The Complainants are Wild PCS, Inc. and Tom Yang of Las Vegas, Nevada, United States of America (“USA”), represented by KERN LAW, Ltd., USA.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, USA / Choi Lam of Wan Chai, Hong Kong, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016. On January 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 8, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 11, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 14, 2016. On January 29, 2016, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the due date for Response to February 7, 2016. The Response was filed with the Center on February 7, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 11, 2016. 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.
The need for an amended Complaint stemmed from the fact that at the date of the Complaint the Domain Name was held in the name of a privacy service and that in response to the Center’s request for Registrar verification the Registrar identified the underlying registrant as being the above named Choi Lam. All references hereinafter to the “Respondent” are references to the said Choi Lam who responded to the Complaint.
Having read the case file and visited the website connected to the Domain Name the Panel realized that there was something wrong with the Response, which in turn prompted the Panel to check on the WhoIs history of the Domain Name using the search facility provided by DomainT. The results of that enquiry led the Panel to issue a Procedural Order on February 12, 2016 in the following terms:
“The Panel seeks clarification from the Respondent on the following passage appearing in section B of the Response, namely:
‘Respondent found and registered the domain when it was available in r at the beginning of December 2015, immediately point it to a r landing page until the website could be develop.’
First, when the Panel today (February 12, 2016) visited the website connected to the Domain Name it appeared to be a website of the Complainant and devoted exclusively to the Complainant’s business, not a parking page of the Registrar.
Secondly, making use of the DomainT search facility, the Panel found the following:
‘On August 27, 2015 the domain name was in the name of Ding yo Tang and the expiration date was 2 December, 2015
On September 17, 2015 the domain name was in the name of Perfect Privacy (expiry date 2 December 2016) and the record had been updated on 31 August 2015
On 3 October 2015 the domain name was in the name of Choi Lam (expiry date 2 December 2016) and the record had been updated on 2 October 2015
On 5 October 2015 the domain name was in the name of Perfect Privacy (expiry date 2 December 2016) and the record had been updated on 4 October 2015.”
The above record derived from DomainT indicates to the Panel that, contrary to the above quoted passage from the Response, the Respondent acquired the Domain Name well prior to its original expiry date of December 2, 2015.
The Respondent is invited to clarify these apparent anomalies by way of a response to this procedural order. Any response should be submitted to the Center by no later than 4pm Geneva time on Monday February 15, 2016.
In the event of a response from the Respondent, the Complainants shall have until 4pm Geneva time on Wednesday February 17 to respond to that response.’”
On February 13, 2016, the Respondent responded to the Center as follows:
“I simply wanted to get a domain for my startup online business as explained in my response, just like many others do and didn’t expect run into this kind of issue when I got it. In Hong Kong, time is money. This has causing too much trouble and time for me that I would rather find another domain instead. Therefore, I would like to forfeit the domain dispute and transfer it back to the original owner.”
The Complainants did not respond to the Procedural Order. 4. Factual Background
The Complainants are a Nevada-based corporation, Wild PCS Inc., and its proprietor, Tom Yang. They are engaged in the provision of cellphone repair training services under and by reference to the name, Wild PCS.
Wild PCS Inc. was incorporated in March 2010 and on the unchallenged evidence of the Complainants was incorporated to acquire its predecessor business, Wild PCS Accessories, a business owned and operated for several years by Dingyo Tang.
In 2010, Wild PCS was owned as to 50 percent by Dingyo Tang and 50 percent by Tom Yang.
On June 14, 2014 Tom Yang and Dingyo Tang entered into an agreement whereby Tom Yang acquired Dingyo Tang’s share in Wild PCS, Inc. “including the company name and assets currently being used by Wild PCS, Inc.”
One of the assets then being used (and still being used) by Wild PCS Inc. is the Domain Name. The Domain Name was first registered in 2001. From at least 2007 until August 2015 it was held in the name of Dingyo Tang, Wild PCS Accessories. It was due for renewal on December 2, 2015. Since 2010 the Domain Name has been connected to Wild PCS Inc.’s website.
In or around December 2014, Tom Yang discovered that Dingyo Tang had set up a competing business and had recruited members of staff from Wild PCS Inc. In March 2015, the Complainants commenced an action against Dingyo Tang and others in a Nevada District Court alleging inter alia breach of covenant of good faith and fair dealing, breach of contract, defamation and tortious interference.
In the latter part of 2015 when the Complainants were preparing to renew the Domain Name they found that it was held in the name of a privacy service. On January 7, 2016 they launched this Complaint believing the underlying registrant to be Dingyo Tang, who had had control of the Domain Name for many years prior to the incorporation of Wild PCS Inc. when running his Wild PCS Accessories business, the predecessor to Wild PCS Inc.
