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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager

Case No. D2007-0062

 

1. The Parties

The Complainant is HSBC Finance Corporation, Minnetonka, Minnesota, United State of America, represented by Kelley Drye & Warren, LLP, Washington, DC, United States of America.

The Respondents are Clear Blue Sky Inc. c/o Domain Manager, Milwaukee, Wisconsin, United States of America, represented by John Berryhill, Media, Pennsylvania, United States of America; and Domain Manager, Milwaukee, Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <creditkeeper.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2007, naming Whois Privacy Protection Service, Inc.1 as the Respondent. On January 17, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 17, 2007, eNom transmitted by email to the Center its verification response, indicating that Domain Manager was listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant filed an amendment to the Complaint on January 26, 2007, naming Domain Manager2 as the Respondent. 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”), 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 January 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response February 19, 2007. On February 16, 2007, the Center received a letter transmitted by facsimile from the Washington, D.C. office of Greenberg & Lieberman, LLC, advising of their legal representation of Clear Blue Sky Inc., and stating that Clear Blue Sky Inc. was the current registrant of the disputed domain name.3 In apparent reliance on the Rules, Clear Blue Sky’s counsel urged that the Complaint should be dismissed or, in the alternative, corrected and re-submitted.

On February 20, 2007, the Center sought and obtained re-confirmation from eNom that Domain Manager was listed as the registrant of the disputed domain name. In response to further inquiries from Greenberg & Lieberman, the Center advised that in order for Clear Blue Sky to be added to the case as a co-respondent with Domain Manager, the Center would require confirmation from Domain Manager regarding the status of Clear Blue Sky with respect to the domain name registration. The Center advised that Domain Manager would have until February 27, 2007, to provide such confirmation.

On February 26, 2007, Domain Manager by email advised the Center that it was a privacy service and that Clear Blue Sky Inc. was the registrant of the disputed domain name. On February 27, 2007, the Center notified the Complainant that it would have the opportunity until March 9, 2007, to amend the Complaint, naming Clear Blue Sky and Domain Manager as co-Respondents, and directing that copies be dispatched to the co-Respondents. The co-Respondents were afforded ten days from the receipt of the amended Complaint to file Responses.

The Complainant submitted its Second Amended Complaint to the Center on March 8, 2007. The Center notified the parties on March 9, 2007. A Response was submitted to the Center on March 19, 2007 on behalf of the Respondent Clear Blue Sky. No formal response has been received from co-Respondent Domain Manager.

The Center appointed William R. Towns, Mark Partridge and Sir Ian Barker as panelists in this matter on April 27, 2007. Mr. Partridge became aware of a conflict of interest that was not apparent before his receipt of the printed materials, and recused himself from the proceeding. On May 14, 2007, the Center appointed Lawrence K. Nodine to replace Mr. Partridge in this proceeding. The Panel finds that it was properly constituted. Each member of 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.

 

4. Factual Background

The Complainant is the registered owner by assignment of two trademarks in the United States: CREDITKEEPER (U.S. Reg. No. 2,863,257) and CREDIT KEEPER (& Design) (U.S. Reg. No. 3,017,823) (collectively referred to as “the CREDITKEEPER Marks”). Both trademarks were registered in relation to debt deferment services for credit card holders and credit reporting services. The federal registrations for CREDITKEEPER and CREDIT KEEPER (& Design) were issued by the United States Patent and Trademark Office (“USPTO”) on July 13, 2004, and November 22, 2005. The registration certificates reflect the first use of the CREDITKEEPER marks in commerce on November 17, 2003.4

The Complainant also owns the domain name <mycreditkeeper.com>, registered on September 19, 2003. This domain name resolves to the Complainant’s website, where internet visitors may obtain information about and enroll in the Complainant’s CreditKeeper Program (“the Program”). Enrollees in the Program can access and monitor credit reports from the three credit reporting agencies – Experion, Equifax, and Transunion – comparing their credit scores with the rest of the country, and have available proprietary credit management tools to help in evaluating their credit-related decisions. The Complainant’s website was launched on or about November 17, 2003.

