1.1 The Complainant is WSFS Financial Corporation of Wilmington, Delaware, United States of America (“United States”), represented by Connolly Bove Lodge & Hutz, LLP, United States.
1.2 The Respondent is Private Registrations Aktien Gesellschaft 2 of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2012. On January 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 24, 2012.
3.2 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 for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.3 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 January 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2012.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 16, 2012. 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 The Panel took the unusual step of issuing a procedural order (“Procedural Order No.1”) directed to the Registrar on February 20, 2012. The text of Procedural Order No. 1 is attached at Appendix 1 to this decision. Procedural Order No.1 noted that the Domain Name appeared to be registered in the name of a third party privacy service that did not appear to be the underlying registrant of the Domain Name. It also noted that there had not been disclosure of that underlying registrant since the filing of the Complaint. It recorded that as matters stood the Panel was likely to issue a decision that contained comments critical of the Registrar and invited the Registrar to file a submission in this respect by 9 AM GMT on February 27, 2012. Procedural Order No.1 further stated that whilst the Registrar was not obliged to file a submission as provided for in this order, the Registrar should be aware that any failure to do so might result in adverse inferences being drawn against it.
3.6 The Registrar filed no submission in response to Procedural Order No.1.
3.7 On February 27, 2012 the Panel issued a further procedural order (“Procedural Order No. 2”) in which the Panel drew to the attention of the Complainant material that suggested that at one point the website operating from the Domain Name had been owned and controlled by the Complainant. It invited the Complainant to file a further submission in this respect and provided the Respondent to notify the Center if it wished to respond to the same. Procedural Order No. 2 also extended the period by which a decision should be forwarded to the Center in accordance with to paragraph 15(c) of the Rules to March 7, 2012.
3.8 On February 29, 2012, the Complainant filed a supplemental submission pursuant to Procedural Order No. 2. The Respondent did not indicate that it wished to file any submission in response.
[3.9 On April 13, 2012 after a signed copy of the Panel’s decision in this matter had been provided to the parties and the Registrar, the Center received an email from counsel for the Registrar, directed to both the Center and the Panel seeking to respond to Procedural Order 1. This was communicated to the Panel, which formed the view that it was neither appropriate nor necessary to revisit its decision in this respect. However, it expressed willingness, if the Registrar wished it, to add the Register’s email as an Addendum to the electronic copy of this decision. Counsel for the Register indicated that the Registrar wished this to be done and the email is now set out as an Addendum to this decision.] 4. Factual Background
4.1 The Complainant is a bank operating in the United States and registered in the state of Delaware. It has provided banking services since at least 1969.
4.2 The Complainant is the owner of various trade marks that comprise or incorporate the letters “wsfs”. They include United States Registered trade mark 3,698,637 for that text alone, i.e., WSFS, that was registered on October 20, 2009 in class 36. The trade mark certificate for that mark records a first use in commerce of December 1969.
4.3 According to the WhoIs details available for the Domain Name, the Domain Name was created on June 12, 2000. It would appear that from this date the Domain Name was registered in the name of the Complainant and displayed a website that appeared to be that of the Complainant.
4.4 At some point during the second half of 2009 the Domain Name became registered in the name of “Private Registrations Aktien Gesellschaft 2”. As is described in greater detail later on in this decision, this is the name of a domain name privacy or proxy service and it is unclear who is the “real” or “underlying” registrant of the Domain Name.
4.5 At least recently, the Domain Name has been used to display a webpage that bears all the hallmarks of having been generated by a domain name “parking” or “pay-per-click” service. For example, as at August 19, 2011, the page displayed from the website operating at the Domain Name displayed a heading comprising the Domain Name and below this were displayed various search terms. All of these search terms were finance related; the first three being “Online Banking”, “Internet Checking Account” and “Business Bank Accounts”. Clicking on those search terms would then being up various sponsored links associated with that term including advertisements for competitors to the Complainant.
4.6 On August 31, 2011, the Complainant’s United States attorneys sent a letter by email and Federal Express to Private Registrations Aktien Gesellschaft. In that letter they asserted that the registration and use of the Domain Name infringed the Complainant’s trade marks. It also asserted:
“‘If Private Registrations Aktien Gesellschaft CNR of Granby & Shape St.’ is not the owner of the above-identified domain name, we request you provide us with the rightful owner’s contact information immediately”
4.7 Delivery of the Federal Express package enclosing that letter was refused.
4.8 This “pay-per-click” webpage continues to operate from the Domain Name as at the date of this decision. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is “identical to the well known WSFS mark”. It claims that the term “wsfs” is “the key element” of the Domain Name and the additional term “bank” is to be found in one of its figurative trade mark registrations. It also contends that the addition of the term “.com” does not avoid a finding of confusing similarity.1
5.2 Although it is oddly dealt with under the heading “Respondent’s bad faith”, part of the Complainant seems to address the issue of absence of rights or legitimate interests. In particular, it claims that the Complainant had “reviewed the U.S. Patent and Trademark Office records and is aware of no legitimate interest [that the] Respondent has in the mark and there is no evidence that [the] Respondent is known by that name”. The Complainant further contends that the Respondent cannot have a legitimate interest in the Domain Name given the “deceptive use” being made of the Domain Name.
