The Complainant is Creatd, Inc., United States of America (the “United States” or “U.S.”), represented by Lucosky Brookman, United States.
The Respondent is Privacy Administrator, Anonymize, Inc. / Robert Monster, United States, represented by Legal Prince, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 14, 2021. 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Response was filed with the Center on May 8, 2021. The Center appointed David H. Bernstein as the sole panelist in this matter on May 18, 2021. 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 The Complainant is a Nevada corporation that operates a social media platform under the name “Vocal,” which is located at the URL “vocal.media.” The Complainant owns a United States trademark registration for VOCAL (Reg. No. 5,438,308, registered on April 3, 2018), and has used the VOCAL mark publically in connection with its business for slightly less than five years. The Respondents are the privacy proxy Anonymize, Inc., which is a subsidiary of the American domain registrar Epik Holdings, Inc., and Mr. Robert Monster, the head of both the proxy service and the Registrar. As of early March 2021, the record owner of the disputed domain name was Anonymize, which was holding the disputed domain name on behalf of its beneficial owner, Ashwin Vinkhona. On or about March 7, 2021, representatives of Mike Lindell, an American businessman and the CEO of MyPillow, contacted Epik and Anoymize to seek to purchase the disputed domain name. Mr. Lindell intended to use the disputed domain name in connection with a new social media service with an emphasis on free speech that he planned to call VOCL. Mr. Monster, on behalf of Mr. Vinkhona, negotiated the sale of the disputed domain name to Mr. Lindell’s representatives. On March 9, 2021, Mr. Lindell’s agent, Todd Carter, purchased the disputed domain name for Mr. Lindell from Mr. Vinkhona for USD40,000 (with Mr. Monster receiving approximately USD5,000 as a broker commission). Shortly thereafter, the disputed domain name resolved to a website that stated: Coming Soon While waiting on Vocl.com to launch why not check out LindellTV. Visit LindellTV Also on March 9, 2021, Mr. Lindell filed a U.S. application for the mark VOCL and shortly afterwards announced to media outlets that his new social media service would be named VOCL. The Complainant sent a cease and desist letter to Mr. Lindell on March 11, 2021 objecting to his planned use of the name VOCL and demanding that Mr. Lindell transfer the domain name to the Complainant. In an interview the next day, Mr. Lindell responded to a question regarding his new site’s name by stating that “we looked into [the name VOCL] and we believe it would be confusing, so we are going to announce a different name and URL.” Following Mr. Lindell’s announcement, his agents sought to cancel the purchase of the disputed domain name, but the transaction had already been consummated and the purchase price (less commission) had already been distributed to Mr. Vinkhona. After learning that the sale had been consummated, instead of transferring the disputed domain name to the Complainant, Mr. Lindell’s agent engaged in discussions to sell the disputed domain name to the Respondent. On or about March 13, 2021, Mr. Carter (as agent for Mr. Lindell) sold the disputed domain name to Mr. Monster, for USD10,000 (with Mr. Monster using the Anonymize privacy proxy), which represented a 75 per cent reduction from the price that Mr. Lindell paid for the disputed domain name just four days earlier. By March 25, 2021, Mr. Lindell had chosen the name “Frank” for his site, which is the site’s name as of the time of this decision. 5. Procedural Orders On May 31, 2021, the Panel issued Procedural Order No. 1, which stated in relevant part: “[T]he Response identifies Anonymize as the Respondent and current owner of the disputed domain name, even though the Registrar disclosed that the actual registrant is Mr. Monster. Mr. Monster is apparently the founder and CEO of the Registrar. See Ganeden Biotech, Inc. and Kerry Luxembourg S.à.r.l v. Rob Monster,WIPO Case No. D2019-3012. Based on publicly-available Washington State incorporation records, he also appears to be the governor of Anonymize. See https://opengovwa.com/corporation/603390791. According to the epik.com website, Anonymize appears to be the Registrar’s privacy service for domain name registrations. See “Enabling Domain Privacy with Anonymize.com” available at https://www.epik.com/support/knowledgebase/enabling-domain-privacy-with-anonymize-com/. Given that the Registrar has disclosed that Mr. Monster personally is the registrant of the disputed domain name, the Panel is considering whether Mr. Monster should be treated as the only respondent in this case, or whether both Anonymize and Mr. Monster should be treated as respondents. