Domain Name – constitutes typosquatting and that the resulting domain name is confusingly similar to the trademark for purposes of the Policy. E.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201; Microsoft Corporation v. Global Net 2000, Inc.WIPO Case No. D2000-0554; Reuters Limited v. Global Net 2000, Inc.WIPO Case No. D2000-0441.
Accordingly, the Panel finds that Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has the burden of proving that Respondent lacks rights or legitimate interests in the Domain Name. Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. According to paragraph 4(c) of the Policy, “[a]ny of the following circumstances in particular, but without limitation,” shall demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) “before any notice to [respondent] of the dispute, [respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent has] acquired no trademark or service mark rights; or
(iii) [respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although the Policy requires that Complainant establish that Respondent has no rights or legitimate interests in the Domain Name, panels have consistently recognized the difficulty of proving a negative. See Worldwide Pants Inc. v. VisionLink Communications Group, Inc.,WIPO Case No. D2008-1796. Accordingly, the consensus amongst UDRP panels is that a complainant must put forth a prima facie case that the respondent lacks rights or legitimate interests; if a complainant makes this initial showing, the burden of production shifts to the respondent to allege specific rights establishing its rights or legitimate interests (although the burden of proof always remains on the complainant). See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) § 2.1.
In this case, Complainant has made the requisite prima facie showing that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has properly averred that Respondent is not associated with any business that incorporates either “freeones” or “freeoens” within its trade name and that it has not used the Domain Name in connection with any bona fide offering of goods or services. Moreover, until Respondent's recent acquisition of the Domain Name, the Domain Name appears not to have resolved to any active website for the past two years, and when it was previously used, it was used for a website that infringed Complainant's Trademark because it offered competitive services under a confusingly similar mark. As such, even the past use does not constitute a bona fide offering of goods or services.
Since its registration of the Domain Name, Respondent has used the Domain Name to offer competitive adult entertainment that appears to mirror the content of Respondent's “” website. For the same reasons that the prior registrant had no legitimate interest or rights to use the Domain Name for a competitive adult entertainment website, Respondent's conduct also cannot constitute a legitimate interest.
Accordingly, the Panel finds that Complainant has satisfied its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of enumerated circumstances that, if present, are deemed evidence of the registration and use of a domain name in bad faith:
(i) “circumstances indicating that [respondent has] registered or [respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or of a product or service on [respondent's] web site or location.”
Complainant has established that Respondent registered the Domain Name in bad faith. At the time of registration, Complainant's registered Trademark appears to have been well-known in the online adult entertainment industry. It is highly unlikely that Respondent, who operates in the same industry as Complainant, was unaware of the FREEONES mark when it registered the Domain Name. Moreover, the attendant circumstances surrounding the registration are particularly suspicious. The Domain Name was purportedly deleted right before the Complaint was submitted; then after a few weeks of discussions with Nameview about restoring the Domain Name, the Domain Name was allegedly sold to Respondent, who registered it during the redemption period when it should have been placed under Registrar lock and restored to Complainant.
The Panel finds that this last-minute deletion and transfer of the Domain Name from the prior registrant (whom Nameview has never identified; for all the Panel knows, it could be the same person or entity as Respondent) to Respondent constitutes cyberflight. See Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 (defining cyberflight as “an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint,” and noting that panels have concluded that cyberflight is indicative of bad-faith registration and use under paragraph 4(b)). In Fifth Third Bancorp, the original registrar was, in fact, Nameview, and the anonymous registrant in that case also used Nameview's free identity shield. When the complainant's attorney sent a letter to the contact address referencing the complainant's trademark and demanding transfer of the domain name, no reply was received but the website was removed that same day and Nameview subsequently informed the Center that “its unnamed ‘client' requested that the Domain Name be ‘deleted.' See id. The following month, the disputed domain name was registered by a new owner and registrar. Id. That Nameview has been involved in the identical cyberflight scheme before is particularly troubling, and creates a strong inference of similar bad faith registration and use in the instant case.
Even without this cyberflight, the Panel would find bad faith registration and use. Respondent's registration of this typosquatted Domain Name and the use of the Domain Name to distribute competitive content itself constitutes use of the Domain Name to intentionally attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. See Policy, paragraph 4(b)((iv). Such conduct is exactly the type of classic, abusive cybersquatting that the Policy was designed to prevent. See Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; DG Bank AG v. Xuhui, Dai,WIPO Case No. D2000-0750; National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a ,WIPO Case No. D2000-0118.
Accordingly, the Panel finds that Complainant has satisfied its burden under paragraph 4(a)(iii) of the Policy. 8. 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 Complainant.
Furthermore, in light of the apparent misconduct of Nameview, the former registrar, the Panel recommends that the Center forward a copy of this decision to ICANN and requests that ICANN initiate an investigation into Nameview's apparent violation of the Policy and the ICANN Expired Domain Deletion Policy.
David H. Bernstein
Sole Panelist
Dated: November 16, 2009
1 Paragraph 8(a) of the Policy provides in relevant part that a registrant of a domain name that is the subject of a pending UDRP dispute “may not transfer [its] domain name registration to another holder [] during a pending administrative proceeding brought pursuant to Paragraph 4 [of the Policy],” and that ICANN “reserve[s] the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.” Similarly, under paragraph 8(b), the registrant “may not transfer [its] domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 [of the Policy]. . . .”
2 The Panel notes with concern the observations recorded about this registrar's conduct in a number of prior UDRP decisions including Loders Croklaan B.V. v. Loderscroklaan.Com/ Loders Croklaan, Paul Bakker,WIPO Case No. D2009-1216, and FOSS A/S, FOSS NIRSystems INC v. c/o Whois IDentity Shield /Admin, Domain,WIPO Case No. D2008-1256.
3 Paragraph 3.7.5.7. of the Deletion Policy provides that if a domain dispute is deleted during the course of a UDRP dispute, the complainant “will have the option to renew or restore the name under the same commercial terms as the registrant.”
4 Complainant has annexed copies of its trademark registrations for Benelux, Canada, Mexico, and the European Union. Complainant states that its mark is registered internationally in Australia, Belarus, Switzerland, China, Japan, Russia Federation, Turkey, and the United States; it has also submitted a copy of its international registrations. See Annexes 12A-E.
5 The Panel has carefully reviewed the record to ensure that Respondent was afforded the opportunity to receive notice of this proceeding in accordance with paragraph 2 of the Rules. See Worldwide Pants Inc. v. VisionLink Communications Group, Inc.,WIPO Case No. D2008-1796 at n.1. The Center sent notification of the Complaint to Respondent by United Parcel Service (“UPS”) to the mailing address that is listed for Respondent on the Whois database registry. UPS tracking results indicate that the package, which was shipped on October 7, 2009, “experienced an exception.” The UPS website defines an “exception” as “any event or situation that causes a shipment delivery to be rescheduled. Exceptions, such as an incorrect address, can occur for a variety of reasons.” See . There is no further indication as to whether the package was ever delivered to Respondent; however, to the extent the mailed package was never delivered because Respondent provided an incorrect address in its WhoIs data, that is a problem entirely of Respondent's making. On October 7, 2009, the Center also sent notification by email transmission to the contact email listed for Respondent in its WhoIs information. This email transmission generated a responsive message that stated that delivery to the recipients was complete but that “delivery notification was not sent by the destination.” In addition, the Center sent a duplicative email notification on October 7, 2009 to 6 The same is true of respondents, who also are entitled to the protections of the UDRP if they have rights or legitimate interests in domain names. See, e.g., Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (respondent had legitimate interest in using domain name for an adult entertainment website).
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