5.3 So far as bad faith is concerned, the Complainant refers to the pay-per-click usage of the Domain Name and claims that the Respondent has registered and uses the Domain Name to misleadingly divert consumers to the websites at .
5.4 The Complainant also claims that the Respondent has been involved in at least another domain name dispute where it has registered a domain name in bad faith; referring to the decision in Gregor Fisken Limited v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2009-1122. It also provides a printout of the DomainTools WhoIs record dated August 24, 2011 for another domain name held in the name of the Respondent (i.e. ) that is said to show that the Respondent is the owner of over 60,000 other domain names (the exact number of domain names recorded in that document as 62,293).
5.5 Initially, the Complainant in its Complaint contended that the Respondent registered the Domain Name in 2000. However, historic WhoIs database suggests that this may not have been the case and that, at least initially, the Domain Name may have been owned and controlled by the Complainant. In its supplemental submission filed in response to Procedural Order No. 2 the Complainant asserted that it had conducted a “good faith investigation into its possible previous ownership of the domain name” but that “such inquiry has not disclosed any information”. It was not sure whether it has originally owned or controlled the Domain Name, but it asserted that if it had owned the Domain Name “any lapse in registration was inadvertent.” These statements are supported by a Declaration signed by the Senior Vice President and General Counsel of one of the subsidiaries of the Complainant.
5.6. In its supplemental submission the Complainant also contended that even if it had previously registered the Domain Name, this did not “negate a finding of bad faith”, asserting that it had not abandoned rights in the WSFS mark and that this mark was “infringed by” the Domain Name. B. Respondent
5.7 The Respondent did not reply to the Complainant’s contentions in the Complaint, nor did it indicate that it wished to file any submission in response to the supplemental submission filed by the Complainant in accordance with Procedural Order No. 2. 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 any person to lodge a Response.
6.2 Notwithstanding this default, 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 Before addressing each of these requirements, the Panel will address the question of the Registrar’s conduct in this case. A. Registrar Conduct
6.5 In this Panel’s assessment, for a registrar to knowingly allow a third party such as Private Registrations Aktien Gesellschaft to register domain names in a name other than that of the true registrant raises a question as to whether the registrar is in breach of the paragraph 3.7.8 of the Registrar Accreditation Agreement (“RAA”) between it and ICANN. Further and in any event, for the registrar to allow domain names to be registered in the name of a “privacy service” which provides no mechanism or predictable practice for disclosure of the underlying registrant in the course of proceedings under the Policy, threatens to undermine the integrity of the Policy.
6.6 The reasons for this were set out in detail by this Panel LEGO Juris A/S v. Whois Privacy Protection Service, Inc. / Domains Secured, LLC,WIPO Case No. D2011-1857. In particular, in that case the Panel stated as follows:
“6.5 This is yet another case that highlights the difficulties that domain name ‘privacy services’ cause for the Policy. It is frequently said that the reason why such services are problematic is that the Policy was devised before privacy services became a common part of the domain name landscape and that the Policy does not adequately provide for them. However, strictly this is not a problem in the drafting of the Policy. It primarily lies in the fact that the Registration Accreditation Agreement (the ‘RAA’) between ICANN and each registrar fails to describe to what extent and in what circumstances such services can be legitimately provided. Consequentially there is no direct guidance in the RAA or the Rules as to a registrar’s obligations in relation to domain names that become subject to the Policy.
6.6 There is an argument that privacy services are inherently illegitimate given a registrar’s obligations under paragraphs 3.3, 3.7.7 and 3.7.8 of the RAA to maintain a publically accessible database in which the name and contact details of the registered holder of a domain name is maintained. Further these services can be misused to mask cybersquatting conduct.
6.7 However, there are arguments to the contrary. So far as the terms of the RAA are concerned, this appears to be based on an assumption that privacy service providers can register a domain name and then sub-licence the domain name to the ‘actual’ registrant (see for example para 3.2 of the ICANN Whois Task Force 2 Initial Report). Further, many maintain that these services serve a useful legitimate purpose including protection against spam.
6.8. It is neither useful nor necessary for the Panel to participate in or add to this debate. This is particularly so since as far as this Panel is aware ICANN has never taken action against a registrar offering such as service, and the reality is that such services are now a common place feature of the domain name landscape.
6.9 In any event, a common practice has developed to which reputable registrars offering such services appear to subscribe whereby they disclose the details of the underlying registrant to the Center during UDRP proceedings in response to the Center’s verification request. The information is then provided to a complainant who can if it wishes amend its complainant to take into account such information. It is a practice that is perhaps driven by a wish by registrars to avoid the imposition of liability under sub-paragraph 3.7.3.3. of the RAA. Nevertheless, from a practical perspective it to some extent ameliorates the concern that such services can be used by cybersquatting registrants with complete anonymity.
