WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services
Case No. D2006-1620
1. The Parties
The Complainant is TDS Telecommunications Corporation, of Madison, Wisconsin, United States of America, represented by Sidley & Austin, United States of America.
The Respondents are Registrant  Nevis Domains, of Charlestown, Saint Kitts and Nevis and Registrant  Moniker Privacy Services, of Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tdstelecom.net> is registered with Moniker Online Services, LLC, the registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on December 20, 2006, naming as Respondent “Moniker Privacy Services” and “Unknown Customer”. On December 22, 2006, also January 5, 2007 and January 9, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 10, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response indicating the registrant as “Registrant  Nevis Domains” and providing contact details. In response to an email communication from the Center conveying inter alia the registrant information and contact details provided by the registrar in its email of January 10, 2007, the Complainant filed an amendment to the Complaint adding “Nevis Domains” as Respondent on January 22, 2007. 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 January 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2007.
The Center appointed Clive N.A. Trotman as the sole panelist in this matter on February 21, 2007. 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
According to the Complainant, it is a wholly owned subsidiary of Telephone and Data Systems, Inc., which provides communications services including wireless, telephone and broadband services to more than 6 million customers in 36 States of the United States of America. The Complainant itself offers local, long-distance, broadband, Internet and entertainment services, to rural and suburban communities in 29 States. The name “TDS Telecom” has been used at least since 1985 and the TDS TELECOM trademark (the “trademark”) has been used at least since 1990. The trademark is heavily promoted and well-known.
The Complainant has a primary Internet presence through its active website having the domain name <tdstelecom.com>, which has been registered since 1995, and used since 1997.
The Respondent has registered the disputed domain name <tdstelecom.net>, which appears to have been created on September 18, 2004.
5. Parties’ Contentions
The Complainant contends and provides documentary evidence that it is the owner of the trademark TDS TELECOM including Registration No. 2,087,371 for telecommunications services, Registration No. 2,271,412 for ISDN services and network cabling design, installation and testing services, and Registration No. 2,079,051 for telecommunications services.
The Complainant has been offering its telecommunications services under the name “TDS Telecom” at least since 1985 and has used the TDS TELECOM trademark at least since 1990. The Complainant first registered the domain name <tdstelecom.com> in 1995 and began using it in 1997.
The Complainant contends that the disputed domain name <tdstelecom.net> is confusingly similar and for all practical purposes identical to its trademark TDS TELECOM, and that the technical differences between the two are of no consequence.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent is not affiliated with the Complainant and has not been permitted to use the trademark or any variations thereof in a domain name or otherwise.
There is no evidence that the Respondent has been commonly known by the disputed domain name, which was registered on September 18, 2004, and it is contended that the Complainant’s long-established rights to the trademark, dating back at least to 1990, would preclude the Respondent from having become known by the same name. There is no evidence of the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
The Complainant further contends that the domain name was registered and is being used in bad faith. The Respondent had constructive prior knowledge of the Complainant’s trademark through federal registrations. The domain name consists solely of the trademark.
The Complainant contends that website corresponding to the domain name diverts visitors from the Complainant’s website to those of competitors, apparently for commercial gain. Content over time has been related variously to the supply of telephone, telecommunications, mobile, and other communications related and generic services and apparently generates revenue by linking visitors to other websites. The similarity of the Respondent’s website to the Complainant’s is likely to confuse consumers as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant sent to the Respondent, through its registrar, a cease and desist letter on November 1, 2006, to which no reply was received. It is contended that in the circumstances, where the disputed domain name is identical to a well known trademark, the use of the Registrar’s privacy service to conceal the identity of the actual owner of the domain name is further evidence of bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
Initial Whois domain name search enquiries, submitted in evidence, yielded an apparent registrant name of “Registrant  Moniker Privacy Services” with contact details apparently corresponding to those of the registrar, Moniker Online Services LLC. The registrar, in response to the Center’s verfication request, subsequently provided the registrant name of “Registrant : Nevis Domains”, with the contact details as set out above.
This suggests that a privacy service is in use, although whether the subsequently disclosed registrant is in fact the underlying or beneficial registrant, or merely another proxy service, remains unclear from the available evidence. In general there may be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service. In the present case, the beneficial or underlying owner of the disputed domain name appears to have taken steps to conceal its identity and to place itself beyond direct contact through one or more proxy services. One of these is evidently called Moniker Privacy Services, a service apparently provided by the registrar, Moniker Online Services LLC.
As has been noted by previous panels, the use of privacy services is becoming an increasingly common occurrence, and is a trend which is likely to continue. Under such arrangements the name of the “true” underlying or beneficial registrant is typically not displayed in the registrar’s publicly accessible Whois database, and is instead disclosed (if at all) only after the Complaint has been filed. At that point, some registrars, presumably in consultation with the privacy service, also apparently disclose the information directly in the Whois database.