The disputed domain name <creditkeeper.com> was initially registered by Peter Bradford on January 24, 2001. The record contains evidence, first submitted with the Response, of a Respondent Clear Blue Sky’s acquisition of the disputed domain name from Bradford on or about December 15, 2004, for the sum of $48,000 (USD). This transfer of ownership was not reflected in the registrar’s Whois database, because on November 11, 2004, about a month before this sale, the registrar’s Whois database was changed to list the registrant as Whois Privacy Protection Service, Inc. (“WPPSI”), a privacy service affiliated with the registrar. WPPSI continued to be listed as such on the eNom Whois database until shortly before or after the Complaint in this case was filed with the Center.5

According to archived webpage records maintained at “www.archive.org” (the “Wayback Machine”) and relied on by both sides to this dispute, no active use of the <creditkeeper.com> domain name was made until March 17, 2004, more than three years after its initial registration.6 As of that date, the disputed domain name resolved to an apparent pay-per-click website organizing and indexing advertising links to other websites, predominantly websites featuring credit-related services similar to those offered on the Complainant’s website. These archived records document that the “www.creditkeeper.com” website has been continuously operated as a pay-per-click website with advertising links or searches to other websites featuring credit-related services, both before and after the disputed domain name was acquired by Respondent Clear Blue Sky.

The Complainant sent a cease and desist letter to WPPSI, then shown to be the domain name registrant in the registrar’s Whois database, on or about September 27, 2006. The Complainant received no response to its cease and desist letter. Eventually, the Complaint was filed with the Center and a copy served by fax on WPPSI on January 16, 2007. The record reflects that a change in the Whois registrant information was made either shortly before or immediately after the submission of the Complaint. As a result, when the Center contacted eNom on January 17, 2007 to verify the identity of the Respondent, the registrar responded that Domain Manager (a privacy protection service provided by Proxter, Inc.), was listed as the registrant, and not WPPSI.

Respondent Clear Blue Sky through its attorneys notified the Center of its claimed status as the owner or registrant of the disputed domain name on February 16, 2007, approximately ten (10) days after the Center’s notification of the commencement of the proceeding herein. Domain Manager continues to be listed as the domain name registrant in eNom’s Whois database. Domain Manager subsequently informed the Center that it was a privacy service contracted by Clear Blue Sky, who was the actual owner of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant identifies itself as a wholly owner subsidiary of a large banking and financial service organization, HSBC Holdings plc (“HBSC”), which operates 9700 offices in 77 countries worldwide, including the United States of America. The Complainant is the registered owner of the CREDITKEEPER Marks in the United States, and alleges that the marks have been used continuously and exclusively since November 17, 2003, in relation to the Complainant’s CreditKeeper Program. According to the Complainant, more than a million people have registered for the Program, including roughly 150,000 online registrants. The Complainant states that sales of the Program currently account for approximately $30 million (USD) annually, fifteen percent (15%) of which are attributable to online registration.

The Complainant contends that the disputed domain name is identical to its federally registered CREDITKEEPER mark, in which the Complainant asserts exclusive rights. The Complainant alleges that the disputed domain name resolves to a pay-per-click portal site, where advertising links to products and services of third parties are provided. The Complainant avers that it does not know the true identify of the Respondent due to the use of privacy services, but maintains that it has not authorized any third parties to use its CREDITKEEPER Marks.

The Complainant alleges that the Respondent7 does not have rights or legitimate interests in the disputed domain name, but is instead is attempting to mislead consumers into believing that the Respondent and its website are affiliated with the Complainant, when in fact they are not. The Complainant further contends that the Respondent cannot claim to have been commonly known by the domain name, since it has taken advantage of privacy services to conceal its identity, and the Respondent’s website is used to advertise products and services of third parties rather than its own.

The Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant urges that the Policy requires each change in registrant information, including a change for privacy protection purposes, to be considered a transfer of the domain name to a third party. On this basis, the Complainant argues that the November 11, 2004 change in registrant information to list WPPSI constitutes a bad faith registration, since it occurred more than two years after the Complainant filed the first of its two trademark applications, and almost one year after the date upon which the Complainant alleges it first used the CREDITKEEPER mark in commerce. And the Complainant argues that the subsequent change in privacy services, which the Complainant contends did not occur until after WPPSI had received a copy of the Complaint, clearly constitutes bad faith registration, since the Complaint provided indisputable evidence of the Complainant’s trademark rights in CREDITKEEPER.