6.10 It was the practice that was adopted in this case by the Registrar. Initially the publically available WhoIs database for the Domain Name recorded details for the privacy service offered by the Registrar. Further details were then disclosed by the Registrar in response to the Center’s verification request.
6.11 However, for this practice to operate at all, it requires a registrar to control the privacy service in question and/or to have access to accurate underlying registrant data. It can be defeated if behind the registrar’s service there is merely recorded the name of another third party privacy service (the so called ‘Russian doll’ scenario). Further, there appears to be no legitimate justification for such ‘Russian doll’ registrations. Indeed, panels have concluded that a Russian doll registration is evidence of bad faith. This is to be compared with the more nuanced position of panels when it comes to the use of a single domain name privacy service (see, for example the discussion in PepsiCo, Inc. v. Whois Privacy Protection Service, Inc., Abdulah Shmre,WIPO Case No. D2011-0016).
6.12 In Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service,WIPO Case No. D2009-1657, this Panel made the following comments about registrars that refused to disclose the details of the underlying registrant behind their privacy services:
‘6.17 From a practical perspective it is important that those who offer WhoIs privacy services operate in this way [i.e. disclose the underlying registrant to the Center in response to a verification request]. A refusal by a registrar to disclose to a requesting Policy provider the underlying owner or holder of a domain name (and their contact details) hidden behind a “privacy service” in proceedings under the Policy, involves a potential threat to the operational integrity of the Policy. Registrars who operates in this fashion potentially provide a tool that enable cybersquatters to conduct their activities in secrecy and to help them avoid the extent of their abusive activities becoming public; thereby depriving complainants, potential complainants and panels with information that is potentially highly relevant to the assessment of abusive behaviour. For a registrar to participate in facilitating or aiding these activities risks undermining the operation of the Policy. For the reasons already given, the Panel considers this to be contrary to the provisions of the Policy. It is undoubtedly contrary to its spirit.’
6.13 These comments about providing a tool and the undermining of the operation of the Policy, equally apply where a registrar allows domain names to be registered in the name of third party privacy services, whether or not behind the registrar’s own privacy service. The situation is perhaps not quite so bad as if the domain name had been registered in a name that is so obviously false as ‘Mickey Mouse’ or ‘Donald Duck’. Presumably (although this is not always clear) the privacy service is a real legal entity in its own right. Nevertheless, in most cases so far as the potential complaint is concerned there is no practical difference as it cannot establish who is really behind that domain name. Therefore, for a registrar to knowingly allow this to happen, raises a question as to whether it is in compliance with the obligation placed upon it by paragraph 3.7.7.8 of the RAA:
‘In the event Registrar learns of inaccurate contact information associated with a Registered Name it sponsors, it shall take reasonable steps to correct that inaccuracy.’
More generally it also calls into raises questions as to a registrar’s commitment to the proper operation of the Policy.”
6.7 The registration processes adopted by most registrars are automated and it does not follow even from the fact that a particular registration has been registered in a name that includes such terms as “Private Registrations” that a registrar would necessarily be aware that those registration details are false. However, it is not unreasonable to expect a registrar to be aware of the content of decisions under the Policy in relation to registrations where it was the registrar.
6.8 In the present case, as Procedural Order No. 1 recorded, there have now been a very large number of sets of proceedings under the Policy where the respondent was “Private Registrations Aktien Gesellschaft”. Annex A to that Procedural Order No. 1 recorded no less than twenty three (23) such decisions in the last couple of years. In ten (10) of those cases the Registrar was the registrar for the relevant domain names. So far as the Panel can tell, in every one of those cases the domain name registrations in issue were held to be in bad faith. Further, in at least one of those cases where the Registrar was involved (i.e. Spear Holdings, Inc. v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2011-0528), the fact that the registrant appeared to be a privacy service was expressly commented upon by the panel.
6.9 Further, the evidence filed by the Complainant in this case would suggest that “Private Registrations Aktien Gesellschaft” is recorded as the registrant in respect of in excess of 62,000 domain names. Of course, the Panel does not know many of these domain names have been registered through the Registrar. However, if the proceedings under the Policy to date are representative, it would suggest that a very large number have been. Perhaps the vast majority of them are legitimate registrations. But the findings in twenty cases to date that have been decided through the Center, at the very least raises a serious concern that the term “Private Registrations Aktien Gesellschaft” is being used to disguise the identity of those behind a large number of acts of cybersquatting.