As can be seen from section 3 above, on Registrar verification the underlying registrant turned out to be, not Dingyo Tang, but Choi Lam of Hong Kong, China, the Respondent. The amended Complaint alleged that the Respondent was an agent for Dingyo Tang, the object of the exercise being to put the Domain Name beyond the reach of the Complainants.
However, in his Response the Respondent asserted that he was unconnected with any previous owner and acquired the Domain Name on its expiry in early December 2015. In seeking to verify this claim by way of the DomainTools WhoIs history search facility, the Panel discovered that in fact the Respondent acquired the Domain Name from Dingyo Tang in or around August 2015, prior to its expiry date in December 2015.
This prompted Procedural Order No. 1 (see section 3 above) and as will be seen the Respondent declined to explain the discrepancy between the Response and the WhoIs history. 5. Parties’ Contentions A. Complainant
The Complainants contend that the Domain Name absent the generic Top-Level Domain (“gTLD”) identifier is identical to the Complainants’ service mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent asserts that he knows nothing of the Complainants or any previous owner of the Domain Name and acquired the Domain Name when it became available on the open market in early December 2015. He asserts that he acquired the Domain Name in good faith for an unconnected business of his own. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises “wildpcs”, which is in substance Wild PCS Inc.’s corporate name and claimed service mark, and the “.com” gTLD identifier. It being permissible to ignore the latter for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Panel is satisfied that the Domain Name is identical to the Complainants’ claimed service mark.
The Complainants have produced very little in the way of evidence to support the existence of service mark rights. There is no service mark registration and the Complainants have produced little in the way of evidence as to the extent of their business under the claimed mark.
However, in the course of the Panel’s DomainsT searches (see section 3 above) the Panel viewed screenshots of the website connected to the Domain Name dating from 2008 when the Domain Name was used by Wild PCS Inc.’s predecessor, Wild PCS Accessories, to the present day when the website relates to the business of Wild PCS Inc. as it has done since 2010. The Panel is satisfied that the name “Wild PCS” has been in continuous use in trade for the last eight years by Wild PCS Inc. and its predecessor.
Furthermore, the Panel is satisfied from the evidence in the case file, on the balance of probabilities, that that use has been sufficient to give rise to unregistered service mark rights in respect of the mark for purposes of the Policy.
The Panel finds for the purposes of this decision that the Domain Name is identical to a service mark in which Wild PCS Inc. has rights. For the avoidance of doubt, the Panel stresses that those rights lie with Wild PCS Inc. and not Tom Yang, the corporation’s proprietor. C. Rights or Legitimate Interests
The Complainants contend that the transfer of the Domain Name to the Respondent was a case of cyberflight on the part of Dingyo Tang, who had from at least 2007 until August 2015 held the Domain Name in the name of Wild PCS Accessories, Wild PCS Inc.’s predecessor. The Complainants contend that the Respondent is an agent of Dingyo Tang and that the object of the exercise was to put the Domain Name unfairly beyond the reach of the Complainants. The Complainants contend that this was a vicious, unjustified step taken in the context of what appears to be a very hostile dispute between the Complainants and Dingyo Tang (see section 4 above), although as currently framed the Nevada District Court action does not appear to concern the Domain Name.
The Panel infers from the failure of the Respondent to respond substantively to the Panel’s Procedural Order No. 1 that the Panel’s findings from the DomainT enquiries (see section 3 above) are accurate and that the Respondent did not, as he claimed, acquire the Domain Name in the open market and independently of the previous owner.
The Panel infers that the Respondent acquired the Domain Name from Dingyo Tang, who had control of the Domain Name prior to its transfer to the Respondent, in order to assist Dingyo Tang in his endeavor to put the Domain Name beyond the reach of the Complainants and not for any good faith reason associated with any right or legitimate interest in respect of the Domain Name.
Self evidently, on that basis, the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
If that inference is well-founded, the Respondent’s purpose in acquiring the Domain Name, a name in active use by the Complainants, was to assist Dingyo Tang, a competitor of the Complainants, in causing disruption to the business of the Complainants.
The Panel believes that the inference is well-founded. Were it otherwise the Respondent had ample opportunity to explain himself by responding substantively to the Procedural Order No. 1, an opportunity that he elected not to grasp.
The Panel finds on the evidence before him that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.
While it is true that the Domain Name appears still to be connected to the Complainants’ website, it is outside the control of the Complainants and the Complainants have every reason to believe that the Respondent, if left in control of the Domain Name, will use it to their disadvantage. In the view of the Panel, that threat hanging over the head of the Complainants constitutes a continuing use in bad faith. 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 Domain Name, , be transferred to Wild PCS Inc.
Tony Willoughby
Sole Panelist
Date: February 17, 2016
Full & Egal Universal Law Academy