1.1 The Complainants are FOSS A/S, of Hillerod, Denmark and FOSS NIRSystems INC of Laurel, Maryland, United States of America, represented by FOSS A/S's internal European patent attorney Charles Paul Hilton.
1.2 The Respondent is fossnirsystems.com c/o Whois IDentity Shield /Admin, Domain, Vancouver, BC, Canada.
2. The Domain Name and Registrar
2.1 The disputed domain name <fossnirsystems.com> (the “Domain Name”) is registered with Nameview Inc (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2008. The Complaint in identifying the Respondent provided the details that then appeared on the WhoIs record for the Domain Name; i.e.:
Fossnirsystems.com c/o
Whois IDentity Shield
142-757 W. Hastings St.,
Suite 777,
Vancouver, BC,
Canada
3.2 On August 18, 2008, the Center transmitted by email to Registrar a request for registrar verification in connection with the Domain Name. On August 21, 2008 the Registrar transmitted by email to the Center its verification response. In response to the Center's request that Registrar provide “full contact details (i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in your WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for the above domain names(s)” the Registrar simply identified the registrant as FOSS NIRSystems, Inc; i.e. the Second Complainant Defendant in these proceedings. On or around this time the details recorded on the WhoIs entry in relation to the Domain Name changed to list as FOSS NIRSystems Inc. as the registrant, administrative contact and technical contact.
3.3 On being provided with this information, the Center followed its now standard practice of asking the Complainants to confirm whether the change of registrant details reflected the fact that the Complainants were now in control of the Domain Name. A similar request was made of the Registrar by means of an email of August 22, 3008. The Registrar did not respond to this email. However, on September 1, 2008 the Complainants confirmed that they did not have control of the Domain Name.
3.4 The Center then proceeded to verify 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 September 2, 2008. The notification was copied to the Registrar.
3.5 On September 5, 2008 the Registrar, in response to the Center's notification of commencement of proceedings, sent an email to the Center stating that the identified Respondent was incorrect, identifying once again FOSS NIR Sysems, Inc as the registrant and requesting that the complaint be “corrected”. The email was sent from “Nameview Legal”, was signed “Nameview” and did not identify any individual at Nameview dealing with this matter.
3.6 The Center responded by email on September 9, 2008. This stated as follows:
“Dear Nameview,
Thank you for your below email concerning the registrant of record for the disputed domain name.
We note, as previously, that the registrant name and contact information provided by you appears to reflect the name and contact information of the Complainant (FOSS NIRSystems, Inc.). We also note that no reply has been forthcoming from you to our email of August 22, 2008 requesting clarification of whether you believe this means that the Complainant (FOSS NIRSystems, Inc.) is now in fact the registrant of the disputed domain name, and therefore presumably able to exercise control over the disputed domain name. We further note that the Complainant for its part has confirmed to the Center that they are not in control of the disputed domain name.
We additionally note that this is not the first UDRP case involving Nameview in which the WIPO Center has had occasion to observe this seeming practice, in which a Complaint is filed by a Complainant against the entity identified as the registrant in the Whois database (in some cases apparently a privacy or proxy registration service), only to have Nameview subsequently provide a registrar verification reply indicating the Complainant itself (or a close approximation thereof) as the “registrant” of the disputed domain name, in circumstances in which the Complainant has confirmed to the Center that they are not in fact in control of the disputed domain name. We have yet to receive any explanation from Nameview, despite numerous requests, as to how and why this seeming change in registrant data after the initiation of a UDRP Complaint is allowed to occur. Accordingly, we again take this opportunity to invite you to provide an explanation for the record.
In any event, in such circumstances, the Center's usual practice is to refrain from requesting the Complainant to amend the Complaint to name itself as Respondent, but rather to proceed on the basis that (from an administrative compliance perspective at least, and subject to any contrary determination that may be made by the independent panel on appointment) the proper Respondent is the entity that was identified in the Whois database at the time the Complaint was filed with the Center. In this case, that entity appears to be “fossnirsystems.com c/o Whois IDentity Shield”.
The Center takes this approach in part because, as the panel observed in paragraph 3.7. of the decision Shon Harris v. www.shonharris.com c/o Whois Identity Shield,
WIPO Case No. D2007-0997, given that the contact address now given for the “registrant” is the address of the Complainant, “to require the Complainant to amend its Complaint in a manner that meant that it was apparently directed to itself would be pointless”.
As the matter has now been formally notified by the Center, any ultimate determination as to the identity of the proper Respondent in the present UDRP proceedings will need to await the appointment of the independent Panel.