6.10 Against this background it is disappointing, to say the least, that the Registrar has not filed a submission in which it has sought to explain what has occurred or to dispute the suggestion that it has acted either contrary to its obligations under the RAA and/or has in permitting these registrations facilitated an undermining of the effective operation of the UDRP. In the circumstances, the Panel considers it appropriate (in accordance with the practice that has been followed by previous panels (including this Panel) in cases where the registrar’s actions have been a matter of concern2) to invite the Center to bring the Registrar’s conduct to the attention of ICANN for ICANN to make such further investigation and to take such further steps in relation to that conduct as it considers appropriate. B. Identical or Confusingly Similar
6.11 The Panel accepts the Complainant’s contention that the Domain Name is confusingly similar to the Complainant’s WSFS trade mark. It accepts that the Domain Name can most sensibly be understood as comprising that mark with the word “bank” added and the “.net” gTLD. The WSFS trade mark is, at the very least, a significant element of the Domain Name and the additional text in this case does not so distract from or change the reading of that WSFS element so as to stop the Domain Name from being “confusingly similar” to the Complainant’s mark (as the term “confusingly similar” is understood under the Policy). The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
6.12 It is clear in this case that the Domain Name is being used by the Respondent (a term which from this point onwards in this decision is used by the Panel to refer to the “underlying” registrant of the Domain Name who was actually responsible for its registration and use) in connection with a “domain name parking” or “pay-per-click” service. 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 Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition; the “WIPO Overview 2.0”). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267). Indeed, such a finding is a positive indicator of the fact that no rights or legitimate interests exist (see Premier Farnell Corp. v. BlueH, Bluehost Inc / Newark del Peru S.A.,WIPO Case No. D2010-2111).
6.13 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question: is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.14 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained under that heading below, the Panel has reached the conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant’s trade marks. In the circumstances, the Panel also finds that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
6.16 It seems reasonably clear in this case that the Respondent is using the Domain Name in bad faith. In particular, the Panel accepts the Complainant’s contention that the Complainant’s trade mark is being used as part of the Domain Name to draw Internet users to a pay-per-click website with the intention of generating revenue (either for itself or third parties) by diverting persons seeking out the Complainant to advertisements for companies and services that compete with the Complainant. This is not a case where there is even arguably the use of a generic or dictionary term for advertisements associated with that generic or dictionary meaning. This is therefore activity that falls within paragraph 4(b)(iv) of the Policy.
6.17 To succeed under the Policy it is necessary to show not only that the Domain Name is being used in bad faith, but that it was also registered in bad faith. Paragraph 3.1 of the WIPO Overview 2.0 identifies a number of cases that held that bad faith use alone was sufficient and asserts that this remains “a developing area of UDRP jurisprudence”. However, since the WIPO Overview 2.0 was published it seems that this alternative view has not gained general acceptance and is at best a minority position amongst panellists.
6.18 In the present case, matters are somewhat complicated by the fact that there is a lack of clarity as to when exactly the Domain Name was registered by the current registrant. Initially, the Complainant contended that the Domain Name was registered in 2000, but after having conducted what it characterises as a “good faith” investigation it is now not so sure. The Complainant cannot say whether it was initially responsible for the registration, but contends that even if it were, then the registration would have “inadvertently lapsed”.
6.19 This is an unusual and not particularly satisfactory state of affairs. There are a number of tools available that can be used to investigate the registration history of a domain name and the content displayed from any website operating from that domain name. One would expect any experienced legal advisor acting for a potential complainant in proceedings under the Policy to review this material as a matter of course when preparing a complaint. This is particularly so where, as here, the initial registration of the Domain Name was over ten years ago.
6.20 However, ultimately the Panel believes that in this particular case it does not matter. The fact that the Domain Name comprises the Complainant’s mark and a description of the type of services in respect of which those services have been provided (i.e. a “bank”), means that the Domain Name was obviously registered by the Respondent (whenever this exactly was) with the Complainant in mind. Further, it seems reasonably clear (in the absence of any submission from the Respondent to the contrary) that this registration was without the consent of the Complainant. If such registration was not at the Complainant’s request or with the Complainant’s consent, it is difficult to see how the Domain Name might be legitimately held or used, and the obvious inference is that it was registered with the intention in some way or another to take unfair advantage of the similarity between that Domain Name and the Complainant’s trade mark. That is sufficient for a finding of bad faith registration.
6.21 There is also the fact that the Domain Name has been registered with a privacy service and the underlying registrant in this case has not been disclosed. The relevance of the use of a privacy service to the question of bad faith is one that has been addressed by a large number of decisions. In some early cases the mere use of a privacy service was held to be a factor that pointed to a finding of bad faith. Later cases took a more nuanced position taking into account that many registrants might well use a privacy service for legitimate reasons. Recently paragraph 3.9 of the WIPO Overview 2.0 summarised the “Consensus view” among panellists on this position to be as follows:
“Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrant’s actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith. Identification by a registrar or privacy or proxy service of another such service as the purported registrant of the domain name may also constitute evidence of cyberflight and bad faith, as may failure in response to a UDRP provider’s request to timely confirm the identity and contact information of the registrant of the domain name where the registrant listed in the WhoIs is a privacy or proxy service (although such failure would not prevent a panel from deciding such cases, with the privacy or proxy service typically being regarded as the relevant respondent of record).”
