WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shon Harris v. www.shonharris.com c/o Whois Identity Shield
Case No. D2007-0997
1. The Parties
The Complainant is Shon Harris, Seattle, Washington, United States of America, represented by Kirkpatrick & Lockhart Preston Gates Ellis LLP, United States of America.
The Respondent is www.shonharris.com c/o Whois Identity Shield, Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <shonharris.com> (the “Disputed Domain”) is registered with Nameview Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2007. On July 11, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. The Center sent further emails to the Registrar chasing a response to its request on July 16 and 18, 2007. On July 18, 2007, Nameview Inc. transmitted by email to the Center its verification response in which it stated that the Respondent was not listed as the registrant and that the current Registrant was in fact “Shon Harris”.
3.2 Whilst the information provided by the Registrar appeared to indicate that the Disputed Domain had already been transferred into the name of the Complainant, in response to an email enquiry from the Center, the Complainant’s representatives confirmed that this was not the case and that the Complainant did not control the Disputed Domain. The Complainant accordingly requested that the Center proceed with the Complaint.
3.3 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”).
3.4 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 July 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2007.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 20, 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.
3.6 Paragraph 8 of the Policy makes it clear that a domain name cannot be transferred “during a pending administrative proceeding to Paragraph 4 [of the Policy]”. Paragraph 4 of the Policy states that “the process for initiating and conducting a proceeding” is set out in the Rules. Paragraph 3 of the Rules states that “Any person may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules”. However, paragraph 4(c) of the Rules states that the date of commencement of the proceedings is the date upon which the Center is satisfied that the Complaint was in compliance with the Policy (i.e. in this case July 23, 2007).
3.7 Exactly when the change in the WHOIS registrant information from “Whois Identity Shield” to the current name “Shon Harris” occurred and whether this was “during a pending administrative proceeding” is not clear, but it does appear to have taken place some point after the Complaint was prepared and submitted to the Center (with a copy to the Registrar) prior to the formal commencement of proceedings. However, the Panel is of the view that it does not matter. Notwithstanding the recent transfer, the Complainant has confirmed that it does not in fact control the Disputed Domain, and there is no evidence to suggest that the transfer of the Disputed Domain into the name of “Shon Harris” means that actual control of the Disputed Domain has passed out of the hands of the previous registrant or any underlying beneficial owner. Furthermore, given that the contact address now given for “Shon Harris” is the address of the Complainant, to require the Complainant to amend its Complaint in a manner that meant that it was apparently directed to itself would be pointless.
3.8 Accordingly, the Panel believes that it both can, and should, proceed to a decision in this case and is required to do so by September 3, 2007.
4. Factual Background
4.1 The Complainant is Ms. Shon Harris, an American network security specialist. Ms. Harris is a former engineer from the U.S. Air Force and is now an instructor, author, and president of network security company “Logical Security”.
4.2 The Complainant has a website, <logicalsecurity.com> from which she provides goods and service in the network security field. She has used her name in connection with these goods and services since “at least August 2001”.
4.3 On July 26, 2005, the Disputed Domain was registered with Nameview Inc. in the name of <shonharris.com> c/o Whois IDentity Shield. <shonharris.com> is simply the Disputed Domain and is not the name of any real or legal person. Whois IDentity Shield is an entity that offers a “masking” or “privacy” service to domain holders and it is clear that the Disputed Domain was in fact registered by some un-identified third party who used Whois IDentity Shield to “mask” his or its true identity.
4.4 Subsequent to registration, the Disputed Domain resolved to a webpage that had all the hallmarks of a domain name parking service. The webpage was headed “Welcome to shonharris.com” and bore the subtitle “For resources and information on Cissp and Dewalt”. On the left hand side of the page were links to various “related searches” under words such as “Dewalt”, “harris” and “Cissco”. When clicked upon, these links would produce various “sponsored results” in a further webpage that still bore the “Welcome to shonharris.com” heading.
4.5 As has already been described above, by July 19, 2007, the Disputed Domain had been listed in the WHOIS data as registered in the name “Shon Harris”. However, it would appear that actual control of the Disputed Domain had not passed to the Complainant and that the actual controller of the Disputed Domain (whoever that may be) may indeed not have changed. Where reference is made in the decision to the term Respondent (save where the context suggests otherwise) it should be understood as referring to the original and continuing de facto registrant and the ultimate controller of the Disputed Domain.
