national arbitration forum
DECISION
Namecheap, Inc. v. eName
Technology Co., Ltd.
Claim Number: FA1306001505106
PARTIES
The
Gaining Registrar is Namecheap, Inc. (“Gaining
Registrar”), represented by Liz Wang
of Rome & Associates, A.P.C.,
California, USA. The Registrar of Record
is eName Technology Co., Ltd. (“Registrar
of Record”), China.
DISPUTED
DOMAIN NAMES
eName
Technology Co., Ltd. is the Registrar of Record for the following disputed
domain names: <namechea.com>, <naecheap.com>, <namehceap.com>, <nameceap.com>, <nmecheap.com>, <mamecheap.com>, and <namecehap.com>.
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.
The
Honorable Karl V. Fink as Panelist.
PROCEDURAL HISTORY
The
Gaining Registrar submitted a Request for Enforcement pursuant to the Registrar
Transfer Dispute Resolution Policy (“the Policy”) to the National Arbitration
Forum electronically on June 14, 2013; the National Arbitration Forum accepted
the Request for Enforcement on June 19, 2013.
On June
19, 2013, the Forum served the Request for Enforcement and all Annexes,
including a Written Notice of the Request for Enforcement, setting a deadline
of June 26, 2013 by which the Registrar of Record could file a Response to the Request
for Enforcement, via e-mail to all entities and persons listed on Registrar of
Record’s registration as technical, administrative, and billing contacts, and
to postmaster@namechea.com, postmaster@naecheap.com, postmaster@namehceap.com,
postmaster@nameceap.com, postmaster@nmecheap.com, postmaster@mamecheap.com,
postmaster@namecehap.com. Also on June
19, 2013, the Written Notice of the Request for Enforcement, notifying the
Registrar of Record of the e-mail addresses served and the deadline for a Response
was transmitted to the Registrar of Record via post and fax, to all entities
and persons listed on the Registrar of Record’s registration as technical,
administrative and billing contacts.
A
timely Response to the Request for Enforcement was received and determined to
be complete on June 26, 2013.
Gaining
Registrar submitted an Additional Submission, which was received and determined
to be complete on July 2, 2013.
All submissions
were considered by the Panel.
On
June 26, 2013, pursuant to the Gaining Registrar’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Karl V. Fink as Panelist.
On
July 1, 2013, the Panel issued an Order for Additional Submissions requesting
information from the Registry Operator, Verisign.
On
July 3, 2013, Verisign emailed a response to the July 1, 2013 Order.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under the Forum’s Registrar Transfer Dispute Resolution Supplemental
Rules (the "Supplemental Rules") through submission of Electronic and
Written Notices.
RELIEF SOUGHT
The
Gaining Registrar requests that the domain names be transferred from the
Registrar of Record to the Gaining Registrar.
PARTIES'
CONTENTIONS
A. Gaining
Registrar
The
Gaining Registrar obtained a judgment under the United States Anti-Cybersquatting
Protection Act (“ACPA”). In United States District Court in January 2013,
granting it transfer of all of the disputed domain names under the ACPA.
Gaining
Registrar provided notice to the registry of record, VeriSign, on January 28,
2013, requesting VeriSign to comply with the Court Order. On February 5, 2013,
the Registrar of Record e-mailed Gaining Registrar saying that it would
“investigate” this matter, but told Gaining Registrar that VeriSign or ICANN
were the appropriate parties to execute a registrar transfer. Gaining Registrar
sent several messages requesting further assistance from VeriSign, all of which
went without a response. Gaining Registrar filed a Whois Data Problem Report
(“Report”) with ICANN on February 25, 2013, requesting assistance in obtaining
updated WHOIS information for these disputed domain names. ICANN replied
stating that the Report was invalid and that the case was now to be closed.
Gaining Registrar made an InterNIC request on March 5, 2013, and ICANN replied
that it could not intervene in such a matter.
Gaining
Registrar has exhausted all avenues. The Court Order indicates that the
Registrar of Record, ICANN, and VeriSign should work as necessary to guarantee
the enforcement of the judgment. However, Gaining Registrar is unable to
collect on its judgment. There is no longer any dispute as to these domain
names, so there is no question for a Uniform Domain Name Resolution Policy
(“UDRP”) proceeding. Gaining Registrar merely requests the Panel to enforce
Gaining Registrar’s judgment by transferring these domain names from Registrar
of Record to Gaining Registrar.
B. Registrar
of Record
The
Registrar of Record states that it has provided a free public WHOIS service
that provides the registrant information for all of these domain names.
Respondent states that none of the registrant information is subject to a
privacy protection service.
The
Registrar of Record contends that it never received any documentation
concerning the status of these domain names beyond a January 18, 2013, e-mail
from Gaining Registrar’s counsel. The Registrar of Record was aware that the
“Rome & Associates, A.P.C.” law firm was not affiliated with VeriSign, the
operating registry service. The Registrar of Record contacted VeriSign to
inquire into the demand for domain name transfer, and VeriSign was unable to
confirm that it received any such court orders. The Registrar of Record never
received this alleged court order from the issuing U.S. District Court.
