WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mrs. Eva Padberg v. Eurobox Ltd.
Case No. D2007-1886
1. The Parties
The Complainant is Mrs. Eva Padberg, c/o Mo’s Ferry Productions, Germany, represented by Lehner D�nekamp Mayer & Tank, Germany.
The Respondent is Eurobox Ltd., St. Petersburg, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <eva-padberg.com> (the “Domain Name”) is registered with MISTERNIC LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2007. The respondent named in the Complaint was “Eurobox Ltd” of “P.O. Box 108 St Petersburg 197022 Russian Federation”.
3.2 On December 21, 2007, the Center sent the usual email to the Registrar for the Domain Name notifying the Registrar of the submission of the Complaint and requesting verification of the registrant details. By December 28, 2007 the Center had received no reply and the Center sent a further email to the Registrar seeking the Registrar’s urgent response. On December 30, 2007, the Registrar responded and stated that the registrant of the Domain Name was not the respondent identified in the Complaint. Specifically, the Registrar stated that the name and address details for the registrant were the same as those given for the Complainant in the Complaint. However, the contact email (firstname.lastname@example.org) and telephone number provided by the Registrar for the registrant were different to those of both the Complainant and Eurobox Ltd given in the Complaint.
3.3 On December 31, 2007, the Center sent an email to the Registrar asking it to confirm whether, because the Domain Name was now listed in the name of the Complainant, the Complainant was able to exercise control of the Domain Name. The Center sent follow up emails in this respect on January 3, 4, 7 and 8, 2008 but the Registrar did not respond. Accordingly, on January 8, 2008, the Center redirected its enquiry to the Complainant’s representative who confirmed the following day that the Complainant did not have control of the Domain Name.
3.4 The Center informed the Registrar of this and stated that, unless they heard from the Registrar by January 10, 2008, the Center would proceed with the case on the basis of the information then available in the Who-Is report of the Registrar’s website. On January 10, 2008 the Center finally received an email from the Registrar. In that email the Registrar did not answer the question that had been put to it by the Center. Instead it stated:
“The problem was in a bug with synchronization of our master database and public service database. Now it is fixed and you can see the record that is in accordance with the information we have sent you.”
3.5 The results of a Who-Is search performed by the Center on January 11, 2008 showed that the Domain Name was not listed as registered to the Complainant (contrary to the Registrar’s statements) but was in fact still registered to “Eurobox Ltd” (the respondent specified in the Complaint) at the same address provided in the Complaint. However, the first and last registrant name fields for Eurobox Ltd were now displayed which had not been displayed at the time of the Complaint. Those names were “Charleville- mezieres” and “DP Manager”. As a result of these changes, on January 11, 2008, the Center invited the Complainant to amend its Complaint, which the Complainant duly did. The revised Complaint was submitted to the Center on January 16, 2008 and named Eurobox Ltd, Charleville- mezieres DP Manager as the Respondent (the then registrant of the Domain Name, as confirmed by a print-out of a Who-Is search conducted on the Registrar’s website on January 14, 2008).
3.6 On January 17, 2008, the Center verified that the Complaint (together with the amendment) 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 (Eurobox Ltd) of the Complaint, and the proceedings commenced on January 17, 2008. The same day the Center also sent a copy of the Complaint by email to the email@example.com email address identified for the registrant by the Registrar in its email of December 30, 2007 (described above). Further, the Center performed a Who-Is search for the Domain Name on the Registrar’s website which verified that as at January 17, 2008, the registrant had not changed and was still the Respondent.
3.7 In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2008 to both the Respondent and Complainant and additionally by email to the firstname.lastname@example.org email address (which email was confirmed to have been transferred that afternoon).
3.8 Later that same day (February 11, 2008) the Center and the Complainant’s legal representative were sent an email from the email@example.com address signed with the name “Law firm ‘Konsul”. That email is lengthy and the English is in places somewhat hard to follow. Nevertheless, in broad terms “Konsul’s” contentions are that they act for a domain name reseller company called “Expresspost Ltd” and that “Expresspost Ltd” entered into a “commission” agreement with the owner of the Domain Name. For some reason “Konsul” did not identify the identity of the “real owner of the Domain Name” but stated that the real owner on learning of the current proceedings “decided to transmit the [Domain Name] to the [Complainant]”. Notwithstanding this, “Konsul” claimed that Expresspost Ltd had a claim against the real owner of the Domain Name in respect of unpaid commission and that by operation of Russian law, Expresspost Limited were entitled to “retain” the Domain Name. Konsul further contended that “Eurobox” was not the owner of the Domain Name but simply provided “proxy” services in relation to the Domain Name.
3.9 On February 12, 2008, the Complainant’s representative replied to “Konsul’s” email stating:
“The deadline set by WIPO for responding to the Complaint was February 6, 2008. Therefore your email can not be considered anymore in the proceedings.
Furthermore, you have not given any proof that Expresspost Ltd., who you claim is your customer, empowered you to act on behalf of them.
