WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks
Case No. D2006-0975
1. The Parties
The Complainant is WWF-World Wide Fund for Nature aka WWF International, (formerly World Wildlife Fund), Gland, Switzerland, represented by Edwin Coe, United Kingdom of Great Britain and Northern Ireland.
The Respondents are:
(i) Moniker Online Services LLC, Florida, United States of America; and
(ii) Gregory Ricks, Texas, United States of America, represented by John B. Berryhill, Ph.d. Esq., United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <wwf.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2006. On August 3, 2006, the Center transmitted by email to Moniker Online Services, LLC (“Moniker”) a request for registrar verification in connection with the Domain Name at issue. On August 8, 2006, Moniker transmitted by email to the Center its verification response. It advised that Gregory Ricks was the registrant (371299) and provided contact details for his administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint should show Mr. Ricks as another Respondent, the Complainant filed, under protest, an amendment to the Complaint on August 30, 2006. 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 on August 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 20, 2006. The Response was filed with the Center on September 20, 2006 by Mr. Ricks.
The Center appointed the Honorable Sir Ian Barker QC, Mr. Kiyoshi I. Tsuru and Professor David E. Sorkin as panelists in this matter on September 29, 2006. 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.
On September 21, 2006, the Complainant lodged with the Center a witness statement from its solicitor, Mr. Clark, seeking to comment on one particular matter raised in the Response, namely the date on which Mr. Ricks acquired the disputed Domain Name. This statement suggested that the disputed Domain Name had been acquired by Mr. Ricks on January 20, 2003, and not “in late 2003” as stated by Mr. Ricks in a statement annexed to the Response.
The Respondent, to whom the Complainant had copied the statement of Mr. Clark, filed a memorandum both acknowledging his mistake and also commenting on additional material in Mr. Clark’s statement. The Respondent had alleged in his initial statement, made under penalty of perjury, that promptly upon purchase of the Domain Name, he had set up the Web Wrestling Forum. A later similar declaration claimed that he had “confused” the timeframe within which he had set up the Web Wrestling Forum with the time of purchase of the Domain Name and that his error had been unintentional.
The Panel, on October 6, 2006, issued a Procedural Order indicating that these two documents would be considered by the Panel which would then make a decision whether to admit them once it had consideration. The Panel noted that no application had been made for leave by the Complainant to file this document.
Parties have been reminded many times by WIPO Panels that there is no right as such to make supplementary filings and that the leave of the Panel should always be obtained rather than presumed. In the event, because the supplementary filings proved the date of the registration of the disputed Domain Name, an important fact in this case, the Panel has decided to consider these filings.
On October 13, 2006, the Panel requested comment from the parties on a demand that had been made to the Center by Moniker that it be removed from the proceedings on the ground that Mr. Ricks was now shown in the WHOis information as the registrant. The Panel also sought a report from Moniker on how the registration had changed after the Complaint had been filed, if that was what had occurred. The answers provided have been considered by the Panel.
On October 20, 2006, the parties and Moniker sought to file further submissions. The Panel refused this unmotivated request. The Panel considered that the parties had had ample opportunity to present their cases, including the filing of further submissions already.
On October 20, 2006, the Panel noted with concern and disapproval the unnecessarily large volume of documents produced by the Complainant in support of its Complaint. The exhibits weighed some five kilograms.
In the Panel’s view, for example, it was not necessary for the Complainant to have exhibited the text of so many different trademark registrations (some in languages other than English – the language of the registration agreement) from a whole variety of countries with which the Respondent has no connection. One should have thought it sufficient for the relevant United States trademark to have been exhibited along with a summary of registration details of trademarks in other countries. In general, there was what can only be described as an “overkill” of documentation by the Complainant in areas where a summary would have sufficed. Such “overkill” is oppressive for both the Center and the Panel. Submission of such a large amount of documentation with a complaint gives rise to a prima facie presumption that the dispute is not readily susceptible to the streamlined adjudication process available under the UDRP.
4. Proper Respondent(s)
The name of the Registrant of the disputed Domain Name at the time when the Complaint was filed was Moniker Privacy Services. After the Complaint had been filed, the Center sought particulars of the registration and was advised by Moniker that Mr. Gregory Ricks was the registrant and his details were provided immediately.
