Complainant is Thompson Island Outward Bound Education Center of Boston, Massachusetts, United States of America (the “USA”), represented by the law firm Brown Rudnick LLP, USA.
Respondent is Larrie Noble/ Dirty Mackn Entertainment Corp of Drums, Pennsylvania, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2013. On June 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On July 5, 2013, the Center sent an email communication to Complainant requesting to confirm if other legal proceedings commenced or not in connection to the disputed domain name. On July 5, 2013, Complainant confirmed that there were no other legal proceedings in connection to the disputed domain name. On July 25, 2013, the Center sent an email communication to Complainant inviting it to remedy a deficiency found in the Complaint. Complainant filed an amended Complaint on July 26, 2013 and July 29, 2013, and remedied the deficiencies of the Complaint.
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 July 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2013.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 26, 2013. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a not-for-profit organization that provides outdoor adventure and experiential learning programs for youth. It is located on its namesake Thompson Island, near Boston, Massachusetts. Complainant or a predecessor not-for-profit entity has been providing educational services since 1833. From 2004 until quite recently it used the disputed domain name to describe and promote its services.
Early on June 8, 2013, ownership of the disputed domain name was transferred to Respondent. Later that day, Complainant and its counsel notified the Registrar of this transfer, which they allege took place without Complainant’s authorization. In email correspondence from June 8, 2013 through June 13, 2013, Complainant sought to have the disputed domain name transferred back to Complainant, without success. In its final email the Registrar stated “[...] the parties claiming contractual rights to the domain name registration must resolve disputes over the registration of domain names” and referred Complainant to the Policy. The Registrar did place the disputed domain name on register lock, as a “security measure[…] to help prevent unauthorized transfer of your domain registration(s) to another registrar.”
By reason of the registrar lock, the disputed domain name continues to resolve to Complainant’s website. 5. Parties’ Contentions A. Complainant
Complainant bases its case upon a claim that an unknown an unauthorized person or persons stole the disputed domain name from Complainant. With respect to the operative sections of the Policy, paragraph 4(a), Complainant alleges as follows:
1. Complainant holds common law rights in the disputed name under USA federal and Massachusetts state law by reason of its continuous use of the phrase “Thompson Island” in its corporate name and public materials for more than a century and a half. That claim is based in part upon Complainant’s prior ownership and use of the disputed domain name from 2004 through June 2013. The disputed domain name is identical to the phrase in which Complainant asserts rights.
2. The limited materials available to Complainant, primarily the new registration and related contact details, indicate that Respondent has not been commonly known by the disputed domain name. Complainant affirmatively asserts that Complainant has never authorized Respondent to use its name or mark. Respondent thus lacks a right or legitimate interest in the disputed domain name.
3. Hacking into Complainant’s account and stealing the disputed domain name suffice to establish bad faith in registration and use. In Complainant’s words, “in very similar cases, other Panels have found facts like these more than sufficient to establish bad faith registration and/or use.” The Panel discusses the authority cited in support of this proposition in Section 6-D below.
In support of its allegations of hacking and theft Complainant annexes certain emails from the Registrar addressed to Complainant, but in fact sent in reply to directions received from the person who obtained unauthorized access to Complainant’s account to effect the transfer. These emails suggest that this unauthorized person changed the password on Complainant’s account and the challenge questions used for password reset and then transferred the disputed domain name to an account maintained in Respondent’s name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
Before addressing the elements of paragraph 4(a) of the Policy, the Panel on his own initiative addresses whether the dispute as pleaded in the Complaint is properly resolved under the Policy. Given the complexity of proof ordinarily required to establish criminal or intentionally tortious conduct, the Policy’s limitations upon pretrial discovery, and the very limited brief granted to Policy panels, such matters have often been held to be outside the Policy’s limited and very specific scope. Hacking and theft have been the subject of decisions denying UDRP complaints on these grounds, see, e.g., Edward G. Linskey Jr. v. Brian Valentine,WIPO Case No. D2006-0706, as raising issues beyond a panel’s jurisdiction and competence. Similarly complaints have been denied to avoid interfering in parallel court or governmental proceedings involving the same parties and issues. Here, Complainant has referred the alleged theft to the proper criminal authorities for investigation; perhaps the Panel should defer to those authorities for resolution of the matter.
