Complainant is Association Robert Mazars of La Défense, France, represented by the law firm PMR Avocats, France.
Respondent is Private Whois Service, c/o mazarsrevenge.com of Nassau, Bahamas.
The disputed domain name <mazarsrevenge.com>is registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2009.
1. February 11, 2009. On this date (a) the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. This inquiry began a lengthy email correspondence between the Center's case manager and the registrar; and (b) Internet.bs Corp. transmitted by email to the Center its initial verification response, which confirmed that the disputed domain name was registered with Internet.bs Corp., providing the contact details, and addressing related questions from the Center, but denying that the respondent named in the Complaint was the registrant. Internet.bs Corp. stated “the respondent as indicated by you ‘Private Whois Service' is NOT the Registrant. The Registrant of the domain elected not to publicly disclose his/her/its identity and is using our Private Whois Service.”
2. February 17, 2009. The case manager responded to this letter by email on February 17, 2009, requesting clarification of an apparent discrepancy in the contact details between those in the registrar's initial response and its public “WhoIs” data base and requesting an email address for the registrant. Internet.bs Corp. answered on the same date, stating “the Private Whois service we provide is automatically replacing the forwarding email address every two weeks or so in order to lower the risk of receiving spam. When we replace the email the old one is working for about 5 days so old correspondence can still be delivered for a while. Please note also the Private Whois email is always forwarded to the customer real email, so just make sure when sending emails to use the latest emails found in the whois data.”
3. February 19, 2009. On this date the case manager replied to the registrar, stating (emphasis deleted):
“We have also noted your seeming reluctance to disclose any underlying registrant identity or contact information.
You will appreciate that as a dispute resolution provider, we have certain obligations in relation to the notification of the Complaint. If you choose not to disclose the identity and contact information for an underlying registrant, we will have no information other than that for the claimed privacy registration service. In such circumstances, and in absence of the former, we would have little choice but to send the Complaint to the provided contact information for the latter. In the circumstances, we would regard this as our having taken reasonable steps to ensure notification in accordance with the UDRP and Rules.
Obviously, if you should choose to disclose the contact information for the entity you say is the Respondent and Registrant, we would be in a position to provide the disclosed entity a copy of the Complaint on notification. But if you, as the concerned registrar for the domain name, do not provide the requested information, obviously we cannot do this. And for administrative compliance purposes, we would appear to have no entity to identify as the relevant Respondent other than the referred-to privacy service.
And if as you say the email address for the entity currently listed as registrant in the WhoIs is constantly being changed, we would appear to have little choice but to email the Complaint on formal notification to the email address as happens to be listed in the WhoIs on the date of notification itself. If as registrar of the disputed domain name there are any additional email addresses to which you believe a copy of the complaint notification should be sent on formal notification, please let us know immediately.
In any event, would you please confirm for our records that (as appears to be the case from your prior reply) there is no postal contact information for the registrant, administrative contact, and technical contact.
In this regard, we would also note that in cases where a registrar would reveal any underlying registrant to the Center, the Center would typically use that information solely for the purpose of providing said information to the UDRP Complainant and giving them an opportunity to amend the UDRP Complaint to reflect any such underlying registrant as Respondent, and for the purpose of sending a copy of the Complaint on formal notification directly to any such disclosed underlying registrant and including them in confidential case-related communications.”
The registrar answered on February 19, 2009, stating “while we are very happy and willing to assist the Center in order to go ahead with the UDRP, we have also a contract with our customers and the Private Whois service is intended to prevent third parties to obtain the real identity of the [sic] domain holder. Please note in our opinion section 126.96.36.199. of the ICANN Registrar Accreditation Agreement does not applies [sic] to the case as we do not own the domain on behalf of a third party, instead the owner of the domain has elected not to publicly disclose personal data using a service commonly known as Private Whois or Whois Privacy and Private Whois is not a person nor an identity. We also automatically forward your emails to the owner, so we can assume the domain owner is aware of the dispute as long as they are checking their email in a regular basis.”
4. February 20-21, 2009. The Center responded on February 20, 2009, requesting the registrar to establish an email address that would not change during the period this proceeding was pending, and noting “any ultimate determination as to the identity of the appropriate Respondent in these proceedings would need to be a matter for the appointed Panel on appointment.” In an email dated February 21, 2009, the registrar agreed to set a fixed email for the duration of the proceedings and further acknowledged “We also understand, and we have no objection, that if the Registrant is not answering to your emails, the Panel is free to decide who they consider the domain owner/Registrant and we will happily honor whichever decision the Panel will take accordingly to our ICANN Registrar Agreement.”
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 23, 2009.
Notification was made by email to the fixed email address established by the registrar, by post courier to the address specified in the contact details, and by an email to the registrar. Neither of the first two methods was successful. The courier service was unable to deliver the hard copy Complaint, and several emails to the address furnished by the registrar were returned with various error messages, such as “The following addresses had permanent errors.”