The Complainant further argues that bad faith is demonstrated by the use of the domain name to divert internet users away from the Complainant’s website to generate pay-per-click revenue using advertising links that trade on the Complainant’s highly successful CreditKeeper Program. The Complainant argues that the Respondent’s organization of such advertising links by reference to searches for “3 Bureau Credit Report”, “My Credit Score” and “My Credit Report” are intended to create consumer confusion regarding the Complainant’s services and its <mycreditkeeper.com> domain name. The Complainant further contends that bad faith can be inferred from the passive holding of the domain name for almost two years prior to the Complainant’s application to register its CREDITKEEPER mark, and the fact that no active use of the disputed domain name was attempted until after the Complainant began using its CREDITKEEPER mark in relation to the Program. The Complainant also contends that the use of privacy services to conceal the Respondent’s true identity also constitutes bad faith in the circumstances of this case, and that the lack of any response to the Complainant’s cease and desist letter dated September 27, 2006, indicates bad faith.

B. Respondent

The Respondent8 notes that the disputed domain name originally was registered by Peter Bradford, purportedly a Canadian citizen, some three and one-half (3 Ѕ) years before the Complainant established trademark rights in CREDITKEEPER through USPTO registration. The Respondent argues that it cannot be disputed that the Complainant adopted its trademarks with full knowledge that the disputed domain name already had been registered. The Respondent asserts that the central issue in the dispute therefore is one of priority. Given that privacy services are engaged merely as an agency of the domain name registrant, the Respondent contends it would be unreasonable to conclude that the use of a privacy service constitutes a discontinuity of beneficial ownership and priority rights in the registration and use of a domain name.

Regarding the issue of identity or confusing similarity under the Policy, the Respondent notes that the majority view of panelists is that the registration of a domain name prior to the time a complainant establishes rights a trademark does not preclude a finding of identity or confusing similarity, with the issue of priority best resolved under other Policy criterion. However, the Respondent contends that the Complainant cannot claim exclusive rights to use the term CREDITKEEPER in a domain name, given that the disputed domain name was registered prior to the Complainant’s establishment of trademark rights. Further, the Respondent offers empirical evidence of what it claims to be the generic or descriptive use of this term, including a general reference to credit agencies as “keepers of credit history”, and a reference in one website article to Equifax as a “Credit Keeper”.

The Respondent maintains that it has established rights or legitimate interests in the disputed domain name. The Respondent acknowledges that the disputed domain name originally was registered by Peter Bradford and used to advertise various credit related services, but notes that the domain name consists of two common or “dictionary” words – “credit” and “keeper” – and that such registration and use of the disputed domain name predated the Complainant’s acquisition of rights in the marks in question through USPTO registration. According to the Respondent, common words and descriptive terms legitimately are subject to registration as domain names on a “first-come, first-served” basis.

Thus, the Respondent concludes that the original registrant had every right to register and use the disputed domain name to advertise credit related services on the internet. The Respondent contends that it acquired all rights to the domain name under a certain “Domain Name Purchase and Sale Agreement” effective December 15, 2004, provided as Exhibit D to the Response. The Respondent argues that when it acquired rights to the domain name in 2004, the priority of use of the domain name was not extinguished, just as the Complainant’s acquisition in the CREDITKEEPER marks by assignment did not preclude the Complainant from claiming priority under United States trademark law based on the applications filed by the original registrant.

The Respondent denies bad faith registration and use of the disputed domain name. According to the Respondent, if Bradford cannot be found to have registered and used the domain name in bad faith, then neither can the Respondent be held in bad faith as Bradford’s successor-in-interest. The Respondent contends there is “zero question” of bad faith registration and use of the domain name by Bradford, and points out that it has continued to make the same use of the disputed domain name as was made by the original registrant. The Respondent further argues the original registrant was not required under the Policy, following the Complainant establishment of trademark rights in CREDITKEEPER, to either keep and maintain the domain name in perpetuity, or to assign it and all rights therein to the Complainant.

