The Complainant is Video Only, Inc., Seattle, Washington, United States of America, (“the Complainant”) represented by Black Lowe & Graham PLLC, United States of America.
The Respondent is Domain Name Systems, Peterborough, Ontario, Canada, (“the Respondent”) represented by Davis Wright Tremaine LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <videonly.com>, (“the Domain Name”) is registered with Tucows (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on April 20, 2007. On April 24, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On April 30, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent (in the form “Registered at Domain Name Systems”) is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“the Policy”), 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 May 7, 2007. On the same day the Center emailed the parties, observing that in the Complaint there is a reference to pending court proceedings relating to the Domain Name and asking that the parties keep the Center informed as to the progress of that action.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2007. The Response was filed with the Center on May 25, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 11, 2007. 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.
Prior to launching this Complaint, the Complainant instituted civil proceedings against the Respondent in Washington State in relation to the Domain Name for trade mark infringement, trade mark dilution, unjust enrichment and violation of a variety of Statutes.
Paragraph 18(a) of the Rules provides as follows:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Respondent seeks suspension or termination of this administrative proceeding pursuant to the above paragraph of the Rules. It claims that this administrative proceeding has only been launched because the Respondent has exposed fundamental flaws in the Complainant’s legal case, one of them being that the Respondent is not the true owner of the Domain Name. The Respondent contends that in the legal action it has produced to the Complainant undisputed evidence that it is merely a subcontractor for the Registrar and is neither the registrant of the Domain Name nor the entity that controls the Domain Name or the website associated with the Domain Name. It contends that the true owner of the Domain Name is New World Solutions of an address in Spain.
These issues are dealt with in detail by the Panel in Section 6 below. Suffice it to say here that the Panel declines to suspend or terminate this administrative proceeding.
4. Factual Background
The Complainant is a company incorporated in Washington State, USA, which is engaged in the retail sale of consumer electronics and particularly video equipment such as televisions, DVD players and camcorders.
The Complainant is the proprietor of two US Service mark registrations featuring the name “Video only”. They are nos. 2,400,017 (device) and 2,400,221 (word) “for retail services in the field of consumer electronics”. Both were applied for in 1999 (claiming first use in 1983) and both were registered on October 31, 2000.
The Complainant’s trading website is at “www.videoonly.com”. The Complainant registered the domain name, <videoonly.com>, on November 15, 1997.
According to the Registrar’s Whois database the Domain Name <videonly.com> was registered on April 1, 2005.
Visitors to the website connected to the Domain Name arrive, at the time of writing, at a commercial adult entertainment site at “www.igotguns.com”. The domain name, <igotguns.com>, is another domain name held in the name of the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its VIDEO ONLY service mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant refers to the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy and contends on information and belief that not one of them is applicable.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant contends that the Domain Name is a typical typosquat, that the Respondent’s objective was to divert to its own site for commercial gain visitors intending to reach the Complainant.
The Complainant further contends that diversion of Internet users to a pornographic site is ipso facto evidence of bad faith.
Finally, the Complainant contends that since the Domain Name is not one with any inherent pornographic or erotic connotations, the Respondent’s adoption and use of the Domain Name for connection to a website of that description “evinces an intention to either attract the attention of the Complainant, disrupt the Complainant’s business or to damage the Complainant’s reputation”.
B. Respondent
The Respondent contends that it is not a proper respondent to the Complaint on two bases. First, it is not the owner of the registration. New World Solutions is the true owner (see Section 3 above). Secondly, it stands in the shoes of the Registrar, not the registrant, and that registrars are not subject to the Policy. On either basis the Panel should not order transfer of the Domain Name.
The Respondent does not dispute that the Domain Name is confusingly similar to the Domain Name.
The Respondent does not dispute the Complainant’s allegation that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent says that the true owner of the Domain Name is New World Solutions of Spain, which, on registration of the Domain Name, opted for a privacy service provided by the Respondent whereby the Respondent’s name features in the registrant field on the Whois database in place of the name of the true registrant. The object of the service is to protect the registrant’s identity.
The Respondent does not claim to have any rights or legitimate interests in respect of the Domain Name. The Respondent says that it is New World Solutions to whom the Complaint should have been addressed and New World Solutions, which should be responding to these allegations. The Respondent reiterates that it is not a proper party to this Complaint.
As to the allegation that the Domain Name was registered and is being used in bad faith, the Respondent contends that as against it (the Respondent) this allegation must fail for the reason that the Respondent is not the registrant, and had no conscious intentions of any kind in respect of the Domain Name other than to undertake the instructions provided by New World Solutions. The Respondent also produces evidence to suggest that it has no control over the website to which the Domain Name is connected and has had nothing to do with its content. All this, according to the Respondent, is in the control of New World Solutions.