From the material before the Panel, it transpires that Mr. Ricks acquired the disputed Domain Name through a privacy service operated by Moniker, known as Moniker Privacy Services. His aim in using a privacy service, as alleged in the Response, was to avoid unwanted junk and spam email and telephone solicitations made on the basis of information published in the WHOis database. Mr. Ricks acknowledged that the Domain Name had been registered by him using the Moniker Proxy service. The Complaint was amended at the request of the Center to show both Moniker and Gregory Ricks as Respondents. The Complainant had opposed this request but in the end went along with it.
Mr. Ricks has acknowledged his involvement as the registrant and has invited the Panel to regard his conduct as that of the Respondent for the purposes of decision. It is accordingly appropriate to refer to him as the Respondent. References hereafter to the Respondent will be to Mr. Ricks.
Mr. Ricks used a proxy service to achieve registration of the disputed Domain Name. This is becoming an increasingly common occurrence. Under this arrangement the name of the true registrant is not displayed in the Registrar’s WHOis database. It is said that proxy registrations have become popular with the rise of automatic harvesting of email and postal addresses and telephone numbers for the purpose of email spamming, direct marketing by mail and phone and also for fraud and identity theft. (See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.)
In the early days of cases under the Policy, there were numerous instances where respondents had provided false or misleading contact information. The famous Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003, is a good example. In almost all those cases, Panels were able to take a rather jaundiced view of the provision of false information by registrants hiding behind an alias or the name of some other person. However, there can be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service. Many reputable registration services now offer a proxy registration service.
Difficulty arises when an administrative proceeding is brought under the Policy, at which stage the domain name should become frozen pending resolution of the Complaint. Without addressing here the proper position vis à vis trademark owners making enquiries in the context of a possible complaint, it is for the Proxy to disclose the contact information of the beneficial owner to the dispute resolution provider and any Panel appointed by that provider. In the present case, full disclosure of Mr. Ricks’ beneficial ownership of the disputed Domain Name has been made by Moniker. But there could be difficulty if the Proxy did not do so. There is a potential for abuse by cybersquatters.
Clause 220.127.116.11 of the ICANN Registrar Accreditation Agreement is relied on by Moniker and provides as follows:
“Any Registered Name Holder that intends to license use of a domain name to the third party is nonetheless a registered domain holder of record that is responsible for providing its own full contact information and providing and updating accurate administrative contact information that it could to facilitate timely resolution of any problems that arise in connection with a registered domain name. A Registered Domain Name Holder licensing use of a registered name according to this provision shall accept liability for harm caused by wrongful use of the registered name, unless it promptly discloses the identity of the licensee to the party providing the Registered Name Holder reasonable evidence of actionable harm.”
The Panel is not satisfied that the above clause really covers the proxy phenomenon. It seems to refer to the licensing of the use of a domain name in much the same way as to the licensing of the use of a trademark.
Once it was aware of the Complaint, Moniker should not have changed the publicly-available WHOis information as to the identity of the registrant, in addition to making the above-mentioned disclosure. It has taken on the responsibility of the registration of domain names on behalf of another and presumably, has obtained some business advantage for this service. One of the consequences of this mode of doing business is that during the pendency of a UDRP proceeding the Proxy as registrant cannot change the domain name registration or transfer it to the beneficial owner.
Under the Policy and Rules as presently worded, any transfer of the name of the registrant, no matter how well-intentioned, should not occur because of paragraph 8(a) of the Policy. Nor is proxy registration the same thing as naming the true registrant in the register but giving the registrant’s address as being care of the Registrar. The Panel further notes that any transfers by proxy holders in the context of a UDRP case also raise questions as to how to ensure that the transferee was indeed the beneficial owner for whom that registration had been made.
If the Complainant were to prevail in this proceeding, then there would normally have to be a transfer from the registrant (in this case Moniker) to the Complainant in terms of the Policy, despite the underlying beneficial ownership.
The Panel in the Fifth Third Bancorp case considered that the party who registered the domain name is a proper respondent in a UDRP proceeding. However, this Panel disagrees with the view expressed in that case that the Policy does not contemplate in rem proceedings against the Domain Name as if it were a certain kind of property such as land or ships where the register is paramount. Because of the complications that may arise from the use of proxies or indeed from cases where wholly fictitious registration information has been provided and the true registrant cannot be known, then there is much to be said for considering the disputed Domain Name as an asset in rem susceptible to a cancellation or transfer order. That would make the system similar with, for example, land registration under the Torrens system (used in many common law jurisdictions) or ship registration. It may also offer a practical approach in the context of the UDRP to the increasing use of automated registration programs, which seem to make ‘moving targets’ out of registrants.