The Center's email communication with the Complaint was however received by the registrar. The registrar acknowledged receipt on February 23, 2009, and advised the case manager that its place of business was in the Bahamas, rather than Germany as alleged in the Complaint. The Center sent an email communication to Complainant on February 24, 2009, advising Complainant of this fact and inviting Complainant to submit an amendment to the Complaint.1 The Complainant filed an amendment to the Complaint on February 25, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2009. The Respondent did not submit any response. Accordingly the Center notified the Respondent's default on March 16, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on March 20, 2009. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a nonprofit association registered under the laws of France. Complainant holds service marks for the name MAZARS around the world, including a European Community mark registered in July 2005 and an international registration covering 25 countries filed in 1993. These marks are for accounting and auditing services, actuarial services, arranging and conducting conferences and seminars, and legal advice. Complainant's principal website is located at <mazars.com>.
As indicated in the preceding section, nothing is known of the actual registrant of the disputed domain name, which was registered in November 2008. In January 2009 the disputed domain name resolved to an error page: “Error 404-Page not found. Oops! Looks like the page you're looking for was moved or never existed.”
Complainant's counsel wrote to Respondent, at the address listed in the contact information found on the Registrar's Who Is page, on January 21, 2009, complaining of Respondent's use of Complainant's mark in the disputed domain name, and requesting an amicable resolution involving transfer of the disputed domain name to Complainant. No reply was received.
Complainant has registered rights in its MAZARS service marks. The disputed domain name has as its dominant feature the word MAZARS, which is identical to Complainant's many service marks. Adding another word to the disputed domain name, in this case revenge, does not obviate confusion under the Policy.
Complainant has never authorized Respondent to use the disputed domain name, and there is no evidence that the Respondent has ever been known by the disputed domain name, individually or in its business. As Respondent has apparently made no use of the disputed domain name, it has never been used in good faith or for any noncommercial fair use.
Respondent's insertion of the derogatory word revenge into the disputed domain name is evidence of registration in bad faith. By including the word revenge Respondent “has for [its] only purpose to disrupt the Complainant's business.” Respondent has never used the disputed domain name, and nonuse is evidence of bad faith. Respondent's bad faith is further revealed by its concealing its true identity behind a privacy service.
Respondent did not reply to Complainant's contentions.
There is no question that the Panel has subject matter jurisdiction (to borrow a phrase from United States civil procedure), as the registration agreement to which Respondent agreed when it registered the disputed domain name includes the registrant's consent to the Policy. Personal jurisdiction (another American civil procedure term) requires a bit more discussion. Prevailing practice in default case in Policy proceedings has the Panel examining whether Respondent has “been given a fair opportunity to present its case,” Rules, paragraph 10(b). This usually involves the Panel's review of the Center's (and Complainant's) efforts to identify and locate the respondent, and to transmit notices and pleadings in accordance with the relevant requirements under the Rules. It is noteworthy in this regard that the Rules do not require actual notice; they merely require the Center to take reasonable steps to achieve notice.
There is no hard proof that the registrant of the disputed domain name received a copy of the Complaint. Despite diligent efforts the Center was unable to determine the registrant's identity from the WhoIs database or the registrar. No content at the web address for the disputed domain name reveals identity or location of the registrant. As noted, the Center's email efforts to transmit the Complaint directly to the registrant were unsuccessful.
Nevertheless the Panel has no difficulty finding that it may proceed in this case, for any difficulty in identifying the registrant or sending it communications about these proceeding results entirely from the registrant's own conduct and choices. The registrant chose to register the disputed domain name through a privacy service, selecting one whose procedures apparently do not include revealing the Registrant's identity when a Policy proceeding is commenced.2
Inability to contact the registrant through the contact details on various “Who Is” databases similarly can be laid to no one but the registrant, which is obliged by its registration agreement to keep its contact information current. The Panel described and quoted from the correspondence between the Center and the Registrar at some length to illustrate that in these circumstances the Center did all that it reasonably could to ensure that the registrant of the disputed domain name was duly notified. Finally, the Panel has the written undertaking of the registrar that all communications sent to it in respect to the disputed domain name have been duly transmitted on to the actual registrant.
In the circumstances the Panel determines that it has jurisdiction to proceed to resolve this dispute without any need for example to order the re-notification of the Complaint, the notification of which by the Center was eminently reasonable.
Increased use of privacy services has required a number of panels to consider their ramifications in Policy proceedings. A threshold issue is to determine whether the Respondent is “the holder of the domain-name registration against which a Complaint is initiated,” See Rules, paragraph 1 (definition of Respondent). A few panels have interpreted this definition literally and found the privacy service to be the respondent. Most panels, however, have considered the actual registrant, the party that registered through the privacy service, to be the respondent, at least in cases in which the identity of the registrant was determined by some means.3 Here the registrant's identity remains unknown, but the Panel still concludes, on essentially the same rationale as the cases cited or referred to in notes 2 and 3, that this actual registrant, even though a cipher, should be considered the respondent in this proceeding. To do otherwise would thwart the purpose if not the literal language of the Policy and Rules, common sense, and the Registrar's express disclaimer of any ownership interest in the disputed domain name. All these factors point to the owner of the disputed domain name, not its agent the privacy service, as the party with which Complainant has a grievance.