The Respondent then goes on to argue on New World Solutions’ behalf that there is no evidence to implicate New World Solutions in any abusive activity. New World Solutions is a Spanish entity based in Spain whereas the Complainant is a retailer of consumer electronics with outlets in Washington, Oregon and California. There is nothing to suggest that New World Solutions should even have heard of the Complainant.
Finally, the Respondent accuses the Complainant of Reverse Domain Name Hijacking. The allegation is that, in using the Policy to launch a Complaint against the Respondent when the Complainant knew that New World Solutions was the true owner of the Domain Name, the Complainant has abused the system. The Complaint is directed at the wrong person, someone who is not competent to answer the substance of the allegations.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that
(i) The Domain Name 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 in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
There are several preliminary issues, which the Panel needs to address before dealing with the elements to be proved by the Complainant under paragraph 4(a) of the Policy. The Panel proposes to deal with the preliminary issues under two headings, namely “Paragraph 18 of the Rules” and “The Status of the Respondent”.
Paragraph 18 of the Rules
As indicated in Section 3 above, prior to launching this Complaint, the Complainant instituted civil proceedings against the Respondent in Washington State in relation to the Domain Name for trade mark infringement, trade mark dilution, unjust enrichment and violation of a variety of Statutes.
Paragraph 18(a) of the Rules provides as follows:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Respondent seeks suspension or termination of this administrative proceeding pursuant to the above paragraph of the Rules. It claims that this administrative proceeding has only been launched because the Respondent has exposed fundamental flaws in the Complainant’s legal case, one of them being that the Respondent is not the true owner of the Domain Name. The Respondent contends that in the legal action it has produced to the Complainant undisputed evidence that it is merely a subcontractor for the Registrar and is neither the registrant of the Domain Name nor the entity that controls the Domain Name or the website associated with the Domain Name. It contends that the true owner of the Domain Name is New World Solutions of an address in Spain.
The Panel sees no reason why this administrative proceeding should be suspended or terminated. The causes of action, the subject of the civil action, in large part raise very different issues from those to be considered under the Policy. If the Panel accepts the Respondent’s arguments, the Complaint will be dismissed. If the Panel orders transfer of the Domain Name, this will not in any way restrict the Washington court. No decision by the Panel will preclude the court from making such order as it sees fit, including reversal of the effect of the Panel’s decision. In this regard, the Panel notes that the Complainant is directly within the jurisdiction of the Washington court.
The Panel declines to suspend or terminate this administrative proceeding.
The Status of the Respondent
In addressing this issue, the Panel first sets out what the Panel is prepared for the purpose of this decision to accept as being the underlying facts surrounding the registration and use of the Domain Name.
1. On or about April 1, 2005, New World Solutions Ltd with an address in Spain applied to the Respondent for registration of the Domain Name.
2. The Respondent checked and found that the Domain Name was available.
3. The Respondent’s online application form gives its customers the opportunity of selecting a privacy option. The relevant passage from the Respondent’s website (exhibited by the Respondent) reads as follows:
“Simply by checking the “Privacy Domain” checkbox in your domain admin area, we replace the information listed with our own, for submission to the registry, with the EXCEPTION of Your Name. The registration does not belong to us, it belongs to you. You have full control over the domain through your account.”
4. The Respondent has on file its customers’ contact information and is able to communicate with its customers at will. The Respondent reserves the right in its discretion to remove the privacy domain feature “for any reason whatsoever”.
5. On applying to the Respondent for the Domain Name, New World Solutions checked the “Privacy Domain” checkbox and the registration was processed by the Respondent with the Registrar, the registrant being identified as “Registered at Domain Name Systems”.
6. Thereafter, the Respondent’s involvement with the Domain Name has been purely administrative.
7. In the result, the Respondent did not select the Domain Name and the Respondent has had nothing to do with the alleged abusive use that has been made of the Domain Name.
8. At all material times the use of the Domain Name has been under the control of New World Solutions. The Domain Name is connected to a site, which is linked to (or at any rate automatically diverts to) another site operated by New World Solutions. This site and other sites to which the Domain Name links are adult and/or pornographic sites.
When registering a domain name in a gTLD the registrant automatically signs up to the Policy. Any complainant wishing to invoke the Policy has to do so by reference to the registrant’s contact details on the Registrar’s Whois database. On receipt of a complaint, one of the Center’s first steps after checking the Whois data is to contact the Registrar for verification that the Respondent named in the complaint is the correct target of the complaint.