But even if your email were to consider in the current proceedings, you have failed to give any evidence in support of your statements. Therefore the evidence provided by the Complainant has not been disproved.”
3.10 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 14, 2008. 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.
3.11 Also on February 14, 2008, the Center performed a Who-Is search for the Domain Name on the Registrar’s website. The results showed that the registration details for the Domain Name had changed to reflect the details provided by the Registrar in its December 30, 2008 email, namely: the Complainant was named as the registrant of the Domain Name, with the same Berlin address given for the Complainant in the Complaint but a different phone number and the firstname.lastname@example.org email address.
3.12 On February 19, 2008 the Registrar sent the Center an email in which it stated:
“According to par. 3.8 of Registrar Accreditation Agreement, during the currency of the contract, the Registrar must act according the policy and procedure of disputes in relation to registered domain names.
According to par. 3 (c) of the Uniform Domain Name Dispute Resolution Policy the Registrar cancels, transfers or otherwise makes changes in domain name registration data in the case of receipt of Administrative Panel decision requesting this action, but only on condition that the decision relates to administrative proceeding where domain name owner was a party.
On the basis of the abovementioned we notify that since the administrative proceeding (#D2007-1886) is brought against the person who is not the owner of domain name, the decision to transfer domain name eva-padberg.com (in case of such order) will be not fulfilled by Registrar. Other behavior of Registrar would contradict the requirements of the Registrar Accreditation Agreement and the Uniform Domain Name Dispute Resolution Policy, and it would also infringe rights of the third parties.”
3.13 On February 21, 2008 the Complainant filed a further submission in response to the email from “Konsul”. In summary, it asserted that any change in the details for the registrant involved a transfer of the Domain Name contrary to paragraph 8(a) of the Policy. It therefore demanded the cancellation of the Domain Name transfer or alternatively the substitution of the Complainant’s own administrative contact details so that she could exercise de facto control of the Domain Name. It is also clear from the language used in the submission that the Complainant questioned whether “Konsul” was a real or legitimate law firm.
3.14 Given the procedural complexities of the case, the Panel issued a procedural order (the “Procedural Order”) on February 25, 2008. The Procedural Order set out, by way of recitals, the facts as known to the Panel. On the basis of these facts the Panel also set out its views on the procedural issues in this case essentially in the same terms as are set out under section 5 of this decision. These views were expressed to be “preliminary” and all parties with an interest in this matter, including the Registrar, were invited to submit such further evidence and argument on the issues raised as they considered appropriate by no later than March 3, 2008. The Procedural Order also set out the criticisms of the Registrar that are to be found in section 5 of this decision and made it clear that these criticisms were likely to be made public in this decision. In the circumstances, the Registrar was invited to respond to and comment upon the same. Finally, the Procedural Order extended the time for the provision of this decision until March 10, 2008.
3.15 On March 3, 2008 the Complainant formally designated its submission of February 21, 2008 as its submission for the purposes of the Procedural Order. No other submission was filed by any interested party in relation to the preliminary views of the Panel set out in the Procedural Order.
4. Factual Background
4.1 The Complainant is a female fashion model and a German citizen.
4.2 From the Who-Is reports for the Domain Name it appears that the Domain Name was registered in April 2007 (either on the 25th or 26th; there is some discrepancy in the Who-Is records on this date).
4.3 On July 5, 2007, the Complainant sent a cease and desist letter to Eurobox Ltd. at the St. Petersburg address and email address given in the contemporaneous Who-Is reports. The letter was provided in both Russian and English and the delivery sheet shows the letter was signed as received on July 19, 2007.
4.4 The Domain Name originally resolved to a blank website. On or around December 2007 the website began to display content. Specifically, screen-shots of December 13, 2007 show that the website displayed: a notice “this domain name was recently registered/ purchased”; a form to submit in order to “contact domain name owners” stated to be “provided by our hosting partners”; and, along the top, 3 fairly unobtrusive “Sponsored Links” which appear to have been to travel on eBay, a travel comparison site and an Internet dictionary. By far the dominant part of the website was the contact form. At some point thereafter the website again became blank and that is how it remains as at the date of this Decision.
5. Outstanding procedural matters
5.1 Prior to considering the parties’ contentions, it is convenient first to address and comment upon the unusual procedural history of this matter. As has already been explained, what follows was put in advance to the parties and the Registrar, who have all been invited to make submissions in relation to the same.
Summary of Panel’s views on the procedural issues in this case
5.2 The Panel is of the view that the Registrar is in error when, and insofar as, it maintains that proceedings are invalid and not binding upon it because they have not been brought against the “owner of the domain name”. The reasons for this are that:
(i) The Complainant sufficiently identified the Respondent in its Complaint for the Complainant to have complied with the requirements of paragraph 3(b)(v) of the Rules.
(ii) Even if the Complaint were found not to comply with paragraph 3(b)(v) of the Rules, it would not matter in the particular circumstances of the present case. What is important here is that the Center has complied with the requirements of paragraph 2(a) of the Rules. Where the Center has complied with paragraph 2(a) of the Rules, proceedings are validly commenced in relation to the Domain Name, and provided the independent panel is satisfied that proceedings have been appropriately conducted in accordance with the Policy and Rules, any subsequent finding of that panel in respect of the Domain Name is binding upon the Registrar and the domain name registrant (whomever that may be).