Sincerely,
[Name of the relevant case manager]”
3.7 In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 24, 2008.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 2, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The First Complainant is a company registered in Denmark. The Second Complainant is a company registered in the United States. It traded under the name NIRSystems from 1989 and changed its name to FOSS NIRSystems after it was purchased by the First Complainant in 1997. It sells NIR spectral analysers world-wide to the food, agricultural, chemical and pharmaceutical industries.
4.2 The First Complainant is the owner of various trade marks that comprise or incorporate the term “Foss”. These include registered Community Trade Mark No. 1960343 for the word FOSS in classes 1, 5, 9, 10 and 42 dated November 17, 2000.
4.3 The Second Complainant is the owner of the registered Community Trade Mark No. 607267 in class 9 dated August 5, 1997 in the following form:
4.4 The Complainant is also the owner of the domain name <foss-nirsystems.com> registered on July 5, 2005 and this is used to direct Internet users to the website operating from the Complainants' <foss.dk> domain name.
4.5 The Domain Name was registered on February 18, 2006. It was subsequently used to display a web page that bore all the hallmarks of having been generated by a domain name parking service. In particular the web page has the heading “Welcome to fossnirsystems.com” beneath which is the subtitle “For ads on Foss and System”. On the rest of the page there are links to numerous “Related Searches” using terms such as “Foss”, “Used laboratory equipment” and “NIRSpectrometer”. The web page also displayed a search box at the bottom of the page.
4.6 More recently the domain name parking page has ceased to operate. No web page is displayed from the Domain Name as at the date of this decision.
5. Parties' Contentions
A. Complainants
5.1 The Complainants contend that the Domain Name comprises the simple conjoining of the “FOSS” and “NIRSystems” registered trade marks.
5.2 The Complainants contend that the Domain Name is being used to direct Internet users to a web portal providing links for commercial gain to products including those which compete with the Complainant and that the Respondent is taking advantage of the goodwill and reputation associated with the Complainants marks to draw internet users to the Respondent's website. This is said not to constitute a bona fide offering of goods or services.
5.3 On the issue of bad faith registration and use the Complainants contend that the Respondent's activities involve the intentional attempt to attract for commercial gain Internet users to the Respondent's website and onward to third part sites, by creating “a likelihood of confusion with the Complainant's mark “FOSS NIRSYSTEMS” as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location”.
5.4 Further the omission of a separator between the words “foss” and “nirsystems” is said to involve a “misspelling” and the Complainants contend that the Respondent is deliberately and in bad faith seeking to take commercial advantage of such misspelling”.
B. Respondent
5.5 The Respondent did not reply to the Complainants contentions.
6. Registrar Conduct and Outstanding Procedural Matters
6.1 It is convenient first to address the Registrar's claim that the Complaint should have been amended to record the Second Complainant as the Respondent. As the Center recorded in its email of September 9, 2008, this Panel stated in Shon Harris v. www.shonharris.com c/o Whois Identity Shield,
WIPO Case No. D2007-0997 that to require such an amendment would be pointless.
6.2 The whole issue of identification of a respondent was explored in much greater detail by this Panel in Mrs. Eva Padberg v. Eurobox Ltd,WIPO Case No. D2007-1886. The Padberg case was another case in which the name of the recorded respondent in the WhoIs database changed between the date when the Complainant was lodged and a panel appointed.
6.3 It is not necessary in this case to repeat the detailed reasoning and analysis set out in the Padberg decision. It is sufficient for present purposes to record the following conclusions that were reached in that case:
(i) The identification of respondent in the heading of complaint is a matter of administrative convenience only. The validity of complaint is not dependent upon identification of the “correct” or “true” respondent.
(ii) A complainant does have an obligation (under paragraph 3(b)(iv) of the Rules) to identify to the best of its knowledge who it considers the respondent to be. However, identification of the entity in the Whois database at time of filing is prima facie sufficient.
(iii) Where following the filing of a complaint the named registrant changes to that of the complaint, neither the Policy nor the Rules require a complaint to change its complaint so as to identify itself as the respondent. To require it to do so is not only pointless, it risks making a mockery of the Policy.
6.4 Accordingly, there was no basis upon which the Registrar was entitled to call for the amendment of the Complaint in this case.
6.5 However, somewhat more concerning are the other comments to be found in the Center's email of September 9, 2008. These suggest that there have been an unusual number of cases in which a domain name registered with the Registrar has changed to the name of a complainant following the filing of proceedings.
6.6 In this case it is clear that prior to the filing of these proceedings the identity of the respondent was masked by the use of the Registrar's domain name privacy service. The inherent legitimacy of such services is still the subject of debate and the Panel does not consider it to be necessary to engage in that debate for the purposes of this decision. However, the fact of the matter is that these services are now common place and if they are used by a registrant, it is clearly important that a registrar who provides such a service when notified of the filing proceedings promptly and fully discloses who the “true” registrant is.