That is what happened in this case and the Registrar verified the registrant as being “Registered at Domain Name Systems”. Had the Complaint in this case been addressed, as the Respondent suggests that it should have been, to New World Solutions, the Registrar would presumably have informed the Center that the Complainant had incorrectly identified the Respondent. The Center would no doubt then have sent the Complainant a Complaint Deficiency Notice and the Complainant would have had to amend the Complaint either to its current form, or to “Registered at Domain Name Systems”. Either way, the Complaint would not have been forwarded directly to the Respondent’s customer.
The excerpts from the Respondent’s website, which are exhibited to the Response, make it clear that the Respondent is always very keen not to get embroiled in disputes between its customers and third parties. The customer is required to keep its contact information up-to-date and the Respondent is free at its discretion to lift the privacy veil at any time.
It is somewhat surprising to the Panel, therefore, that when the Complainant first intimated to the Respondent that it proposed to launch its civil action against the Respondent, the Respondent did not immediately lift the privacy veil and amend the database particulars to identify the true owner of the Domain Name. The fact that it did not do so leads the Panel to believe that the Respondent has a very close association with its customer, New World Solutions.
Even if the Panel is wrong on that, it is inconceivable that the Respondent did not immediately on receipt of the Complaint pass it on to New World Solutions. Had the Respondent wished to do so, it could have invited New World Solutions to provide it with information to enable the Respondent to answer the Complainant’s allegations. Indeed, if the relationship between the Respondent and New World Solutions is an arm’s length relationship, it would be somewhat surprising if the Respondent did not demand such assistance as a condition of the Respondent’s continued defence of the Complaint.
The prospect of an organization such as the Respondent, fully armed with every contractual weapon it needs, continuing to defend a domain name registration in which it has no interest and without obtaining the support of its customer defies belief.
If the relationship between the Respondent and its customer is an arm’s length relationship, while the Panel accepts that the Respondent is unable properly to respond to the Complaint, nonetheless it is within the Respondent’s power to communicate with its customer so as to ensure that a proper response is provided. As the Respondent must have known, the Panel would have had no difficulty in treating the Respondent and New World Solutions as one for the purposes of this administrative proceeding and accepting into the proceeding any evidence/submissions of New World Solutions. The Respondent made no attempt to put any such material before the Panel.
While the Panel accepts that there may be nothing inherently offensive about a privacy service of this kind, it is an arrangement which is necessarily confidential as between the applicant for the domain name and the entity providing the service. It is a confidential contractual relationship between those two parties.
In a world where domain name registration is dependent upon the registrant signing up inter alia to the Policy, these confidential privacy arrangements cannot sensibly be allowed to interfere with the operation of the Policy and administrative proceedings under it. It ought not to be beyond the wit of man to devise a system, which enables a complainant under the Policy to pursue a complaint in timely fashion and without going through any extra hoops. If the system has operated unsatisfactorily for the Respondent in this case, it is entirely due to the ambiguities of the Respondent’s relationship with its presumed customer. However, as indicated above, the Panel is in little doubt that New World Solutions has been fully informed of the Complaint throughout and has been given ample opportunity to respond through the Respondent.
In the view of this Panel, if service providers such as the Respondent elect to provide privacy services, their customers should be warned that if the domain name in question is made the subject of a complaint under the Policy, the service provider as the listed registrant of record for the Domain Name will be the nominated respondent to the complaint and will be treated as one with the hidden customer. If the customer wishes the complaint to be defended, the service provider should document its relationship with its customer, and the customer’s evidence/submissions (if any) can then be added to the record.
The Panel notes that the Registrar verification identifies the registrant as “Registered at Domain Name Systems”, thereby leaving scope for the weakest of arguments that no entity is identified as the registrant, simply the address at which the registration is held. However, it is critical for the effective functioning of the Policy for parties to be able to rely on registrant data in the Whois. Even if the Complainant had named “Registered at Domain Name Systems” as opposed to simply “Domain Name Systems”, it would not have affected the question of notification of the Complaint, which was achieved to the Panel’s satisfaction. All the contact details in respect of the registration, including the nominated address of the registrant are the Respondent’s contact details and have been correctly identified in the Complaint as such. The Panel is in no doubt that the Complainant acted reasonably in naming the Respondent as it did, that is, in merely omitting the words “Registered at”, and that the Center appropriately accepted the Registrar verification as confirmation of the Respondent as the registrant.
Accordingly, on the evidence before him, the Panel in the particular circumstances of this case makes the following findings:
1. The Center’s acceptance of the Complaint in its current form was appropriate.
2. The Respondent has been identified as the Respondent to the Complaint.
3. The Respondent and New World Solutions are for the purposes of this decision to be treated as one.
4. New World Solutions has had adequate opportunity to respond to the Complainant’s allegations and has elected not to do so.