5.3 Further, even if there has been any procedural irregularity in the manner in which these proceedings were commenced, the Panel has the power under paragraph 10 of the Rules to determine that these proceedings can validly continue and proceed to a binding decision notwithstanding that irregularity. Were there any irregularity in this case, it would be appropriate to make such a determination given that it is clear that all parties who have an interest in this matter (including the alleged “real registrant”) have had adequate notice of these proceedings and would suffer no prejudice as a consequence of the matter proceeding to a decision. The Panel (without prejudice to its primary contention that there is no irregularity in this case), therefore hereby makes such a declaration.
5.4 In these circumstances, any failure by the Registrar to comply with the decision of the Panel would be unjustified. It would likely involve the Registrar acting in deliberate breach of the terms of its Registration Agreement (and possibly also its Registrar Accreditation Agreement). Further, the actions of the Registrar in this case to date are such that the Panel has reluctantly reached the conclusion that the Registrar has embarked upon a deliberate policy of attempting to frustrate the proper operation of the Policy in this case. Indeed, it may at the date of this decision still intend to do so. The reasons for the Registrar’s actions in this case are unknown but were they allowed to continue unchecked, the consequences for the continued proper operation of the Policy would be profound and severe. In the circumstances, this is a matter which the Panel believes ICANN may wish to investigate further.
Identification of the “correct” respondent
5.5 There is a possible argument that the very question of who is the party against whom the proceedings have been brought is misconceived and imports into proceedings under the Policy concepts from inter partes court proceedings that may be unhelpful. If correct, what is important here is that proceedings are brought in respect of the Domain Name and that the procedures are then followed to ensure that the person or persons who are reasonably identifiable as having an interest in that name are properly notified1.
5.6 In any event, the starting point for assessing what is meant by the term “Respondent” is obviously the Policy and the Rules. The term “Respondent” is not defined in the Policy. The “Respondent” is defined in the Rules as “the holder of a domain-name registration against which a complaint is initiated”. However, the Rules contain no definition of who is “the holder of the domain-name registration” for these purposes.
5.7 The sole provision that can be said to place an obligation on a complainant to identify a respondent is to be found in paragraph 3(b)(v) of the Rules. This provides that a complainant shall:
“Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a).”
5.8 There is, however, nothing in the Rules that prescribes how a respondent is identified in a complaint. Whilst it is customary that a complaint begins with a heading that identifies a complainant and a respondent (see, for example, the model complaint available from the WIPO website), in the opinion of the Panel this heading has no legal significance. Whilst it might be said that there is an obvious practical advantage in the name of the “true” respondent being identified in the headings of the documents filed by the parties and in any decision issued by a panel, this is ultimately an issue of administrative convenience only. So for example, if in the view of a panel or a Provider that the “wrong” respondent is identified in the heading of the complaint, it does not necessarily follow that the proceedings should be rejected as invalid as having been brought against the “wrong” person2.
5.9 So who is the Respondent for the purposes of 3(b)(v) of the Rules? In the Panel’s opinion the only sensible answer to this question is that it is prima facie the entity that is recorded in the registrar’s register as revealed by a Who-Is search. There may be cases where it is believed by the complainant that this is a false address or pseudonym for the “true” or “real” owner of the domain name, and in such a case if the complainant believes it knows who the “true” or “real” owner is, this should be disclosed. However, in a case where this is not known to the complainant, it is sufficient that it simply identifies the individual or entity recorded in the Who-Is search results at the time the Complaint is filed. In such a case, the complaint is compliant so far as this aspect of the Rules is concerned.
5.10 Any other interpretation of the Rules may lead to ridiculous results. For example, let us say that the registration details for the domain name record the registrant as “Mickey Mouse”. It will be clear in such a case that this is highly unlikely to be the true name or identity of the person who “owns” or “controls” the domain name. If there is a requirement that the “true” owner is identified and the “true” owner is not known to the complainant, then essentially a complainant will have no recourse under the Policy or the Rules and this cannot be what the framers of the Rules or Policy intended. There are also many cases where panels have held that proceedings had been validly commenced against respondents identified in the relevant Who-Is register. Examples include, British Broadcasting Corporation v. Data Art Corporation / Stoneybrook WIPO Case No. D2000-0683, Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, Schomburg GmbH & Co. KG v. aquafin.com, c/o WHOIS Identity Shield, WIPO Case No. D2006-1136.