4.7 As at the date of this decision, no website operates from the Disputed Domain.
5. Parties’ Contentions
5.1 The Complainant contends that the Disputed Domain is “using (her) personal name and mark to divert internet traffic from (her) <logicalsecurity.com> Web site, and other sites that legitimately offer (her) goods and services to the contested domain <shonharris.com>…where they will find links to competing goods and services.” So far as the requirements of the Policy are concerned, she maintains as follows.
The Complainant’s Trademark
5.2 Ms. Harris has been using her name in connection with the goods and services that she provides since August 2001, and is said to be one of the best known experts in her field. She has been a regular contributor to industry magazines such as Information Security and Windows 2000. She provides computer and information security classes to a range of clients including the (American) Department of Defence, the Department of Energy, the National Security Agency and the Bank of America. These assertions are supported by a declaration from Ms. Harris and various print outs from the internet that relate to, or describe, her publications and activities.
5.3 The Complainant accordingly claims to have developed considerable goodwill and enforceable common law trademark rights in her name and mark, which has acquired secondary meaning through its use in commerce. This is said to provide sufficient rights for the purposes of the Policy and reference is made to various UDRP decisions in this respect including Dr. Michael Crichton v In Stealth Mode, WIPO Case No. D2002-0874 and Monty and Pat Roberts, Inc., v. J. Bartell, WIPO Case No. D2000-0300.
5.4 The Complainant also maintains that as a result of her activities she has established “a right of publicity” in her own personal name, and this has been infringed by the Respondent by the registration and subsequent usage of a domain name that is confusingly similar to her own. Whilst it is not stated expressly, it is clear that the Complainant maintains that this gives her sufficient “rights” for the purpose of the Policy. The Complainant refers in this respect to the decisions in Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, and Arthur Golden v. Galileo Asesores S.L., WIPO Case No. D2006-1215.
Identical or Confusingly Similar
5.5 The Complainant contends that the Disputed Domain is identical or at the very least, confusingly similar, to the Complainant’s personal name. The fact that the Disputed Domain eliminates the space between Ms. Harris’ first and last name, uses lower case letters and adds the generic top-level domain “.com” is said to do nothing to eliminate the likelihood of confusion.
No Rights or Legitimate Interests in the Disputed Domain Name
5.6 The Complainant asserts that the Respondent does not appear to be commonly known by the Disputed Domain name and is in no way affiliated with Ms. Harris. The Complainant has also in no way licensed, otherwise authorised or permitted, the Respondent to use her “name and mark”.
5.7 The Respondent’s use of a privacy protection service prevents any access to information that might suggest that it is known by or does business under the Disputed Domain. The Complainant suggests that the absence of WHOIS information creates the inference that the Respondent is not known by the Disputed Domain (and the Complainant cites the decision of Tercent Inc. v. Lee Yi, NAF Case No. FA139720 in support of this proposition).
5.8 The Complainant also claims that the Respondent has not used, nor has it made demonstrable preparations to use, the Disputed Domain name for the bona fide offering of goods or services. The Respondent is using the Disputed Domain for “click-through” advertising featuring commercially-sponsored links to goods and services. Many of the links are those of the Complainant’s competitors in the network security field. Accordingly, the Respondent is said to be “using [its] site to generate click-through revenue by using Ms. Harris’ name, and its strong commercial association with CISSP training and network security, to confuse and divert Internet users to Ms. Harris’ direct competitors”. The Complainant maintains that previous UDRP decisions have held that such activity is not a legitimate business use of a domain name under paragraph 4(c)(iii) of the Policy, nor does it constitute a bona fide offering of goods and services under paragraph 4(c)(i).
Registered and Used in Bad Faith
5.9 The Complainant contends that the timing of the registration of the Disputed Domain (i.e. four years after Ms. Harris began using the Internet to trade in the goods and services) demonstrates a prior knowledge of the “‘Shon Harris’ name and mark and its strong commercial association with network security”. Furthermore, the links on that site are to her competitors and are said to show an awareness that those searching for information regarding Ms. Harris might be interested in such goods and services as her competitors provide. Accordingly, it is said that the “Respondent registered the [Disputed Domain] specifically to take commercial advantage of the SHON HARRIS mark and its commercial associations”.