6.7 However, this is not a case involving the “ordinary” use of a domain name privacy service. It is a case where the registrant, technical, administrative and billing details subsequently provided by the Registrar are apparently false. They are the details of the Second Complainant and the Second Complainant has had nothing to do with the registration of the Domain Name (and has since confirmed that it is not now in control of the Domain Name). The entity that has caused these details to be recorded in the Registrar's database has engaged in a deliberate and false impersonation of the Second Complainant. It has done so with some care taking the trouble to establish the Second Complainant's corporate address and concocting an email address from a domain name that is different from the Domain Name and which incorporates the domain name genuinely used by the Second Complainant. And yet this degree of impersonation even down to the level of the registrant's billing contact details is curious. If the billing contact details are false, how did the Registrar's fees in this case get paid? Also how does the Registrar contact the registrant to obtain renewal fees?
6.8 The Panel was left with the impression that something very odd is happening here. Therefore, in light of the potential seriousness of this matter, the Panel decided to conduct a simple search against the Registrar name in the WIPO case database. A list of all of these cases from 2006 onwards that this search produced is set out at Annex A to this decision. There are forty-eight (48) in total. What an analysis of these decisions reveal is quite startling.
6.9 Twenty-one (21) of these decisions1 involved respondents identified as Vertical Axis, CKM (which also uses the name Domain Administration) or Port Media, and it would appear that Vertical Axis, CKM and Port Media are closely connected if not the same entity2.
6.10 Of the remaining twenty-seven (27) cases there is a catalogue of cases involving obstructive or questionable conduct on the part of the Registrar. In one case the Registrar did not reveal details of the entity registered behind a privacy service3, in three cases, the registrar simply refused to respond to the Center's request for registrar verification4 and in five cases the Registrar allowed the domain name to be transferred after proceedings had been filed with the Center5.
6.11 That leaves eighteen (18) cases. Of these cases, sixteen (16) are cases where it would appear that the Registrar responded to a verification request by identifying one of the complainants, or a company in the same group of companies as the complainant, as the registrant6. This is quite an astonishing number and this number may well underestimate the number of cases in which this has occurred7.
6.12 Indeed, it would appear that the Registrar has now achieved a degree of notoriety so far as this practice is concerned. For example, in DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty,
WIPO Case No. D2007-1431, the panel referred to this activity as “[t]he Nameview practice”, even though in actual case before that panel a different registrar was involved. The panel also listed a further five cases before the National Arbitration Forum in which the Registrar had acted in this way8.
6.13 The Panel does not know exactly what is going on here, but something is significantly amiss. Since a complainant has been identified as the registrant in such a large percentage of cases involving the Registrar, it seems highly implausible that this is a result of different underlying registrants independently and coincidentally engaging in this activity. It seems far more likely that there is a single registrant behind all of these cases. If so, it is hard to see how the Registrar cannot be unaware of the identity of that registrant. And yet if this is the case, it is knowingly allowing false registration data to be recorded in its databases and is knowingly providing misleading information to the Center in response to the Center's verification requests.
6.14 Further, regardless of the exact number of registrants behind these cases, it seems unlikely that at the time of registration the registrant or registrants will have given false billing contact details. As has already been stated above, if this were the case, how is it that the respondent would be able to renew these domain names? And yet in the current case before the Panel the Registrar, in response to the Center's verification request, claimed that the billing contact details it had for the Domain Name were those of the Second Complainant. In the circumstances, again it is hard to escape the conclusion that the Registrar is either deliberately providing false information to the Center, or its registration systems are such that it permits a registrant to insert such false information following the filling of proceedings.
6.15 Indeed, the Panel wonders whether if changes after the filing of a complaint are limited to a change in billing contact details. If the Registrar is allowing the details of the underlying registrant of the Domain Name to change, this would involve the Registrar acting in a manner that is in breach of paragraph 8(a) of the Rules9.
6.16 Further, if the Registrar had an innocent explanation for what is going on here, the Registrar has had more than sufficient opportunity to provide it. In particular, the Center's email of September 9, 2008 records the Center's “numerous requests” to explain what is going on in these cases and yet it would seem that no explanation has been forthcoming.
6.17 In short, it appears to the Panel that the Registrar either deliberately, knowingly or by negligence is participating in a concerted practice of the provision of false contact details to the Center in such a way that protects the identity of a serial cybersquatter. If registrars are allowed to engage in such activity with impunity, it threatens the integrity of the UDRP.
6.18 The Panel notes that the circumstances of one of the cases listed in this decision, i.e Therapro, Inc. v. Administrator, Domain/ Therapro,WIPO Case No. D2006-0883, have already been brought to the attention of ICANN10. The Panel would invite the Center to bring this decision to the attention of ICANN with a view to ICANN undertaking such further investigation or steps as it considers appropriate.
