WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECCO sko A/S v. Protected Domain Services
Case No. D2010-1469
1. The Parties
The Complainant is ECCO sko A/S, of Bredebro, Denmark, represented by Frank Petersen, Denmark.
The Respondent on record is Protected Domain Services of Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <eccodiscount.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2010. On September 2, 2010, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the Disputed Domain Name. On September 7, 2010, Name.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The verification response included an “informative filing” by the named Respondent. The Center sent an email communication to the Complainant on September 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a communication on September 10, 2010. The Center verified that the Complaint together with the Complainant’s communication 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 September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2010. A Response was filed with the Center on September 15, 2010.
The Center appointed Charné Le Roux as the sole panelist in this matter on October 19, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of the trade mark ECCO in more than 100 countries worldwide including the EU, USA and China protecting goods and services in classes 3, 18, 25 and 35. The Complainant also owns a number of domain names including the trade mark ECCO such as <ecco.com>, <ecco.eu>, <eccogolf.com> and <eccoreceptor.com>.
The Disputed Domain Name was registered on June 30, 2010 and the Respondent is named by the Complainant as being Protected Domain Name Services. The Registrar disclosed the underlying registrant as being Phalanx SEO Services. The website to which the Disputed Domain Name resolves advertises the sale of various categories of goods such as shoes, fashion items, bags and the like, all of which appear to be branded under the ECCO trade mark.
5. Parties’ Contentions
The Complainant contends that it is the owner of the trade mark ECCO and that it has registered this trade mark in more than 100 countries including the EU, USA and China. It provided a list of all its trade mark registrations for goods and services in classes 3, 18, 25 and 35. The Complainant also refers to a number of ECCO domain names in which it owns rights.
The Complainant contends that the Disputed Domain Name is confusingly similar to its ECCO trade mark and that the addition of the descriptive word “discount” in the Disputed Domain Name does not detract from the likelihood of confusion. The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) The Respondent is not known under the name ECCO and
b) The Complainant has not authorized the Respondent to use the word ECCO in connection with the Respondent’s activities.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant submits that the Respondent intended to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name resolves by creating a likelihood of confusion with the Complainant’s ECCO trade mark.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent on record filed an “informative filing” providing reasons why it should not be considered the registrant of the above Disputed Domain Name nor be considered to be a party to this Complaint. It indicates that it has been incorrectly identified as the Respondent because it is merely an independent commercial privacy service and holds no ownership interests of any nature in any domain name. It contends that is not the registrant nor has any beneficial or other interests in the Disputed Domain Name. It also indicates that it has no relationship with the underlying registrant other than providing the contracted privacy service. It advises that this relationship is publicly disclosed and is also obvious from the information contained in the WHOIS records. The Respondent indicates that it has acted in accordance with applicable rules and regulations by disclosing the correct underlying registrant information.
The Respondent requests that the Panel should declare that it is not the registrant of the Disputed Domain Name and that it should make no finding of fact or liability against the Respondent. Numerous UDRP decisions were referred to by the Respondent in support of its contentions including Viacom International Inc. v. Hicham Baktit Media, WIPO Case No. D2008-0079; BGL Group Limited v. Mobilise Me Inc., WIPO Case No. D2009-0669; Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten, WIPO Case No. D2008-0463; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658, WIPO Case No. D2007-1438; Building Trade 1868 Kft. v. RegisterFly.com, WIPO Case No. D2006-0396; Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant  Services LLC, WIPO Case No. D2007-0169; Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070 and WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975.
A response was also received from the underlying registrant of the Disputed Domain Name, identified by the Registrar as being Phalanx SEO Services and by a Don Bertelsmann Jr on its behalf, indicating merely that the Disputed Domain Name is used to trade in licensed ECCO branded merchandise under an affiliate agreement under Amazon.com, therefore that the fair use provisions apply and that the Complaint should be dismissed without prejudice.
6. Discussion and Findings
A. The Proper Respondent
Before a finding of the substantive issues arising from paragraph 4(a) of the Policy can be made, the Panel must determine whether the proper party has been identified as the Respondent.
The Complainant identified the Respondent as being the privacy service indicated in the WhoIs report. It elected not to amend the Complaint after being notified by the Registrar and the Center of the identity of the underlying registrant identified as Phalanx SEO Services. A question that has been posed to many UDRP panels is whether a privacy service, which is listed as the domain name registrant at the time the complaint is filed but following the filing, the registrant is identified as someone other than the privacy service, should be treated as the proper party respondent.
Detailed discussions concerning the use of privacy services and their effect were had by a three member Panel in The iFranchise Group V Jay Bean/Monh, Inc./Moniker Privacy Services, WIPO Case No. D2007-1438. The Panel debated the use of privacy services as a recent phenomenon and acknowledged that while there may be unsatisfactory or even illegitimate uses arising from the use of privacy services, there are also many potentially legitimate reasons why a domain name registrant may wish to employ a privacy service. The Panel mentioned the requirement of a domain name applicant to provide accurate and reliable contact details and took note of the fact that while privacy services do shield contact information from public scrutiny for a range of legitimate reasons, they generally do provide correct contact information upon request. The Panel considered that Registrars do not always react consistently when contacted by the Provider for verification purposes, and that there are instances where the Registrars fail to respond or unreasonably delay in providing the contact information and identity of the underlying registrant. The Panel agreed that other Registrars do, however, promptly provide the contact information and that where this is the case, the WIPO Center will generally invite the complainant to amend its complaint to add the underlying registrant as an additional respondent or to replace the one party with the other. The Panel also considered that previous panels who received information regarding the identity of the underlying registrant have either treated both the underlying registrant and the respondent jointly as a respondent, or elected to disregard the privacy service entirely and to analyze only the acts of the underlying registrants. The Panel consequently concluded that where provision of the information by the Registrar was not unduly delayed, that the underlying registrant should be treated as the proper party respondent for purposes of its analysis.
A Panel must determine the registrant of a domain name under dispute for purposes of the application of the Policy and, in this instance, the Panel has the name of the privacy service indicated by the Complainant as registrant and also the information identifying the underlying registrant (which the Complainant elected not to include in the Complaint).
In this matter and on the basis that a) the privacy service provided the correct underlying registrant information without undue delay; b) it was obvious from the nature of the information contained in the actual WhoIs that formed part of the Complaint that the Disputed Domain Name was subject to a contracted privacy service; c) the privacy service holds no ownership interests in the Disputed Domain Name and d) the privacy service has previously been confirmed by other Panels as being merely a privacy domain name registration service, this Panel finds that the named Respondent is not the registrant of the Disputed Domain Name and can thus not be considered the proper Respondent for purposes of the application of the Policy. Since the underlying Registrant has not been nominated by the Complainant as a respondent and is therefore not a proper respondent party to these proceedings, an analysis of the merits and a finding with respect to the conduct of the underlying Registrant can not be made.
A decision is being made on the procedural aspects of the Complaint only, which does not as such preclude the Complainant from filing a subsequent complaint with the Center in respect of the Disputed Domain Name.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies transfer of the Disputed Domain Name <eccodiscount.com> to the Complainant.
Charné Le Roux
Dated: November 18, 2010