5.10 The Respondent is alleged to be using the Disputed Domain “to divert Internet users seeking goods and services associated with Shon Harris’s name and mark to its own commercially-sponsored links for competing goods and services”. This is said to be bad faith under paragraph 4(b)(iii) of the Policy “because it disrupts Ms. Harris’ business by diverting her potential customers away from sites that actually sell her goods and services”. It is also said to be bad faith under paragraph 4(b)(iv) of the Policy since the Respondent’s it involves use of the Complainant’s name “to confuse Internet users [so as] to divert users away sites that legitimately sell Ms. Harris’ goods and services[s] to [the Respondent’s own site]” with a view to generating “click-through revenue”.
5.11 Lastly, the Complainant claims that the Respondent’s use of a domain name “privacy” service to mask its identity indicates bad faith.
5.12 The Respondent did not file a Response.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In light of this material, the Panel sets out its findings below.
6.2 Under paragraph 5(e) of the Rules, if the Respondent does not submit a Response and in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. In addition, under paragraph 14 of the Rules, where a party fails to comply with any provision or requirement of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
6.3 This Panel does not find there to be any exceptional circumstances within paragraph 5(e) of the Rules that would prevent the Panel from determining the dispute.
6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to establish her case in accordance with paragraph 4(a) of the Policy and prove that:
(i) the Disputed Domain is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain; and
(iii) the Disputed Domain has been registered and is being used in bad faith.
The Panel deals with each of these requirements in turn.
A. Identical or Confusingly Similar
6.5 The Panel accepts the Complainant’s contention that as a result of her activities she has common law rights in the name “Shon Harris” that are sufficient to constitute trademark rights for the purposes of the Policy. The Complainant cites two UDRP decisions in support of that proposition and there are many more to which reference could have been made. Other examples include Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, Bill Withers v. Robert Dominico et al., WIPO Case No. D2000-1621 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, and the decisions of this Panel in Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180 and Antonio de Felipe v. Registerfly.com. WIPO Case No. D2005-0969.
6.6 In Antonio de Felipe this Panel noted as follows:
“Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name is capable of qualifying as an unregistered trademark recognised by the Policy, but in determining whether it does in a particular case, a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.”
6.7 The Complainant in this case does not actually identify the jurisdiction or jurisdictions in which the common law rights relied upon are claimed. For example, somewhat unhelpfully, the declaration of Ms. Harris simply refers to “the marketplace” without further explanation. Nevertheless, it is clear from the Complainant and the materials appended to it that Ms Harris conducts her business in large part (if not exclusively) in the United States of America and the common law rights relied upon are at least those recognised in the United States of America. In the circumstances, the Panel has little difficulty in concluding (in the absence of any contention to the contrary from the Respondent) that the Complainant has sufficient common law rights in her name under the laws of the United States of America so as to be in possession of an unregistered trademark recognised by the Policy.
6.8 In light of the Panel’s conclusion as to the existence of common law rights, it is not necessary to consider or comment upon the Complainant’s contentions in relation to “a right of publicity”.
6.9 Further the Panel accepts the Complainant’s contention that the Disputed Domain is identical or confusingly similar to the Complainant’s unregistered trademark.
6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11 The Complainant contends, and the Panel accepts, that the Respondent has not been commonly known by the “Shon Harris” name and that the Respondent has not been authorised to use that name by the Complainant.
6.12 The Panel also accepts that the Disputed Domain is being used by the Respondent to generate “click through” revenue. The Complainant’s assertion in this respect is undisputed by the Respondent, and has already been described earlier in this decision, the website operating from the Disputed Domain, bears the tell tale signs of being generated by a domain name parking service.
6.13 There is nothing per se illegitimate in the use of a domain parking service. However, for the reasons that are described in greater detail under the heading “bad faith” below, the Panel accepts that the Disputed Domain was chosen with the Complainant’s name in mind and in the hope and expectation that internet users searching for information about the Complainant’s business activities would instead be redirected to the Respondent’s site. The Panel also accepts that use of a domain name in this way does not provide a legitimate interest in that domain name under the Policy (see, for example, the decision of the three-member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.14 The Panel, therefore, finds that the Respondent lacks rights or legitimate interests in the Domain Name and that the Complainant has made out paragraph 4(a)(ii) of the Policy.