5.11 The Panel understands that upon receipt of a complaint, it is the practice of the Center to send an email to the relevant registrar seeking (among other things) confirmation that the respondent is correctly identified. If the registrar in its response to that email identifies some other person or entity as the respondent then the usual practice of the Center is to inform the complainant of this fact and to invite it to amend its complaint accordingly. This is clearly a sensible practice. It may be that the complainant has made an error in his complaint or it may be that after drafting the complaint but before the complaint is sent to the Center, the name of the recorded registrant changes. Further, it is increasingly common for the identity of the true owner of the domain name to be masked by a “domain name privacy service”. In such cases, registrars in response to a verification request will often reveal to the Center who they believe the “true owner” to be. That information may be of crucial significance to the complaint. In such cases, it is, therefore, not unreasonable that a complainant be given an opportunity either to correct its complaint or make amendments to reflect the new information provided.
5.12 However, in some cases there will be little point in requiring or suggesting that a complainant amend its complaint upon receipt of such information. As this Panel has noted above, while accuracy is clearly desirable from a clerical perspective, there is in itself no legal significance in the name given in the heading of a complaint. Further, where it would appear that the recorded registrant of the domain name has clearly changed from one pseudonym to another after the filing of the Complaint (let us say in the “Mickey Mouse” example given above, the registrar informs the Center that the domain name is registered in the name of “Donald Duck”), requiring a change of name in the Complaint would be unlikely to bring any real practical or administrative convenience as the “respondent” will not be identified with any greater precision as a result.
5.13 This last point is particularly relevant where the registrant name, if not the contact details provided by the registrar for the registrant, is on its face the same as that for the complainant. To require a complainant to amend its complaint in a manner that meant that it was apparently directed to itself would not only be pointless but risks making a mockery of the Policy (see also in this respect the comments of the panels in Shon Harris v. www.shonharris.com c/o Whois Identity Shield, WIPO Case No. D2007-0997 and DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty, WIPO Case No. D2007-1431).
5.14 In the current case before the Panel, the Panel notes that there is no suggestion that either at the time the Complainant forwarded its Complaint to the Center or the Center sent its verification email to the Registrar, that Eurobox Ltd was not the entity recorded as the registrant for the Domain Name on the relevant Who-Is register. Further, given that when the registration details changed, they were replaced with the name and contact details of the Complainant, there appears to be no serious suggestion that the change in details reflects any real change in the ownership of the Domain Name. In the circumstances, the Panel concludes that the Complaint complied with the requirements of paragraph 3(b)(v) of the Rules and that the Complaint was not administratively deficient.
5.15 The Panel accepts that there is a counter argument to the reasoning set out above. It might be said that even if paragraph 3(b)(v) of the Rules merely compels a complainant to identify in its complaint the entity named on the register, then the point at which the register is to be considered for this purpose is when the “proceedings commence”. It is then argued that paragraph 4(c) of the Rules provides that proceedings are commenced, not on the date that the Complaint is received by the Center, nor when the Center sends its verification email to the Registrar, but rather when the Center has held a complaint to be administratively compliant and proceeds to formally notify it on that basis.
5.16 However, in the opinion of the Panel this is not correct. Whilst proceedings may not be formally commenced under paragraph 4(c) until the date upon which the complaint is deemed compliant and formally notified, the Rules also provide that proceedings are “initiated” by submitting a complaint to a Provider (see paragraph 3(a) of the Rules, and possibly also the definition of Respondent in paragraph 1). Accordingly, it would appear that a majority of panels have stated that proceedings can be considered to be “pending” from that earlier date. The fact that proceedings can be “pending” before they are formally “commenced” is important because paragraph 8(a) of the Policy makes it clear that a domain name cannot be transferred “during a pending administrative proceeding”. For examples of the cases in which this approach has been followed and in some of which the relevant reasoning is set out in greater detail, see Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292; Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc., WIPO Case No. D2001-0732 and K�stritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Microsoft Corporation v. WDW Inc. and William Claude Dukenfield, WIPO Case No. D2002-0412 and L’Oreal S.A. v. Munhyunja WIPO Case No. D2003-0585.
5.17 Given that once proceedings have become pending a domain name cannot be transferred, this calls into question the validity of any change in registration details. No doubt registrars that operate domain name privacy services and who do change registration details after receiving a verification email from a Provider will argue that this change does not offend against paragraph 8(a) of the Policy. They may say that in such circumstances they are not effecting a transfer but instead simply revealing the identity of the true or real owner. The Panel declines to express a view on the legitimacy of this practice, but notes that even if this practice is legitimate it would not justify a change in registration details that is consequential upon a change in the identity of the “true owner” of the domain name.
5.18 So in this case either (a) the registrar-advised change in registration details can be disregarded as invalid and the Complaint, having been brought against a respondent identified using the Who-Is registration details available at the time of filing, must be in order; or (b) the change in registration is legitimate only insofar as it does not reflect any underlying change in the true ownership of the Domain Name, in which case it cannot be said that the proceedings have been brought against the wrong person.
5.19 Further, the question of what is the relevant date upon which the domain name register should be examined (and paragraph 8(a) bites) does not actually make any difference on the peculiar facts of this case. As has already been explained, at the time that the Complaint was verified by the Center, the Center conducted its own Who-Is search in respect of the Domain Name and thereby identified the registrant of the Domain Name to be Eurobox Ltd, i.e. the respondent named in the Complaint. Therefore, even if the identity of a respondent should be assessed at the date on which the Center assesses and formally notifies a complaint to be compliant, on the facts of this case the respondent was correctly identified in the Complaint.