6.22 It is the second part of this last sentence of this statement of consensus that is particularly pertinent in this case. This identifies as a factor that may indicate bad faith “failure in response to a UDRP provider’s request to timely confirm the identity and contact information of the registrant of the domain name where the registrant listed in the WhoIs is a privacy or proxy service”. The WIPO Overview 2.0 seems to have primarily in mind the situation where the privacy service is operated or controlled by the registrar with whom the domain name has been registered and the registrar decides not to disclose the underlying registrant of the domain name in response to the Center’s (or other UDRP Providers’) verification request. However, this comment applies with at least equal force in those cases where the registrar does not control the domain name privacy service in question. The reasons normally put forward to justify the use of a privacy service (for example protection from spam) do not justify non-disclosure in the course of proceedings under the Policy. Therefore, if a registrant has chosen to use a privacy service (whether that is provided by the registrar or some third party service) that will not disclose the underlying registrant even once a UDRP complaint has been filed, the obvious inference is that the registrant is seeking to disguise its identity in the course of the UDRP proceedings.
6.23 Indeed, this Panel wonders whether in a case where such a service has been used, no registrant is disclosed, and the underlying registrant does not put in any submission, then this alone in the absence of other materials before the panel should be deemed sufficient to raise a prima facie case of bad faith registration and use. However, whether or not this is accepted, these facts provide another factor that point to a finding of bad faith registration and use in this case.
6.24 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For 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.
Matthew S. Harris
Sole Panelist
Dated: March 5, 2012 Appendix 1 ADMINISTRATIVE PANEL PROCEDURAL ORDER NO.1
WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft [2]
Case No. D2012-0033
WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy” or “UDRP”) or the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), notes as follows:
(i) The domain name in issue in these proceedings is (the “Domain Name”).
(ii) The Registrar for the Domain Name is Network Solutions LLC (the “Registrar”).
(iii) The publically available WhoIs record for the Domain Name as at the date of the filing of the Complaint herein recorded “Private Registrations Aktien Gesellschaft” as the registrant of the Domain Name.
(iv) In response to the registrar verification request from the World Intellectual Property Organization (the “Center”), the Registrar confirmed the registrant of the Domain Name to be Private Registrations Aktien Gesellschaft.
(v) Private Registrations Aktien Gesellschaft appears to be a name of a domain name reseller that offers a “privacy service”; see for example web pages "DOMA82587.SUPERSITE.MYORDERBOX.COM", and "DOMA82587.SUPERSITE.MYORDERBOX.COM/KB/SERVLET/KBSERVLET/FAQ1205"(copies of which are supplied with this Procedural Order). On the second of these pages is the following paragraph:
“Using Private Registrations Aktien Gesellschaft’s Privacy Protection service, you may immediately put a stop to such abuse. When you enable this service for your domain name, we replace your Contact Details in the Whois information with our generic contact details, thus masking your personal contact details”
(vi) Private Registrations Aktien Gesellschaft has been named as a respondent in a large number of cases under the UDRP. A list of these cases before the Center of which the Panel is aware is set out at Annex A to this Procedural Order. It would appear that in all these cases the registration(s) has been held to be abusive. Further, in a large number of these cases (just under half), the registrar of the domain names in issue has been the Registrar.
(vii) The issue of the status of the Respondent has previously been commented upon in at least one of these cases where the Registrar was the registrar; i.e. Spear Holdings, Inc. v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2011-0528. In that case the panelist stated:
“Complainant also alleges, as described above, that the existence of several other transfer decisions under the UDRP against the named respondent shows a history of bad faith conduct similar to that which appears in the present circumstances. The respondent named in this proceeding, however, appears to be a privacy registration service provider, not an individual registrant. The Panel has established the existence of Respondent’s bad faith on other grounds; the Panel refrains, therefore, from expressing a view on whether a history of panel decisions finding bad faith in cases naming a privacy registration service has relevance to finding bad faith under the Policy against an individual registrant or real party in interest.”
(viii) It would therefore appear, inter alia, as a consequence of these decisions, the Registrar must have known or ought to have known that registrations in the name of Private Registrations Aktien Gesellschaft did not accurately record the identity of the registrant of the domain name.
(ix) For the reasons set out in LEGO Juris A/S v. Whois Privacy Protection Service, Inc. / Domains Secured, LLC,WIPO Case No. D2011-1857, for a registrar to knowingly allow a third party such as Private Registrations Aktien Gesellschaft to engage in such conduct raises a question as to whether the registrar is in breach of the paragraph 3.7.8 of the Registrar Accreditation Agreement (“RAA”) between it and ICANN. Further and in any event, for the Registrar to allow domain names to be registered in the name of a “privacy service” while apparently adhering to no mechanism or predictable practice for disclosure of the underlying registrant in the course of proceedings under the Policy, threatens to undermine the integrity of the Policy.
