1.1 The Complainant is Little Acorns Fostering Ltd. of Haverhill, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.
1.2 The Respondent is W P, The Cloud Corp of George Town, Cayman Islands, Overseas Territory of the United Kingdom / Al Perkins of Saint Helier, Bailiwick of Jersey. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2017. On the same date the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2017. The Center received emails from Mr. Perkins on September 20, 2017 and October 12, 2017 and two emails from someone claiming to be “Cloud Corp” on October 12, 2017, but no formal Response was filed.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 17, 2017. 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. 4. Factual Background
4.1 The Complainant is a company incorporated in England and Wales in July 2012. It is an independent fostering agency based in Suffolk, England and provides emergency, short-term, bridging, respite, long-term and parent and child placements. It has been Ofsted registered since February 2013.
4.2 The Complainant is not the owner of any registered trade mark but it has used the “Little Acorns Fostering” name in respect of its activities since at least 2013. During that time its business has achieved some publicity in local newspapers and media and recently has also spent several thousand pounds in print, online and radio marketing.
4.3 The Complainant initially registered the Domain Name on July 12, 2012, and subsequently used that Domain Name for a website promoting the Complainant’s business and email addresses used in the course of the Complainant’s business. However, for reasons that are somewhat unclear the Domain Name was allowed to expire in or about August 2017 and by August 24, 2017, was registered in the name of “Al Perkins”.
4.4 Mr. Perkins is an individual who appears to reside in the Bailiwick of Jersey (a Crown Dependency forming part of the Channel Islands off the north cost of France). Mr. Perkins appears to be an individual who has previously been named as a respondent in no less than 16 cases under the Policy since 2012. In all 16 cases Mr. Perkins was the losing party and in a large number of those cases the panel accepted that Mr. Perkins (a) had acquired the domain name when the domain name inadvertently expired, (b) had then used that domain name to display pornographic content, and (c) sought significant payments from the complainant in return for transfer of the domain name. Recent examples include:
- Michael Heald v. Al Perkins,WIPO Case No. D2017-0959
- Bartram Academy, Inc. v. Al Perkins,WIPO Case No. D2017-0584
- Angela D. Justice-Burrage, dba A.D. Justice v. Al Perkins,WIPO Case No. D2016-0545
4.5 As a result of these activities, it would appear that Mr. Perkins has become a man of some notoriety with articles as to his business practices appearing in various publications around the world. By way of example, Mr. Perkins’s activities were the subject of an article in the Canadian publication “National Post” in January 2016 with the headline “British man defends buying B.C. town’s domain name and turning it into porn website”. The article reported as follows:
“A [British Columbian] town is warning of the perils of letting a domain name lapse after they found the website for their Chamber of Commerce filled with hardcore pornography.
‘If the Chamber wants it back, the purchaser wants $9,700 … which as far as I’m concerned is extortion,’ said Virginia Smith, mayor of the 1,700-person town of Barriere.
BarriereC used to host tourist information and a write-up on the ‘business of the year.’ But since early January, visitors have instead been greeted by a wall of explicit images in categories such as ‘college,’ ‘fantasy’ and ‘gagging.’
[…]
The new owner of BarriereC is Al Perkins, a man based in the Bailiwick of Jersey, a British Crown Dependency just off the coast of Normandy.
[…]
‘It is just pure business and that’s it, nothing personal,’ wrote Perkins in an email to the National Post.
‘If I purchase a home or a car and I do not keep up my repayments I lose them.’
Perkins explained that he purchased BarriereC at auction once it fell into the open market.
‘(Barriere Chamber of Commerce) offered $500 to buy the domain but it was simply not enough to cover our costs,’ he wrote.
‘We was we have [sic] them the opportunity to buy it and they refused, many other domainers would not even give them that chance.’
[…]
The domain (and its confused web traffic) is now leased to the website PornoLaba, which he said was the highest paying affiliate.
[…]
Perkins is the owner of Trev Media, a company whose business largely appears to center exclusively around buying lapsed or disputed domain names and—quite often—proceeding to fill them with porn.
‘He’s learned that just asking for a ridiculous amount of money for the domain isn’t enough incentive … that’s where the porn comes in,’ reads one of a myriad of online complaints by former website owners against Perkins.
