Twitter, Inc. v. Alvaro Martins / Domain Admin / Whois Privacy Corp.
Claim Number: FA1703001721606
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Alvaro Martins / Domain Admin / Whois Privacy Corp. (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hacktwitter.net>, registered with Internet Domain Service BS Corp.
The Panel notes that <twitterhacking.com>, registered with Moniker Online Services LLC was previously at issue, but was resolved pursuant to a stay of proceedings (see below).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2017; the Forum received payment on March 14, 2017.
On March 15, 2017, Moniker Online Services LLC confirmed by e-mail to the Forum that the <twitterhacking.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 March 15, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <hacktwitter.net> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On March 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2017 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@twitterhacking.com, and postmaster@hacktwitter.net. Also on March 16, 2017, 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.
On April 14, 2017, the parties requested a stay of the proceedings pursuant to Forum Supplemental Rule 6(b)(i), which was subsequently approved the same day.
The parties settled on the transfer of <twitterhacking.com> to Complainant and requested that the stay be lifted on April 20, 2017. Per an agreement between the parties, <twitterhacking.com> has been transferred to Complainant.
On April 21, 2017, the reinstatement order was approved by Forum.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
Complainant registered its TWITTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 3,619,911 Registered May 12, 2009), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex.C. Respondent’s <hacktwitter.net> domain name is confusingly similar to Complainant’s mark because the name merely incorporates the generic term “hack” and appends the generic top-level domain (“gTLD”) “.net” to the fully incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its TWITTER mark in any fashion and Respondent is not commonly known by the disputed domain name. Additionally, Respondent’s domain name’s resolving website offers unlawful password hacking services, delivers malware, generates ad revenue through pay-per-click traffic, and facilitates a survey scheme. Further, Respondent consciously uses the disputed domain name to confuse and mislead the public as to the source of Respondent’s site and its relationship with Complainant. These uses cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the <hacktwitter.net> domain name in bad faith under Policy ¶ 4(a)(iii). Respondent uses the disputed domain name to promote various unrelated commercial offers and surveys, presumably to benefit financially from referral fees. Additionally, Respondent offers password hacking services on the resolving webpage, which is an illegal use of the disputed domain name. Further, Respondent uses the disputed domain name to distribute malware. Finally, Respondent must have had actual knowledge of Complainant mark given the widespread fame and notoriety in the TWITTER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a real-time global information network that allows the public to discover what’s happening in the world, share information, and to connect with other people.
2. Complainant registered its TWITTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 3,619,911 Registered May 12, 2009).
3. Respondent registered the <hacktwitter.net> domain name on November 1, 2013.
4. The domain name resolves to a website that offers unlawful password hacking services, delivers malware, generates ad revenue through pay-per-click traffic, and facilitates a survey scheme.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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(f), 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant operates a social media webpage accessible to users all over the world. The website to which <twitter.com> resolves had more than 300 million monthly active users and is available in over 40 different languages. Complainant claims it registered its TWITTER mark with the USPTO (Reg. 3,619,911 Registered May 12, 2009), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. C. USPTO registrations have been commonly considered by UDRP panels to confer rights in a mark. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant has proven rights in the TWITTER mark to satisfy Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TWITTER mark. Complainant submits that Respondent’s <hacktwitter.net> domain name is confusingly similar to Complainant’s mark because the name merely incorporates the generic term “hack” and appends gTLD “.net” to the fully incorporated mark. Such alterations are not considered as sufficiently distinguishing a domain name from a trademark to negate a finding that a domain name is identical or confusingly similar to a trademark. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel notes that Respondent’s <hacktwitter.net> domain name differs from Complainant’s mark by adding the generic term “hack” before the mark and appending the gTLD “.net.” Therefore, the Panel holds that Respondent’s <hacktwitter.net> domain name is confusingly similar to Complainant’s mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s TWITTER trademark and to use it in its domain name, adding only the generic word “hack”;
(b) Respondent registered the disputed domain name on November 1, 2013. and has caused it to resolve to a website that offers unlawful password hacking services, delivers malware, generates ad revenue through pay-per-click traffic, and facilitates a survey scheme;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name as it has not licensed or otherwise authorized Respondent to use its TWITTER mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. The Panel notes that the WHOIS information for <hacktwitter.net> lists “WHOIS PRIVACY CORP” as the registrant. Id. Therefore, the Panel concludes that Respondent is not commonly known as <hacktwitter.net>;
(e) Complainant next contends that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain name. Complainant alleges Respondent is using the resolving webpages of <hacktwitter.net> to offer unlawful password hacking services, to deliver malware, to generate ad revenue through pay-per-click traffic, and a reward scheme. Such uses are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i), nor legitimate noncommercial or fair uses of domain name pursuant to Policy ¶ 4(c)(iii). See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (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). Complainant submits that the resolving webpage for the <hacktwitter.net> domain name offers users advice and the opportunity to hack an online <twitter.com> account. See Compl., at Attached Ex. F. Further, upon completion of the initial “hacking” process offered on the webpage, the disputed domain name redirects the user to a webpage requiring the user to complete an online survey. Id. Respondent then displays hyperlinks for unrelated products or services. Id. Complainant also offers that the <hacktwitter.net> domain name requires users to click on a download link which installs malware on the user’s computer. Id. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Respondent has registered and is using the <hacktwitter.net> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the TWITTER mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (finding that a domain name which resolves to a website which solicits Internet users for the completion of surveys is evidence of bad faith due to an attraction for commercial gain); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Complainant contends that <hacktwitter.net> creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of attracting Internet traffic and commercial benefit through click-through ads and surveys. See Compl. at Attached Ex. F. As such, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent uses the disputed domain to engage in the promotion of illegal activity. Using a domain name to promote an illegal activity can evidence bad faith use. See Google Inc. v Domain Admin / Whois Privacy Corp., FA150400161605239 (Forum Mar. 22, 2015) (Respondent’s use of the at-issue domain name to aid illegal activities under Complainant’s trademark and thereby tarnish the GOOGLE mark also suggests Respondent’s bad faith.). Here, Respondent uses the disputed domain name to offer instructions on how to hack a <twitter.com> account, and also offers the service of hacking an individual’s <twitter.com> account. See Compl., at Attached Ex. F. The Panel therefore finds that Respondent uses the disputed domain name by offering illegal downloads of copyrighted material.
Thirdly, Complainant contends that Respondent’s bad faith is further evidenced by the Respondent’s use of the domain name to distribute malware to Internet users. Such use is evidence of bad faith. See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). The Panel notes that Complainant has supplied a screen shot of the <hacktwitter.net> resolving webpage that directs to an unsafe website warning after Internet users attempt to download a hacking service. See Compl. at Attached Ex. G. As such, the Panel concludes that Respondent’s distribution of malware constitutes bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TWITTER mark. Complainant argues that its fame, coupled with Respondent’s purported offering of services to hack Complainant’s business specifically indicates that Respondent had actual knowledge of Complainant’s mark and rights. The Panel finds that Respondent had actual knowledge of Complainant’s mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TWITTER mark and in view of its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hacktwitter.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 30, 2017
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