John Dilks v. PRIVACY ADMINISTRATOR / ANONYMIZE, INC.
Claim Number: FA1506001623023
Complainant is John Dilks (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is PRIVACY ADMINISTRATOR / ANONYMIZE, INC. (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eht.com>, registered with eNom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2015; the Forum received payment on June 5, 2015.
On June 5, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <eht.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@eht.com. Also on June 11, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
I. Introduction
This Proceeding concerns the phenomena of domain hi-jacking and domain laundering, in which a domain name is stolen from a victim having long-established goodwill in two common law marks related to the domain name and then surreptitiously subjected to multiple registrar transfers in order to frustrate attempts to rectify the original hi-jacking. In order to avoid detection by the domain registrant, the nameservers of the site remain as originally set, so that the domain name appears to operate normally and to resolve to the correct web server. In this manner, the original domain registrant does not realize the domain name has actually been transferred away, until the domain name has been transferred multiple times. The continued maintenance of the domain name to resolve to the original registrant's site, is itself an indication of the goodwill manifest in the original registrant's mark, and clear evidence of the hijacker's intentions.
II. Identical or Confusing Similarity
The Complainant, John Dilks has been operating a news, local directory and local advertising site at the site corresponding to the disputed domain name since at least as early as having originally registered the domain name in 1997, the original creation date shown in WHOIS. Beginning in late 1999, the Complainant began using the mark "It's your EHT.COMmunity".
As can be seen therein, Complainant's site relates to news of upcoming events, a directory of local information, and links to local advertisers in the area of Egg Harbor Township, New Jersey. The Complainant continued use of the "It's your EHT.COMmunity" banner through mid-2002 in the same form. The re-design was completed that month, and the design of the site was updated as of August 2002. The re-designed site included a header [redacted].
The header banner, comparable to a newspaper masthead to distinctively identify the Complainant's news, directory and advertising site, continued the previous use of the "It's your EHT.COMmmunity" mark, and added a stylized presentation of "eht.com" as prominent marks, which the Complainant continued to use, and still uses, to distinguish the Complainant's site.
The current print-out is included, because it is believed likely that upon being notified of this Proceeding, the Respondent will cease resolution of the domain name to the Complainant's site - knowing that the subterfuge has been detected. If not, however, the Panel may determine by the time of appointment whether the Respondent has done so. It may seem unusual that the Complainant is seeking transfer of a domain name that still resolves to the Complainant's own site. That insidious aspect of the underlying hi-jacking and multiple registrar transfers will be explained further below.
As shown herein, the Complainant has continuously used the "It's your EHT.COMmmunity" mark since at least as early as 1999 through the present day, standing alone and as incorporated into the masthead. The capitalized "EHT.COM" incorporated into that mark prominently emphasizes "EHT.COM". Likewise, it's continuous use since 1999 has associated the mark with the Complainant's website corresponding to the eht.com domain name. Likewise, the Complainant's stylized and prominent use of "eht.com" in the masthead since at least as early 2002 functions as a mark signifying the Complainant's publication, alone or in prominent placement in the masthead, beyond mere use of the eht.com domain name as an address identifier. Furthermore, as shown in historical print-outs of the corresponding website, the Complainant has consistently provided express notice of its claim to "eht.com" and variations thereof as its mark.
The domain name here at issue - eht.com - constitutes the prominent features of both the Complainant's "It's your EHT.COMmmunity" slogan, and the stylized "eht.com" central logo to the masthead (as the entirety of the textual component thereof). There is no question that the domain name is confusingly similar to both marks, as the domain name is the reason why "EHT.COM" figures prominently in them.
Based on the Complainant's longstanding use, for more than a decade of exclusive publication of news, local directory information and advertising, of "It's your EHT.COMmmunity" and "eht.com" marks; the Complainant submits that domain name eht.com is confusingly similar with trade or service marks in which the Complainant has rights.
III. Legitimate Rights Or Interests
The second criterion of the Policy requires a showing of lack of legitimate rights or interests in the domain name by the Respondent. As noted above, the only use of the domain name made by the Respondent has been to continue to maintain resolution of the domain name to the Complainant's site. Accordingly, this continued maintenance of the domain name to resolve to the Complainant's content is effectively an admission by the Respondent that any rights or interests in use of the domain name belong to the Complainant. The sole reason the Respondent, and possibly others acting in concert, have maintained this use of the domain name is to deceive the Complainant and avoid, for as long as possible, the Complainant's detection that the domain name had, in fact, been stolen from the Complainant in the first place.