Indeed, the definition of Respondent in the Rules “means the holder of a domain name registration against which a Complaint is initiated”. The Rules seem to contemplate only the holder of the registration as the respondent. The practice of having naming both the Proxy Service and the beneficial owner of the registration was followed in two recent WIPO decisions Midwest/GRS Inc and Others v. Moniker Privacy Services/Forum LLC/Registrant 187640 firstname.lastname@example.org, WIPO Case No. D2006-0478 and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550.
The procedure in proceedings involving a proxy WHOis service was described in Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881 as follows:
“When such circumstances arise, the Panel understands that the Center’s current practice is typically to require the complainant to amend the complaint – either to name both the privacy service registrant and the party using the privacy service or to simply name the party using the privacy service. This practice is sensible and has the benefit of trying to get notice of the proceeding to the party that is most affected the proceeding. However, it may simply be that one of the disadvantages of using a privacy service – to be weighed against the advantages of using such a service – are delays or lack of notice of proceedings that rely on the information contained in the registration record to provide notice. By this the Panel does not intend to suggest that such a delay or lack of notice is insignificant, but that they may simple be one of the consequences of the choice to use such a service, particularly where proceedings under the Policy look to and rely on information in the registration record maintained by the registrar.”
The practice of having two Respondents to a proceeding under the Policy where one is the entity against which any order has to be made and the other is the party vitally interested in the outcome and whose conduct is in issue is well-recognised in litigation and in rules of civil procedure – certainly in common law jurisdictions, as it helps to inform interested parties. This may not always be practicable, however, and in any event is not a requirement under the Policy or Rules, which are predicated on the responsibility of the registered holder of the domain name.
Moniker made a preemptory demand to the Center that its name be discharged from the proceedings. The Panel referred this request to the parties for comment. It also requested Moniker to advise whether the name of the registrant had been changed and its justification for so doing. The Complainant insisted that Moniker should remain and the Respondent submitted that it should not but it was indifferent. The Panel has considered these comments.
Moniker replied to this invitation somewhat acerbically. It challenged the right of the Center to make the enquiry. It relied on Clause 18.104.22.168 of the Registrar Accreditation Agreement, cited earlier, as a justification for showing Mr. Ricks as registrant on receipt of the Complaint.
It is not part of the Panel’s functions to adjudicate on a registrar’s obligations except to the extent those obligations impinge on a UDRP complaint. The Panel, as indicated earlier, does not read that clause in that way, but this proceeding provides no forum for the proper disposition of that point of interpretation. All the Panel can do is make its own interpretation of the clause which does not, on its terms, permit a change in the publicly notified registrant while a complaint about the disputed Domain Name remains unresolved.
The Panel considers that this Complaint should proceed with both named parties for the reasons discussed above. It should be stressed that Moniker remains a pro forma respondent: that the conduct to be discussed in this decision is that of Mr. Ricks and not that of Moniker and that Moniker has acted promptly in supplying Mr. Ricks’ details.
5. Factual Background
The Complainant is a Swiss-registered charitable organization founded in 1961 as World Wildlife Fund. It is now known as WWF Worldwide Fund for Nature and also as WWF International. It is the largest private international nature organization in the world. Via affiliated national organizations, it has virtually a worldwide presence, having some 5 million individual contributors. Over the last 10 years, it had been engaged in 3682 conservation programs in 184 different countries.
Generally, the Complainant uses the initials WWF with a depiction of a great panda. The initials with the Panda device are used to raise its profile through extensive merchandising activities throughout the world.
The Complainant owns numerous trademarks throughout the world for WWF and also for WWF plus the Panda device. Most of these marks were registered before the Respondent acquired the disputed Domain Name, including registrations in the United States long before that date. 261 out of 311 registrations of the letters WWF predate January 20, 2003, in 94 different countries – 385 out of 401 registrations of the letters WWF plus the Panda device in 108 different countries, predate January 20, 2003. The national organizations affiliated to the Complainant are licensed to use the marks. These have been used on periodicals, reports and goods by licensees of the Complainant and/or its national organizations for many years, including prior to January 20, 2003.