Proceedings validly commenced under paragraph 2(b)
5.20 The preceding analysis assumes that what is important here is whether a complaint complies with paragraph 3(b)(v) of the Rules. The Panel has focused on this provision since, for the reasons described, it is the only part of the Rules that might be said to impose any obligation on a complainant to identify the “correct” respondent as the real or underlying “owner” of the Domain Name in the complaint (as distinct from the listed registrant of the Domain Name). However, the Panel believes that this probably invests far too much significance in what can be more sensibly seen as an essentially administrative provision, which is there primarily to assist the Center in complying with its obligations under paragraph 2(a) of the Rules.
5.21 Factors that suggest that this approach is the correct one are as follows:
(i) There is an express cross reference in paragraph 3(b)(v) of the Complaint to paragraph 2(b) of the Rules.
(ii) The assessment of the complaint conducted under paragraph 4 of the Rules (presumably by reference to the requirements for the complaint set out in paragraph 3 of the Rules) is said to be an assessment of “administrative compliance” (see paragraph 4(a)) and whether the complaint is “administratively deficient” (see paragraph 4(b)).
5.22 If this is correct and the question of whether the complaint sufficiently identifies the respondent is simply an administrative one, then this is an assessment with which this Panel believes a panel should be reluctant to interfere. In any event, the Panel sees no reason for doing so in the circumstances of this case. Further, there is certainly nothing in the Rules or the Policy which entitles a registrar to second guess a Provider’s determination of this issue.
5.23 Therefore, the next question becomes whether the Provider has complied with its obligations under paragraph 2(a) of the Rules. Paragraph 2(a) requires a Provider “to employ reasonably available means calculated to achieve actual notice to Respondent”. It is this obligation which in the opinion of the Panel is the key one. What matters is that reasonably available means are employed to notify the respondent (whatever the identity of the “true”, “underlying” or “beneficial” owner may be) of the existence and commencement of proceedings. In fulfilling its obligations under this provision the Provider clearly must take notice of the information provided by the complaint in relation to the respondent (as paragraph 3(b)(v) of the Rules expressly makes clear). However, the obligation is a wider one than that and depends upon all the circumstances of the case. So for example, if in its response to a verification email, a registrar provides alternative contact details for the registrant of a domain name, insofar as it is reasonable and sensible to do so, a Provider would ordinarily be expected to use these details.
5.24 What occurred in the current case before the Panel is a good example of how paragraph 2(a) should work. The Registrar provided contact details that were for the most part identical to those of the Complainant. Any suggestion that the Center should have used these details and sent a copy of the Complaint to the Complainant in order to comply with its obligations under paragraph 2(a) of the Rules, would be quite ridiculous (or, to use the wording of the provision, could not be sensibly considered to be “calculated to achieve actual notice to Respondent”). However, in this case the Registrar also provided a previously unknown email address i.e. email@example.com. Accordingly, on January 17, 2007 this is one of a number of email addresses that the Center used in an attempt to comply with its obligations under paragraph 2(a) of the Rules. In the opinion of the Panel, the Center was quite right to do so.
5.25 If the comments of the “Law Firm ‘Konsul’” in its email of February 11, 2008 are to be believed, it would also appear that the true owner of the Domain Name (whoever that may be) sought to transfer the Domain Name into the name of the Complainant once it heard about the Complaint. Since the Registrar maintained as early as December 30, 2007 that the Domain Name was registered in the name of the Complainant, it would appear that the true owner of the Domain Name had actual notice of the Complaint at least by that date. The fact that a respondent has already had actual notice of a complaint is something that also can be taken into account when assessing whether a Provider has complied with its obligations under paragraph 2(a) of the Rules.
5.26 In the circumstances, the Panel has little hesitation in concluding that the Center has complied with its obligations under paragraph 2(a) of the Rules in this case.
Powers of the Panel
5.27 Paragraph 10(a) of the Rules provides that:
“The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.”
5.28 Whilst it is clear that a Panel cannot conduct proceedings in a manner that is contrary to the provisions of the Rules and the Policy, it is also clear that the Panel is otherwise provided with a wide discretion in the conduct of proceedings.
5.29 In the Panel’s opinion the powers granted to it under paragraph 10 of the Rules are such that even if there has been any procedural irregularity in the manner in which these proceedings were commenced by the Complainant, the Panel has the power to determine that these proceedings can validly continue and proceed to a binding decision notwithstanding that irregularity.
5.30 Whilst for the reasons that the Panel has already explained, the Panel does not believe that there has been any procedural failure in this case, if there were such a failure, it would be appropriate in the circumstances of this case to make such a determination. It seems clear to the Panel that all parties who have an interest in this matter have had adequate notice of these proceedings. Indeed, as has already been explained, if “Konsul’s” email of February 11, 2008 is to be believed, the true owner of the Domain Name in this case (whoever that may be) has also at all times been aware of the existence of these proceedings. As a consequence, no person will suffer any prejudice as a consequence of the Panel’s determination that this matter can and should proceed to a decision.