Just in the past year, Christian websites, personal blogs and even public libraries have found their websites wallpapered with hardcore porn after a payment glitch or clerical error sent the site into the open market.
‘I cried in brokenness,’ wrote the Christian website operator.”
4.6 On August 25, 2017, a representative of the Complainant sent an email to “trevmedia@[...].com” in which that person stated that he assumed the new registrant had “purchased it with the intention of selling it back to us”. He stated that the business did not have “vast wealth” but enquired as to how much the new registrant would want for it.
4.7 In an email later that same day “Perkins Perkins” of “trevmedia” responded:
“I can understand how important the domain is for you as we have been getting emails already asking if you have gone out of business.”
4.8 In a subsequent email “Perkins Perkins” claimed to have spoken to his client and stated as follows:
“The price they have requested is £8700 to cover their costs in purchasing the domain from auction and to purchase another domain.”
4.9 When the Complainant’s representative stated that the Complainant could not afford that, “Perkins Perkins” responded to the effect that the Domain Name could be used to obtain the Complainant’s customers. In particular he stated as follows:
“For example they just reset the mx records to obtain your clients details then approach them with a better offer.
Then you have to question the value of your business and brand, is your business worth more than £8700 ?”
4.10 The Complainant’s representative suggested that this amounted to extortion but offered to pay £1,000 to get the Domain Name back. “Perkins Perkins” then agreed with that characterisation of the new registrant’s behaviour and stated that he had passed this offer on but was “not holding out any great hope”. Later that day “Perkins Perkins” sent an email claiming to have “spoken to [his client] once again”, to have “worked hard on this one” and to have got the client to agree to a price of “£5K”.
4.11 Initially the Complainant’s representative, albeit reluctantly, appeared willing to purchase the Domain Name for that price, but following some discussions as to the mechanics of such transaction changed its mind. It would also appear that in the meantime the Complainant had undertaken some research into Mr. Perkins’s past registration of domain names and the subsequent display of pornography. In particular, the Complainant’s representative made reference in an email to the “vile business practices of Al Perkins” and made it clear that that it was no longer prepared to pay any money for the Domain Name and would seek to publicise what has occurred in this case.
4.12 “Perkins Perkins” appeared to be upset by this turn of events claiming that the Complainant was behaving unethically in operating a business that made money from “poor little kids”, accusing the Complainant of “threatening and blackmailing” and stating that the Complainant would be reported to the police and the council “so you have your licences taken away from you immediately”.
4.13 Following what would appear to be a phone call, “Perkins Perkins” sent an email in which he accused the Complainant of being abusive, and then became abusive himself. In the penultimate paragraph he wrote:
“Tell your foul mouth wife to f[…] herself and you will never get the domain back on principal [sic].”
4.14 There then followed what can perhaps be characterized as a tirade of threatening emails one of which stated:
“Your company will be exposed along with you as abusers, kids should not be around that foul language under any circumstances.”
4.15 It would then appear that further correspondence followed in which the Complainant offered to purchase the Domain Name for £500. By this point “Perkins Perkins” appeared to accept that he was in fact Al Perkins. He had abandoned any claim that the Domain Name had been registered for a “client”, was responding to emails addressed to “Al” and was admitting that he had purchased the Domain Name (for example, stating at one stage “now why would I sell something less than what I paid for it Einstien”). Mr. Perkins did not accept that £500 offer claiming that he had “another interested party with the same name who would appreciate the traffic and all the Seo work put into over the years.”
4.16 At some point thereafter a webpage was set up from the Domain Name which took the form of a sign comprising the words “Abuse” struck out in in a red circle.
4.17 A few days later and no later than September 8, 2017, the Domain Name was transferred out of the name of Al Perkins and into the name of “The Cloud Corp” at an address in the Cayman Islands.
4.18 As has already been recorded in the Procedural History section of this Decision Mr. Perkins and “Cloud Corp” sent a number of emails to the Center after these proceedings had been commenced. In particular:
(i) on September 20, 2017, Mr. Perkins wrote:
“The complainants representives [sic] obviously do not know what they are doing as the I do not own the domain.
The complaint was made when the domain was in new ownership so I formally request my name removed from the complaint and the current owner ‘the cloud corp’ resolve the complaint.”
(ii) on September 21, 2017, Mr. Perkins wrote:
“How Can you file a complaint against somebody who does not own the domain..