(x) Accordingly as matters stand the Panel may make comments critical of the Registrar in its decision. Further, the Panel may also invite the Center to bring this decision to the attention of ICANN for such further investigation or action in relation to the Registrar’s activities and business practices as ICANN considers appropriate.
(xi) In light of this, the Panel is of the opinion that as a matter of fairness the Registrar should first be given an opportunity to respond to the issues set out in this Order.
(xii) Whilst the Registrar is not obliged to file a submission as provided for in this Order, it should be aware that any failure to do so may result in adverse inferences being drawn against it.
The Panel, pursuant to paragraph 10 of the Rules for Uniform Domain Name Dispute Resolution Policy, HEREBY MAKES THE FOLLOWING ORDER:
(1) The Registrar shall, if it so wishes, by no later than 9:00 am GMT on Monday, February 27, 2012 file a submission in these proceedings together with supporting documents or evidence addressing the issues identified in the recitals to this Order.
(2) Any submission filed pursuant to paragraph (1) of this Order should:
(i) be forwarded to the Center by email in accordance with paragraph 3(a) of the WIPO Supplemental Rules.
(ii) include a declaration signed by a named individual as follows:
“The Registrar certifies that the information contained in this submission is to the best of the Registrar’s knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
(iii) explain the relationship to the Registrar of the named individual giving the declaration in accordance with sub-paragraph (ii) above and explain how it is that he or she has knowledge of the matters set out in the submission.
(iv) either be in a form that is text searchable (for example, a .doc Word document or a text searchable .PDF document) or be accompanied by a copy that is text searchable.
Matthew S. Harris
Sole Panelist
Date: February 20, 2012 ANNEX A TO PROCEDURAL ORDER
D2012-0033
1. WIPO Domain Name DecisionWIPO Case No. D2011-1641 for (9 KB)
Four Marketing, Okini Limited, BC Technologies v. Private Registrations Aktien Gesellschaft...
Registrar: A (I) Pvt Ltd
2. WIPO Domain Name DecisionWIPO Case No. D2011-1163 for (10 KB)
Siemens AG v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
3. WIPO Domain Name DecisionWIPO Case No. D2010-1021 for (7 KB)
Joseph Airport Toyota v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
4. WIPO Domain Name DecisionWIPO Case No. D2011-2215 for (8 KB)
Acme Electric, LLC v. Private Registrations Aktien Gesellschaft
Registrar: Directi Internet Solutions Pvt. Ltd.
5. WIPO Domain Name DecisionWIPO Case No. D2011-0810 for (14 KB)
Jumpin Jammerz LLC v. Private Registrations Aktien Gesellschaft / Luca Mueller.
Registrar: About Domain Dot Com Solutions Pvt. Ltd.
6. WIPO Domain Name DecisionWIPO Case No. D2010-1785 for (11 KB)
The Coleman Company, Inc. v. Domain Admin, Private Registrations Aktien Gesellschaft..
Registrar: Directi Internet Solutions Pvt. Ltd.
7. WIPO Domain Name DecisionWIPO Case No. D2010-0863 for , , (12 KB)
Verizon Trademark Services LLC v. Private Registrations AktienGesellschaft...
Registrar: A (I) Pvt Ltd
8. WIPO Domain Name DecisionWIPO Case No. D2010-0898 for (9 KB)
Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
9. WIPO Domain Name DecisionWIPO Case No. D2010-0358 for (10 KB)
Nutriset v. Private Registrations Aktien Gesellschaft
Registrar: Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR.
10. WIPO Domain Name DecisionWIPO Case No. D2010-0264 for (11 KB)
J. Macêdo S/A v. Private Registrations Aktien Gesellschaft
Registrar: About Domain Dot Com Solutions Pvt. Ltd.
11. WIPO Domain Name DecisionWIPO Case No. D2011-2029 for (12 KB)
Akzo Nobel N.V. v. Domain Admin, Private Registrations Aktien Gesellschaft
Registrar: Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR.
12. WIPO Domain Name DecisionWIPO Case No. D2011-0812 for (12 KB)
Cargotec Solutions LLC v. Private Registrations Aktien Gesellschaft
Registrar: Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR.
13. WIPO Domain Name DecisionWIPO Case No. D2010-1442 for (14 KB)
La Quinta Worldwide L.L.C. v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
14. WIPO Domain Name DecisionWIPO Case No. D2011-0528 for (17 KB)
Spear Holdings, Inc. v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
15. WIPO Domain Name DecisionWIPO Case No. D2010-1854 for (15 KB)
Vax Limited v. Private Registrations Aktien Gesellschaft
Registrar: A (I) Pvt Ltd
16. WIPO Domain Name DecisionWIPO Case No. D2010-0591 for (15 KB)
RapidShare AG, Christian Schmid v.Private Registrations Aktien Gesellschaft
Registrar: A (I) Pvt Ltd
17. WIPO Domain Name DecisionWIPO Case No. D2010-0434 for (17 KB)
Ruff GmbH v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
18. WIPO Domain Name DecisionWIPO Case No. D2009-1336 for (14 KB)
Pepco Holdings, Inc. v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
19. WIPO Domain Name DecisionWIPO Case No. D2010-1650 for (21 KB)
Perfetti Van Melle Benelux BV v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
20. WIPO Domain Name DecisionWIPO Case No. D2011-1825 for (28 KB)
Perkins Holdings Limited v. Domain Admin / Private Registrations Aktien Gesellschaft
Registrar: Directi Internet Solutions Pvt. Ltd.