6.15 The Panel’s conclusions in this respect are reinforced by the fact that the registration details for the Disputed Domain have recently been changed so that they now reflect the name and address of the Complainant. It is highly unlikely that any person or entity that considered itself to have rights or a legitimate interest in the Disputed Domain would have acted in such a fashion.
C. Registered and Used in Bad Faith
6.16 The Complainant contends that the Respondent “had notice of Shon Harris’s rights in her name before it registered the [Disputed Domain]”. Whatever the exact level of knowledge that the Respondent had of the Complainant’s “rights”, the Panel accepts that the Respondent had knowledge of the Complainant and her activities at the time of registration. The factors that lead the Panel to this conclusion are as follows.
(i) The Disputed Domain was registered four years after the Complainant started to use her name in connection with her business i.e. (as the Complainant maintains) “long after her name had acquired widespread industry recognition”.
(ii) The Disputed Domain can only sensibly be interpreted as the two names “Shon” and “Harris” in conjunction. “Harris” is a common surname (coincidentally, it happens to be a surname that is shared with the panelist in this case). However, “Shon” is not a common name. The Complainant claims (and the Panel accepts) that it is a “highly unusual” first name. When used in conjunction with “Harris” it is likely to be even more distinctive. In the absence of any explanation from the Respondent to the contrary, the Panel accepts that the most likely explanation of the choice of that combination of names by the Respondent was that the Respondent had the Complainant specifically in mind at the time of registration.
(iii) The website operating from the Disputed Domain contained links to competitors of the Complainant and looks as if it was designed with the Complainant in mind. It is, therefore, reasonably possible to infer that it was with this knowledge and that use in mind that that the Disputed Domain was registered. As this Panel stated in Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695 (at para 6.17 (iv)):
“[t]here is a slight complication here in that this website bore the hallmarks of a domain name parking site. This is turn raises the question as to whether the Respondent was the one actually responsible for the choice of links in this case. However, the Panel believes that it is legitimate to infer that the Respondent has some involvement and control over the selection process in the absence of any assertion or evidence to the contrary (see the similar approach adopted by this Panel in Shaw Industries Group Inc. v. Adminstrator, Domain, WIPO Case No. D2007-0583).”
The Panel would also add that the case currently before it, is not one where there are multiple links some of which a small number are said to have an association with the Complainant. Most if not all of the links to searches would appear to be related to the Complainant’s activities. As described above the website page also contained the subtitle “For resources and information on Cissp and Dewalt”.
6.17 Given this finding of fact, the inevitable inference is that the Respondent chose the Disputed Domain with the intention of capitalising upon the Complainant’s fame in the hope and expectation that Internet users searching for information related to the Complainant would instead reach the Respondent’s site.
6.18 Paragraph 4(b)(iv) of the Policy gives as an example of evidence bad faith registration and use:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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] web site or location or of a product or service on [the Respondent’s] web site or location.”
6.19 Therefore, provided that the Respondent’s activities in this case were for “commercial gain” then this case falls within the scope of paragraph 4(b)(iv) of the Policy.
6.20 The Panel has little difficulty in concluding that this is indeed the case. The Complainant has specifically alleged that the Respondent’s actions were motivated by the desire to obtain “click-through” revenue and this is an allegation that has not been denied by the Respondent. Further, as has been noted above, the Respondent appears to have taken advantage of a “domain name parking” service. The way in which many of these services operate is to provide the domain name registrant with part of the “click through” revenues that are generated when an Internet user clicks on a hyperlink on the website operating from that domain name.
6.21 Further, even if the Respondent did not intend personally to benefit from its actions it would not matter. Paragraph 4(b)(iv) of the Policy does not require the owner of the domain name to be the entity that commercially gains from any diversion. It is simply a requirement that it is intended that somebody does (see for example, the decisions to this effect in V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301; PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292; and V&S Vin&Sprit AB (publ) v. Paul Stephey, WIPO Case No. D2005-0992). Given the commercial nature of the links that were returned when an internet user clicked on any of the “related searches” that appear on the <shonharris.com> website, that requirement is clearly satisfied in this case.
6.22 The Panel, therefore, finds that the Complainant has shown the requirement of paragraph 4(a)(iii) that the domain name “has been registered and is being used in bad faith” by the Respondent.
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, <shonharris.com> be transferred to the Complainant.
Matthew S. Harris
Dated: September 3, 2007