The Complainant is NetEarth Group, Inc of London, United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is Stichting1 OpenTLD WHOIS Proxy of Amsterdam, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with OpenTLD B.V. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 11, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Following a reminder from the Center, the Registrar on March 16, 2015, forwarded an email to the Center stating that the "the domain has been deleted" and that it would soon be available for registration again. The Center on March 18, 2015, sent an email reminding the Registrar of the requirements of paragraph 3.7.5.7 ICANN Expired Domain Deletion Policy.
Subsequently, on March 20, 2015, the Center noted with concern the Registrar's failure to provide a full response to the Center's request for registrar verification, and requested a reply on or before March 23, 2015. On March 24, 2015, the Registrar forwarded a response to the Center, indicating that "the domain name has been deleted at the Regstry [sic]". The Registrar answered "yes" to the question whether the disputed domain name was or would be placed on Registrar lock and would remain so during the course of proceedings under paragraph 8 of the Policy.
The Center verified that 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the parties of the panel appointment process on April 14, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on April 28, 2015. 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. Due to exceptional circumstances, the date for the Panel to submit its decision to the Center was extended to May 19, 2015. 4. Factual Background
The Complainant and its subsidiary companies (NetEarth One, Inc., NetEarth UK Limited, and NetEarth LLC) provide Internet related services in the Americas, Asia and Europe markets under the names NetEarth and NetEarth One. These services include domain name registration services. NetEarth One, Inc. is an accredited ICANN registrar, and NetEarth UK Limited is an accredited Nominet registrar. The Complainant owns a Community Trade Mark ("CTM") registration for NETEARTH, filed on November 17, 2008 and registered on June 16, 2009. The Complainant and various subsidiaries offer their services under the NETEARTH mark. The Complainant and its subsidiaries also own a number of domain names which consist of or incorporate the NETEARTH mark.
The Respondent named in the Complaint appears to be a privacy protection service affiliated with the Registrar OpenTLD B.V. ("OpenTLD"). OpenTLD trades under the name "Freenom". The disputed domain name was registered on August 14, 2014. Prior to the filing of the Complaint the disputed domain name was used to divert Internet users to a website soliciting Complainant's customers to switch to the Freenom,2 which in turn redirected to a page on Freenom's website ("/en/resellers"), offering domain name services similar to those provided by the Complainant and its subsidiaries.
WhoIs records provided by the Complainant reflect that on August 14, 2014 – the same day the disputed domain name was registered – either OpenTLD or its affiliated proxy service Stichting OpenTLD WHOIS Proxy registered no less than six (6) other domain names corresponding to trade names or trademarks of domain name service providers with whom OpenTLD/Freenom competes.3 OpenTLD was the sponsoring registrar for all such registrations. A use similar to that made with in this case was made with these domain names. 5. Parties' Contentions A. Complainant
The Complainant submits that the true registrant of the disputed domain name is OpenTLD (d/b/a Freenom), and not the proxy service shown in the WhoIs records. The Complainant advances this argument given the use to which the disputed domain name has been put, OpenTLD's registration of additional domain names corresponding to trademarks of its competitors, and the similar use of these domain names.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's registered mark NETEARTH, and that the addition of the common or descriptive term "one" does not serve to distinguish the disputed domain name from the Complainant's mark. According to the Complainant, its NETEARTH mark is inherently distinctive and in no way descriptive of the services provided under the mark. The Complainant further notes that the disputed domain name is virtually identical to the trade name of one of its subsidiaries, NetEarth One, Inc. (an accredited ICANN registrar).
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent, a direct competitor of the Complainant, is not and has never been connected to the Complainant and is not licensed or permitted to use the Complainant's registered trade mark. The Complainant asserts that it is "utterly inconceivable" that the Respondent was unaware of the Complainant and its rights in the NETEARTH mark, given that the Respondent has operated in the same commercial field for a number of years.