21. WIPO Domain Name DecisionWIPO Case No. D2010-1128 for (10 KB)
Stock S.r.l. v. Private Registrations Aktien Gesellschaft
Registrar: Directi Internet Solutions Pvt. Ltd.
22. WIPO Domain Name DecisionWIPO Case No. D2009-1122 for (18 KB)
Gregor Fisken Limited v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC
23. WIPO Domain Name DecisionWIPO Case No. D2010-0934 for (22 KB)
Dürr Ecoclean, Inc. v. Private Registrations Aktien Gesellschaft
Registrar: Network Solutions, LLC ADDENDUM TO DECISION
April 13, 2012
SENT VIA EMAIL
Attn: Mr. Matthew S. Harris (Panelist)
Attn: Mr. Ty Gray (Registrar Liaison)
World Intellectual Property Organization
Arbitration and Mediation Center
34, chemin des Colombettes
1211 Geneva 20
Swtizerland
RE:WIPO Case No. D2012-0033
Messrs. Harris & Gray:
Please be advised that I represent Network Solutions, LLC (hereinafter referred to as “Network Solutions”). As such, the recent allegations and complaints made by WIPO (collectively, the “Complaint”) regarding our services and our compliance with the ICANN Registrar Accreditation Agreement (the “RAA”) as it relates to the above referenced WIPO case and the domain name (the “Domain Name”) have been forwarded to my attention for review and handling. I am Corporate Counsel for Network Solutions’ parent company, W Group, Inc. (“W”), and in that capacity I have investigated this matter. Please be aware that Network Solutions takes the claims such as those raised in the Complaint very seriously, and to that end our response with respect to the Complaint is as follows.
With respect to the Complaint,WIPO Case No. D2012-0033 (WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft) and the related Administrative Panel Procedural Order No 1 (the “Order”), where the Complaint is raised and outlined, any such allegations against Network Solutions raised therein are inaccurate and inflammatory. We have at all times acted in full accordance with the RAA with respect to the Domain Name and registrant thereof and to suggest otherwise is simply incorrect.
That said, Network Solutions apologizes for any delayed response and failure to file a submission in response to the Order. However, it is my understanding that we had not seen such claims directed at Network Solutions in a WIPO order before and by the time we recognized this was an issue that required further action and/or response and investigated the issue properly the deadline established in the Order had passed. It was not until the matter was subsequently raised directly with ICANN that we felt we had another legitimate opportunity to respond and address these unfounded allegations. Moreover, in light of that fact that we have done nothing in this matter that would give rise to a violation of the RAA, and that WIPO further stated in the Order that “Registrar is not obliged to file a submission as provided for in this Order”, it further appeared that a response was not absolutely necessary. However, we are confident that our actions in this matter are, and have been, proper and are more than willing to provide a response to clear up and fully address any concerns.
As to the specific claims of the Complaint, it is alleged by WIPO that Network Solutions may be in violation of Section 3.7.8 of the RAA based on the registration of the Domain Name by Private Registrations Aktien Gesellschaft (the “Registrant”). WIPO claims that the Registrant appears to be acting as a privacy service for the Domain Name and is not actually the registrant of the Domain Name, and that for a registrar to knowingly allow a third party to engage in such conduct raises a question as to whether this is a breach of the above-mentioned Section 3.7.8. As you are likely aware, Section 3.7.8 of the RAA expressly states as follows:
“Registrar shall abide by any specifications or policies established according to Section 4 requiring reasonable and commercially practicable (a) verification, at the time of registration, of contact information associated with a Registered Name sponsored by Registrar or (b) periodic re-verification of such information. Registrar shall, upon notification by any person of an inaccuracy in the contact information associated with a Registered Name sponsored by Registrar, take reasonable steps to investigate that claimed inaccuracy. In the event Registrar learns of inaccurate contact information associated with a Registered Name it sponsors, it shall take reasonable steps to correct that inaccuracy.”