No license to use any of its trademarks was ever given to the Respondent, by the Complainant or any of its authorized national institutions.
The disputed Domain Name was first used by a company originally called Worldwide Wrestling Federation, more recently, World Wrestling Federation (“the Federation”). In 1979, it traded under the initials WWF and its activities were broadly confined to the United States until the late 1980s. The key business of the Federation was live wrestling entertainment events. It marketed magazines, videos and other merchandise through the use of the WWF mark.
There had been a number of law suits between the Complainant and the Federation relating to trademark applications made by the Federation in various parts of the world which led to an agreement between the Complainant and the Federation dated January 20, 1994, over the use of the marks. In 1992, a Court in Switzerland had issued an ex parte injunction at the behest of the Complainant against the Federation, prohibiting the distribution of the Federation’s WWF magazine. The Judge in that case noted that the Complainant had for some time been widely known as WWF and that various products had been marketed by the Complainant under this name with a high degree of recognition, both of the mark WWF both in isolation and also in conjunction with the panda image.
In 1999, the Complainant issued proceedings in the High Court of Justice in England against the Federation over its use of the initials WWF in alleged breach of the 1994 agreement, which had settled previous disputes regarding the use of the initials. On August 2001, the Complainant was granted an injunction and other relief. Following unsuccessful appeals by the Federation, the injunction became effective on November 10, 2002. Part of the Court’s order against the Federation was that it should take the necessary steps, at its option, to transfer to the Complainant or to cancel or change any of its domain names incorporating the initials WWF.
The legal proceedings against the Federation received considerable publicity and numerous media extracts were provided by the Complainant showing that this publicity was quite extensive in the United States, including in newspapers circulating in the areas where Mr. Ricks resides. The thrust of the articles was to emphasize that the Complainant had prevailed over the Federation in the use of the letters WWF.
The Federation did not take the option of transferring the disputed Domain Name to the Complainant given to it by the judgment. Despite efforts by the Complainant to acquire the name via a domain name watching service, the disputed Domain Name was acquired from the Federation by one Frank Baach, trading as Newbrand, on December 1, 2002. It was offered for sale by him on an Internet domain name discussion forum for a minimum price of $10,000. The circumstances of Mr. Baach’s acquisition of this disputed Domain Name were made public on the “www.dnforum.com” website, then run by Mr. Ricks.
The Complainant contacted Mr. Baach with a view to negotiating a transfer and had prepared an administrative proceeding for submission to WIPO. However, on January 20, 2003, the Domain Name was transferred to Mr. Ricks, trading as “Motherboards.com Inc.”. Following this transfer, the Domain Name resolved to a website that provided links to other websites offering various goods and services. Later, the Domain Name resolved to a website carrying a discussion forum for wrestling entertainment fans.
The exact date on which the Web Wrestling Forum website first appeared is unclear. According to the Complainant’s research into archival material, this may not have occurred before June 2004. Copies of the same page in June, October and November 2004, show links to third-party websites offering goods and services unrelated to wrestling. A website archive of April 2005 shows links to “World wild life fund”, “Wildlife” and “conservation”. The Respondent contends that the archived pages are not necessarily reliable.
On October 6, 2005 the website of the disputed Domain Name resolved to a series of links to third-party websites selling various goods and services. Some of the links have titles associated with the Complainant and its activities such as the link titles of “giant panda”, “environmental education”, “wild life” and “WWF”. Since the Complaint was prepared, there has been a change in the content of the website.
The Respondent registered the disputed Domain Name on January 20, 2003. He pointed to four WIPO decisions in 2000 where the Federation had successfully upheld its rights to the disputed Domain Name against parties other than the Complainant in the present case.
The Respondent in January 2003 owned <dmforum.com>, which he later sold. He has a history of operating multi-party, advertising-supported weblogs such as <dmforum.com>. He operated the Web Wrestling Forum until September 2005, when he had a disagreement with the administrator whom he designated to run the Web Wrestling Forum.
