WIPO Arbitration and Mediation Center
First Data Corporation v. FIRSTDATACLIENT.COM C/O Whois IDentify Shield/ Domain Administrator, First Data Corporation
Case No. D2006-0928
1. The Parties
The Complainant is First Data Corporation, Greenwood Village, Connecticut, United States of America, represented by Sutherland Asbill & Brennan, LLP, United States of America.
The Respondent is FIRSTDATACLIENT.COM C/O Whois IDentify Shield/ Domain Administrator, First Data Corporation, of Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <firstdataclient.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2006. On July 23, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On July 27, 2006, Nameview Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On August 21, 2006, the Complainant filed an Amendment to the Complaint. The Center verified that 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 on August 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2006. On August 22, 2006, the Respondent filed a Response Concurring with Complaint.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 21, 2006. 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.
4. Factual Background
The Complainant filed a Complaint on July 20, 2006 naming the Respondent as firstdataclient.com c/o Whois Identity Shield (“Firstdataclient.com”). On August 15, 2006 the register was amended to change the name and address of the Registrant to the name of the Complainant namely, First Data Corporation at 62000 South Quebec Street, Suite 270-A, Greenwood Village, CO, 80111, United States of America (“the Renamed Registrant”). The Complainant filed an Amended Complaint on August 21, 2006 to reflect the change in the name of the Registrant. On August 22, 2006, the Complainant took the unusual step of filing a Response Concurring with Complaint, on behalf of the Renamed Registrant, reflecting the fact that Complainant and Registrant were now stated to be the same entity.
The Complainant is a provider of electronic commerce and payment solutions for businesses and consumers. Complainant owns numerous registered trademarks comprised of or incorporating the words “First Data”, including a U.S. Federal Registation for FIRST DATA, under U.S. Registration No. 1,912,728. The Complainant has registered numerous domain names incorporating the FIRST DATA mark, at which it maintains webpages related to its business, including <firstdataclients.com>.
5. Parties’ Contentions
(a) Identical or Confusingly Similar
The domain name <firstdataclient.com> is virtually identical to the Complainant’s FIRST DATA Trademark, differing only by the addition of the descriptive word “client”. The addition of a descriptive word denoting a customer does not serve to distinguish the domain name from the Complainant’s mark in any meaningful way.
(b) Rights or Legitimate Interests
At the time the original Complaint was filed, the original Respondent Firstdataclient.com had no rights or legitimate interest in respect of the domain name <firstdataclient.com>. The Complainant owns many trademark registrations for the mark FIRST DATA worldwide and related domain names. The Complainant’s rights in its FIRST DATA Trademark predate the registration of the Respondent’s domain name <firstdataclient.com> by 10 years. The Complainant contends that the original Respondent Firstdataclient.com cannot demonstrate any right or interest in the domain name. After the Complaint was issued, the Respondent Firstdataclient.com amended the Register to change the name of the Registrant to First Data Corporation, which is the name of the Complainant. The Complainant contends that it does not have any control over or involvement with the domain name <firstdataclient.com>.
(c) Registered and Use in Bad Faith
The Respondent Firstdataclient.com’s domain name was registered and is being used in bad faith based on the following factors: (i) knowledge of the Complainant’s long and continuous use of the FIRST DATA Trademark at the time of registration of the domain name and that the Respondent Firstdataclient.com had no right, title or interest, whatsoever, in the mark or domain name; (ii) Respondent Firstdataclient.com acquired the confusing domain name for the purpose of monetary gain by directing Internet traffic from the Complainant to the Respondent’s website and services and (iii) Respondent has deliberately concealed its identity to frustrate any attempts at enforcement.
(d) Consent Order
Complainant urges the Panel to effectively grant a consent order, to forego the usual UDRP analysis and simply make an order for the transfer of the domain name to the Complainant. No decision of a WIPO panel is cited support of this proposition. However, Complainant relies on Norgen, Inc. v. Norgen, Inc. c/o Domain Administrator, FA 0603000670051, Boehringer Ingelheim Int’l GmbH v. modern Ltd-Cayman Web Dev., FA 133625; and PSC Management Limited Partnership v. PSC Management Limited Partnership, FA 05004000467747.
The only Response filed was on behalf of the Renamed Respondent. This Response concurs with the Complainant’s allegations and requests the same relief as the Complainant, i.e. that the domain name <firstdataclient.com> be transferred to the Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel notes that most of the time that has passed since the Complaint in this case was filed on July 20, 2006 has had to be devoted to registrar-related issues. The entity named in the Complaint (and reflected in the applicable Whois information annexed to the Complaint) is identified as “FIRSTDATACLIENT.COM c/o Whois Identity Shield”. The Whois information also includes the following statement: “This registrant uses an IDentity Shield service to keep some or all of their information private.”
At some point after the filing of the Complaint and without the involvement of the Complainant, the Whois information for the disputed domain name was changed to reflect the identity and contact details of the Complainant, First Data Corporation. The Panel accepts the Complainant’s contention that it does not have any actual control over the disputed Domain Name.