The Respondent cannot have legitimate interests in a domain name acquired by theft, nor can the Respondent claim that its use of the domain name to continue to resolve to the Complainant's website operates to confer any sort of right or interest to the Respondent. This species of theft was described in:
HandHeld Entertainment and Kieran O'Neil v. WhoisGuard a/k/a WhoisGuard Protected
NAF Claim Number: FA0706001008008 http://www.adrforum.com/domaindecisions/1008008.htm
As indicated above, Respondent has hijacked the disputed domain name and has subsequently attempted to pass itself off as Complainant by resolving the disputed domain name to Complainant’s own website. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). [Emphasis Added]
Or as more succinctly stated in CIN - Corporação Industrial do Norte, S.A. v. Huhan, Yuming Zhong, WIPO Case No. D2014-1865, "Having misappropriated the disputed domain name, the Respondent would have a very difficult time establishing any rights or legitimate interests."
The sequence by which the domain name was stolen from the Complainant is shown in the sequence of historical WHOIS records attached as Exhibit E. For the Panel's reference, the WHOIS records have a header indicating "record date", which is the date of the capture, and a "last updated date", indicating the most recent change to the WHOIS data.
Starting at October 2013, the domain name is shown to be registered to the Complainant, as it had been since its creation in 1997. Then, as of an update in December 2013, the domain name is moved from Tucows to an obscure registrar called "GRANSY S.R.O D/B/A SUBREG.CZ" and registered to "Whois Protection" with an address in the Czech Republic. The nameservers for the domain name are maintained as "bluedomino.net" in order to keep the domain name resolving to the Complainant's website.
The manner in which such a change is carried out is typically by compromise of the domain registrant's administrative email address. ICANN policy perversely requires two things: (1) that all communications from the administrative email address be treated as authoritative by the registrar, and (2) that the administrative email address must be published in WHOIS accessible by anyone. On top of that, ICANN policy requires domain registrants to periodically confirm their domain registrations by clicking on a link within an email from the registrar.
Accordingly, all that is required to steal a domain name is to compromise the administrative email address by various common methods - the most common method among several being to fake the ICANN-required registrar email, and then have that "confirmation click" lead the registrant to a site operated by the criminal mimicking the registrar site, at which the registrant provides their login details to the criminal. From there, the thief has full control of the domain name, can change the administrative email, obtain a transfer authorization code, and take the domain name to a registrar in a difficult to reach jurisdiction. Because there are sometimes methods by which a single unauthorized transfer can be reversed, the criminal then proceeds to engage in multiple registrar transfers, so that the ICANN Transfer Dispute Policy, and its focus on a single transfer, becomes ineffective to recover the domain name. Because registrars impose a 60 day restriction on transfers of recently-transferred domain names, the trick is to move the domain to successive registrars in 60 day intervals, while maintaining the same nameservers to resolve to the original webserver, so that the domain registrant does not notice the registrar transfers, because the site continues to operate normally.
Proceeding through Exhibit E, the thief then proceeded to launder the domain name through multiple further transfers. In March 2014, the domain name was moved to Chinese registrar Onlinenic and registered to a "Domain ID Shield Service CO., Limited" with an address in Hong Kong. However, due to a rash of hijackings involving Onlinenic in the course of 2014, and an ensuing investigation, the thief decided to move the domain name to yet another registrar in September 2014. As can be seen therein, the domain name was moved to, and now resides at, Enom.com and registered to the Respondent, which is yet another privacy service.
All the while, the Complainant continued to use its webhosting service, as the domain name continued to resolve to the correct servers, and the Complainant was none the wiser until recently.
Accordingly, the circumstances here are identical to those described in HandHeld Entertainment cited above - the Respondent can have no legitimate interest in having stolen the domain name, or having received a stolen domain name from a first thief, while maintaining resolution of the domain name to the victim's site, the Complainant here, in an obvious subterfuge designed to delay detection.
IV. Bad Faith
The circumstances constituting bad faith registration and use of the domain name are obvious and apparent. The domain name was "registered" by stealing it, and then passing it through three registrars. Quite possibly this chain of transfers involved multiple parties concealing their identities by use of a series of privacy registration services. Likewise, bad faith use is readily apparent by the still-maintained subterfuge of resolving the domain name to the Complainant's website, in order to delay detection past a point of practical recovery methods.
In the event the current Respondent appears with a claim to have "purchased" the domain name from an intermediate party, as some sort of bona fide purchaser without notice, such claim would not explain why the Respondent had purchased the domain name but has maintained resolution of the domain name to the Complainant's website - prominently still featuring the Complainant's "It's your EHT.COMmmunity" and "eht.com" masthead - since the most recent transfer of the domain name back in September 2014. There is no credible explanation as to why one would purchase a domain name for the apparent purpose of resolving it to a website with which one has no association, but which is still the site of the Complainant from whom the domain name was stolen. Additionally, it is certainly the case that the Respondent could not have obtained good title from a thief through some chain of laundering transactions.