The Complainant reiterates that its NETEARTH mark is inherently distinctive and in no way descriptive of the services being provided either by the Complainant or the Respondent. The Complainant submits that consequently there is simply no legitimate or justifiable reason for the Respondent to have registered the disputed domain name. The Complainant points to the Respondent's registration on a single day of multiple domain names corresponding to the names and trademarks of competitors as further evidence that the Respondent is not making a bona fide use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant maintains that the Respondent and the Registrar (OpenTLD) are one and the same. According to the Complainant, this conclusion is supported by the use of the disputed domain name firstly to resolve to a website that seeks to entice the Complainant's NetEarth One customers to switch to the service provider "Freenom" with the words "Ever wondered if it's just One Earth Network? Enter Freenom's new world and get domains at cost price"; which then automatically redirects to the webpage "/en/resellers". On that page, the Respondent offers services that compete with those provided by the Complainant under its NETEARTH mark.
The Complainant urges that bad faith also is clearly indicated by the Respondent's registration of six other domain names corresponding to trademarks of other competitors of the Respondent, and by the use of these domain names in a manner similar to how the disputed domain name has been used. The Complainant maintains that the public would likely expect the disputed domain name to resolve to a website operated by the Complainant. However, the Complainant explains that entering the words "netearth" or "netarthone" into a search engine generates a list of websites that includes the Respondent's website, which contains advertising actively targeting the Complainant's customers.
In view of the foregoing, the Complainant submits that the Respondent registered and is using the disputed domain name to generate revenue and to divert consumers looking for the Complainant's services to a website offering competing services. The Complainant submits bad faith registration and use within the meaning of the Policy is demonstrated in at least the following respects: (1) the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; an (2) in using the domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, or of a product of service on that website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Preliminary Issues A. Registrar as Registrant
Although cases of this nature are somewhat unusual, UDRP panels consistently have held that a registrar who registers a domain name, either for its own account or through a subsidiary, can be the "holder of a domain name registration against which a Complainant is initiated" under paragraph 1 of the Rules, and thus a proper respondent in a proceeding under the Policy. See, e.g., Pernod Ricard v. T Co,WIPO Case No. D2008-0789 (three-member panel); General Electric Company v. Marketing Total S.A,WIPO Case No. D2007-1834; DAVIS VISION, Inc. v. Demand Domains, Inc., NAF Claim No. 1142731; and Paxar Americas, Inc. v. eNom, Inc., NAF Claim No. 980114. See also Markel Corporation. v. T Co,WIPO Case No. D2007-1750.
Accordingly, where a registrar's conduct with respect to a domain name goes beyond merely performing administrative actions in accepting and implementing domain name registrations for another, but instead concerns the registration and use of a domain name for the registrant's use, the registrar is subject to the full force and effect of the Policy, and faces the same scrutiny and liability under the Policy for its conduct as would any domain name registrant. Pernod Ricard v. T Co, supra (citing Paxar Americas, Inc. v. eNom, Inc., supra). As the panel in Paxar Americas explained:
"If this were not the case, then domain name registrars could, with impunity under the Policy, register and use domain names in a manner that inflicts harm on legitimate rights holders. Such a result would lie directly contrary to the very goals of the Policy -- recognition and preference to the legitimate rights of trademark holders as against abusive domain name registration."
Based on the undisputed facts in the record, including the identification of the WhoIs registrant as a privacy service affiliated with the Registrar (OpenTLD B.V. d/b/a Freenom), and the use of the disputed domain name by the Registrar as reflected in the record, the Panel concludes that the Registrar is the actual or true registrant of the disputed domain name, and thus the proper Respondent in this case. B. Registrar Conduct
The Panel considers the Respondent's conduct in its capacity as the Registrar highly suspect. As noted earlier, the Registrar delayed for five days before providing any response the Center's initial request for registrar verification of March 11, 2015. The Registrar's initial reply on March 16, 2015, did not respond to the Center's request for registrar verification other than stating that the disputed domain name had been "deleted" and would "soon be available for registration". On March 18, 2015, the Center reminded the Registrar of paragraph 3.7.5.7 ICANN Expired Domain Deletion Policy. When on March 24, 2015, after further reminders from the Center, the Registrar finally made an ostensible effort to address the specifics of the Center's request for verification, the Registrar indicated that "the domain name has been deleted at the Regstry [sic]", but answered "yes" to the question whether the disputed domain name was or would be placed on Registrar lock and would remain so during the course of proceedings under paragraph 8 of the Policy.