Conduct of the Registrar
5.31 There are a number of aspects of the Registrar’s conduct in this matter which the Panel considers do not reflect well on the Registrar. First, there is the fact that it took nine days for the Registrar to respond to the Center’s verification email in this case. Admittedly, the period in question covered Christmas but as far as the Panel is aware only one otherwise normal working day in that period constituted a public holiday in the United States of America (which is the country in which the Registrar appears to be based). Second, there is the fact that if the Registrar’s own claims are to be believed it would appear that for two and a half weeks (i.e. from December 30, 2007 to January 17, 2008), and perhaps longer, the Registrar’s public database did not contain accurate information. Third, there was the failure by the Registrar to respond substantively to the request for information made by Center in its email of December 30, 2007.
5.32 These are not trivial matters. For the Policy to be able to operate successfully it requires registrars to ensure that its public Who-Is databases are reliable and accurate and that registrars fully and promptly co-operate with Providers in dealing with requests and communications associated with complaints. The Registrar has failed to do this in this case.
5.33 However, there are yet further issues in this case that potentially raise even more serious concerns. First, there is the fact that the recent change of registration details took place only after the Complaint had been filed with the Center. Accordingly, the fact that the Registrar was prepared to allow a change in registration details at all (and for the reasons described above) suggests that the Registrar in this case has not acted in a manner consistent with paragraph 8(a) of the Policy. It is hard to see any excuse for this. It is difficult to see how the Registrar could say that it was not aware of the existence of the Complaint since this would have already been forwarded to the Registrar by the Complainant pursuant to paragraph 4(b) of the Supplemental Rules. It also does not appear to have the excuse that those who operate domain privacy services may have that it was simply “revealing” the identity of the “true” owner.
5.34 Then there are the contents of the Registrar’s email of February 19, 2008. It may be understandable for a registrar to raise genuine concerns that it may have as to the conduct of proceedings under the Policy. Nevertheless, in its email of February 19, 2008 the Registrar does more than that. It apparently purports, without prior warning or discussion, to arrogate to itself the right to unilaterally determine whether proceedings have been validly commenced under the Policy. Further, it has unilaterally declared, without any real reasoned explanation and without either seeking the views of the Center or awaiting the decision of the Panel, that it will refuse to implement the Panel’s decision.
5.35 When all these factors are considered together, it is difficult to escape the conclusion that the Registrar has embarked upon a deliberate policy of attempting to frustrate the proper operation of the Policy in this case. Remarkably, notwithstanding the fact that this conclusion has been put to the Registrar in advance of this decision, the Registrar has not sought to deny or dispute this. Why the Registrar has decided to act in this way is unknown to the Panel, but these are not the actions that the Panel would expect of a reputable registrar.
5.36 It is a matter of yet further concern that the Registrar may still to this day be pursuing that policy since as matters presently stand the Registrar has yet to resile from its statement that it will not implement the decision of this Panel.
5.37 It remains to be seen whether the Registrar will proceed with its threat, but whether or not it does so, the Registrar’s actions in this case are ones that the Registrar accreditation agency, ICANN, may wish to investigate further. It is not just the specific actions of the Registrar in this case and the prejudice that the Complainant may suffer that is of concern. If such actions are allowed to be replicated across an apparently ever-expanding number of registrar accreditations, the consequences for the effective functioning of the Policy would be profound and severe. It is, therefore, important that such matters are brought to the attention of ICANN. ICANN can take such steps and impose such sanctions as it considers appropriate not only to ensure that the Policy is observed in a particular case but also to safeguard the operation of the Policy as a whole.
5.38 In light of these conclusions, the Panel proceeds to consider the parties contentions and the substance of these proceedings.
6. Parties’ Contentions
6.1 The Complainant submits that she started her modelling career in 1998 and that as a result of her modelling activities she is known world-wide as a fashion model. By way of illustration, the Complainant asserts that she has worked for Ralph Lauren and Calvin Klein, has modelled for several Pr�t-�-Porter Shows and that she has represented several international companies in advertising on television, as well as in newspapers and magazines. She cites specifically her modelling work for Mercedes-Benz, KIA Motors, Astor, Nintendo, and Palmer’s. She is also a UNICEF ambassadress.
6.2 The Complainant provides evidence in support of these contentions, including: an official press-release from Mercedes-Benz (dated May 29, 2007) which states “Top Model Eva Padberg to become fashion ambassador for Mercedes Benz” and various photographs of her advertising Mercedes-Benz, KIA and Marco O’ Polo products as well as a cover photograph of her for the UK’s Daily Telegraph magazine (dated November 2003). The Complainant also provides print-outs from her own website (at <evapadberg.de>) (which is available in English and German). These print-outs provide further detail on Mrs. Padberg’s career from 1998 through to 2007, including: that in 2001 she was the face of Palmer’s autumn campaign; her various television appearances (including, in 2003, hosting MTV’s “designerama”); that in 2004 she became the new face of make-up brand Astor; that in 2005 she promoted Nintendo and Kia (amongst others) as well as being voted the “sexiest woman of the world” by FHM readers; and, that in 2007 she was the face of Mercedes-Benz fashion week in Berlin.