Even assuming arguendo that the sale and transfer of the domain name from Bradford to the Respondent in 2004 constitutes a new registration under the Policy, the Respondent maintains that neither it nor the original registrant were under any duty of constructive notice regarding the United States trademark applications filed by the Complainant’s predecessor-in-interest. The Respondent alleges that it is a Bahaman corporation and Bradford a Canadian citizen, and asserts that the Complainant’s U.S. trademark registrations should have no extra-territorial effect under the Policy.

Further, assuming arguendo that the Respondent was aware of the Complainant’s trademark rights in CREDITKEEPER when it acquired the disputed domain name, and that the Respondent also knew the Complainant’s rights had extra-territorial effect, the Respondent concludes that no bad faith can be inferred from its acquisition and continued use of the domain name consistent with that of the original registrant. To the contrary, the Respondent maintains that there is no bad faith in the acquisition of an asset that pre-dates later claims made thereto by others, and that a contrary conclusion in this case would undo much of the law in common to the relevant jurisdictions of Canada, the Bahamas, and the United States. The Respondent dismisses the Complainant’s argument that a change in Whois database registrant information based on a registrant’s use of privacy service should constitute a “new registration” for purposes of the Policy. The Respondent argues that a privacy service functions solely in an agency capacity in relation to the actual domain name registrant, and that the Complainant’s position amounts to little more than a disingenuous attempt to destroy the continuity of beneficial ownership and rights of priority in the registration and use of a domain name, without which the Complainant is keenly aware that its case must fail.

In the final analysis, the Respondent posits that it received the disputed domain name in privity with the original registrant, acquired all rights and interests through a written assignment, and maintained continuity of use of the domain name consistent with that of the original registrant. Such cannot constitute bad faith registration and use under the Policy, according to the Respondent.

In the alternative, the Respondent submits that there are unresolved issues of law regarding (1) privity of interest and the priority rights conveyed in an assignment of a domain name, and (2) whether such priority rights are effected by the use of a privacy service to shield the identity of the beneficial domain name owner, which are beyond the limited jurisdictional scope of the Policy, and therefore compel a denial of the Complaint.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Registration of the Domain Name

The Panel notes that Clear Blue Sky Inc. has acknowledged acquiring the disputed domain name from the original registrant, Peter Bradford. A privacy service, Domain Manager, is listed at the registrant of record in the WhoIs database. However, the record establishes that Clear Blue Sky Inc. is the underlying or beneficial owner of the disputed domain name, In addition, Clear Blue Sky Inc. is identified in the Response as the Respondent (Clear Blue Sky hereinafter is referred to as the “Respondent”).

The Respondent has submitted that it acquired all rights in the disputed domain name from the original registrant under a “Domain Name Purchase and Sale Agreement” stated to be effective as of December 15, 2004. Because of the use of the privacy service, it is not clear exactly when this acquisition occurred. However this may be, it would presumably have occurred either on or after the date on which the referred-to sale agreement came into effect. Whatever the terms of the sale agreement may have been, the domain name has evidently not been renewed by the original registrant; it has been acquired by the Respondent.

The Panel therefore considers, as is discussed further below, that the domain name was “registered” within the meaning of the Policy by virtue of being acquired by the Respondent on or about December 15, 2004. See, e.g., Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016.

C. Identical or Confusingly Similar to Trademark Rights

The Panel finds that the disputed domain name <creditkeeper.com> is identical to the Complainant’s registered CREDITKEEPER mark. The Complainant beyond question has established rights in its marks through registration and use. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Respondent argues that no identity or confusing similarity should be found because “credit” and “keeper” are both common words that Complainant cannot claim exclusive rights in. The Respondent also makes reference to what it claims are several descriptive uses of the terms “credit keeper” unrelated to the Complainant and its products or services. While such use factors might be relevant under a traditional trademark infringement analysis, in the internet context of paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based solely on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafй, WIPO Case No. D2000-0068. Based on such a comparison, the Panel concludes that the disputed domain name is identical to the Complainant’s CREDITKEEPER mark.

Accordingly, for the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). It is undisputed that the Complainant has not authorized the Respondent or the original registrant to use the Complainant’s marks or register domain names appropriating those marks, and the Panel is persuaded from its overall review of the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made.