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.4.5. Pursuant to paragraph 12 of the Rules, the Panel requests that the Respondent indicate its views on the identity of proper respondent in this case. If the Respondent agrees that Mr. Monster should be the sole Respondent or an additional Respondent, the Respondent is invited to file a supplemental Response on Mr. Monster’s behalf. The Panel also requests that the Respondent clarify the relationship between the Registrar, Anonymize and Mr. Monster, and describe with specificity their roles in connection with the disputed domain name and this dispute. In addition, the Panel requests that the Respondent clarify the relationship between the Registrar, Epik, and Mr. Monster on the one hand, and Mike Lindell on the other hand. The Complaint indicated that it suspected that the Respondent was holding the disputed domain name on behalf of Mr. Lindell, who publicly announced plans to launch a social media platform under the name VOCL and applied to register the trademark VOCL with the United States Patent and Trademark Office. The Response denies that ‘it has anything to do with Mr. Lindell [or his] plans,’ though the Respondent concedes that Mr. Lindell did approach ‘the Respondent regarding purchase of the [disputed] domain name’ and that the Registrar ‘allowed Mr. Lindell to temporarily point his DNS to the IP address of VOCL.COM while Lindell did due diligence and decided whether to purchase the domain name.’ The Panel requests that the Respondent submit copies of all communications between the Registrar, Anonymize, and Mr. Monster on the one hand, and Mr. Lindell (or his agents and representatives) on the other hand, that relate in any way to the disputed domain name, and that the Respondent explain with specificity the arrangement that allowed Mr. Lindell to use the disputed domain name, including but not limited to identifying the period of time during which Mr. Lindell (or his agents or representatives) used the disputed domain name. The Panel also requests that the Respondent indicate when it first learned that Mr. Lindell was considering use of the name VOCL and/or use of the disputed domain name for his social media service, and provide any available documentary evidence substantiating when the Respondent first learned this fact. Finally, the Panel notes that the Response states that the disputed domain name was first registered in 2000 and that the Respondent has owned the disputed domain since September 9, 2020. Because the use of the Anonymize privacy shield has the effect of hiding the owner of the disputed domain name and any changes in the ownership, the Panel requests that the Respondent identify all transfers of or licenses to use the disputed domain name since its registration in 2000. That disclosure should include the date of the transfer or license, the parties to the transfer or license, the terms of the transfer or license (including without limitation any compensation paid), and documentary evidence (where available) to substantiate the facts in the disclosure”. The Panel requested that the Respondent file its supplemental submission by June 9, 2021, that the Complainant file any reply by June 17, 2021, and that the Respondent file any sur-reply by June 25, 2021. The Respondent submitted a response to the Procedural Order No. 1 on June 9, 2021, followed by a supplemental submission on June 15, 2021. The Panel issued Procedural Order No. 2 on June 15, 2021, amending the schedule for supplemental submissions in light of new information divulged in the Respondent’s supplemental submission. The Panel requested that the Complainant file any supplemental submission by June 25, 2021, and that the Respondent file any reply by July 2, 2021. On June 23, 2021, the Complainant requested a 15-day extension of the schedule on the ground that the Parties were engaged in settlement negotiations. The Respondent did not object to this request. The Panel therefore approved the extension. The Parties apparently did not reach a resolution, and the Complainant submitted a response to Procedural Order No. 2 on July 13, 2021. On July 19, 2021, the Respondent submitted its reply. That same day, the Complainant submitted a request to file a further supplemental submission on the ground that it believed the Respondent’s reply violated Rule 11 of the United States Federal Rules of Civil Procedure (while acknowledging that the Rules of Civil Procedure apply in United State court litigation and do not apply in UDRP administrative proceedings). On July 23, 2021, the Panel informed the Parties that it would not permit any further submissions in this case. 6. Parties’ Contentions A. Complainant The Complainant runs a social media platform, “vocal.media,” under the trademark VOCAL. The Complainant states that, as a result of the Complainant’s public use of the VOCAL mark as well as the quality and popularity of its services, the VOCAL mark has become highly recognizable to a wide audience, representing substantial and valuable goodwill. The Complainant argues that the Respondent has, in conjunction with Mr. Lindell, planned to use the disputed domain name in order to host an online social networking service or social media platform by the name of “vocl.com.” The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s VOCAL mark, and that a website offering a similar service located at the disputed domain name would be confusing to the public. The Complainant further asserts that the Respondent has, in conjunction with Mr. Lindell, no rights or legitimate interests in the disputed domain name. Finally, the Complainant argues that the Respondent