The Complainant is Jay Leno, New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is St. Kitts Registry, Domain Names Administration, Saint Kitts and Nevis.
The disputed domain name <jaylenoshow.com> is registered with Moniker Online Services, LLC.
The Complaint (naming as Respondent “Moniker Privacy Services and Registrant 6999”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2009. On May 4, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On May 7, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint (naming as Respondent “St. Kitts Registry, Domain Names Administration”) on May 14, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2009.
The Center appointed Alan L. Limbury as the sole panelist in this matter on June 16, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On June 30, 2009, due to exceptional circumstances, the Panel extended the due date for its decision to be forwarded to the Center until July 4, 2009.
The Complainant is an Emmy Award-winning American stand-up comedian, television host and writer, who succeeded Johnny Carson as host of The Tonight Show in 1992, having first appeared as a guest on that show in 1977.
The disputed domain name was registered on February 16, 2006. It leads to a homepage containing only a “welcome” message and “Related Searches” including Jay Leno Online, Jay Leno Ticket, Tonight Show with Jay Leno, NBC, Television and Jay Z Concert Ticket.
The Complainant claims common law rights in the name and mark JAY LENO and says the domain name is identical and confusingly similar to that famous mark and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says his mark is famous and distinctive; that the Respondent cannot demonstrate any right or legitimate interest in the domain name; that there is no relationship between the parties, nor any permission granted by the Complainant to the Respondent to use that mark and that the Respondent is profiting from the web traffic generated by the Complainant's famous mark.
As to bad faith, the Complainant says the Respondent has obviously targeted the Complainant given the notoriety of the Complainant's name and mark and could only have registered the domain name to capitalize on the Complainant's goodwill. The diversion of web traffic to a linking portal for profit is use in bad faith. The Complainant says the Respondent is a known cybersquatter with a pattern of registering domain names based on the names and marks of third parties. The Respondent has used the names St. Kitts Registry and Hong Kong Names LLC to register domain names. Here the Respondent's email address, appearing in the Whois database, is hknames@gmail.com. The Respondent's bad faith registration is further evidenced by the fact that the Respondent wholly failed to identify itself, choosing instead to conceal its address and contact information by using an identity protection service in connection with the domain name.
The Respondent did not reply to the Complainant's contentions.
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 the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Respondent having failed to file a Response, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.
Procedural issue: determining the identity of the Respondent where a privacy service is used.
The possibility that a domain name might be registered in the name of a proxy was not contemplated when the UDRP was drafted. Indeed early cases regarded the register as sacrosanct:
“The register maintained by an ICANN registrar must provide accurate information as to the identity of domain registrants. The human person or other legal entity shown as the registrant must be assumed to be such by third parties seeking to ascertain a registrant's identity by such means as a Whois search. There is no place for the registration of bare trustees or agents for unnamed beneficiaries, principals or would-be purchasers. In that respect, a domain name register is like the register for land and shipping under the Torrens system found in many common law jurisdictions. In other words, the register is everything: no unregistered interests can prevail against the interests of bona fide third parties relying on information available on the register for all the world to see”: Univ. of Md. Univ. College v. Nucom Domain Brokers & Urban Music Underground Club, WIPO Case No. D2002-0081. See also Gloria-Werke H. Schulte-Frankenfeld GmbH & Co. v. Internet Dev. Corp. & MacKenzie, WIPO Case No. D2002-0056 and Rug Doctor L.P. v. Bourdage, WIPO Case No. DTV2003-0002.
“… the integrity and effectiveness of the Policy, and of its dispute resolution mechanism, depend on registrants providing honest, complete, and accurate contact information. Failure to do so constitutes bad faith registration and use”: Dell Computer Corporation v. Clinical Evaluations WIPO Case No. D2002-0423.
The advent of privacy services has led to difficulties for filing parties, Providers and panelists, and to calls for guidance from ICANN: see for example Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886; Baylor University v. Domains by Proxy, Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III., NAF Claim No. 1145651; Karsten Manufacturing Corp. v. Pingify Networks Inc., NAF Claim No. 1232823; The American Automobile Association, Inc. v. Domains By Proxy, Inc. by itself and as proxy for its customers, NAF Claim No. 1226461; Covanta Energy Corporation v. Moniker Privacy Services and Gregory Ricks, WIPO Case No. D2007-0182; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 (containing a comprehensive review of the issues); Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1675; Aluship Technology SP. ZO.O v. Belize Domain WHOIS Service, WIPO Case No. D2009-0028 and Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
The benefits of privacy are not in question. The method by which privacy is secured, however, does not sit easily within the Policy and the Rules.