The Respondent, through affiliates, has been involved as Respondent in other UDRP proceedings both with WIPO and NAF (National Arbitration Forum). In the two WIPO decisions, Welch Foods, Inc., A Cooperative v. MSS, WIPO Case No. D2001-1065, and Philip Morris USA Inc. v. Domain Admin, WIPO Case No. D2005-0108, the Respondent filed no Response and was ordered to transfer domain names of well-known marks. He was also sued by the Playboy organisation over the use of one of its domain names. In the two NAF cases in which he prevailed, one was for a generic term and in the other, the mark was registered two years after the domain name.
The Complainant did not file this proceeding until some three-and-a-half years after the disputed Domain Name was registered. It claims it had prepared a Complaint against Mr. Baach but did not proceed with it after Mr. Baach had transferred the Domain Name. It then prepared an amended complaint, but before it was filed, the Domain Name referred to a website for wrestling. According to the Complainant’s research, this did not happen until June 2004. No reason for the Complainant’s inaction between January 2003 and June 2004 was given. The Complainant perceived this new use might make its chances of success more difficult. It claims to have been unaware of the transfer to Moniker “for some time”.
6. Parties’ Contentions
The disputed Domain Name is identical to the numerous trademarks for the letters WWF owned by the Complainant and is identical to the numerous trademarks for WWF plus the Panda device.
The Respondent has no rights or legitimate interests in respect of the Domain Name and was not granted any by the Complainant or by its national organizations nor is he commonly known by the initials WWF.
The date at which good faith should be considered is the date on which the Domain Name was acquired by the present Respondent, namely January 20, 2003.
Anonymous registration under Moniker’s Domain WHOis Privacy Service is an indication of bad faith. The Respondent must have known of the success of the Complainant against the Federation in the English Court case because of the extensive publicity throughout the world including particularly on the Internet and in the United States media.
The Respondent’s registration of a Domain Name corresponding to a well-known mark is evidence of registration in bad faith and the ongoing holding of such a Domain Name is evidence of use in bad faith.
By using the disputed Domain Name, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. This is proved by the fact that many of the links have titles associated with the Complainant and its activities. It is well-known that persons in the position of the Respondent receive “click-through” commissions. After the Domain Name had been acquired, there was a period when the website was used for “click-through” purposes long before the Web Wrestling Forum website got under way.
The Respondent has previously engaged in a pattern of conduct of registering domain names in order to prevent a Complainant from reflecting marks in a corresponding domain name. Mr. Ricks acknowledged, in the domain name forum discussion, that he had been sued by Playboy over his registration of <playboybunny.com>. In two cited WIPO decisions and one NAF decision, domain names registered by him had been ordered to be transferred.
Long before the Respondent’s dispute with an employee in September 2005, he had used the website for “click through” sales of third party goods and services.
The Complainant has historically not been associated with the letters WWF but the Federation has been. There were references to WIPO decisions in 2000, where the Federation had upheld its right to the disputed domain names against others than the Complainant in the present case. The Respondent purchased the disputed Domain Name from a party that had utilized a back-order service for abandoned domain names. The Respondent then established the Web Wrestling Forum which, as the Complainant acknowledged, point to a website containing discussion forum for wrestling entertainment fans.
The Respondent stressed that the Complainant stated in its Complaint that it had perceived “that this new use might make it more difficult to mount a successful administrative proceeding complaint”.
As an archived page from November 13, 2004 shows, the Web Wrestling Forum had grown to encompass 5996 registered users and an archive of 151,472 messages posted. During this time, the only contact made by a third party to the Respondent was by a representative of the Federation to confirm that the Respondent was not representing himself to be the Federation.
The Respondent has a well-established history of operating multi-party advertising supporting web logs such as DN Forum. Current examples include “www.wallyworldsucks.com”, an online forum devoted to discussions concerning the retailer Wal-Mart. Mr. Ricks purchased DN Forum from its originator and has subsequently sold it.
The Internet archive shows that prior to notification to him of the dispute, the Respondent was using the Domain Name for a bona fide offering of goods and services i.e., the Web Wrestling Forum, which has nothing to do with wildlife conservation.
The Respondent was not a party to any agreement or judgment arising out of the litigation between the Complainant and the Federation. In September 2005, Mr. Ricks had experienced difficulty with his administrator of the Web Wrestling Forum. Therefore he shut down the Forum and parked the home page pending its resurrection.
As to bad faith the Respondent provided a statement under sanction of perjury that he had no knowledge of the litigation or dispute between the Federation and the Complainant when he registered the disputed Domain Name in January 2003.