has, in conjunction with Mr. Lindell, registered and used the disputed domain name in bad faith. The Complainant states that the Respondent’s use of the disputed domain name in connection with a social networking service will dilute the value of the Complainant’s trademark, which is used for a competing social media service. The Complainant further asserts that the Respondent’s planned use of the disputed domain name would trade on the goodwill associated with the Complainant’s own VOCAL mark and corresponding business, and would create the false impression that any social media service created by the Respondent originated from the Complainant, or that the Complainant is in some way connected to or associated with the Respondent’s services. The Complainant goes on to state that the Respondent, in conjunction with Mr. Lindell, is pursuing the creation of this false impression with the intent to deceive customers or with the intent to cause confusion or mistake as to the origin or affiliation of the Respondent’s and the Complainant’s social media platforms. B. Respondent The Respondent’s story has been a shifting one. In its first Response, the Respondent claimed that it never transferred the disputed domain name to Mr. Lindell, and that the Respondent had owned the disputed domain name without interruption since September 2020, long before Mr. Lindell announced his plans to start a social media service under the name VOCL. This assertion was inconsistent with the verification provided by the Registrar (of which Mr. Monster is CEO); the Registrar had informed the Center that the “the date on which the current Registrant [whom it identified by name as Mr. Monster] registered (or acquired the registration of) the domain name[]” was January 22, 2000. Following the Panel’s request for clarification, the Respondent submitted a supplemental submission in which it represented that Mr. Monster personally acquired the disputed domain name in September 2020, and that, although Epik had discussions with Mr. Lindell’s representatives, Mr. Lindell’s purchase of the disputed domain name was never consummated. In particular, the Respondent claimed in its first supplemental submission that Mr. Lindell’s company transferred USD40,000 to Epik in escrow pending due diligence on the name, but once Mr. Lindell abandoned his interest in the VOCL name, Mr. Lindell cancelled the purchase and the USD40,000 was returned to him from escrow without Mr. Lindell having ever acquired title to the disputed domain name. These representations were made in a submission signed by the Respondent’s counsel (although counsel did state that the Respondent was still searching for documentary support and that the Respondent would supplement the record if it were successful in identifying further information). Six days later, the Respondent filed a second supplemental submission, this time a sworn declaration by Mr. Monster. Mr. Monster, without expressly acknowledging the misstatements in his counsel’s prior responses or the misstatements in the Registrar’s verification, stated: “In the case of a conflict between previously filed representations and the representations in this document, this document is correct.” In his declaration, Mr. Monster disclosed for the first time that he was not the actual owner of the disputed domain name as of September 2020, but rather, that the disputed domain name was owned by Mr. Vinkhona. Mr. Monster also disclosed for the first time that the disputed domain name was, in fact, sold to Mr. Lindell, that Mr. Lindell briefly was the beneficial owner of the disputed domain name, and that Mr. Monster personally purchased the disputed domain name back from Mr. Lindell (at a rather significant 75 per cent discount off of Mr. Lindell’s purchase price) once Mr. Lindell abandoned his planned use of the VOCL name. Mr. Monster conceded that he “had notice of this potential dispute when [he] acquired the disputed domain name” in March 2021, but that, “given the 20-year history of this domain, [he] believed that some legitimate rights in it had already accrued. In particular, the disputed domain showed a NameRenter landing page for several years. That is, the initial registrant and all subsequent registrants had all passively held the domain itself. When [Mr. Monster] acquired vocl.com, [he] intended to use it in exactly the same way. This use predated the existence of Complainant’s rights in the VOCAL mark.” Against this revised factual background, the Respondent argues as follows: The Respondent concedes that the disputed domain name “may be” identical or confusingly similar to the Complainant’s VOCAL mark in which the Complainant has rights. The Respondent also concedes that, if Mr. Lindell were to use the disputed domain name to host a social media site, the site might cause confusion with the Complainant’s registered mark. However, the Respondent notes that Mr. Lindell never did launch a social media site under the VOCL name, and denies any involvement with Mr. Lindell’s plans. Rather, the Respondent asserts, once the Respondent purchased the disputed domain name, he intended to use it only as a landing page, and that he had no intention of using it in competition with the Complainant or to take advantage