While the initial registrant registered the disputed domain name in advance of the Complainant establishing trademark rights in CREDITKEEPER, he apparently made no active use of the disputed domain name for more than three (3) years following its registration, and then only after the Complainant had launched its “mycreditkeeper.com” website. The disputed domain name was then used to direct internet users to a pay-per-click website advertising credit-related products or services that appear to compete with those offered by the Complainant.

Approximately eight (8) months after the launch of the website to which the disputed domain name resolved, the Whois registrant information for the disputed domain name was changed to cloak the identity of the actual domain name owner. Within weeks of this change, the Respondent acquired the disputed domain name under the cloak of the privacy service for the not insubstantial sum of $48,000 (USD). The Respondent continued to operate the pay-per-click website, advertising credit-related products and services that competed with those of the Complainant. Unable to determine who the actual domain name registrant was, the Complainant sent a cease and desist letter to WPPSI on or about September 27, 2006, which neither WPPSI nor the Respondent ever acknowledged or responded to. Eventually, on January 16, 2007, a Complaint was filed with the Center, naming WPPSI as the respondent. Within days of the filing of the Complaint, another change in the Whois registrant information was made, with Domain Manager replacing WPPSI.

It was not until February 16, 2007 – some four months after the Complainant’s cease and desist letter, after the Complaint had been amended for a second time because of the last minute change of privacy services from WPPSI to Domain Manager, and not until the commencement of formal proceedings – that the Respondent revealed itself. The Respondent’s attorneys upon so informing the Center took the occasion to urge that the Complaint should be dismissed under the Rules, based on the assertion that the Complainant had failed to exercise reasonable diligence to identify the Respondent. The Center declined to do.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under Paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under Paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Initially, the Respondent relies on its acquisition of the domain name from an original good faith registrant and the continuity of use of the domain name consistent with that of the original registrant in claiming rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. Subject to limited exceptions9, when a domain name is registered before any trademark rights are established, the registration of the domain name is not normally in bad faith since the registrant could not have contemplated the complainant’s non-existent right. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

The Respondent, however, fundamentally misperceives the Policy and its objectives in asserting that a previous registrant’s good faith registration of a domain name immunizes one who subsequently acquires the domain name from further scrutiny. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The consensus view of WIPO Panelists is that, while a renewal of a domain name does not amount to registration for purposes of determining bad faith, the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.7, and cases cited therein.10

While a renewal is not considered equivalent to a “registration” in the context of the objectives of the Policy, and thereby insulates a respondent who did not register a domain name in bad faith but subsequently uses it in bad faith, the benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired. See PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338.11 The Panel notes that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.12 See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. But the Respondent has not indicated that it explored the possibility of third-party rights in any way before registering and using the disputed domain name.

In view of the foregoing, it follows that the Respondent cannot rely on a previous registrant’s good faith registration of the disputed domain name without more to establish that the Respondent possesses rights or legitimate interests in the disputed domain name. Nor can the Respondent rest its claim of legitimacy on a continuation of the previous registrant’s use of the domain name, in the absence of a good faith effort by the Respondent to avoid registering and using a domain name corresponding to the trademark of another in violation of the Policy. As noted above, the Respondent does not indicate that it explored the possibility of third-party rights in any way before registering and using the disputed domain name.13

The Respondent also asserts that the disputed domain name consists of two common or “dictionary” words – “credit” and “keeper”. The Respondent has provided evidence of what it claims to be the descriptive use of the term “credit keeper” by several third parties. On this basis the Respondent contends that the Complainant cannot claim exclusive rights to CREDITKEEPER, and that the Respondent consequently has the right to register and use the disputed domain name in association with a website providing ads and links to websites offering credit-related products or services.

