National Arbitration Forum

 

DECISION

 

The ERGO Baby Carrier, Inc. v. Redacted

Claim Number: FA1008001341231

 

PARTIES

Complainant is The ERGO Baby Carrier, Inc. (“Complainant”), represented by Stevan Lieberman, of Greenberg & Lieberman, LLC, Washington D.C., USA.  Respondent’s name and other details have been redacted from the decision for reasons which follow.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ergo-babycarrier.net>, <ergobabycarrier-shop.info>, <ergo-baby-carrier.info>, <ergo-babycarrier.biz>, <ergobaby4u.info>, and <ergobaby-carrier.info>, registered with Godaddy.com Inc. (R171-Lrms).

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2010.

 

On August 18, 2010, Godaddy.com Inc. (R171-Lrms) confirmed by e-mail to the National Arbitration Forum that the <ergo-babycarrier.net>, <ergobabycarrier-shop.info>, <ergo-baby-carrier.info>, <ergo-babycarrier.biz>, <ergobaby4u.info>, and <ergobaby-carrier.info> domain names are registered with Godaddy.com Inc. (R171-Lrms) and that the Respondent is the current registrant of the names.  Godaddy.com Inc. (R171-Lrms) has verified that Respondent is bound by the Godaddy.com Inc. (R171-Lrms) registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2010 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@ergo-babycarrier.net, postmaster@ergobabycarrier-shop.info, postmaster@ergo-baby-carrier.info, postmaster@ergo-babycarrier.biz, postmaster@ergobaby4u.info, and postmaster@ergobaby-carrier.info by e-mail.  Also on August 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on September 13, 2010.

 

On September 30, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant alleges trademark rights in the words and phrases ERGO, ERGO BABY and THE ERGO BABY CARRIER and submits that the disputed domain names are at least confusingly similar to one or more of the trademarks. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and is using the disputed domain names in bad faith.

 

B. Respondent

 

Respondent claims identity theft and says it had no part in registration of the domain names, would transfer them if they were still unlocked and petitions the Panel to redact Respondent’s name from this decision.

 

Response reads in part:

 

“… I am not seeking to retain the disputed domain names that were sent to me by the National Arbitration Forum. I first became aware of suspicious activity of my name on 7/8/10 when a representative from GoDaddy.com called to confirm domain registrations made in my name but to someone else’s credit card billing information.”

 

Upon receipt of Complaint, Respondent contacted Complainant’s representative indicating that it did not own any domain names and had not authorized anyone to register any domain names on its behalf.

 

FINDINGS

The findings of fact relevant to the decision in this case are as follows:

 

1.      There is no evidence before the Panel that Respondent is either a domainer or a cybersquatter

 

2.      Respondent alleges that in a telephone conversation with Complainant’s representative it was conceded by that representative that Respondent may have been a victim of identity theft.

 

3.      Complainant’s representative does not later contradict that assertion by Respondent.

 

4.      The actual identity of the third party who caused the domain names to be registered is unknown and is undiscoverable by reasonable means.

 

DISCUSSION

This case requires the Panel to consider three preliminary issues:

(i)                  Multiple respondents

(ii)                Consent-to-transfer

(iii)               Redaction of Respondent’s Identity

 

Preliminary Issue: Multiple respondents

 

Paragraph 1 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) defines the respondent in UDRP proceedings as “the holder of a domain-name registration against which a complaint is initiated”.  Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Finally, National Arbitration Forum’s Supplemental Rule 4(f) states that “any arguments alleging Respondent aliases must be included in the Complaint for Panel consideration. (i) All Complaints alleging multiple aliases will be subject to an increased filing fee (see Supp. Rule 17 (a)(i)).

(ii) If the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel; no portion of the filing fee will be refunded.”

 

In this case, Complainant originally nominated an individual respondent resident in the United States.  The Complaint then noted that “some of the domain names are under privacy and do not have the same WHOIS as the other domains”.  The Forum required amendment of the Complaint and so it was re-filed nominating both that same original person and a second individual, also resident in the United States, as respondents.  Complainant paid the appropriate fee and made Supplemental Rule 4(f) submissions, alleging that the domain names are effectively controlled by the same person and/or entity, which is operating under several aliases.  In more detail, Complainant contends that all of the disputed domain names use the same DNS that is supported by Special Domain Services, Inc.  Complainant claims that the websites resolving from the disputed domain names all contain images taken from Complainant’s actual website.  Complainant argues that the websites resolving from the domain names all feature the same payment portal.  Complainant avers that the disputed domain names were registered on either July 5, 2010 or July 19, 2010 and with the same registrar.  Complainant alleges that the WHOIS information contains the same contact e-mail address, clearboon@gmail.com, for all of the domain names.  Moreover, Complainant provides some material which might suggest that the initially named respondent is either a fictitious person or an actual person whose identity has been assumed unknowingly.  It was the second named co-respondent who reacted to the Complaint. 