of the Complainant’s trademark. The Respondent further argues that, as a buyer and seller of domain names, he has a legitimate interest in the disputed domain name. The Respondent explains that he purchased the disputed domain name as an investment because pronounceable, four-letter domain names are often purchased by startup businesses. The Respondent further notes that it holds a number of similar four-letter domain names for this purpose. Finally, the Respondent asserts that the disputed domain name was not acquired in bad faith, and has not been used in bad faith. The Respondent, in its latest submission, states that he acquired the disputed domain name to continue the same landing page use that had historically been used for the disputed domain name. The Respondent seeks a finding of reverse domain name hijacking on the ground that the Complaint was brought in bad faith given that, as of the date that the Complaint was filed, Mr. Lindell had already announced he no longer intended to use the name VOCL for his site. 7. Initial Comments on the Registrar’s Role in This Case This is an unusual case in that the Respondent is the CEO of the Registrar and also is described as the “governor” and “head” of the Registrar’s subsidiary, Anonymize, which was used for a privacy shield. These relationships create an inherent conflict of interest since the Panel relies on the Registrar to provide accurate information in response to the verification request, but the Respondent, who also is the CEO of the Registrar, would have an interest in hiding accurate information about the ownership of the disputed domain name (not to mention other domain names it may acquire) in order to strengthen the Respondent’s arguments with respect to its purported legitimate interest and potential bad faith. Those prospects of a conflict of interest are problematic in this case. The Registrar, in its verification, inaccurately claimed that Mr. Monster was the owner of the disputed domain name and had been the owner since 2000, long before the Complainant adopted its trademark. In its initial Response, the Respondent provided other information – that the owner of the disputed domain name was Anonymize (not Mr. Monster) and that Anonymize had owned the disputed domain name continuously since September 2020, before Mr. Lindell’s plan in March 2021 to use the disputed domain name for a competing social media service, but significantly after the initial creation date by some two decades. Either way, these inaccurate disclosures were to the Respondent’s benefit. If the Respondent had actually registered the disputed domain name in the year 2000 prior to the Complainant’s trademark rights (registered in 2018 and claiming first use in 2016), the Panel would have found an absence of bad faith registration. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.8. Similarly, if the Respondent had registered the disputed domain name prior to the announcement of Mr. Lindell’s venture, and had never transferred the disputed domain name to Mr. Lindell, then the Panel likely would find an absence of bad faith registration since the disputed domain name would have been registered without regard to Mr. Lindell’s arguably infringing plan. See generally id., sections 3.1 and 3.2. The information provided both by the Registrar and in the Response was materially inaccurate, and it was only after the Panel issued procedural orders seeking clarification that the Respondent corrected the record and admitted that Mr. Monster personally was the registrant but that he only acquired the disputed domain name in March 2021, after the Complainant acquired its trademark and after Mr. Lindell announced and then abandoned his plans. Even still, there remain unexplained inconsistencies in the documentary material submitted by the Respondent: the emails between the Registrar and Mr. Carter indicate that the seller of the disputed domain name on March 9, 2021 was Mr. Monster (not Mr. Vinkhona) and that there was no broker involved, but the internal escrow documentation the Respondent submitted states that Mr. Monster was the broker for Mr. Vinkhona. This misconduct by the Respondent and by the Registrar is troubling. It is all the more troubling because it appears to have been designed to improve the Respondent’s prospects for success in this proceeding. It raises significant questions as to the propriety of a Registrar being allowed to buy and sell domain names for its own account (or the propriety of a Registrar’s subsidiaries, officers or employees to engage in domain name speculation). This is an issue that the Panel believes should be addressed by ICANN, and the Panel requests that the Center share this decision with ICANN so that ICANN may consider whether to impose restrictions on such behavior by registrars. See, e.g., Registrar Accreditation Agreement, sections 3.7.9 (“Registrar shall abide by any ICANN adopted specifications or policies prohibiting or restricting warehousing of or speculation in domain names by registrars”) and section 1.3.2 (noting that ICANN may establish specifications and policies on “prohibitions on warehousing of or speculation in domain names by registries or registrars”). The inaccurate disclosures in this case also call