A number of panels have concluded that a respondent has a right to register and use a domain name to attract internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

On the record of this case, the Panel is unable to conclude that the Respondent had formed such a good faith belief at the time it acquired the disputed domain name. The disputed domain name is identical to the Complainant’s CREDITKEEPER mark. The Respondent does not indicate whether it was aware of the Complainant’s trademark rights when it acquired the disputed domain name. Instead, the Respondent argues that if it was aware of the Complainant’s marks, it would still be entitled to claim legitimacy based on the original good faith registration of the domain name by its original registrant and the continuity of the use of the domain name. As discussed earlier, the Respondent’s argument is misplaced, as the benefit of an original good faith registration does not cloak a subsequent purchaser of a domain name such as the Respondent.

The original registrant of the domain name made no active use of the disputed domain name for more than three (3) years following its registration, and then only after the Complainant had launched its “www.mycreditkeeper.com” website. The disputed domain name was used to direct internet users to a pay-per-click website advertising products or services competing with those offered by the Complainant. The Panel believes a fair inference may be drawn from the record that the aim of the original registrant of the disputed domain name in launching this pay-per-click website was to take advantage of the Complainant’s trademark rights. The Respondent acquired the disputed domain name approximately nine (9) months later for the sum of $48,000 (USD), with the stated intention of continuing to use of the domain name in a manner consistent with that of the original registrant.

On the record of this case, the Panel believes it is a reasonable inference that the Respondent did not acquire the disputed domain name based on a good faith belief that the domain name’s value derived from generic or descriptive qualities. Paragraph 2 of the Policy implicitly requires some effort to avoid registering and using a domain name corresponding to the trademark of another, but the Respondent has not indicated that it explored the possibility of third-party rights in any way before registering the disputed domain name. Simply stated, the Respondent could not have formed the requisite good faith belief by closing its eyes to whether the domain name was identical or confusingly similar to the trademark of another. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. As such, the Respondent has not demonstrated to the satisfaction of this Panel that it registered the disputed domain name because of its attraction as a dictionary word or descriptive term.

Further, while both “credit” and “keeper” may be generic in the sense that they are dictionary words, the USPTO’s registration of the CREDITKEEPER mark on its principal register constitutes an official determination that the mark is not descriptive with respect to the debt deferment and credit reporting services for which it was registered.14 Given the USPTO’s determination, the Panel entertains serious doubt whether the Respondent’s use of the disputed domain name to advertise credit-related services of a similar nature constitutes the use of the domain name in a descriptive as opposed to a trademark sense.

For all of the foregoing reasons, the Panel finds that the Respondent has failed to meet its burden under paragraph 4(c) of establishing rights or legitimate interests in the disputed domain name. Accordingly, the Panel deems that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Respondent registered a domain name that is identical to the Complainant’s CREDITKEEPER mark, and has used the domain name to generate pay-per-click revenue from advertising links to external websites, including websites of some of the Complainant’s competitors. But the Respondent has not indicated that it explored the possibility of third-party rights in any way before registering the disputed domain name, and some panels (including the Presiding Panelist in this case) have held that there is no bad faith in such circumstances if the respondent was unaware, and should not have been aware, of the complainant’s trademark rights at the time of registration. National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424.

Consequently, the Panel must consider, as have prior UDRP panels, whether the Respondent’s apparent disregard for the likelihood that the disputed domain name corresponded to a distinctive trademark is itself evidence of bad faith in the registration and use of the disputed domain name. The Respondent acquired the disputed domain name for the not insubstantial sum of $48,000 (USD). The Panel is not persuaded from the record of the case that the Respondent could have formed a good faith belief that the disputed domain name’s value was attributable to its generic or descriptive characteristics. The domain name <creditkeeper.com> is not itself a dictionary word, and even a cursory search on search engines like Yahoo! or Google would have shown that CREDITKEEPER was the Complainant’s trademark.15

Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Registering a domain name that is identical to the distinctive trademark of another and using the domain name to generate revenue by directing internet users to the websites of the trademark owner’s competitors, without exploring in a meaningful way the possibility of third-party rights, is inconsistent with this good faith requirement. The Panel holds that the Respondent cannot consistent with the Policy shield its conduct by closing it eyes to whether the domain name it is registering is identical or confusingly similar to the trademark of another. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The Panel finds this to be evidence of bad faith registration and use to be considered together with any other indicia of bad faith that may be found to exist in the record.