He operated the Forum with express knowledge of the former registrant, namely the Federation. His use of a proxy service is not per se evidence of bad faith. The situation is quite unlike that of the Telstra v Nuclear Marshmallows case which involved fictional Whois data expressly designed to evade notice and liability. Here the Complainant knows from its own research, the exact identity of the Respondent who has filed the Response and Moniker provided the information promptly.
The Respondent ultimately prevailed in one of the UDRP decisions mentioned by the Complainant and succeeded in three other named NAF decisions under the Policy, particulars of which were given.
The Respondent criticizes the Complainant’s delay in filing this Complaint. It refutes the imputation that the use of the temporary, recent parking page suggests that the Respondent was badly motivated at the time when he acquired the disputed Domain Name. The reason for the parking page was that the Respondent’s forum site had been sabotaged by a former employee and that the Respondent had therefore shut down the forum and parked the home page. He has no control over the links provided by the parking service which included, for a brief period of time, links relating to wild life.
Even if the situation relative to the Complainant’s prior litigation was understood by the Respondent at the time of registration, it was not bad faith directed towards the Complainant. To persons such as the Respondent, not directly involved in the litigation between the Complainant and the Federation, the external appearance was that the Complainant was seeking to have the Federation cease all uses of WWF as its mark whether online or offline. The Complainant did not want to obtain a transfer of the Domain Name as a result of the litigation because it did not obtain an order expressly requiring the transfer of the Domain Name. It is a reasonable assumption that it did not want it. No mention was made to the Respondent by Mr. Baach of any contact of him by the Complainant.
In summary, Internet users would naturally assume that the disputed Domain Name related to the subject of wrestling because that is what it had been used for over a period of 10 years. The Federation had protected its use of the disputed Domain Name over that period.
7. Discussion and Findings
A. Identical or Confusingly Similar
The disputed Domain Name is identical to numerous trademarks for the letters WWF owned by the Complainant in the United States and in many other countries. It is also confusingly similar to those marks which have the letters WWF plus the device of the Panda.
It matters not whether the disputed Domain Name was owned by the Federation until the conclusion of the litigation with the Complainant in 2002. The Policy merely requires that Complainant demonstrate that it has rights in trademarks registered or unregistered as at the time of filing its Complaint. It has clearly succeeded in doing just that.
There is overwhelming evidence that the Complainant owns a large number of trademarks worldwide. It has shown the indicia for a common law mark as well. Therefore the first criterion under the Policy is proved.
B. Rights or Legitimate Interests, Registration and Use in Bad Faith
Whilst it is clear that the Complainant or its national organization gave no rights to the Respondent, it is possible for a Respondent to demonstrate that it is not caught by this limb of the Policy if it can show that before notice of the dispute, he had made reasonable preparations for the conducting of a legitimate business using the disputed Domain Name. Consideration of this aspect is often linked with the consideration of bad faith. In this case, the two are so intertwined that the Panel considers them in tandem.
Under the Policy bad faith registration and use both have to be proved separately. There have been many cases where ample evidence of bad faith use has been able to justify the inference of bad faith registration.
A complicating factor here is that the Complainant did not file its Complaint until three-and-a-half years after the disputed Domain Name had been transferred to the Respondent. It is clear from WIPO jurisprudence that the date of bad faith registration must be assessed as at the date on which the current Respondent acquired the disputed Domain Name, which is established as January 20, 2003. Whilst there is no time limit for filing a complaint under the Policy, nor does the equitable doctrine of laches find any place in the Policy, it can nevertheless become more difficult for a Complainant to infer bad faith registration the greater the distance between the dates of registration and of the filing of the Complaint.
The Respondent in his first statement under penalty of perjury, said that his acquisition of the disputed Domain Name was “late 2003”. When the Complainant pointed out that it was January 2003, the Respondent claimed to have made an error in his first sworn statement and to have confused the timeframe within which he had planned to launch the Web Wrestling Forum. The Panel does not find this explanation convincing. In a statement made under penalty of perjury, precision is to be expected. The relevant facts must have been readily available to the Respondent at the time of making the first statement.