Panels have recognized, however, that in some circumstances when other proceedings are likely or even pending it may be appropriate to proceed with decision of the UDRP complaint. That is so when the complaint is limited to recovery of a disputed domain name and the panel’s decision does not depend upon its determination of factual issues underlying the broader dispute. See, e.g., Yellowstone Mountain Club LLC v. Offshore Limited D and PCI,WIPO Case No. D2013-0097, section 6-A (“Complainant has carefully limited this case to transfer of the three disputed domain names; there is no request that the Panel consider the merits of anything but entitlement to the disputed domain names in accordance with the three factors set out in paragraph 4(a) of the Policy. The Policy determination does not depend upon an issue disputed in litigation or bankruptcy.”)
In this Panel’s opinion the present proceeding falls into the latter category. Complainant does not request a finding that a hacking or theft occurred, only that the Policy requirements for transfer have been proven. As in Yellowstone Mountain, supra no other proceedings are pending between the parties. This is not a case in which one party seeks a tactical advantage in a broader dispute; Complainant seeks nothing but transfer of the disputed domain name. As in Yellowstone Mountain, supra the Panel will proceed to consider the merits. B. Identical or Confusingly Similar
Paragraph 4(a)(i) requires Complainant to demonstrate two things: a right in a mark and identity with or confusing similarity between the mark and the disputed domain name. The disputed domain name in this case is identical to the phrase in which Complainant claims rights, so the only issue for the Panel to decide is whether Complainant has rights in “Thompson Island”.
That is a more difficult question than Complainant makes it out to be. Complainant has produced evidence sufficient (at least in the absence of contrary proof) to show common law rights in its corporate name, Thompson Island Outward Bound Education Center. That of course, is not the same as rights in Thompson Island standing alone. Thompson Island is a geographic location and by itself is not indicative of any goods or services provided by Complainant or anyone else.
Complainant argues that its prior use of the disputed domain name – stripped of its gTLD, Thompson Island standing alone – gives it rights in the phrase. The Panel agrees, though upon slightly different grounds than those offered by Complainant. First and most importantly, the audience likely to be misled should Respondent make a different use of the disputed domain name has for almost a decade identified “Thompson Island” with Complainant; that is the means Internet users seeking information about Complainant have accessed it on their computers. Second, Thompson Island may be said to be the dominant feature of Complainant’s full name. Its use without the other four words may – and on Complainant’s evidence is found to be – acceptable ellipsis. Complainant has met its burden of proof under this Policy head. C. Rights or Legitimate Interests
Complainant’s proof makes out the necessary prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name, and nothing in the record suggests the contrary. Complainant has established this Policy head. D. Registered and Used in Bad Faith
Lacking a right or legitimate interest in the disputed domain name, Respondent’s registration of it plainly was in bad faith under the Policy. The emails generated by Respondent’s conduct, which are addressed to Complainant’s president, indicate that registration was undertaken by someone’s misrepresenting himself as Complainant, further evidence of registration in bad faith.
Respondent has made no use of the disputed domain name, having so far been barred from doing so by the Registrar lock. May no use constitute use in bad faith? Several of the cases cited by Complainant indicate that it may. In particular, in Mundo Joven Travel Shop, S.A. de C.V. v. NET Technologies,WIPO Case No. D2008-1292, JAI A/S v. Site Services International, Richard Sorensen,WIPO Case No. D2007-1685, and CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies,WIPO Case No. D2005-0609, panels ordered transfer upon circumstances identical in all material respects to this case, albeit without much discussion of this precise question. This Panel sees no reason to depart from this approach in the circumstances of this case, for the reasons given by the panel in Worldcom Exchange, Inc v. W, Inc.,WIPO Case No. D2004-0955:
“In the circumstances of the present case, the Panel finds the following facts sufficient to establish bad faith, within the meaning of paragraph 4(a)(iii) of the Policy:
(a) The Respondent knew or ought to have known that the Domain Name was in use and had been used for many years in connection with an active website;
(b) The Respondent gained access to the [Registrar’s] ownership database through improper (likely fraudulent) means;
(c) The Respondent changed the ownership records for the Domain Name covertly, without any notice to the rightful owner;
(d) The Respondent used misleading and false contact information when it changed the ownership records;
[...]
(f) The Respondent has disrupted the legitimate business activities of the Complainant, depriving it of access to the domain name and website it had created and maintained for more than 10 years.”
And in any event, panels have in analogous circumstances found non-use to constitute use in bad faith since the UDRP came into force. In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, one of the most-cited decisions under the Policy, the panel found non-use to be bad faith, because “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”. The same is true of this proceeding. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Date: September 5, 2013
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