In this regard, the Panel is troubled by the Respondent’s use of multiple privacy services to cloak its identity following receipt of notice of this dispute and the commencement of proceedings hereunder. The Panel does not consider the Respondent’s use of a privacy service in and of itself to constitute bad faith under the Policy,16 but privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere.

The Panel finds substantial indication of such manipulation in the record of this case. Prior panels have held that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787. Any such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner.17 Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.

Of even greater concern to the Panel is the persistent indication in the record of the phenomenon of cyberflying, which entails the systematic transfer of the domain name to different registrants following the initial respondent’s receipt of notice of the complaint in order to disrupt the proceedings. In this case, the apparent cyberflight is inextricably linked to the use of privacy services. 18 In this case, the cyberflying phenomenon appeared first as change of registrant information to list a second privacy service as the respondent, a change clearly calculated to perpetuate the concealment of the Respondent’s identity, rather than disclose it, while simultaneously serving to disrupt the proceeding. The Respondent’s eventual decision to disclose its identity is little more than a novel iteration of cyberflying, given that the Respondent delayed until the disruption resulting from the initial act of cyberflight had run its course, thus bringing about further disruption. The Respondent even urged the Center to dismiss the Complaint, based on what the Panel considers to be a fairly specious argument that the Complainant had not exercised reasonable diligence to discover the identity of the Respondent.

In the final analysis, the impact of the Respondent’s apparent manipulation of privacy services upon this proceeding has been palpable. The Complainant lacked any reasonably effective means of discovering that the Respondent had acquired the disputed domain name, and in fact did not learn of the Respondent until after the filing of the Complaint and after the commencement of formal proceedings herein. The record strongly suggests that the Respondent remained cloaked for as long as it suited the Respondent’s purposes. Given that the Complainant bears the ultimate burden of proof on all three elements of paragraph 4(a) of the Policy, it apparently suited the Respondent’s purposes that the Complainant have available as little information as possible regarding the Respondent and the Respondent’s acquisition and use of the domain name for as long as possible. In fact, there is no information in the record regarding the Respondent other than that which the Respondent chose to provide.

Traditionally, cybersquatting has involved the registration of domain names by individuals seeking to sell the domain names. More recently, there have been a number of developments in the domain name registration system – including the use of Whois privacy services, the growth in professional domain name dealers, automated bulk registration of domain names, and the parking of domain names on pay-per-click portal sites – that have increasingly led to registrations, often anonymous, being undertaken with little or no attention to third-party intellectual property rights.19

This case is one in which several of these developments are in play, and one in which – based on the Response – the Respondent registered the disputed domain name with no exploration of the possibility of third-party rights, and with apparent disregard whether the domain name it was acquiring for use with a pay-per-click website corresponded to the distinctive trademark of another. The Panel concludes, in light of all of the factors discussed above, and given the particular circumstances of this case, that such “willful blindness”20 on the part of the Respondent constitutes bad faith under the Policy. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.21

Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.22

7. Decision

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, <creditkeeper.com> be transferred to the Complainant.


William R. Towns
Presiding Panelist


Lawrence K. Nodine
Panelist


Sir Ian Barker
Panelist

Dated: June 4, 2007


1 Whois Privacy Protection Service, Inc. is a privacy protective service affiliated with eNom, the registrar of the disputed domain name.

2 Domain Manager is a privacy protection service provided by Proxter, Inc., which is not affiliated with eNom.

3 The letter from Greenberg and Lieberman, although transmitted by facsimile to the Center on February 16, 2007, is dated January 15, 2007. Parenthetically, the Panel notes that Clear Blue Sky, Inc. has never been listed as the registrant of the disputed domain name in eNom’s Whois database.

4 The application for CREDITKEEPER was filed with the USPTO on an intent to use basis on March 6, 2002.

5 A printout from the registrar’s Whois database attached to the Complaint shows that WPPSI was still listed as the registrant on January 9, 2007. Hence, it would seem that the change of privacy services occurred sometime between January 9 and January 17, 2007, either shortly before or immediately after the filing of the Complaint and its fax receipt by WPPSI. In all likelihood, the change was made after WPPSI received notification of the Complaint, but this cannot be ascertained from the record.