Typically the customer enters into the usual form of Registration Agreement with the Registrar and then into a proxy agreement with the privacy service, often an affiliate of the Registrar. The domain name is registered in the name of the privacy service on terms enabling the customer to have control of the domain name but also enabling the privacy service to reveal the identity of the customer in the event of a complaint under the Policy. Once a complaint is filed, the Registrar usually allows a change of name of the registrant in the Whois database to reveal the name of the customer. It is this action that gives rise to most of the problems.
The practice of privacy services differs when a complaint arises:
“Some privacy services unmask (or disclose) the customer (“underlying registrant”) on receipt of a warning letter from a complainant, thereby enabling the complainant to address a complaint to the underlying registrant. Some privacy services only unmask the underlying registrant following receipt of a complaint, or receipt of the Center's request for registrar verification, thereby leading to a situation such as this one where the Center provides the registrar-confirmed registrant information to the complainant and invites an amendment to the complaint. Others, it appears, decline to unmask the underlying registrant at all”: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
Frequently the complainant amends without objection in response to the Provider's invitation and the panelist proceeds to determine the complaint without the need to consider the following difficult questions (adapted from those set out in the recent comprehensive review of relevant decisions in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320):
(a) Who is the proper respondent? The privacy service named as registrant on the Registrar's Whois database at the date of filing of the complaint or the privacy service's customer identified by the Registrar in response to the Provider's verification request?
(b) When the Registrar is asked for verification, what information should the Registrar verify? The registration details at the date of the filing of the complaint? At the time of the request for verification? Both?
(c) If the customer is the proper respondent, is it necessary for the complainant to file an amended complaint naming the customer?
(d) Is the change of name of registrant a transfer during a pending proceeding within the meaning of paragraph 8(a) of the Policy? If so, what is the significance of that breach in the context of a proceeding under the Policy?
Not surprisingly, learned panelists have differed in their answers to these questions, especially where the complainant does not “go quietly” by amending the complaint without protest.
One approach is to treat the customer as the respondent, recognising that the overriding intention of the Policy is to provide a practical alternative to court proceedings to combat abusive domain name registrations and that investing a proxy service company with either good faith or bad faith intentions is a “manifest fiction”. According to this “pragmatic” approach:
“…if the identity of the beneficial owner of the domain name is known, can be readily identified, or is revealed by a registrar in response to a complaint, then it should be the named respondent and the case under the Policy should be made against that party”: Karsten Manufacturing Corp. v. Pingify Networks Inc., NAF Claim No. 1232823.
It may be noted that a finding of bad faith registration has been made against a privacy service where domain names incorporating the complainant's trademark continued to be registered by the privacy service after having been put on notice of the complainant's rights: Baylor University v. Domains by Proxy, Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III., NAF Claim No. 1145651.
Another approach is to treat the privacy service as the respondent, since the Rules, paragraph 1, define the respondent as “the holder of a domain name registration against which a complaint is initiated” i.e., the privacy service. Those holding this view (of whom I am one) consider that references to the customer as the “true” or “underlying registrant” or “beneficial owner” gloss over the fact, as discussed below, that the change of name of the registrant after the filing of the complaint is a transfer to another domain name holder in breach of paragraph 8(a) of the Policy:
“The prohibition against transfer during the UDRP proceeding was aimed at preventing cyberflying and did not anticipate the advent of privacy services. Notwithstanding the ‘pragmatic view,' until the Policy and the Rules are changed, the current Policy and Rules must be interpreted in accordance with the natural and ordinary meaning of their provisions”: The American Automobile Association, Inc. v. Domains By Proxy, Inc. by itself and as proxy for its customers, NAF Claim No. 1226461.
A third approach is to treat both the privacy service and the customer (viewed as the “underlying registrant”) as respondents:
“As will be apparent from the Panel's definition of the privacy service's customer as the “underlying registrant”, the Panel would prefer, as a general rule, to treat a privacy service's “unmasking” of a registrant not as a transfer, but simply the lifting of a veil. This would have the benefit of recognising the practical reality that (a) the use of privacy services appears to be lawful and with us to stay and (b) there seems to be little likelihood of any official, authoritative clarification that paragraph 8(a) of the Policy constitutes a bar on post-complaint transfers of this kind. Retaining the privacy service as a respondent obviates potential problems over the Mutual Jurisdiction clause”: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
Obstacles to the interpretation of the policy, paragraph 8(a) as permitting post-complaint transfers from a proxy service to its customer are the meaning of “pending” in that paragraph, and the different legal personalities of the proxy service and its customer.