At no point was Network Solutions not in compliance with the above with respect to the Domain Name and the Registrant’s registration thereof. We have had contact with the Registrant at various stages of their account history and have had no reason to believe they are not the actual registrant of the Domain Name or that their registration information was inaccurate. Furthermore, upon reviewing the Order, we took additional steps to contact the Registrant in order to confirm that they are in fact the registrant of the Domain Name, that their information was accurate, and that they were not simply acting as a privacy or proxy service in this case. WIPO claims that to allow domain names to be registered in the name of a privacy service while apparently adhering to no mechanism or predictable practice for disclosure of the underlying registrant in the course of proceedings under the UDRP consequently threatens to undermine the integrity of the UDRP. While we do not necessarily disagree with the impact to the UDRP process if a proper mechanism for disclosure of the underlying registrant is not provided, simply providing privacy services does not violate Section 3.7.8 of the RAA or any other provision thereof. Regardless, the Registrant clearly represented to us that the named entity is in fact the registrant of the Domain Names (or was prior to any transfer directed via the decision in the UDRP) and that a privacy service was not provided or otherwise utilized here. Therefore, we feel that these were more than reasonable steps taken in compliance with the UDRP process and the above referenced Section of the RAA.
WIPO claims that Network Solutions should have been further apprised of the issues with the Registrant due to the fact that the issue of the status of the Registrant was previously commented upon in at least one of these cases where the Registrar was the registrar (Spear Holdings, Inc. v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2011-0528), where the panelist stated:
“Complainant also alleges, as described above, that the existence of several other transfer decisions under the UDRP against the named respondent shows a history of bad faith conduct similar to that which appears in the present circumstances. The respondent named in this proceeding, however, appears to be a privacy registration service provider, not an individual registrant. The Panel has established the existence of Respondent’s bad faith on other grounds; the Panel refrains, therefore, from expressing a view on whether a history of panel decisions finding bad faith in cases naming a privacy registration service has relevance to finding bad faith under the Policy against an individual registrant or real party in interest.”
WIPO further states that “as a consequence of these decisions, [Network Solutions] must have known or ought to have known that registrations in the name of [the Registrant] did not accurately record the identity of the registrant of the domain name”. On the contrary, this was not adequate notice because Network Solutions was not actually provided notice of the privacy service concerns until receipt of the Order.
Moreover, in each instance where the Registrant has had a domain name subject to a UDRP action Network Solutions acted in full and complete accordance with all of its obligations, under the RAA or otherwise, in transferring those domain names per any related ruling. The Registrant at all times has been responsive to Network Solutions and never provided any indication that they provided inaccurate registrant information or that they were providing the proxy services alleged in the Order. WIPO appears to have discovered some online materials whereby the Registrant appears to be acting as a reseller that offers a privacy service, but when we contacted the Registrant, they represented to us that they were not and Network Solutions’ records are consistent with the Registrant’s representation. Also, looking at the websites referenced in the Order, it is unclear exactly who the registrant would be for any domains registered through those sites. Moreover, when we looked at those websites after receiving the Order we could not find language referenced in the Order that specified the use of the Registrant’s information instead of the actual registrant. As stated, simply providing those alleged privacy services is not in violation of the RAA. Nonetheless, when we discussed the issue with the Registrant they assured us that they were not providing such services.
To that end, and in the interest of efficiency, we respectfully request that, moving forward, WIPO contact Network Solutions directly when they have questions regarding our process, policies and/or operations. We take our ICANN accreditation very seriously and do not appreciate unfounded allegations being raised against us with respect to this critical piece of our business. With that said, we appreciate WIPO’s concerns here, and we remain willing to reasonably cooperate with such matters.
Furthermore, WIPO correctly identifies that Network Solutions is the registrar of record for several domain names that are registered to the Registrant and that have been the subject of a UDRP action. However, WIPO also correctly notes that it is for less than half of the actions that Network Solutions is the registrar of record. Therefore, please inform me if WIPO has filed a complaint with ICANN with respect to those other registrars or has otherwise raised this issue with the other registrars and what, if any, findings were made.
To reiterate, the publically available WhoIs record for the Domain Name as of the date the WIPO case was initiated listed the Registrant as the registrant of the Domain Name. In response to the registrar verification request from WIPO and based on available information, Network Solutions confirmed the registrant of the Domain Name to be the Registrant. That is who Network Solutions at all times understood the domain name to be registered to and when we contacted the Registrant they confirmed they were in fact the registrant of the Domain Name. It appears that they have had other domains that have been the subject of UDRP filings, and although unfortunate, this by itself does not give rise to a violation of the RAA by Network Solutions.
In light of the above, we consider the matter closed, and we respectfully request that the Complaint be closed with WIPO and ICANN as well. Thank you very much for your courtesies in regards to this matter and please feel free to contact me if you have any additional questions or need anything else in this matter. Please note that nothing contained herein is to be construed as an admission of any kind and we expressly reserve all rights with respect to this matter.
Very truly yours,
Jonathan D. Tenenbaum, Esq.
Corporate Counsel
W Group, Inc.
1 Presumably the reference to “.com” in the Complaint is in error and the Complainant intended to refer to “.net”, which is the relevant Top-Level Domain (“TLD”) in this case.
2 See, for example, paragraph 6.20 of the decision in the LEGO Juris A/S, supra, which identifies four recent decisions in which the panels have followed this course.
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