into question the certification in the Response, signed by the Respondent’s counsel, Daniel R. Price, “that the information contained in this Response is to the best of the Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” The documentation that the Respondent eventually submitted with its second and third supplemental submissions directly contradicts the representations in the initial Response, which at minimum makes the Panel question Mr. Price’s due diligence in signing the certification. The Complainant is not wrong to highlight these serious issues. They are not violations of the Federal Rules of Civil Procedure since, as the Complainant acknowledged, those rules apply in United States federal courts, not in a UDRP proceeding. But they do call into question the Respondent’s credibility. That said, the documentation attached to Mr. Monster’s declaration does appear to substantiate his explanation of the facts of this case. If this proceeding were being held before a United States court, the court would have the inherent power, as a sanction, to rule for the Complainant in light of the Respondent’s serial misrepresentations. The Policy, however, does not give that power to a panel. Rather, the Panel only can rule for the Complainant if the Complainant satisfies the three elements of the Policy. The Panel turns to that analysis in the following three sections. 8. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant bears the burden of proving all three of the following elements: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Respondent does not dispute that the Complainant owns trademark rights in the mark VOCAL, or that the disputed domain name is confusingly similar to the Complainant’s VOCAL mark. That concession is appropriate because “vocl” is phonetically identical to “vocal” albeit with the missing letter “a.” Such minor variations or misspellings are routinely held to be “confusingly similar” for purposes of the Policy. See generallyWIPO Overview 3.0, section 1.9. For these reasons, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, thus satisfying the first element of the Policy. B. Rights or Legitimate Interests Under section 2.1 of the WIPO Overview, when a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production moves to the respondent to come forward with relevant evidence to the contrary. In the case at hand, the Complainant has alleged that the Respondent lacks any rights or legitimate interests in the disputed domain name, to which the Respondent has replied by highlighting its business of buying and selling domain names. Although the business of registering domain names comprised of dictionary words because of their dictionary word meaning (and not because of their trademark meaning) may be a legitimate interest in some cases, such legitimacy does not necessarily extend to registering domain names that are misspellings of dictionary words when that is a mere pretext to target a brand owner. See, e.g., Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635 (registering a domain name based on the claim to be merely a misspelling of a common word but which is clearly targeting a brand owner is not enough to constitute a legitimate business interest under Paragraph 4(a)(ii) of the Policy). The business of registering short or “catchy” domain names for resale may also be a legitimate interest, but only if the domain names are not being registered because of their trademark value. See Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964 (finding that domain speculation is not in and of itself illegitimate, but rather depends heavily on whether the Respondent acted in good faith). Here, there is evidence in the record that the Respondent registered the disputed domain name precisely because of its similarity to known trademarks. In particular, the Respondent states it has an interest in the disputed domain because, inter alia, other companies that own VOCL trademarks may wish to buy it, noting that “two recent trademark applications have been filed for the VOCL mark in the United States” – namely, U.S. Trademark Application Serial Numbers 88/559,643 and 90/488,614. The Respondent also knew of the Complainant’s interest in the disputed domain name since, as the Respondent concedes, the Complainant’s cease and desist letter that was well publicized expressly demanded that Mr. Lindell transfer the disputed domain name to the Complainant. When the Respondent acquired the disputed domain name in March 2021 from Mr. Lindell, he therefore knew not only of the Complainant’s objections to the registration and use of the disputed domain name, but also that other trademark owners were using the mark VOCL. The Panel concludes that the Respondent’s acquisition of the disputed domain name was primarily motivated by a desire to resell the domain name to one of these brand owners, and not by a desire to use the disputed domain name for a website related to the descriptive meaning of the word “vocal.” For the reasons outlined below, the Respondent certainly cannot claim to satisfy any of the enumerated examples of rights or legitimate interests in the Policy: - It is not the case that, before any notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent made no use