As to the meaning of “pending”, paragraph 8(a) provides that a registrant may not transfer a domain name to another holder during a “pending” administrative proceeding. A proceeding is initiated by the filing of a complaint with a Provider: Rules, paragraph 3(a) and Policy, paragraph 4(a). The Provider must review the complaint for administrative compliance and, if it is compliant and the fees are paid, forward it to the respondent: Rules, paragraph 4.
The date of “commencement” is the date on which the Provider completes its responsibilities in connection with forwarding the complaint to the respondent: Rules, paragraph 4. Thus some time must necessarily elapse between the initiation of the complaint and its commencement. Any delay in a Registrar providing Registrar verification to the Provider adds to this time. For examples of significant delay and other problems, see Western Union Holdings, Inc v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1675 and Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080, especially section 7, “Matters to be referred to the attention of ICANN”.
Meantime, a copy of the complaint will have been sent to the respondent by the complainant in compliance with the Rules, paragraph 3(b)(xii). If the domain name is not locked immediately, the delay can afford a quick-witted respondent an opportunity to engage in “cyberflying”, namely seeking to thwart the proceeding by transferring the domain name to another holder before the formal commencement: British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683.
It was in the context of cyberflying that panelists were first called upon to consider whether an administrative proceeding could be said to be “pending” even if it had not been “commenced”. The answer was provided in 2003:
“It is noted that Paragraph 8 of the Rules refers to a transfer “during a pending administrative proceeding”. The Oxford Paperback Dictionary (Oxford University Press 1983) defines “pending” when used as an adjective as “1. waiting to be decided or settled. 2. about to come into existence”. Hence the expression “during a pending administrative proceeding” can mean both (1) the period while waiting for the Panel to make a decision, which is the period after formal commencement of a proceeding but before the Panel has made its' decision, and (2) the period when the proceeding is about to formally come into existence, which includes the period after first filing of a complaint but before the proceeding has formally commenced.
An administrative proceeding can thus be “pending” as soon as the complainant files the complaint and not necessarily only after the “commencement of the administrative proceeding” within the meaning of Paragraph 4(c) of the Rules”: L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585.
Clearly, the change in the name of the registrant from that of the privacy service to that of its customer by means of a change to the Whois database is generally not done to thwart the proceeding and does not generally constitute cyberflying. However that word does not appear in the Policy, which simply prohibits transfers to another registrant, irrespective of intent, during a pending proceeding.
As to the different legal personalities of the privacy/proxy service and its customer, typically, as has been mentioned, the domain name is registered in the name of the privacy or proxy service. A complainant is entitled to name the privacy or proxy service as the respondent when filing the complaint and may not be required subsequently to amend its complaint since this does not of itself amount to an administrative deficiency: (although a complainant may on invitation from the Provider choose to do so) Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
In this Panel's view, it follows that the “revelation”, by means of a change to the Registrar's Whois database, of the identity of the customer in these circumstances, following the filing of a complaint, may well amount to a transfer to a different registrant in violation of the Policy, paragraph 8(a).
It is respectfully suggested that many of the problems associated with identifying the proper respondent for the purposes of an administrative proceeding under the Policy where a privacy service has been used would disappear if the domain name were to be registered in the first place in a name such as “[name of privacy service] customer No. [xxxx]”(emphasis added).
Some possible advantages and consequences of this approach include:
(a) the designation would clearly convey that the registrant is the customer, not the privacy service. Accordingly no question of making the privacy service per se the respondent would arise;
(b) complainants would usually have to bring separate complaints against each customer, if it could not be found for example that the “customers” were in actual fact the same registrant for the purpose of paragraph 3(c) of the Rules (and were not for instance merely using the service to defeat what may otherwise be a reasonable cause for consolidation of a number of domain names in a single complaint). This would avoid the situation that arose in Baylor University v. Domains by Proxy, Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III., NAF Claim No. 1145651 and The American Automobile Association, Inc. v. Domains By Proxy, Inc. by itself and as proxy for its customers, NAF Claim No. 1226461;
(c) there would be no need for the privacy or proxy service to change the name of the registrant following the filing of the complaint. Even if there were such a change in the Whois, the “unmasking” of the true identity of the customer could not amount to a transfer in breach of the Policy, paragraph 8(a) since the customer would remain the registrant;
(d) the customer could be given the choice whether to reveal its true identity, a move that could be useful if reliance is to be placed on the Policy, paragraph 4(c)(ii); and
(e) such a designation would afford the customer the opportunity, at registration, of naming their genuine location as a potentially applicable Mutual Jurisdiction, instead of having to accept either that of the Registrar or that of the privacy service: See F. Hoffmann-La Roche AG v. PrivacyProtect.org, Contact Id 1328832, Alexey Dronin, WIPO Case No. D2008-0417.
