The Complainant is Key-Systems GmbH of St. Ingbert, Germany, internally represented.
The Respondent is Joost Zuurbier, OpenTLD B.V. of Amsterdam, the Netherlands. 2. The Domain Names and Registrar
The disputed domain names and are registered with OpenTLD B.V.
(the "Registrar"). 3. Procedural History
The Complaint regarding the disputed domain name was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2015. On February 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2015, the Complainant submitted an amended Complaint adding the domain name to the dispute. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with this disputed domain name.
The Registrar did not respond to the Center's requests for register verification respecting the disputed domain names until March 16, 2015, despite reminders from the Center. On that date, the Registrar indicated in an email that the disputed domain name had been "deleted" and would "soon be available for registration again with the Registry". A day later, on March 17, 2015, the Registrar by email advised the Center that both of the disputed domain names had been deleted and were in the redemption period. Subsequently, on March 24, 2015, when the Registrar transmitted a more detailed response to the Center's request for registrar verification, stating inter alia that "the domain name has been deleted at the Regstry [sic]" and that the domain names had been or would be placed on "Registrar lock" status.
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(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 is an ICANN accredited registrar headquartered in St. Ingbert, Germany, and operates a subsidiary in the United States of America. The Complainant provides registrar services under the KEY-SYSTEMS trademark and trade name, and owns a Community Trade Mark ("CTM") registration for KEY-SYSTEMS. The Complainant also owns a CTM registration for the mark RRPPROXY, and provides registrations services for resellers and portfolio customers under the RRPPROXY mark and trade name. The CTM registrations for both marks were issued on October 21, 2009. The Complainant also holds a number of gTLD and ccTLD domain names reflecting these marks, which are used to communicate with customers and provide information about the Complainant's products and services.
The Respondent is Joost Zuurbier / OpenTLD B.V. Joost Zuurbier is the CEO of OpenTLD B.V. ("OpenTLD"), an ICANN accredited registrar. OpenTLD also trades under the name "Freenom". The Respondent registered the disputed domain names and with OpenTLD B.V. on August 14, 2014. Thus, the Respondent is both the registrant and the sponsoring registrar of the disputed domain names. The Respondent has used the disputed domain names to divert Internet users to websites operated by the Respondent, on which visitors are solicited to switch from the Complainant's RRPPROXY service to a competing service offered by the OpenTLD/Freenom.1
After becoming aware of the Respondent's registration and use of the disputed domain name the Complainant sent two cease and desist letters to the Respondent, dated September 1, 2014, and October 1, 2014, respectively. The Respondent did not reply to either of these communications, and the Complainant thereafter commenced this proceeding under the Policy.
It has come to the Panel's attention that on August 14, 2014 – the same day the disputed domain names were registered – the Respondent registered five (5) other domain names corresponding to trade names or trademarks of domain name service providers with whom OpenTLD/Freenom competes. OpenTLD was the sponsoring registrar for all such registrations. A use similar to that made with the disputed domain names in this case has been made with these domain names. See NetEarth Group, Inc. v. Stichting OpenTLD WHOIS Proxy,WIPO Case No. D2015-0428. 5. Parties' Contentions A. Complainant
The Complainant identifies itself as an ICANN accredited registrar with a leading market position, selling domain names, and providing hosting and DNS services to customers around the world. The Complainant relates that it manages more than 300 million domain names for some 70,000 end and corporate customers and 1,800 resellers in more than 200 countries, and is one of the larger ICANN registrars. In addition to using the KEY-SYSTEMS mark with its products and services, the Complainant explains that it uses the mark RRPPROXY with a reseller portal, featuring a domain registration and management system specifically developed for Internet service providers ("ISPs"), registrars and resellers.
The Complainant submits that the disputed domain names and , respectively, are identical or confusingly similar to the Complainant's KEY-SYSTEMS and RRPPROXY marks. The Complainant asserts that the incorporation of its marks in their entirety is sufficient to establish identity or confusing similarity, and that the extensions ".me" and ".cc" should not be taken into account when considering whether the disputed domain names are identical or confusingly similar to the Complainant's marks. The Complainant argues that the risk of confusion is even greater because the services offered under the disputed domain names are substantially similar to those offered under the Complainant's marks.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant avers that the Respondent has not been authorized to use the Complainant's marks for any purpose, and that the Respondent has not been commonly known by the disputed domain names. According to the Complainant, the KEY-SYSTEMS and RRPPROXY marks are well-known, and as such the Respondent could not conceivably claim a legitimate activity was contemplated for the disputed domain names. Further, the Complainant argues that in the absence of any authorization or license to use the Complainant's marks, no actual or bona fide use of the disputed domain names reasonably could be claimed, citing Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, and Drexel University v. David Brouda,WIPO Case No. D2001-0067.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, the KEY-SYSTEMS and RRPPROXY marks are well-known among ICANN accredited and country code Top-Level Domain("ccTLD") accredited registrars, and the Respondent's reproduction of those marks in the disputed domain names and their use in advertising clearly shows that the Respondent, itself a provider for domain name services, was aware of the Complainant's marks when registering the disputed domain names. The Complainant also maintains that the Respondent was well aware of the Complainant and its marks because the Respondent's CEO is also the CEO of Freedom Registry, Inc., which is a customer of the Complainant, and because the Complainant is a reseller of ccTLDs offered by subsidiaries of Freenom.