6 The archived webpage records reflect Bradford’s preparations to use the disputed domain name with a website as early as June 17, 2003, although nothing is revealed regarding the content of the website said to be under construction.

7 The Second Amended Complaint identifies WPPSI, Domain Manager, and Clear Blue Sky as the Respondents. The Complaint refers to them collectively as “the Respondent”.

8 The Response was submitted on behalf of Clear Blue Sky only. Domain Manager did not submit a separate response.

9 Such exceptions have been described inter alia in Execujet Holdings Ltd. v. Air Alpha America, Inc, WIPO Case D2002-0669. These include for example circumstances in which the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, such as may occur after a merger between two companies.

10 As noted, the Panel considers that the domain name was “registered” within the meaning of the Policy by virtue of being acquired by the Respondent on or about December 15, 2004. See, e.g., Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016.

11 The Panel accordingly finds unpersuasive the Respondent’s argument that this case turns on issues beyond the scope of the Policy. Given the overriding objective of the Policy to curb abusive domain name registration, it clearly is within the jurisdiction of the Panel to determine what constitutes abusive domain name registration in accordance with the Policy and the Rules.

12 Paragraph 2 of the Policy, “Your Representations”, is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:

By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added).

13 The Respondent argues that as a Bahaman corporation it cannot be presumed to have had notice of the Complainant’s U.S. trademark registrations. While panel precedent does not necessarily embrace the principle of constructive notice in all circumstances, the answer to this question will always depend on the particular circumstances of the case. Here, the Respondent, in view of paragraph 2 of the Policy cannot rely on precedent to shield its conduct by closing its eyes to whether the domain name it is registering is identical or confusingly similar to the trademark of another. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

14 The USPTO by law must refuse registration of a mark on the principal register unless the mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.

15 The Panel holds that the 2004 transfer from Bradford to Respondent Clear Blue Sky constitutes bad faith registration. Although Bradford has not been shown to have registered in bad faith, a fair inference can be drawn from the record that Bradford had begun, prior to the 2004 transfer to the Respondent, to use the domain in bad faith to intentionally attract internet users based on confusion with Complainant’s trademark in violation of paragraph 4(b)(iv) of the Policy. When a party acquires a domain name that is being used in bad faith, the Panel may infer that that acquisition was motivated by an intent to continue the bad faith use. This is evidence of bad faith registration. Put simply, the Respondent’s acquisition constitutes bad faith registration.

16 Privacy services generally are recognized to perform a legitimate function by shielding registrants from “spam” as a result of their contact details being made publicly available on the Whois database.

17 The Panel would hold that where an agent with an anonymous principal fails after proper inquiry to disclose its principal then the agent stands in the shoes of the principal, in effect becoming the principal for purposes of determining responsibility for the actions in question.

18 At least one panel has gone so far as to treat a change of WhoIs registrant information following notification of a complaint removing the privacy service and identifying the actual domain name owner as cyberflight. Dr. Ing. H.c F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311. It appears from the decision in this case that this change in Whois registrant information was mandated by the applicable privacy protection agreement, a circumstance that does not suggest true cyberflight to this Panel. In fact, this Panel is inclined to see such a change as consonant with judicial economy, since it would effectively preclude the actual domain name owner from later being heard to complain that it had not received due process under the Policy. In the present case, however, the change in the Whois registrant information to replace one privacy protection service with another could only have been effected at the direction of the Respondent, and only for purposes of disrupting the proceeding, since the Respondent could have elected to disclose its identity at any time, instead of waiting until the Complaint had been amended to reflect this change in registrant information and the formal proceedings commenced.

19 WIPO, Cybersquatting Remains on the Rise with further Risk to Trademarks from New Registration Practices (Press Release, March 12, 2007).

20 Id.

21 These cases involved automated bulk registrations of domain names in which, as here, there was no evidence that attention was given to third-party rights at the time of the registrations. While the circumstances in those cases and in the present case are not identical, the Panel believes the rationale of these decisions to be applicable in the circumstances of this case.

22 In view of the Panel’s determination, it is unnecessary for the Panel to consider the Complainant’s argument that any change in registrant information for privacy protection purposes should be considered a transfer of the domain name to a third party. Please refer to Note 17 supra.

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0062.html

 

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