The Panel is persuaded from the record that the delays on the part of the Registrar were intentional. The Registrar appears to have violated paragraph 8 of the Policy by deleting the disputed domain name during the pendency of this proceeding instead of placing the domain name on Registrar lock. See Funix B.V. v. Domain Administrator,WIPO Case No. D2009-1048. While the Registrar represented on March 24, 2015, that the disputed domain name had been or would be placed on Registrar lock, the Registrar's representation is dubious. The Panel notes that the Registrar failed to afford the Complainant the opportunity to restore the disputed domain name in contravention of paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy, even after receiving a reminder from the Center.
The Panel further considers the Registrar's conduct as described herein tantamount to the abusive and bad faith practice of cyberflight. At some point after becoming aware of the Complaint, the Registrar deleted the disputed domain name (with the expiration date still some six months away), with the stated intention of that the disputed domain would become available for registration. 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"). See also Funix B.V. v. Domain Administrator, supra.
In Fifth Third Bancorp, supra, the domain name at issue was registered using the registrar's privacy protection service. Shortly after receiving a letter from the complainant's attorney, to which there was no reply, the registrar informed the Center that the domain name had been "deleted" at the request of the registrant (whose identity was not disclosed). The following month the domain name was registered by a new owner and registrar. While the Panel is not aware that the disputed domain name at issue here has been registered to a new owner, the Registrar's conduct is consistent with cyberflight, and seems to be calculated to avoid or delay proceedings under the Policy. As noted above, the Registrar is the Respondent herein, and faces the same scrutiny and liability under the Policy for its conduct as would any domain name registrant. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's NETEARTH mark, in which the Complainant has established rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.4 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
In this case, the disputed domain name incorporates the Complainant's mark in its entirety. The inclusion of the common or descriptive word "one" does not serve to distinguish the disputed domain name from the Complainant's mark. In that respect, the Panel also notes that NetEarth One is the name of one of the Complainant's subsidiary companies. Although a generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain names. The Respondent, without the Complainant's authorization or consent, has registered a domain name appropriating the Complainant's NETEARTH mark. The Respondent has used the disputed domain name to divert Internet users to a website where the Respondent offers services that are competitive with those provided by the Complainant under its marks.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
Based on the record in this proceeding, the Panel is persuaded that the Respondent was well aware of the Complainant's rights in the distinctive NETEARTH mark when registering the disputed domain names. The Panel concludes that the Respondent did so in order to trade on the goodwill and reputation of the Complainant's marks through the creation of Internet user confusion. Internet users could easily expect that the disputed domain name, which appropriates to the Complainant's distinctive mark, would be linked to the Complainant's website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
It is not a legitimate or fair use for the Respondent to register a domain name appropriating the Complainant's trademark (as well as trademarks of other competitors), undertaken without the trademark owner's consent, in order to create Internet user confusion and divert consumers seeking the Complainant's services to a website on which the Respondent's promotes its own competing services. In light of the foregoing, the Panel finds the Respondent's registration and use of the disputed domain name to be male fide; the Respondent's actions undermine any claim by the Respondent to have used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Panel further considers that the Respondent's highly questionable conduct when acting as the Registrar underscores the Respondent's lack of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above, the Panel has determined that Respondent was well aware of the Complainant and the Complainant's mark when registering the disputed domain name. For the reasons noted earlier, the Panel concludes that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights through the creation of Internet user confusion.
In that regard, the record amply supports a finding that the Respondent registered the disputed domain name for the purpose of disrupting the business of a competitor. The record further reflects the Respondent's use the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement. In addition, the record reflects actions taken by the Respondent's that, as discussed above, the Panel considers tantamount to the abusive and bad faith practice of cyberflight.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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 the Complainant. For purposes of implementation of the Panel's order and any appropriate actions required, the Panel requests that a copy of the Panel's decision be provided to NeuStar, Inc., the .biz Registry Operator, and to ICANN, as the accrediting authority.
William R. Towns
Sole Panelist
Date: May 19, 2015
1 Stichting is "Foundation" in English.
2 The website featured the following advertisement: "Ever wondered if it's just One Earth Network? Enter Freenom's new world and get domains at cost price".
3 The domain names were: , , , , and .
4 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
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