Turning to the merits, Complainant has established the requirements of paragraph 4(a)(i) of the Policy. Complainant has demonstrated its ownership of many registered marks for the name MAZARS and is correct in arguing that the addition of a common word to the mark does not obviate confusing similarity.
Many panels have noted that paragraph 4(a)(ii) of the Policy literally requires a Complainant to prove a negative, a difficult task at best and made even more difficult when as here the Registrant's true identity is unknown. The consensus view is thus that this Policy element may be satisfied by a complainant's making out a prima facie case that the respondent lacks rights or legitimate interest, then shifting the burden of production to Respondent to demonstrate the contrary.4 Complainant here has made its prima facie case by showing that it never authorized any one to use its marks and there is no evidence that Respondent, whoever or whatever it is, has ever been commonly known by the disputed domain name.
Respondent has not provided any evidence that its ownership is legitimate. The only possible defense the Panel can contemplate is that “Mazars' revenge” is itself criticism and thus sheltered by paragraph 4(c)(iii) of the Policy. Under the holding in Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627, this might be considered noncommercial fair use as an exercise of Respondent's free speech rights. There is nothing commercial about the website or error page to which the disputed domain name resolves, and in fact that page states “All money from this page is donated to charity.”
Even if the Panel were to extend this Dello Russo holding to non-United States persons and entities5, a fair use defense is unavailable here. Revenge, contrary to Complainant's contention, does not have a universally derogatory connotation (indeed any meaning at all, so far as the Panel is aware, that transcends the English language), unlike the word (“sucks”) found so by the Panel in the Dello Russo case. There is no indication (again unlike the Dello Russo case) that Respondent's use of the word and word combination is or was intended as criticism. So far as the evidence in the present record shows, the only reason for its selection was inclusion of Complainant's distinctive mark. Complainant has established this Policy element.
Complainant's MAZARS marks are distinctive. MAZARS has no meaning as an everyday word in either French or English; any association of this word with goods or services of any kind derives from its use as a trademark or service mark. As Complainant holds the only mark with that word registered in either the United States Patent and Trademark Office or The Trade Marks and Design Office of the European Union, any such association almost certainly derives from the goodwill that has accrued to Complainant's marks. In these circumstances the Panel may (and does) infer that the disputed domain name was registered with knowledge of Complainant and its marks and to take advantage of the marks' recognition, and thus in bad faith under the Policy. Respondent's subsequent use of the disputed domain name solely as a placeholder site is similarly in bad faith, at least in the absence of any evidence to the contrary. As Respondent has chosen not to offer any evidence to the contrary, the Panel finds that Complainant has proven the requirements of paragraph 4(a)(iii) of the Policy.
Use of a privacy service, standing alone, is not evidence of bad faith in registration or use of any domain name. Many responsible corporations and individuals engage privacy services for legitimate reasons: facilitating portfolio management and re-registration, frustrating attempted spam, avoiding identity theft, to name a few. The cases in which a privacy service registration was found to be evidence of bad faith are (so far) relatively few, in large part because most registrants come forward, voluntarily or as required by their registrar, shortly after notification of the Complaint. Many registrars have reacted quickly and responsibly to reduce the opportunity of their customers to use a privacy service to manipulate or evade. The Panel in this proceeding, while requiring Respondent to bear the consequences of its election to register privately, took no account of this means of registration in determining that the disputed domain name had been registered in bad faith.
It is usually fairly obvious to a panel when a respondent uses a privacy service as a means of cyberflight or otherwise to escape a Policy proceeding and such cases include other evidence of active concealment or bad faith conduct.6 Still, the Panel believes that this is a subject deserving of consideration by ICANN in updating the Policy or the Rules to address a phenomenon not contemplated when the Policy was first implemented a decade ago. Until such an updating (should one occur) it remains panelists' duty in interpreting the Policy to develop workable rules and suitable Policy precedent through decisions in idividual proceedings.
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 <mazarsrevenge.com> be transferred to the Complainant.
Richard G. Lyon
Dated: March 27, 2009
1 An amendment was necessary for the Complaint to comply with paragraph 3(b)(xiii) of the Rules.
2 A number of registrars include provisions in their registration agreements used in privacy service registrations to the effect that they will disclose the registrant's name and contact information upon receipt of a UDRP complaint. See, e.g., Société Anonyme des Eaux Minérales d'Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080; Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033.
3 Some of these cases are collected and discussed in Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861.
4 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
5 All the contact information indicates an address in the Bahamas, not the United States, for Respondent.
6 See, e.g., BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882 (frequent transfers; use of successive privacy services; evidence of actual knowledge of complainant).