7. Discussion and Findings
7.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
7.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainants to make out their case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
7.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
7.4 The Domain Name is clearly confusingly similar to at least two marks in which the Complainants have rights. The Panel agrees that the Domain Name can only be sensibly understood as a combination of the terms “Foss” and “Nirsystems.com”. The First Complainant is the owner of a word mark in the name “Foss” and a device mark that takes the form of the word “Nirsystems” in stylised text.
7.5 Accordingly the Complainants have made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.6 The Panel accepts the Complainants' claims that the Respondent has never engaged in a substantial business activity under the “Foss NIRSystems” name or anything similar. Accordingly, it has not as a consequence of such activity established a right or legitimate interest in this term.
7.7 The only activity in which the Respondent appears to have been engaged is the operation of website from the Domain Name. As has already been described, these websites show the classic hallmarks of a parking site. How these sorts of site operate is described in greater detail in the context of bad faith later on in this decision. In the view of the Panel there is no real doubt that in this case the Respondent has registered this Domain Name with a view to earning a share of the click through revenue generated by the domain name parking page in question.
7.8 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,
WIPO Case No. D2007-0267).
7.9 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainants' marks in mind and has it deliberately used it to take advantage of the reputation of those marks? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little.
7.10 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the unequivocal answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
7.11 The Panel has little difficulty in concluding in this case that the Domain Name has been registered and used in bad faith.
7.12 First, there is the use of the Domain Name in connection with a Domain Name parking service. It is now well-known how these sorts of page operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA,
WIPO Case No. D2007-1143).
7.13 In this case the material appended to the Complaint suggests that in this case the link to the sponsored searches is indirect. Either sponsored links are produced when the Internet user undertakes a search in the search box provided on the page or chooses one of the “Related Searches” that are displayed.
7.14 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of internet users being drawn to that page (see for example Express Scripts, Inc. v. Windgather Investments Ltd supra.).
7.15 In this case the Complainants have put forward no evidence of the reputation of the FOSS and NIRSYSTEMS marks, but it does not matter. The terms are relatively distinctive and are unlikely to have been chosen by the Respondent for a Domain Name without knowledge of these marks. The fact that the Respondent has chosen a domain name that joins together these two terms, places the question beyond any reasonable doubt.
7.16 This is sufficient to decide this aspect of the case in the Complainants' favour. However, there is, of course, one further factor in this case that strongly supports a finding of bad faith registration and use. That is the false impersonation of the Second Complainant in the Registrar's databases described in detail above. There is no excuse or justification for such impersonation and it is not an activity that any legitimate business would condone or in which any legitimate business would engage.
7.17 The Complainants have made out the requirements of paragraph 4(a)(iii) of the Policy.
8. Decision
8.1 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, <fossnirsystems.com> be transferred to the Complainants.
8.2 The Complainants do not identify in the Complaint to which of the Complainants the Domain Name should be transferred. Since it is FOSS A/S that has had conduct of these proceedings, unless the Complainants indicate otherwise, the Panel orders that the Domain Name be transferred to FOSS A/S.
31. Joyce Meyer Ministries, Inc. v. Joycemyersministries.com, c/o Whois IDentity Shield/Joyce Meyer Ministries - U.S. Headquarters, WIPO Case No. D2007-1087
32. Laboratoire Sintyl v. Physiodermie.com c/o Whois IDentity Shield / Domain Adminstrador Laboratoire Sintyl WIPO Case No. D2007-1204
33. Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois Identity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain, WIPO Case No. D2007-1373
2 See LeasePlan Corporation N.V. v. Vertical Axis, Inc. dba CKVWIPO Case No. D2008-0289 and Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc.WIPO Case No. D2008-0321.
7 The reason for this is that in those cases where the domain name is changed to that of the complainant and the complainant actually obtains control of the domain name as a result, the proceedings will be brought to an end without the need for a published decision.
8 ThoughtWorks, Inc. v. ThoughtWorks, Inc., NAF Case No. FA934366. See also Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, NAF Case No. FA670051; Diners Club International Ltd. v. Diners Club International Ltd. c/o Domain Admin, NAF Case No. FA551103; Zappos.com, Inc. v. Zappos.com Inc., NAF Case No. FA999674 and KSL Recreation Management Operations, LLC v. KSL Recreation Management Operations LLC, NAF Case No.FA876390
9 As to which see the explanation of the operation of paragraph 8(a) and its interaction with domain name privacy services, see paragraphs 5.16 and 5.17 of the Eva Padberg case previously cited.
10 See the Center's letter to ICANN dated April 16, 2008 available at http://www.wipo.int/export/sites/www/amc/en/docs/icann160408.pdf.
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