The Panel notes that the Complainant apparently did not obtain an order from the Court in England requiring the Federation to transfer the disputed Domain Name to the Complainant, which allowed the name to become disused and, as happened, to be picked up by the various services which scavenge for discarded domain names. Be that as it may, the Complainant clearly knew from its dealings with Mr. Baach that the Federation was trying to sell the name.
Any decision on the second two criteria under the Policy must focus in this case on whether bad faith registration occurred when Mr. Ricks purchased the Domain Name from Mr. Baach. It is difficult to see why a complaint could not have been made at that time. The situation could not have changed three-and-a-half years later. The Panel finds curious the Complainant’s equivocation about filing a Complaint. The Complainant says that it considered that it had less chance of success because of the advertising of wrestling and the creation of a wrestling forum at the website of the disputed Domain Name but that did not occur until 2004 at the earliest, so it is hard to see why the Complaint was not filed before then.
It is only either in April 2005 or after the later falling-out between Mr. Ricks and his employee that there was created a parking site which had click sites through to environmental websites which could have created confusion into thinking that the Domain Name was associated with the Complainant. That in the Panel’s view could be evidence of bad faith use but, given the lapse of time between registration and April 2005, that fact does not help in assessing whether there had been bad faith registration.
Even if the Respondent had been aware of the dispute between the Complainant and the Federation he could well have been unaware of the details of the Court’s order such as that relating to the use of the disputed Domain Name. He did know that the Federation had lost the case and that the Complainant had prevailed with its trademark rights upheld.
What the Panel finds unexplained by the Respondent is the fact, unchallenged by him, that his first use of the disputed Domain Name – well before the wrestling forum was instituted – was of a site offering goods and services by click-through.
The Respondent claims that, if he registered in bad faith, then that bad faith was directed at the Federation and not the Complainant. Yet he admitted in his first statement under penalty he knew that the Federation had resolved a dispute with the Complainant and that the Federation had changed its name because of legal action. He claimed as his understanding at the time that any resolution of the dispute would have seen the Domain Name transferred to the Complainant rather than have the name available for purchase through a service for the sale of disused domain names.
The Panel is able to infer from the facts as follows:
(a) The Respondent is highly-experienced in domain name disputes under the UDRP.
(b) He must have seen considerable value in owning the disputed Domain Name for which he paid $10,000.
(c) That value lay not only in its being a 3-letter domain, but in its notoriety as letters representing the Federation which were now held by a Court, with worldwide publicity, rightly to belong to the Complainant.
(d) The fact that the disputed Domain Name was on the market and not transferred to the Complainant was an indication to the Respondent (and anyone else) that the disputed Domain Name had not been part of any order made in the litigation. One could not expect the media to carry, or the Respondent to know, the minute detail of the Court’s order.
Bad faith at registration against the Federation cannot be inferred as bad faith against the Complainant. There is probably not bad faith against the Federation if that body elected to release the disputed Domain Name on to the market.
The interval between the Domain Name registration in January 2003 and the appearance of wild-life etc. links on the website some time after April 2005 is just too long to justify an inference of bad faith registration at the time of registration.
The Panel is faced on one hand with the Respondent’s statement under penalty of perjury that he did not know of the Complainant’s interest in the disputed Domain Name at the time. On the other hand, there is a rather weak inference that as at January 2003, Mr. Ricks knew not just that the Domain Name related to the Federation, but that the corresponding trademark rights really belonged now to the Complainant. The Panel is in no position to find which stance is correct. There would have to be a finding made by a Court after hearing evidence.
In other words the Panel has not found it proved that there has been bad faith registration against the Complainant. It also means that if what the Respondent asserts is true, then he has shown “demonstrable preparations” to use the name in respect of a legitimate business (the Web Wrestling Forum) before notice of a dispute, thus bringing the Respondent within one of the provisions of paragraph 4(c) of the Policy. In that event, the second and third limbs of the Policy have not been proved by the Complainant.
The Panel finds it unproved that Mr. Ricks’ use of a proxy registration service is an indication of bad faith. There can be many legitimate reasons for using a proxy registration service, many of them consistent with good faith.
Although Mr. Ricks does not comment on the Playboy dispute or the two WIPO decisions where he was found to be in default, there is insufficient evidence to infer a course of registrations of domain names in bad faith.
For all the foregoing reasons the Complaint is denied.
Sir Ian Barker QC
Kiyoshi I. Tsuru
David E. Sorkin
Dated: November 1, 2006