Such scenarios raise important issues. For example, as paragraph 1 of the Rules defines a Respondent as “the holder of a domain-name registration against which a complaint is initiated”, questions inevitably arise as to how trademark owners are supposed to prepare a fully informed case in the absence of prior appropriate information about the name of the “true” underlying or beneficial registrant. Even if the registrar does make available (either to a prospective complainant or only subsequently to the dispute resolution provider) the identity of the beneficial or underlying registrant, questions can remain regarding the extent to which such a subsequently claimed identity is indeed the “true” registrant as opposed to a convenient identity for the purposes of the case. In light of the runaway developments in the domain name system, there seems to be ample scope for authoritative guidance on at least these points so as to not raise further barriers to effective dispute resolution under the UDRP.
Faced with such ‘russian doll’ scenarios, to date panels in comparable cases have been prepared to treat both the initially listed registrant and the subsequently disclosed registrant together as Respondent. Previous panels have also for example found that it is for the privacy provider or proxy to disclose the contact information of the underlying beneficial owner at least to the dispute resolution provider and to any panel appointed by that provider. See e.g., WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. Case No. D2006-0975.
It may be presumed for the purpose of the current proceedings that “Registrant : Nevis Domains” is an appropriate respondent, but that in the absence of any compelling documentary evidence beyond the Whois to the contrary, it is also appropriate for “Registrant  Moniker Privacy Services” to be included among the named respondents. The Panel has proceeded on this basis and will for convenience refer to a single Respondent.
The Panel is satisfied that the dispute resolution service provider, namely the Center, by sending communications to both the original and subsequent addresses and contacts made available through the registrar, has exercised extreme care and at the least fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
Questions raised by the Complainant as to whether the registrar has fulfilled the terms of the ICANN Registrar Accreditation Agreement are outside the scope of the present proceeding.
A. Identical or Confusingly Similar
The Complainant has produced documentary evidence to the effect that it has rights in the trademark TDS TELECOM, the component TDS being derived from Telephone and Data Systems Inc., which owns TDS Telecom. The disputed domain name is <tdstelecom.net>. The gTLD qualifier, in this case “.net”, being an integral part of the domain name, is disregarded in the determination of whether there is confusing similarity. Also disregarded are spaces, which are not accepted in a domain name, and the distinction between upper and lower case typing, e.g., in the capitalization of names. What remains of the disputed domain name is “tdstelecom”, which in terms of Internet technology is identical to the Complainant’s trademark TDS TELECOM. The Panel so finds in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that neither the Respondent nor anyone else within the context has rights or legitimate interests in the disputed domain name or has been given permission to use it. In particular the Complainant has not authorized or permitted the Respondent to use its trademark. There is no known evidence that the Respondent is commonly known by the name “TDS Telecom” or similar, and the Complainant’s long established rights in the trademark would preclude this. There is no evidence that the Respondent is making any legitimate, fair or non-commercial use of the disputed domain name.
The Complainant has thus made out a prima facie case to the effect that the Respondent has no rights or legitimate interests in the domain name. The Respondent has been given the opportunity to refute the Complainant’s prima facie case but has not done so or offered any reply. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The conduct of the Respondent comes within the ambit particularly of paragraph 4(b)(iv) above. On the uncontested evidence submitted, the Respondent has registered a domain name identical and therefore confusingly similar to the Complainant’s well known trademark and identical to the Complainant’s own Internet address except for being in the “.net” domain whereas the Complainant’s is in the “.com” domain. The disputed domain name has been in use, resolving to an active website that clearly is in competition with the Complainant. The Respondent’s website purports to source predominantly telephone and telecommunications supplies, mainly by means of links to other suppliers who are in effect advertisers.
It may reasonably be concluded on the evidence that the Respondent is engaging in the revenue generating activity sometimes called click-through, in which the Respondent collects fees from third parties for each Internet user referred to them. In order to maximise traffic, the Respondent has appropriated the Complainant’s trademark and good will, relying on Internet users to find the Respondent’s website through search techniques or by presuming that <tdstelecom.net> would be the Complainant’s Internet location. On the evidence, the Panel finds bad faith proven in the terms of paragraph 4(b)(iv) of the Policy and finds for the Complainant accordingly.
The circumstances provided for in paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively. The uncontested evidence is that on November 1, 2006, the Complainant’s representative wrote to the registrant name and address of record, being Moniker Privacy Services at the address of the registrar, presenting a cease and desist letter and asking also for disclosure of the identity of the true registrant. Irrespective of whether the Respondent’s failure to reply was because it had intentionally taken steps not to receive the communication, or because it chose not to reply, it has been held that failure to acknowledge or reply to a cease and desist letter may in certain circumstances be evidence of bad faith (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). It has also been held that a Respondent’s use of false or misleading information in connection with the registration of a domain name supports a finding of bad faith (Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111). In the present case the contact details furnished by the registrant appear to have had the effect of leading enquirers away from the registrant. It also appears that the contact details furnished by the registrant may have been inaccurate or incomplete. In the circumstances, the Panel finds these factors to be a further indication of the Respondent’s bad faith.
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, <tdstelecom.net>, be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: March 7, 2007