So I file a complaint against you for owning F although you don’t own it ?
How can you defend something you do not own which makes the complaint invalid because all the arguments are against somebody who does not own the domain.
The complaintant [sic] is also going I [sic] be investigated by ofstead [sic] as ty [sic] have a catalogue of complaints about then [sic] for their services profiteering relentlessly off poor kids.
The complaintant [sic] representives [sic] are clueless but I just guess they just want to rape every penny from their client who are dumb enough to pay for a complaint when they could of [sic] bought the domain cheaper from me but they are dumb as dumb as their representives [sic]...
Why is everybody so dumb including yourselves ? I guess the panel are just as dumb to believe such bullshit.
I am tired off the corrupt nature of this whole process from start to finish.”
(iii) on October 12, 2017, “Cloud Corp” sent an unsigned email from a Gmail account as follows:
“We are only just made aware of this dispute as it landed in our spam box...
We need additional time for our lawyers to make a response.
Regards”.
(iv) then later that day, in response to an email from the Center pointing out that several emails about this dispute had been sent to and received from “Cloud Corp”, “Cloud Corp” sent a further unsigned email as follows:
“No that was just one single email the rest landed in the spam box so I request an extension or is it that you are that corrupt you refuse one ad [sic] te [sic] complaintant [sic] is dripping [sic] a brown envelope your way ?”
(v) a few minutes later, Mr. Perkins sent the following email:
“What are you taking [sic] about you idiots I never sent an email ?”
4.19 A webpage displaying a sign comprising the words “Abuse” struck out in in a red circle continues to operate from the Domain Name at the date of this Decision 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the recent change in name of registrant from Al Perkins to The Cloud Corp is a case of “cyberflight” in “an attempt to frustrate [the Complainant’s] recovery efforts and distance his true self from these proceedings.” As a consequence it is requested that both Mr. Perkins and The Cloud Corp be considered as the Respondent in the present case.
5.2 The Complainant described its use of the term “Little Acorn Fostering” and claims that it owns unregistered rights in the term as a result. It also contends in this respect that “Little Acorns Fostering” is not a commonly used or descriptive phrase. It further contends that the term “Little Acorns Fostering” in which it claims such rights is identical to the Domain Name as the “.com” Top-Level Domain (“TLD”) can be ignored.
5.3 The Complainant contends that none of the examples of legitimate rights or interests set out in the Policy apply in the case and that the Domain Name was registered and used in bad faith.
5.4 In this respect it contends that Mr. Perkins is a serial cybersquatter who is engaged in the business of buying and selling lapsed domain names through the use of auction and “back order” services and that in this case this was to take advantage of the significance of the Domain Name as a trade mark owned by the Complainant. This is also claimed to form part of a pattern of conduct evidenced in no less than 16 previous decisions under the Policy. The Complainant gives examples of six of these where it contends that the domain name involved was not a common or descriptive phrase but was instead identical to the complainant’s company name.
5.5 Among the cases cited by the Complainant in this respect, it refers to White Oak Entertainment, LLC – DBA The Chateau at White Oak Vineyard v. Al Perkins, NAF Case Number FA1611001702045 where the panel remarked that Mr. Perkins business plan was to “grab expiring domain names in the hopes the original owner would want to repurchase them” and “to redirect[ ] the domain names to pornographic web sites in the hopes of adding some negotiating pressure.” The Complainant also refers to Michael Heald v. Al Perkins,WIPO Case No. D2017-0959 (the “Michael Heald case”), which records that Mr. Perkins as part of his negotiating strategy has sought to take advantage of the fact that the complainant in UDRP proceedings will usually pay the cost of these proceedings and these will usually take at least of couple of months to be determined. In particular, in that case Mr. Perkins is recorded as stating in pre-action correspondence:
“Yeah go for arbitration it will cost you $1500 to file plus lower [sic] costs and about 8 to 10 weeks for a decision but as you seem smart it makes more sense in just buying it but thats [sic] your choice I’m not fussed.”