B. Identical or Confusingly Similar
There is no serious dispute that the Domain Name, which differs by only one letter from Complainant’s registered VIDEO ONLY service mark, is confusingly similar to the Complainant’s service mark. The omitted letter is one of the ‘o’s in the middle of the mark.
The Panel finds that the Domain Name is confusingly similar to a service mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent acknowledges that it is not in a position to respond substantively to the Complainant’s allegation in this regard. Instead, the Respondent argues that it is not the proper respondent to the Complaint.
For the reasons set out above the Panel does not accept that argument. The Panel has found that the Respondent was properly named and, in the circumstances of this case, should be treated as one with New World Solutions, the Respondent’s customer.
In the absence of anything from New World Solutions, the only argument that the Panel can conceive of is that (a) New World Solutions was unaware of the Complainant at the time of registration of the Domain Name (b) the Domain Name is a fair indicator of what the visitor sees when he/she visits the Respondent’s website and (c) the service provided under and by reference to the Domain Name is therefore a bona fide offering of a service within the meaning of paragraph 4(c)(i) of the Policy.
The Panel is not persuaded that that can be the case. Were it the case, one would have expected New World Solutions to have provided the Respondent with the necessary information. Moreover, the New World Solutions website seems from its language to be a site directed to the US market, so the Complainant and/or the Complainant’s service mark may very well have been known to New World Solutions and VIDEO ONLY (whether in that form or as ‘videonly’), while not wholly inappropriate, is not a particularly obvious combination for the purpose for which New World Solutions has been using the Domain Name.
The Panel finds that neither the Respondent nor New World Solutions has any rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Having concluded that the Domain Name is confusingly similar to the Complainant’s service mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name, it is but a short step to concluding that the Domain Name is an abusive registration; nonetheless it is a step.
While the Complainant raises a number of issues under this head of claim, the Panel only finds it necessary to deal with one of them. The principal allegation is that the Respondent (including for this purpose New World Solutions) registered the Domain Name, knowing it to be a typographically erroneous version of the Complainant’s domain name (<videoonly.com>) and its service mark, VIDEO ONLY, hoping and intending that visitors to the Complainant’s website would enter the erroneous address and arrive at the Respondent’s (i.e. the New World Solutions) website, thereby giving the Respondent/New World Solutions business opportunities that they might not otherwise have had.
An inevitable consequence of such a scenario is that if visitors thought that the Complainant had anything to do with that website, the Complainant’s reputation would be damaged.
The Complainant refers to the decision in the case of KK Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Pearson S.A.,WIPO Case No. D2006-1271. The panel in that case had this to say:
“Implicit in the UDRP is the principle that the use of a domain name constitutes bad faith when a respondent seeks to tarnish, or recklessly has the effect of tarnishing the good name of a complainant whom that respondent willfully seeks to associate with pornographic material.”
The Respondent only puts forward one argument under this head. The Respondent argues that the Complaint cannot succeed, because New World Solutions is a Spanish company based in Spain and there is nothing in the papers before the Panel to suggest that New World Solutions is likely ever to have heard of the Complainant, a 14 store retailer on the West Coast of the United States of America. If the Respondent is unlikely ever to have heard of the Complainant, how can the Complaint conceivably succeed?
The Panel accepts that if it is unlikely that the Respondent/New World Solutions has ever heard of the Complainant, the Complaint is unlikely to succeed.
However, the Panel regards the Respondent’s position as disingenuous. The Respondent must know very well that New World Solutions is far from being a Spanish entity stuck away in a far away corner of the globe. Even if the Respondent is not as closely associated with New World Solutions as the Panel believes, it must have looked at the New World Solutions website before filing the Response. The site is quintessentially American in style. Moreover, the language is American English and the prices for the products offered are all in US dollars. From the exhibits the site does not appear to contain any Spanish nor are there any references to Euros.
The Panel believes that the site is directed to the US market and was designed and is operated by someone very familiar with the US market.
The Panel notes yet again that nothing in the way of evidence/submissions from New World Solutions is before the Panel.
In all the circumstances of this case, the Panel agrees with the Complainant that in all likelihood the Respondent/New World Solutions registered the Domain Name as a deliberate erroneous version of the Complainant’s domain name and with a view to unfairly attracting Internet visitors to the Respondent’s/New World Solutions’ ‘adult’ website for commercial gain. In so doing the Respondent/New World Solutions has taken unfair advantage of the Complainant’s service mark rights and has put at risk the Complainant’s reputation and goodwill.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <videonly.com>, be transferred to the Complainant.
In addition, the Panel sees no reason to criticize the behaviour of the Complainant in any way insofar as its conduct in this administrative proceeding is concerned. The allegation of Reverse Domain Name Hijacking is rejected.
Tony Willoughby
Sole Panelist
Date: June 16, 2007
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