Turning to the Complaint presently under consideration, at the time of the filing of the Complaint with the Center, the registrant as shown in the Registrar's Whois database was:
“Registrant [6999]:
Domain, Administration domainprivacyservice@gmail.com
Moniker Privacy Services”, with a Florida address.
The Panel interprets this to mean that the registrant of the domain name at the time of the filing of the Complaint (and accordingly the Respondent, as defined in the Rules, paragraph 1) was a customer of the privacy service, namely “Registrant [6999]”, not the privacy service itself. The Complaint when filed named both Moniker Privacy Services and Registrant 6999 as “Respondents”, thus acknowledging the distinction between the two. It follows that the privacy service could be regarded as inappropriately named as a respondent in the Complaint when filed. An alternative course would have been to name the Respondent as “ Moniker Privacy Services Registrant [6999]” omitting the “and”).
In responding to the Center's request for verification on May 7, 2009, the Registrar identified the registrant as:
“Registrant [460461]:
Domain Names, Administration hknames@gmail.com
St Kitts Registry”, with a St. Kitts and Nevis address.
The Registrar's Whois database annexed to the amended Complaint confirms this information and reveals that the database was updated on May 5, 2009, ie. five days after the filing of the Complaint (a copy of which was forwarded by the Complainant to the Registrar at the same time as the filing, in accordance with the Supplemental Rules) and three days after the Center's verification request.
The change in the number of the registrant from [6999] to [460461] gives rise to the suspicion that there may have been a change in registrant after the filing of the Complaint, in which case, as explained above, this would have amounted to a prohibited transfer pursuant to the Policy, paragraph 8(a). It is unnecessary to determine this point however, because the Complainant acceded to the Center's invitation to amend the Complaint and named St. Kitts Registry, Domain Name Administration as the Respondent. The Panel will therefore proceed on the basis of that registrant being the Respondent. The caption of this case reflects this approach.
The Complainant has provided substantial evidence which establishes, to the Panel's satisfaction, that through extensive use since the 1970s, he has acquired common law trademark rights in his name JAY LENO in the field of entertainment, especially television shows, and that the mark is famous. Since the domain name wholly incorporates the mark, with the addition of the descriptive term “show”, a term with which the Complainant and his mark are professionally associated and which accordingly does nothing to distinguish the domain name from the mark, the Panel finds the domain name to be confusingly similar to the mark.
The Complainant has established this element.
The Complainant's assertions suffice to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in the domain name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
In the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, for the reasons given by the Complainant.
The Complainant has established this element.
It is clear from the website content that the Respondent is fully aware of the Complainant. The Panel infers the Respondent was so aware at the time of the registration of the disputed domain name and intended, in registering the domain name, to target the Complainant and his famous mark.
The sponsored links available at the Respondent's website are of the kind from which it may be expected that the Respondent makes commercial gain. Accordingly, in the absence of a Response, the Panel finds that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the affiliation of the Respondent's web site.
Under the Policy, paragraph 4(b)(iv), this finding is evidence of both bad faith registration and bad faith use. Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The Panel further accepts the Complainant's submission that the Respondent is the same entity as Hong Kong Domain Names LLC, since both have the same email address, namely hknames@gmail.com. The Respondent has been found to have registered and used domain names in bad faith by numerous UDRP panels, involving such famous marks as Volvo, Marriott, Villaroy and Boch and Reebok. See Ameriprise Financial, Inc. v. St. Kitts Registry, NAF Claim No. FA843469; Volvo Trading Holding AB v. Hong Kong Names LLC, WIPO Case No. D2008-0735; Marriott International, Inc. v. Hong Kong Names LLC, NAF Claim No. FA803966; Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC, WIPO Case No. D2008-1300; Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC, WIPO Case No. D2008-0359; and Mobile Mini, Inc. v. Hong Kong Names LLC, NAF Claim No. FA715047. As here, in none of those cases did the Respondent file a Response.
Accordingly the Panel finds that the Respondent has engaged in a pattern of registering and using domain names based on third party trademarks for profit through click-through revenue schemes. This is not the first time that such a finding has been made against the Respondent. See Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC, WIPO Case No. D2008-0359.
Although mere use of an identity protection service does not, standing alone, demonstrate bad faith, since such services have come to be accepted nowadays as capable of serving legitimate interests of privacy and spam protection (see Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861), here the concealment of the Respondent's identity and contact information, when coupled with the Respondent's exploitation of Complainant's mark for commercial gain, does constitute further evidence, if such be needed, of bad faith registration and use. See Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC, WIPO Case No. D2008-1300 and Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
The Complainant has established this element.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <jaylenoshow.com> be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Dated: July 1, 2009