Although this appears to be a re-occurring practice in UDRP cases involving this registrar, there is insufficient evidence before the Panel in this case to ascertain precisely how or why the change in registrant identity occurred. Nor is there sufficient evidence in this case to ascertain the identity of the underlying domain-name holder other than by reference to the listed privacy service provider, Whois Identity Shield.
However certain important questions arise in this case that go to the heart of the effective operation of the UDRP. For example, how is the identity of a domain-name holder to be ascertained in cases involving privacy service providers in which the apparent identity of the registrant is changed after the filing of a Complaint? And what are the implications in cases where a registrar allows modifications to registrant information in the Whois after the filing of a UDRP complaint to show the complainant as owner, without ensuring that the complainant is granted effective control over the domain name?
The Panel notes that while these broader questions go beyond the scope of this decision, consideration needs to be given to the practices of registrars in this regard, to prevent the manipulation of registrant information where the goal or effect is to impede or frustrate the ICANN-mandated UDRP process.
In the present case, the Panel finds that the appropriate Respondent is the entity listed as the registrant in the Whois at the time of filing of the Complaint. While there may very well be an entity hidden behind the privacy services provider that retains beneficial control of the disputed Domain Name, that entity has not elected to make itself known, nor can the Complainant listed in this case as registrant in the Whois properly be regarded as the Respondent in circumstances in which it has no effective control over the disputed Domain Name.
The Rules require that the Complainant provide the name of the Respondent, which the Rules make clear is the registered domain-name holder. The Complainant has done so, within the limits of its powers. While there is ambiguity regarding the identity of the true registrant of the disputed Domain Name in this case, this would appear to be attributable to the controlling entity of the Domain Name, and has had the effect of frustrating the conduct of these proceedings.
The Panel is satisfied that all reasonable steps have been taken to effect notification of the Complaint to the entity listed as registrant of the disputed Domain Name in the applicable Whois at the time of filing of the Complaint. While the Complainant in this case elected (as the listed Registrant of the disputed domain name) to submit a Response Concurring with the Complaint, no Response was received from the originally listed registrant of the disputed Domain Name.
Identical or Confusingly Similar
The Complainant has provided evidence of trademark rights in a substantial number of marks containing the words “First Data”, including the word mark FIRST DATA, registered in August 1995, and a design mark including the words “1D First Data. Our Clients. Our Responsibilities”. The disputed Domain Name incorporates the FIRST DATA mark in its entirety, merely adding the generic word “client” as a suffix. The Panel finds the Complainant has established that the disputed Domain Name is confusingly similar to the FIRST DATA marks.
Rights or Legitimate Interests
The Complainant has presented persuasive arguments and evidence in the Complaint in support of its contention that the Respondent lacks rights or legitimate interests in the disputed Domain Name, and the Panel is satisfied that it has established at the least a prima facie case in this regard. This has not been rebutted.
In the Panel’s view, the modification made to the registrant information in the Whois after the filing of the Complaint can be a clear indication of bad faith. In the absence of further information or explanation from the registrar or underlying beneficiary of the registration, such conduct can only be construed as an attempt on the part of the controlling entity of the disputed Domain Name to obscure the identity of the person or entity behind the registration, which frustrates the proceedings.
The Panel believes that the correct course in the circumstances is to ensure that the UDRP process cannot be avoided simply by transferring the apparent ownership of a disputed domain name to a complainant without ceding actual control to that complainant.
The Panel notes in addition that the Complainant has presented compelling arguments and evidence that the Disputed Domain name is currently being used as a “directory site” with a number of links to what appear to be competitors of the Complainant, from which the controlling entity presumably derives revenues on a click through basis. The prospect for confusion between the Domain Name and the Complainant and its marks is clearly apparent, and the Domain Name is apparently being used to derive income; to free-ride in effect on the fame of the Complainant’s marks.
The Panel finds that the domain name was registered and is being used in bad faith.
The Complaint, as framed, raises the issue of whether the Panel has the requisite jurisdiction to issue an Order transferring a domain name based solely on the nominal consent of the parties, and to forego the conventional analysis of the necessary elements in a complaint.
The jurisdiction of this Panel is founded solely on the Policy and the Rules; there is no inherent jurisdiction which in the Panel’s view would permit the expansion of powers in circumstances which may not have been contemplated in the Policy.
In this Panel’s view, the consent of the parties may be a relevant factor, in so far as it addresses the three required elements in any proceeding. In this sense, a consent could be structured and construed probatively as an admission with respect to trademark rights, legitimate interests and/or bad faith. That form of admission may well be conclusive in certain circumstances, in the terms of the proof required in the Complaint.
However, in the present case, the identity of the person or entity on whose behalf the domain name was registered remains undisclosed, and the record contains no formal consent from that person or entity. It appears that the name of the registrant was changed to make it appear as if the domain name is now held by First Data Corporation, without actually ceding control of the name to the apparent new owner. In the Panel’s view, in the particular circumstances of this case, the change of name (without the actual assignment of the usual attributes of ownership) does not entitle the Complainant to enter an effective consent on behalf of the Registrant.
For all the foregoing reasons, the Panel orders that the domain name, <firstdataclient.com> be transferred to the Complainant.
Christopher J. Pibus
Dated: November 24, 2006