5.6 So far as the current registrant “The Cloud Corp” is concerned, the Complainant contends that a reverse WhoIs search demonstrates that six domain names are registered in that name and that a historic domain name search on those domain names demonstrates that all of these were previously registered by Mr. Perkins. Accordingly, it is contended that this “illustrates at the very least a common ownership between the Registrants”. B. Respondent
5.7 No formal Response has been filed in these proceedings. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 To succeed in these proceedings the Complainant must 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(b) 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”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant has “unregistered trade mark rights” for the purposes of the Policy. The relevant “trade mark rights” in this case arise out of the English law of passing off, which have long been recognised as being capable of providing relevant rights for under the Policy (see for example, Louis De Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122). The Complainant is a comparatively small entity and it may be that its goodwill does not extend that far beyond the county of Suffolk in which it trades. Nevertheless, this does not matter (as to which see paragraph 3-13 of The Law of Passing-Off: Unfair Competition by Misrepresentation 5th ed Christopher Wadlow).
6.5 Further, the Panel accepts that the only sensible reading of the Domain Name is as the words “little acorns fostering” in combination with the generic Top-Level Domain (“gTLD”) “.com”. In the circumstances, the Domain Name is clearly confusingly similar to a trade mark in which the Complainant has rights.
6.6 The Complainant also contends that the gTLD can be ignored. In doing so the Complainant is putting forward an argument that has undoubtedly been accepted by a large number of panelists. It is not an argument with which the Panel agrees for the reasons set out in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh,WIPO Case No. D2014-1398. However, in this case (as is so in the vast majority of cases), whether or not this argument is correct, is of no practical significance.
6.7 The Complainant has, therefore, made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.8 It is customary in decisions under the Policy separately to address the issues of rights and legitimate interests and bad faith. However, in some cases it is more convenient to address these second and third elements of the Policy together (see section 2.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is just such a case.
6.9 The reason is that the Complainant essentially contends that the real Respondent here in this case is Mr. Perkins. It further contends that Mr. Perkins has registered and held the Domain Name when it inadvertently was dropped as part of a broader business model of acquiring and holding such domain names in order to extort monies from their previous holders because of a domain name’s association with the previous owner’s business and marks. This practice of extortion is said to be bolstered with express or implicit threats directed to the previous registrant’s business.
6.10 If these claims are true it is clear that the Respondent has no rights or legitimate interests in the Domain Name as there is no legitimate interest in registering a domain name for such a purpose and it is activity that undoubtedly involves registration and use in bad faith. Indeed so far as bad faith is concerned it would also fall within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(i) of the Policy.
6.11 The Panel has no hesitation in concluding that Mr. Perkins did indeed acquire and has held the Domain Name for such a purpose. The evidence in this respect is overwhelming. The Domain Name has no obvious association with any business other than that of the Complainant and Mr. Perkins has a history evidenced by press reports and previous cases under the Policy of engaging in such business practices for many years.
6.12 It would appear that the Complainant has been relatively lucky compared to other victims of Mr. Perkins in that he has not chosen to use the Domain Name to link Internet users to pornographic content. However, although there was no use or threat of pornographic material, there were clear threats in the form of an email in which he suggested that if the Complainant did not purchase back the Domain Name it could be used by the new registrant to identify the Complainant’s clients and then “approach them with a better offer”.
6.13 In this respect Mr. Perkins even agreed (albeit at a time when he was falsely claiming that the Domain Name had been registered not by him but by a “client” and he was attempting to broker a deal between the Complainant and that “client”) that the registrant of the Domain Name was engaged in extortion.
6.14 Subsequently Mr. Perkins’s threats extended to reporting the Complainant to the police and/or the local council. He claimed that this arose out of language that a representative of the Complainant used on a telephone call. Leaving aside the irony of that claim in light of the language that Mr. Perkins then used in correspondence with both the Complainant and the Center, the Panel has little doubt that Mr. Perkins was at least in part using these threats as an attempt to place further pressure on the Complainant to re-acquire the Domain Name from him at a price.
6.15 Therefore, it is clear that Mr. Perkins has no rights or legitimate interests in the Domain Name and that the Domain Name was registered and is being used in bad faith.
