Quality Nonsense Limited v. John Beckner
Claim Number: FA1510001644436
Complainant is Quality Nonsense Limited (“Complainant”), represented by Richard Barnett of Hansel Henson Limited, United Kingdom. Respondent is John Beckner (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whois-hosting-this.com>, registered with TLD Registrar Solutions Ltd.
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 October 29, 2015; the Forum received payment on October 29, 2015.
On October 30, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <whois-hosting-this.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 November 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@whois-hosting-this.com. Also on November 2, 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 November 30, 2015, 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
Policy ¶ 4(a)(i)
Complainant has common law rights in the WHOISHOSTINGTHIS mark dating back to June 19, 2007. Respondent’s <whois-hosting-this.com> domain name is confusingly similar to the WHOISHOSTINGTHIS mark because it contains the mark, altered by only hyphens and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <whois-hosting-this.com> domain name. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving webpage is used to host a “reverse proxy” of Complainant’s website, constituting an attempt to pass itself off as Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <whois-hosting-this.com> domain name in bad faith because the resolving webpage contains a “reverse proxy” of Complainant’s website in an attempt to pass off as Complainant for commercial gain. Respondent registered the <whois-hosting-this.com> domain name in bad faith because it had actual knowledge of Complainant’s rights in the WHOISHOSTINGTHIS mark, as evidenced by Respondent’s use of the website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United Kingdom company engaged in the provision of hosting services, online tools and “whois” search facilities and the provision of guides and resources for webmasters, teachers, professionals, researchers and a general audience,
2. Complainant has established common law trademark rights to the WHOISHOSTINGTHIS mark.
3. Respondent registered the <whois-hosting-this.com> domain name on August 27, 2015.
4. The disputed domain name is used to host a “reverse proxy” of Complainant’s website, constituting an attempt to pass Respondent off as Complainant.
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(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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. While Complainant submits that it has filed for a registration of the WHOISHOSTINGTHIS mark with the United States Patent and Trademark Office, it rightly admits to not having any current registrations of the mark. However, past panels have found that Policy ¶ 4(a)(i) does not require registration if a Complainant can demonstrate having common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant submits that it has common law rights in the WHOISHOSTINGTHIS mark dating back to June 19, 2007 and presewnts a strong case to that effect. In order to have common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning can include length of use of the mark, media recognition, and ownership of a domain name identical to the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“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 also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark). Complainant has provided good evidence of operating a website at the <whoishostingthis.com> domain since 2007, in Annex 1; evidence of web traffic for the site, in Annex 2; and media coverage of Complainant’s use of the mark, in Annex 3. As the Panel finds that Complainant’s evidence is sufficient to establish secondary meaning, the Panel finds that Complainant has common law rights in the WHOISHOSTINGTHIS mark under Policy ¶ 4(a)(i) and that those rights were established since June 19, 2007, which was, of course, prior to the registration of
the disputed domain name.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WHOISHOSTINGTHIS mark. Complainant submits that Respondent’s <whois-hosting-this.com> domain name is confusingly similar to Complainant’s WHOISHOSTINGTHIS mark because it contains the mark, altered by only hyphens and the gTLD “.com.” Past panels have found that changes related to gTLDs and hyphens are irrelevant to considerations under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <whois-hosting-this.com> domain name is confusingly similar to Complainant’s WHOISHOSTINGTHIS mark pursuant to Policy ¶ 4(a)(i).
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 (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.”).
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
WHOISHOSTINGTHIS trademark and to use it in its domain name;
(b) Respondent uses the disputed domain name to host a “reverse proxy” of Complainant’s website, constituting an attempt to pass Respondent off as Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the <whois-hosting-this.com> domain name because Complainant has not authorized it to use the WHOISHOSTINGTHIS mark. The Panel notes that the WHOIS information lists “John Beckner” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found under similar circumstances that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <whois-hosting-this.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant alleges that Respondent fails to use the <whois-hosting-this.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to host a “reverse proxy” of Complainant’s website, constituting an attempt to pass itself off as Complainant. Complainant has provided, in Annex 4, evidence of this use through comparative screenshots, as well as through a video linked on page 5 of the Complaint (https://youtu.be/wMrgvI_FG08). Past panels have found that the use of a disputed domain name by a respondent to pass itself off as a complainant shows a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). As the Panel finds Complainant’s evidence shows conclusively that Respondent has attempted to pass itself off as Complainant through a “reverse proxy”, the Panel finds Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, 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, Complainant submits that Respondent uses the <whois-hosting-this.com> domain name in bad faith because the resolving webpage contains a “reverse proxy” of Complainant’s website in order to attempt to pass off as Complainant, disrupting Complainant’s business, presumably for commercial gain. Complainant has provided, in Annex 4, evidence of this use through comparative screenshots, as well as through the video link already noted. Past panels have found that hosting websites designed to imitate the appearance of a complainant’s website constitutes bad faith use pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). As the Panel finds such behavior by Respondent has occurred here, the Panel finds that Respondent uses the <whois-hosting-this.com> domain in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant alleges that Respondent registered the <whois-hosting-this.com> domain name with actual knowledge of Complainant’s rights in the WHOISHOSTINGTHIS mark. Complainant contends that’s Respondent’s use of the website makes it indisputable that Respondent was aware of Complainant’s rights, because the “reverse proxy” described above must have been intentionally made to target Complainant’s website. The Panel agrees with that submission. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). As the Panel finds that Respondent had actual knowledge of Complainant’s rights in the WHOISHOSTINGTHIS mark at the time of registration, the Panel finds that Respondent registered the <whois-hosting-this.com> domain in bad faith under Policy ¶ 4(a)(iii).
Thirdly, 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 WHOISHOSTINGTHIS mark and its use of the domain name since 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 <whois-hosting-this.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 1, 2015
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