6.3 The Complainant also submits that she owns a registered trade mark No. 005285853 in classes 3, 5, 9, 14, 16, 18, 21, 25, 28 and 35 for the words “Eva Padberg” (her name) filed on August 9, 2006 and registered since July 2, 2007 (and she provides the print-out from OHIM’s on-line Community Trade Mark Database and a copy of the trade mark certificate for this mark) (the “Mark”).
Identical or Confusingly Similar
6.4 The Complainant submits that the Domain Name consists solely of her first and last names, with a dash in-between these words. Therefore the Domain Name “consists solely of the Complainant’s registered trademark” and is “identical to and confusingly similar with the Complainant’s trademark, ‘Eva Padberg’”. Further, the Complainant submits that the specific top level of a domain name does not affect the determination as to if a domain name is identical or confusingly similar (and cites in this respect Magnum Piering, Inc v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
Rights or Legitimate Interests
6.5 The Complainant submits that the Respondent does not have any rights or legitimate interests in the Domain Name. There is no connection between the Domain Name and the Respondent’s name or a company connected with the Respondent. The Complainant has not permitted the Respondent to use her name in this (or any) way.
6.6 The Respondent has not replied to the Complainant’s July 5, 2007 cease and desist letter (which the Respondent signed for on July 19, 2007) and according to the Complainant “if there were any rights or legitimate interests the Respondent would have invoked them”.
6.7 Under this heading of rights and legitimate interests the Complainant also explains that her Mark was not registered at the time that the Domain Name was created but that “the registration of a trademark was, and is, not necessary for fulfilling an infringement upon the name of the Complainant”. She goes on to assert that the “name Eva Padberg has sufficient secondary association with the Complainant that at common law trademark rights do exist under Russian trademark law and that it is sufficient that the Complainant demonstrates that she has sufficient rights to ground an action for passing off” ( citing Julia Fiona Roberts v. Russel Boyd, WIPO Case No. D2000-0210 and Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235). Further, she claims she has “rights regarding her name according to paragraph 12 of the German Civil Code […] which are similar to common law trademark rights”. These rights are said to allow the Complainant “to prohibit anyone to use her name, as long as the violator does not have the same name or any contractual right”.
Registered and Used in Bad Faith
6.8 The Complainant asserts that the Domain Name was registered by an individual on March 6, 2005 and thereafter deleted before being registered again by a “cybersquatter” in April 2007 who sold and transferred it to the Respondent on April 26, 2007.
6.9 The Complainant goes on to say that where, as here, “someone registers a domain name that only consists of the first and last names of a person, (i) the registrant either has the same name, (ii) acts on behalf of someone with the same name, or (iii) registers the domain name in bad faith, knowing that someone famous has the name of which the domain name consists”. The Respondent is said to fall within this third category.
6.10 Further it is alleged that “the Respondent only wants to use the domain to make profit with it, as the current use, i.e. the advertising links of the domain name shows”.
6.11 The Complainant also alleges that the Respondent was obliged to check if there were any trade mark rights which applied to the Domain Name before registering it.
6.12 The Complainant also claims that the Domain Name consists of names “shared by very few people in this world” and that only someone who has heard of the Complainant would think of registering a corresponding domain name. This is further evidence that “the Respondent knew exactly who the Complainant is and how famous she is”.
6.13 Finally, the Complainant asserts that the Respondent is a known cybersquatter and that this is further evidence of bad faith registration and refers to cases Soda-Club (CO2) S.A. v. Percom Ltd. d/b/a WebBooster.com, WIPO Case No. D2005-0465; Kesko Oy v. Eurobox Ltd, WIPO Case No. D2003-0975; and Universal Spheres, Inc. dba GoldenPalace.com v. BusinessService Ltd., Escrow Domain Department, Temporary Domain transfer Manager, NAF Case No. FA746952.
6.14 The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
7.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
7.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
7.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
7.5 The Complainant is the owner of a registered Community trade mark No. 005285853 for EVA PADBERG.
7.6 The fact that this Mark was registered after the Domain Name was created does not matter for these purposes. As explained in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (at 1.4, the “WIPO Overview”) the consensus Panel view is that:
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind”.
7.7 The various arguments for and against allowing a complainant to rely upon a registered mark not in existence at the time that the domain name was registered were discussed by this Panel in Joe Cole v. Dave Skipper WIPO Case No. D2003-0843, but as the overview records, the consensus is that so far as this aspect of the Policy is concerned a subsequent mark is sufficient.
7.8 The Panel accepts that the “.com” suffix can be ignored in this case and therefore the only difference between the Complainant’s Mark and the Domain Name is the dash. Since “spaces” cannot be included in a domain name, it is common practice for a space to be represented in a domain name with a dash. Accordingly, the Domain Name is essentially identical to the Complainant’s registered trade mark, and whether or not it is “identical” for the purposes of the Policy it is clearly “confusingly similar”.