 

The practical and procedural difficulties which arise under the UDRP from fictitious name registrations are long known.  The particular hurdles which face both parties to UDRP proceedings when an actual person’s name is wrongly assumed have also been well considered in formative decisions under the Policy.[i]  Having regard to earlier decisions, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names were registered and are controlled by the same unknown third party.

 

Preliminary Issue: Consent to Transfer

 

An issue arises as to whether the Panel should decide this case under the UDRP given that Respondent has expressed a desire to resolve the dispute by transferring the disputed domain names to Complainant.

 

Nevertheless, Respondent is not the registrant for all domain names and so cannot consent to transfer what it does not own.  Moreover, since Panel has decided that the domain names are all controlled by an unknown rogue third party, it makes little sense to treat this as a consent-to-transfer case, or to require Complainant to commence separate proceedings against the other registrant.  Therefore, the Panel decides to analyze the case under the elements of the UDRP.

 

Preliminary Issue: Redaction of Respondent’s Identity

 

Respondent contends that it has been the victim of identity theft.  Respondent asserts that it did not register the disputed domain names.  Respondent alleges that it was contacted by the registrar, GoDaddy.com, and informed that domain names were registered in Respondent’s name, but with someone else’s credit card information.  Respondent alleges that Complainant’s representative accepted Respondent’s bona fides.  There is nothing later from Complainant to contradict that allegation.  Panel accepts Respondent’s account and in the circumstances is prepared to use the power given to it under Policy ¶ 4(j) to redact Respondent’s name and other details from this decision.

 

Primary Issues

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Policy ¶ 4(a) requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

It is noted that Respondent makes no contentions with regards to Policy ¶ 4(a)(i) – (iii) however Panel must still determine whether Complaint makes a prima facie case with respect to all three elements.

 

Identical or Confusingly Similar

 

Policy ¶ 4(a)(i) requires a two-fold enquiry.  First, a threshold investigation of whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the domain name are identical or confusingly similar.

 

Complainant has rights in the trademark THE ERGO BABY CARRIER by virtue of its various trademark registrations.[ii]  The remaining enquiry is whether the domain names are identical or confusingly similar to the trademark.  In making that comparison it is broadly accepted that gTLDs and ccTLDs can be disregarded as inconsequential.[iii]  Panel decides that each of the disputed domain names is confusingly similar to Complainant’s trade mark.  Each domain name takes the distinctive part of the trademark and is confusingly similar in overall appearance to the trademark.

 

Accordingly, Panel finds that Complainant has established the first element under the Policy.

 

Rights and Legitimate Interests

 

Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain name.  Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests.[iv] 

 

The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain names.  There is no evidence that Respondent has any trademark rights.  Complainant has stated there to be no relationship between it and Respondent. The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.  Moreover, Respondent admits that it has no rights or interests in the domain names.

 

Panel finds that Complainant has established the second limb under the Policy.

 

Registration and Use in Bad Faith

 

In this case the Panel cannot see any evidence which would justify ascribing bad faith intentions to Respondent.  On the contrary, Respondent appears to be an innocent victim of identity theft.  A problem then arises in terms of the per se examples of bad faith listed in Policy ¶ 4(b)(i)-(iv) since each depends on the Respondent’s bad faith actions or intentions.  It would be an ugly distortion to saddle Respondent [albeit un-named in this decision] with the actions or intentions of the unknown opportunist simply to shoe-horn the decision into one or more of the scenarios described in Policy ¶ 4(b).  However, it is to be observed that Policy ¶ 4(a)(iii) does not use the word “Respondent” and merely requires that the domain names were registered and used in bad faith.  That must certainly be so here.  It is alleged that the websites corresponding with the disputed domain names all offer unlicensed baby products carrying Complainant’s trademarks.  There is evidence that those sites perpetrate the fraud by copying material from Complainant’s website.  It can also be said that the fabricated WHOIS information is evidence of registration and use of the domain names in bad faith.

 

Viewing the evidence in its entirety, Panel finds that the disputed domain names were registered and used in issue in bad faith and that element (iii) of the Policy has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ergo-babycarrier.net>, <ergobabycarrier-shop.info>, <ergo-baby-carrier.info>, <ergo-babycarrier.biz>, <ergobaby4u.info>, and <ergobaby-carrier.info> domain names be TRANSFERRED to Complainant.

 

 

Debrett G. Lyons, Panelist
Dated: October 7, 2010

 

 

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[i] Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005); Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).

 

[ii] The Policy does not distinguish between registered and unregistered trademark rights (see McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)), however a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy. See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003).  Complainant has trademark registrations for THE ERGO BABY CARRIER with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,994,269 issued September 13, 2005), World Intellectual Property Office (“WIPO”) (Reg. No. 980,705 issued May 6, 2008), European Union Office of Harmonization for the Internal Mark (“OHIM”) (e.g., Reg. No. 6,047,278 issued April 15, 2008).

 

[iii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.).

 

[iv] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 23, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).