of the term VOCL prior to acquiring the disputed domain name from Mr. Lindell’s representatives in March 2021. See Policy, paragraph 4(c)(i). - It is not the case that the Respondent has been commonly known by the disputed domain name. See id, paragraph 4(c)(ii). - It is not the case that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Although the Panel credits that the Respondent has no intention of launching a social media service to compete with the Complainant’s VOCAL service, the Respondent’s decision to invest a sum as substantial as USD10,000 in the disputed domain name on its face belies any intention of using it for a noncommercial or fair use. See id, paragraph 4(c)(iii). For all of these reasons, the Panel concludes that the Complainant has established, by a preponderance of the evidence, that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides examples of circumstances that would bad faith. Those include evidence that the Respondent intended to sell the disputed domain to the Complainant, evidence that the Respondent acquired the disputed domain name to prevent the Complainant from having it, evidence that the Respondent intended to disrupt the Complainant’s business, and evidence that the Respondent intended to attract consumers by confusing them about their relationship with the Complainant’s mark. These examples are non-exhaustive; other evidence of misconduct also can support an inference of bad faith registration and use when the evidence is assessed holistically. See generally Pixers Ltd. v. Whois Privacy Corp.,WIPO Case No. D2015-1171; WIPO Overview 3.0, section 3.1.1. The Complainant’s allegations of bad faith at some level hinge on the actions of Mr. Lindell. Had Mr. Lindell been the owner of the disputed domain name at the time the Complaint was filed, the Panel would have had no troubling finding bad faith given the infringing nature of use of the disputed domain name for a social media service that competed with the Complainant’s similarly named social media service. Indeed, even the Respondent appears to concede this point when it states: “Respondent does not dispute that such a use would likely be confusingly similar to the Complainant’s registered mark, if such a use were to occur. . . . Although Mr. Lindell did publicly announce plans to launch an online social network service called VOCL, he seems to have gone off half-cocked, publicly announcing the launch of VOCL before a) doing diligence on whether the name was available and b) having a platform ready to launch (regardless of its name). Complainant’s cease and desist letter (also widely publicized) appeared to have caught Mr. Lindell unawares.” The Respondent asserts that it has no relationship with Mr. Lindell and his “half-cocked” scheme, and that the Complainant’s assertions of bad faith based on Mr. Lindell’s conduct therefore fail to prove that the Respondent registered and used the disputed domain name in bad faith. The Complainant rejects that assertion, arguing in its supplemental submission that the Respondent has not proven that no relationship currently exists between Mr. Lindell and the Respondent. The Complainant also expresses significant skepticism about the veracity of the statements in Mr. Monster’s declaration. That skepticism is not misplaced in light of the history of this matter. Nevertheless, after considering all the evidence in the record, the Panel finds that the evidence in this respect supports the Respondent. Based on the evidence provided by the Respondent, the Panel is persuaded that Mr. Lindell was no longer the owner of the disputed domain name at the time the Complaint was filed on April 6, 2021. Rather, it appears that Mr. Lindell (through his representatives) sold the disputed domain name to the Respondent on or about March 13, 2021 after Mr. Lindell publicly abandoned his plan to use the disputed domain name for his social media service. Accordingly, the question of bad faith must be interrogated in terms of the Respondent’s actions alone. Judging the actions of the Respondent on their own merits, separately from Mr. Lindell’s, the Panel finds that none of the Respondent’s actions fit easily in the specific examples of bad faith listed in the Policy. No evidence was presented that the Respondent has ever offered to sell the disputed domain name to the Complainant. No evidence was presented that the Respondent acquired the disputed domain name to prevent the Complainant from having it. No evidence was presented that the Respondent acquired the disputed domain name with an intent to disrupt the Complainant’s business. Finally, no evidence was presented that the Respondent intended to attract consumers by confusing them about their relationship with the Complainant’s mark. That is not to say that the Respondent has acted in good faith. The Respondent concedes that he was well aware of the dispute, and of the Complainant’s objections to the registration of the disputed domain name (albeit at the time by Mr. Lindell), at the time that he acquired the disputed domain name. As noted above, it appears that the Respondent acquired the disputed domain name with the hopes of selling it to one of the other VOCL trademark owners. Whether the Respondent may also have registered