6.16 That, however, leaves the question of the recent transfer of the Domain Name to “The Cloud Corp”. In this respect, the Panel accepts that “The Cloud Corp” is either the alter ego of Mr. Perkins or that even if it is not, the Domain Name has been transferred to “The Could Corp” with a view to Mr. Perkins and (insofar as it exists) “The Cloud Corp” attempting to defeat these proceedings. In this respect:
(i) The Panel seriously doubts whether “The Cloud Corp” really exists as a separate entity. The two emails sent by “The Cloud Corp” to the Center were unsigned by any individual, came from a Gmail email address and identified no separate legal entity1 ;
(ii) The Complainant has sufficiently demonstrated to the Panel that Mr. Perkins has been prepared to be untruthful in his dealings with the Complainant. This is not just a case of Mr. Perkins claiming that the Domain Name was registered for a client when it was not. There is also his later assertion that there was another entity interested in acquiring the Domain Name “with the same name”. Not only it is inherently implausible that such an entity existed, but that statement is inconsistent with the subsequent transfer to “The Cloud Corp”.
(iii) Given the Panel conclusion as to (ii) above, the Panel is not prepared to accept any assertion on the part of Mr. Perkins that “The Cloud Corp” is a separate entity (which is what he appeared to claim in various emails to the Center), in the absence of documentary evidence from him or “The Cloud Corp” itself that this separate entity exists. No such evidence has been provided to the Panel.
(iv) The second email sent by “The Cloud Corp” the Center is remarkably similar in style to those sent by Mr. Perkins. It contained numerous spelling mistakes and typographical errors similar to those appearing in Mr. Perkin’s emails and used intemperate language of the same sort as that used by Mr. Perkins. It is particularly noticeable that this email from “The Cloud Corp” also repeated the allegation made by Mr. Perkins a few days earlier that the Center was acting corruptly in these proceedings (an allegation that was in each case was not remotely substantiated). The obvious conclusion from all these similarities is that it was Mr. Perkins who actually wrote the emails sent by “The Cloud Corp”;
(v) Neither Mr. Perkins nor “The Cloud Corp” have sought to deny the Complainant’s contentions as to the close connection between the two or that the Domain Name is just one of a number of domain names previously registered in the name of Mr. Perkins that have been transferred into that name.
6.17 Given this, the transfer to “The Cloud Corp” does not matter since either it is not a transfer to a separate entity at all, or if it is a separate entity the only reasonable conclusion is that this entity is acting under the direction of, or jointly with, Mr. Perkins so as to keep the Domain Name out of the hands of the Complainant. Either way, neither Mr. Perkins nor “The Cloud Corp” had or have a right or legitimate interest in the Domain Name. Further, either way, the Domain Name has been registered (either at the time that Mr. Perkins first acquired it or when the transfer to “The Cloud Corp” occurred) in bad faith and has been subsequently held in bad faith.
6.18 It follows from this that the Complainant has also made out the requirements of paragraph 4(a)(ii) and (iii) of the Policy.
6.19 The Panel would also add that it is unfortunate that the business practices of Mr. Perkins appear to have carried on for the most part unchecked for many years, notwithstanding the multiple findings made against him in UDRP proceedings and the brazen nature of his conduct. Particularly, concerning is that Mr. Perkins seems intent on taking advantage of the fact that frequently it will make more commercial sense for a victim of his cybersquatting activities to pay him monies to retrieve the Domain Name than to incur the legal fees and the cost associated with proceedings under the Policy. It is a point he expressly made in inter-party correspondence referred to in the Michael Heald case, supra,and also appears to underlie his email to the Center (again set out above) in which he suggested the Complainant was “dumb” in having paid for a complaint when they could have “bought the [Domain Name] cheaper” from him.
6.20 Notwithstanding the fact that in general terms the Policy has operated extremely effectively since its introduction, that this can occur would appear to be inherent in a system where there are no direct adverse costs or consequences to a respondent of losing even multiple proceedings under that Policy and no matter how extreme a respondent’s behaviour.
6.21 It may be that in such circumstances it is national law that should be called upon to provide a more robust remedy. It appears to the Panel that there is at least a real question as to whether Mr. Perkin’s actions in this case fall foul of the English law of passing off as applied to domain name cases in, inter alia, Yoyo.Email Ltd v Royal Bank of Scotland Group plc [2015] EWHC 3509. However, given that this question falls outside of the scope of the Policy or the remit of the Panel, the Panel will refrain from making any further comment in this respect. 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
Date: October 18, 2017
1 The Panel notes that the geographical address provided for “The Cloud Corp” in the Cayman Islands would appear to be a real one, but that there is no company, partnership or trust with that name recorded on the Cayman Islands online corporate registry.
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