Accordingly, it is manifestly clear in the manner that the domain name has been registered and used that it has been done so in bad faith, for the purpose of delaying notice of the theft of the domain name in the hope of fobbing off a valuable three-letter name to a naive purchaser at some future time.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims unregistered common law trademark rights in “It’s your EHT.COMmmunity” and EHT.COM marks dating back to at least 1999. The marks are used on or in connection with the operation of a news, local directory, and local advertising website by Complainant. Registration with a governmental authority or entity is not necessary to obtain rights in a trademark under the UDRP. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
To acquire common law trademark rights, a complainant must show their trademark(s) has acquired a secondary meaning. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (requiring complainant to establish secondary meaning before award said complainant with common law trademark rights under the UDRP). Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition . . . ” (see Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011)), or, in some case, continuous use of the mark (see Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years)). When determining whether a complainant has established a secondary meaning, the most important inquiry is to whether the relevant consuming public associates the mark with the source of the goods or services on which the mark is used. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant has provided a copy of its website, which displays both marks and purports an update date of October 6, 1999. This Panel finds this sufficient to establish secondary meaning. Based upon this uncontroverted evidence, Complainant has common law trademark rights for purposes of Policy ¶4(a)(i).
Complainant claims the <eht.com> domain name is confusingly similar to the “It’s your EHT.COMmmunity” and EHT.COM marks. The domain name contains Complainant’s entire EHT.COM mark, and also the dominant portion of the “It’s your EHT.COMmmunity” mark, along with the gTLD “.com.” As a general rule, a gTLD can never adequately distinguish a domain name from the mark at issue because domain name syntax requires a TLD. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The disputed domain name is confusingly similar to the EHT.COM mark. This disputed domain name is generally confusingly similar where the respondent includes the dominant portion of the mark in the domain name at issue. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). This Panel finds the disputed domain name is confusingly similar to the “It’s your EHT.COMmmunity” mark according to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known as the disputed domain name, nor does Respondent have licensing rights that would allow it to use Complainant’s marks in domain names. “PRIVACY ADMINISTRATOR” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a lack of evidence exists, Respondent cannot have rights or legitimate interests under Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant was formerly the registrant and owner of the disputed domain name, but Respondent illegally hijacked the domain name. This clearly is not (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. Keeping the nameservers the same to conceal the hijacking is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is further evidence to buttress the claim of bad faith by concealing the hijacking. Respondent continues to transfer the domain name to different registrars in an effort to conceal Respondent’s true identity and to prevent recovery of the domain name. Where a respondent has hijacked the complainant’s domain name and used it to resolve to the complainant’s own website, prior panels have found that the respondent was attempting to pass itself off as the complainant, and subsequently declined to award the respondent rights under Policy ¶4(c)(i) or Policy ¶4(c)(iii). See HandHeld Entertainment and Kieran O’Neil v. WhoisGuard a/k/a/ WhoisGuard Protected, FA 0706001008008 (“Respondent has hijacked the disputed domain name and has subsequently attempted to pass itself off as Complainant by resolving the disputed domain name to Complainant’s own website. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). This Panel finds Respondent is not making a bona fide offering or a legitimate noncommercial or fair use of the domain name.
Respondent registered the domain name using a privacy service. This means Respondent has not publicly associated itself with the domain name. This means Respondent cannot have acquired any rights to the domain name (or a similar trademark) merely by registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶4(b), these provisions are meant to be merely illustrative of bad faith. Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant claims Respondent has displayed bad faith registration and use. Respondent has illegally hijacked the domain name and listed itself as the registrant, rather than Complainant. Respondent continues to transfer the domain name to different registrars in an effort to conceal Respondent’s true identity and to prevent easy recovery of the domain name. In an effort to conceal the hijacking, the disputed domain name has resolved to Complainant’s own website at all times. Where the complainant was the former owner of the domain name, this raises a rebuttable presumption of bad faith registration and use even when the domain name still resolves to Complainant’s web site. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶4(a)(iii).”). Respondent’s actions constitute find bad faith under Policy ¶4(a)(iii).
Respondent registered the domain name using a privacy service. In the commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. For this reason alone, the Panel will find bad faith registration and use.
Frankly, this Panel has never seen this set of facts before. Respondent’s hijacking of a domain name in this manner should constitute per se bad faith registration and use of the domain name, even if the nameservers remain the same. The Panel cannot conceive how such actions would ever constitute anything but bad faith. Domain name owners should be vigilant to avoid such hijackings in the future.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <eht.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 10, 2015
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