The Complainant also argues that the Respondent acted in derogation of Section 2 of the Policy, which imposes a duty on registrants to verify that the registration of a domain name will not infringe rights of third parties. The Complainant submits that even a cursory trademark search or Internet search would have disclosed the existence of the Complainant's trademark rights. Thus, the Complainant concludes that the Respondent registered the disputed domain names in bad faith.
In light of the foregoing, the Complainant further submits that the Respondent has used the disputed domain names in bad faith. The Complainant asserts that the Respondent is seeking to exploit and benefit from the goodwill associated with the Complainant's marks and has engaged in unfair competition by using the disputed domain names with advertising targeted directly at the Complainant's customers. The Complainant observes that the disputed domain names resolve to websites on which the Respondent attempt to entice Key-Systems customers and RRPproxy users to switch to Freenom services.2 The Complainant further presents evidence of the Respondent's use of the disputed domain name in a Google advertising campaign using the search term "RRPproxy" (titled "Reselling with RRP proxy?") to attract Internet users searching for the Complainant's services to the Respondent. B. Respondent
The Respondent did not submit a formal reply to the Complainant's contentions. However, in addition to the email communications from the Respondent to the Center referred to earlier, the Respondent by email on May 8, 2015, informed the Center that the disputed domain names are available for registration, questioning why the Complainant did not register the domain names instead of pursuing this case. 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 itself, 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 of this proceeding, including the WhoIs registrant information existing at the time of the filing of the Complaint, the Panel finds that the Registrar (OpenTLD B.V. d/b/a Freenom) is the registrant of the disputed domain names, 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 by more than a month in providing any response the Center's initial request for registrar verification of February 5, 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 again with the Registry".
A day later, on March 17, 2015, the Registrar by email represented to the Center that both the disputed domain names had been deleted and were in the redemption period. At that point, the Center reminded the Registrar of paragraph 3.7.5.7 ICANN Expired Domain Deletion Policy.
On March 24, 2015, when 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. Subsequently, however, the Respondent on May 8, 2015, informed the Center that the disputed domain names are available for registration.
The Panel entertains little doubt that the delays on the part of the Registrar were intentional. Further, the Registrar appears to have violated paragraph 8 of the Policy by deleting the disputed domain names during the pendency of this proceeding instead of placing the domain names 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 in this regard 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, and as previously noted, on May 8, 2015 the Registrar informed the Center that the disputed domain names are available for registration.
The Panel considers the Registrar's conduct as described herein tantamount to the abusive and bad faith practice of cyberflight. At some point after learning of the Complaint, the Registrar deleted the disputed domain names (with the expiration dates still six months out), with the stated intention that disputed domain names 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 in this case the Panel is not aware that the disputed domain names have 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 names and are identical to the Complainant's corresponding KEY-SYSTEMS and RRPPROXY marks, 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.3 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. Although TLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs 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 domain names corresponding to the Complainant's RRPPROXY and KEY-SYSTEMS marks. The Respondent has used the disputed domain names to divert Internet users to websites where the Respondent is offering 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 RRPPROXY and KEY-SYSTEMS marks 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 names, which are identical to the Complainant's marks, 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 domain names appropriating the Complainant's trademarks (as well as trademarks of other competitors) 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 names 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 names.
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 names within the meaning of paragraph 4(a)(iii) of the Policy. As noted above, the Panel has determined that the Respondent was well aware of the Complainant and the Complainant's marks when registering the disputed domain names. 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 names 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 names for the purpose of disrupting the business of a competitor. The record further reflects the Respondent's use the domain names 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 marks as to source, sponsorship, or affiliation. 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 names and 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 this decision be provided to Verisign, the .cc Registry Operator, to DoMEn, the .me Registry Operator, and to ICANN, as the accrediting authority.
William R. Towns
Sole Panelist
Date: May 19, 2015
1 The advertising on the Respondent's websites includes the following: "For those who are still working with RRP Protocol - Join Freenom and make more money with cost price domains" (website: "www."); "Forget your expensive Turn Key System Reselling Plan – Join Freenom and make more money with cost price domains" (website: "/en/resellers").
2 Refer to Note 1 and accompanying text supra.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
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