the disputed domain name with the hopes of selling it to the Complainant who already had publicly expressed it strong desire to acquire the disputed domain name, is a close question. Ultimately, the Panel is persuaded by a preponderance of the evidence that the Respondent did register and use the disputed domain name in bad faith based on a holistic assessment of all of the evidence in this case. Most troubling to the Panel is that Respondent purchased the disputed domain name from Mr. Lindell whom, the Respondent knew, would be at risk of a loss in a legal challenge. The Respondent appears to have taken advantage of that opportunity by buying the disputed domain name from Mr. Lindell for a price which represented a significant 75 per cent reduction from the price Mr. Lindell paid just four days earlier. These facts support an inference that the Respondent was attempting to cleanse the bad faith that was attached to the disputed domain name by changing the ownership of the disputed domain name. Although this conduct is not technically cyberflight, since the transfer was made before the Complainant filed the instant proceeding, it appears to be a conceptually related effort at bad faith given that the Respondent was well aware of the Complainant’s objections at the time he acquired the disputed domain name. Cf. WIPO Overview 3.0, section 4.4.6. Further supporting this inference is the fact that the Respondent’s explanation for purchasing the disputed domain name is not credible. In his declaration, Mr. Monster explained that he purchased the disputed domain name because he “the disputed domain showed a NameRenter landing page for several years,” and Mr. Monster “intended to use it in exactly the same way.” According to the Internet Wayback Machine, the disputed domain name was previously offered for use through NameRenter for USD100 per year. Such a use would hardly justify purchasing the disputed domain name for USD10,000. Indeed, contrary to Mr. Monster’s representation, he is not using the disputed domain name in exactly the same way. Rather, at least as early as April 15, 2021, and continuing through the date of this decision, the disputed domain name resolves not to a NameRenter page but to a page offering the disputed domain name for sale. Specifically, the Respondent is using the disputed domain name for a website that states, inter alia: Epik ACCEPTING OFFERS Domain owner will consider reasonable offers CONTACT DOMAIN OWNER For more information about this domain This use further supports an inference that the Respondent is using the disputed domain name to attempt to sell the disputed domain name to the Complainant or to another trademark owner. For the foregoing reasons, although this is a case that looks slightly beyond the four enumerated illustrations of bad faith under the Policy, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 9. Reverse Domain Name Hijacking The Respondent asserts that the Complaint was brought in bad faith, as described in section 15(e) of the Policy. In light of the Panel’s ruling in Complainant’s favor, the Respondent’s request is denied. Even had the Panel ruled for the Respondent, the Panel would have denied this request. At the time the Complaint was filed in early April 2021, it would not have been clear to the Complainant that the Respondent was not in an ongoing business relationship with Mr. Lindell. As the Respondent itself notes, several of the elements of the Policy may well have favored the Complainant had Mr. Lindell been a party in the case. Though Mr. Lindell’s public statements and behavior may have suggested that he was not in an ongoing relationship with the Respondent, the Complainant’s suspicions to the contrary were reasonable given that the disputed domain name resolved to a website that promoted Lindell’s other websites for a period of time. Indeed, the actual facts here were so hard to assess that the Respondent changed its story twice. Finally, “a request for a finding of Reverse Domain Name Hijacking is an equitable remedy, and equitable relief should only be available to a party who comes before a panel with clean hands.” Breazy Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC,WIPO Case No. D2021-1486. Given the Respondent’s misconduct and misrepresentations as discussed above, the Panel would not in any event consider it appropriate to enter a finding of Reverse Domain Name Hijacking in favor of the Respondent. 10. 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 In addition, while the Panel can only conclude that the decision by ICANN to have no more than placeholder language in section 3.7.9 of its Registrar Accreditation Agreement that would prohibit speculation by registrars if ICANN ever developed such a policy is an intentional policy/choice, in light of the misrepresentations made in the context of this proceeding both as a registrar and as a respondent – and indeed in light of the potential conflict of interest that occupying both roles presents, the Center is requested to bring this decision to the attention of ICANN for any such action it may consider appropriate. David H. Bernstein
vocl.com
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Date: August 16, 2021
Full & Egal Universal Law Academy