The
Registrar of Record was following UDRP Policy ¶ 3 in refusing to transfer these
domain names simply at the request of “Rome & Associates, A.P.C.” as this
business entity is not an approved Dispute Resolution Service Provider with
power to make such requests under the UDRP Policy. The Registrar of Record
never received any decision indicating that these domain names had in fact been
transferred.
For
these reasons, the Registrar of Record did not transfer any of the disputed
domain names.
C.
Additional Submission from Gaining Registrar
The
Registrar of Record concealed the identity of all of the disputed domain names
registrants until they participated in this proceeding. In its initial inquiry
into these domain names, Gaining Registrar could only find WHOIS information
that was devoid of a registrant name, or had masked identities. Registrar of
Record has now provided WHOIS information as recent as May and June 2013, while
Gaining Registrar’s most recent inquiry took place in January 2013.
Registrar
of Record claims that Gaining Registrar used the wrong address, yet the address
that Gaining Registrar used was that listed on the InterNIC network in October
2012 when the U.S. Federal Court action was ongoing. Registrar of Record is
essentially admitting that it violates its ICANN Registrar Accreditation
Agreement by failing to update its own contact information. It is more likely
that Registrar of Record is merely shifting its address information to create
the impression that it did not receive the court orders. In either case,
Registrar of Record had an obligation to receive and take note of these court
orders.
Registrar
of Record next cites UDRP provisions requiring that notice of a decision come
from the tribunal. First, this proceeding does not occur under UDRP rules.
Second, even if the UDRP did apply, the language of the UDRP does not mandate
that the tribunal “directly” send its orders to an affected party.
Registrar
of Record undermines its entire argument when it includes an e-mail to VeriSign
in which it solicits VeriSign for assistance in dealing with the court order.
Registrar of Record inadvertently makes it very clear that it is well aware of
the events of this dispute, including the court order.
FINDINGS
For
the reasons set forth below the Panel finds Gaining Registrar is not entitled
to the relief requested.
DISCUSSION
The
following are relevant definitions from the Policy:
1.4 FOA (Standardized Form of
Authorization (for domain name transfer))
Form
of Authorization – The standardized form of consent that the Gaining Registrar
and Registrar of Record are required to use to obtain authorization from the
Registrant or Administrative Contact in order to properly process the transfer
of domain name sponsorship from one Registrar to another.
1.5 Gaining Registrar
The
Registrar that submitted to the Registry the request for the transfer of a
domain sponsorship from the Registrar of Record.
1.6 Registrar of Record
The
Registrar of Record for a domain name for which the Registry received a
transfer of sponsorship request.
1.7 Registrant
The Registrant
is the individual or organization that registers a specific domain name. This
individual or organization holds the right to use that specific domain name for
a specific period of time, provided certain conditions are met and the
registration fees are paid. This person or organization is the “legal entity”
bound by the terms of the relevant service agreement with the Registry operator
for the TLD (Top Level Domain) in question.
Rule
13 of the Policy provides in part:
13) Panel Decisions
Panel
decisions will meet the requirements set forth, in the case of an initial
request for enforcement, in Paragraph 4.2.2 of the Policy. …
Rule
4.2.2 of the Policy provides in part:
(ii) If the Gaining Registrar is unable to
provide a complete FOA (Standardized Form of Authorization (for domain name
transfer)) with data matching that contained within the authoritative Whois
database at the time of the transfer request, then the Dispute Resolution Panel
shall find that the transfer should be reversed.
(v)
Resolution options for the Dispute Resolution Panel are limited to the
following:
a.
Approve Transfer
b.
Deny the Transfer (or ordering the domain name be returned to the Registrar of
Record in cases where a Transfer has already occurred)
Gaining Registrar attests
that it cannot obtain an FOA since the Registrar of Record refuses to respond
to, or cooperate with, Gaining Registrar. Gaining Registrar has provided
evidence that it obtained a judgment, on July 16, 2013 from the United States
District Court for the Central District of California. That judgment provides
in part:
Pursuant
to 15 U.S.C.§1125 (d)(1)(C) and 15 U.S.C.§1116 the Court ORDERS each of the
Defendants as well as any registrars, registries or domain name authorities,
including but not limited to Verisign and ICANN, to transfer each of the
Infringing Domains in their possession or control to Namecheap.
Although a transfer of the
Domains is ordered, the judgment does not transfer the names. The record in
this matter shows that Gaining Registrar is not the owner of the Domains and
the owners of the Domains have not requested a transfer of ownership and have
not requested a registrar transfer.
Gaining Registrar, Namecheap,
has provided evidence that it is the registered owner of the trademark NAMECHEAP.COM.
As such it had the right to file a UDRP Domain Name dispute seeking transfer or
cancellation of the Domain Names. Instead it filed the District Court case and
obtained a Default Judgment against the owners of the disputed domains. The
Registrar of Record is located in
DECISION
Because
Gaining Registrar is not able to provide a complete FOA as required by
paragraph 4.2.2 of the Policy it is not entitled to the relief requested and
the Panel concludes that relief shall be DENIED.
Accordingly,
it is ORDERED that the <namechea.com>, <naecheap.com>, <namehceap.com>, <nameceap.com>, <nmecheap.com>, <mamecheap.com>, and <namecehap.com> domain names REMAIN WITH Registrar of Record.
Hon. Karl V. Fink (Ret.),
Panelist
Dated: July 26, 2013