7.9 Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy3.
B. Rights or Legitimate Interests
7.10 There is no evidence that the Respondent (whoever that may be) has been commonly known by or had any connection to the name “Eva Padberg” and it is obvious that the Complainant has not authorized the Respondent to use her name.
7.11 The Panel therefore concludes that the Complainant has shown a prima facie case of the lack of rights or legitimate interests on the behalf of the Respondent and, as explained in the WIPO Overview (at 2.1): “while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
7.12 In the Panel’s view there is no credible evidence contrary to the Complainant’s case. The Panel notes the assertions made in “Konsul’s” email that Expresspost Ltd has some claim to the Domain Name under Russian law. However, it expressly denies that it is the owner of the Domain Name and can be treated as the “Respondent” for the purposes of these proceedings and in the opinion of the Panel third party claims of this sort cannot provide legitimate interests for the purposes of the Policy. If the underlying “owner” of a domain name does not have rights or a legitimate interest in that domain name, a person who claims some sort of interest by way of security in that domain name cannot claim a better right or interest than that of the owner.
7.13 Further, the assertion to be found in “Konsul’s” email that its client has this interest in the Domain Name as a result of some unspecified “commission” arrangement strikes the Panel as vague and without further explanation inherently implausible. The assertion is unsupported by corroborating evidence or even the usual declaration of truth that is required by paragraph 5(b)(viii) of the Policy.
7.14 Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
7.15 The Panel accepts given the international reputation that the Complainant enjoys as a model and the uncontested assertion of the Complainant that the name “Eva Padberg” is unusual, that the Respondent in this case registered the Domain Name with full knowledge of the Complainant.
7.16 What is not clear is exactly why the Respondent did this. Whilst the evidence is limited, on balance the Panel is of the view that the Domain Name was registered by the Respondent with the intention of taking unfair commercial advantage out of the fame associated with the Complainant’s name.
7.17 A significant factor in this case that supports that conclusion is the fact that around December 2007 a website operating from the Domain Name contained sponsored links. The Complainant contends that the usage in this case “can be compared to domain parking” and gives a brief description of what is involved and how such a service can be used by a domain name registrant to obtain click through revenues. How such services operated was also described in greater detail by the Panel in Owens Corning v. NA, WIPO Case No. D2007-1143.
7.18 Whilst there is nothing per se illegitimate in domain name parking, if a domain name is chosen by a registrant to capitalise on the reputation of another’s brand, in the hope and expectation that Internet users searching for information related to the complainant would be directed to the respondent’s site, such registration and use will usually be in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. This states that the following shall be evidence of 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, affliction, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
7.19 In this case this use was relatively fleeting and indeed for most of the time since registration no website has operated from the Domain Name. Therefore, the Panel would not go so far as to conclude that it was specifically and necessarily with domain parking use in mind that the Domain Name was registered. However, the December usage does in more general terms support the conclusion that the Domain Name was registered with the intention of in some way or another profiting from the reputation that the Complainant had built up in her name.
7.20 There is also a significant further factor in this case that points to bad faith registration and use. This is the attempt after proceedings commenced to change the registration details for the Domain Name to those which matched the Complainant. Whether the Respondent was behind that change or whether this involved some form of attempt to reveal the underlying details that Eurobox Ltd had for the registrant does not really matter. Whichever is correct it reflects badly on the Respondent. Either it has deliberately sought to frustrate the Policy by engaging in attempted cyberflight, or it has from the start sought to disguise his identity by the use of obviously false contact details.
7.21 Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <eva-padberg.com> be transferred to the Complainant.
In view of the criticisms raised in this decision as to the Registrars conduct, the Panel also invites the Center to forward a copy of this decision on notification to ICANN.
Matthew S. Harris
Dated: March 10, 2008
1 If a parallel is sought in national legal proceedings for this approach, an obvious one here is proceedings in rem.
2 Of course if a complainant has misidentified who it considers to be the person who in reality has control of the domain name in issue, it may be that its arguments as to abuse are ill founded and will not prevail. However, that is quite a different matter.
3 The Panel notes that the Complainant also submits that she has unregistered rights in her name under Russian law and rights according to paragraph 12 of the German Civil Code. These assertions are somewhat strangely to be found under the heading of “rights and legitimate interests” and therefore it is unclear whether the Complainant seeks to rely upon such “rights” for the purposes of paragraph 4(a)(i) of the Policy. Further, even if the Complainant does intend to rely upon such rights, the Panel would face the difficulty that the Complainant has not brought forward any evidence to the effect that unregistered trade mark rights are recognized in these states. The two WIPO UDRP cases cited by the Complainant are of little assistance in this respect since they involved unregistered trade mark rights recognized in the United Kingdom and the United States. These issues were discussed at some length by this panel in Antonio de Felipe v Registerfly.com, WIPO Case No. D2005-0969. However, given the Panel’s finding on the issue of registered trade mark rights, it is not necessary for the Panel to consider this issue any further in this case.