WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Interbrand Group v. Whoisguard Inc. / Mark Davis

Case No. D2016-0703

1. The Parties

The Complainant is Interbrand Group of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.

The Respondent is Whoisguard Inc. of Panama, Panama / Mark Davis of San Francisco, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <interbrand-contentserver126.com> is registered with eNom, Inc. (the “Registrar”). It was registered on November 25, 2015 (“the Relevant Date”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2016, the Registrar 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 Center sent an email communication to the Complainant on April 12, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant requested an extension to submit an amended Complaint on April 15, 2016. The Complainant filed an amended Complaint on April 22, 2016.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2016.

A supplemental filing was submitted by the Complainant on May 31, 2016 which clarified that issues raised in a witness statement provided with the complaint were intended to form part of the Complaint itself.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 26, 2016. 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 owns European trade mark number EU000208496 for INTERBRAND for classes 16, 35, 36 and 42. It was filed on April 1, 1996. It also owns European trade mark number EU005446216 for INTERBRAND in classes 9 and 41, filed on November 7, 2006. The Complainant also owns United States trademark number 2270428 for INTERBRAND in classes 35, 36 and 42, filed on February 9, 1998; and United States trademark number 1570384 for INTERBRAND in class 42, filed on December 15, 1988.

Mr. Aaron Newell, solicitor for the Complainant, has provided a witness statement. In it, he states that the Complainant is one of the most well-known branding agencies in the world as shown by the fact that:

a) Google records show that Interbrand’s “Best Global Brands” annual report has been cited 22 times on “www.cnn.com” between 2003 and the present; approximately 47 times on the New York Times’ website from as early as 2010; approximately 32 times on The Economist’s website since at least as early as 1996; 26 times on campaign “www.campaignlive.co.uk” since as early as 1999; approximately 17 times on The Guardian’s website since at least as early as 2006; and at least twice on the Wall Street Journal’s website since 2014.

b) Google records show that Interbrand (as distinct from its “Best Global Brands” report) has been referenced approximately 409 times on the New York Times’ website from as early as 1996; Interbrand has been referenced approximately 171 times on “www.cnn.com” from at least as early as 2003; approximately 405 times on The Economist’s website since at least as early as 1996; approximately 389 times on Campaign Magazine’s website since at least as early as 1999; approximately 253 times on The Guardian’s website since at least as early as 2003; about 150 times on the Wall Street Journal’s website since at least as early as 2003.

Mr. Newell states that Interbrand is “recognised internationally as a leading branding and design agency, as well as an authority on branding, and this expertise has seen it referenced in popular media outlets internationally for decades. Interbrand is not only a known name within the branding world, but also a name that would probably be recognised by anyone (from consumer to executive) who reads popular news publications on topics involving business, or who has an interest in brands and/or an interest in business.”

Mr. Newell has provided evidence that the Complainant has 26 offices around the world.

Mr.. Newell has also provided evidence of his attempts to contact the Respondent using the details the Respondent provided. Calling the Respondent’s telephone number resulted in a voice recording which stated that the number was not in service, or resulted in error tones. He has provided evidence that the physical address provided for the Respondent appears to be incorrect.

Mr. Newell also provided evidence that the Respondent is associated with the domain names <gossip1st.com> and <naturalskincare.pw>. Mr. Newell states that “in light of what appears to be a pattern of using privacy protection to mask his identity, I would assume that the Respondent is registrant in respect of other and perhaps numerous other domain names, but has put privacy protection in place like he did with interbrand-contentserver126.com and the two domain names immediately above, and therefore is concealing his identity from current and historical whois searches in potentially a large number of other domain names.”

The disputed domain name is passively held.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademark INTERBRAND. In relation to the disputed domain name, Mr. Newell explains in his witness statement that “content server” is “a name for a computer server that stores information, mainly for publication on the Internet” and a “126” error “is a code for a common error that can occur in Microsoft Windows when a file cannot be found.”

In relation to whether the Respondent has rights or legitimate interests in respect of the disputed domain name, the Complainant contends that there is no evidence of the Respondent having used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain name. Further, the Complainant contends that the Respondent is not making a legitimate or fair use of the disputed domain name and “intend(s) it to be used for commercial gain, misleadingly to divert consumers or to tarnish the trademark or service mark in issue”.

In summary, Mr. Newell states that the Respondent has masked its identity when registering the disputed domain name, containing the well-known trademark INTERBRAND and structured to refer to an Interbrand “server”. Mr. Newell has provided evidence which he states shows that the Respondent frequently uses identity-masking services in respect of domain names. Further, the Respondent’s phone number appears to be disconnected and the Respondent has no obvious connection with the address given in respect of the disputed domain name. Mr. Newell also points to evidence which he says shows that the Respondent “appears to have purchased fake identification from an online resource.” Mr. Newell states that for these reasons, and given the inclusion of INTERBRAND in the disputed domain name and the fact that no website loads at the disputed domain name, “it is difficult to see how the Respondent can credibly claim a legitimate interest in the domain name.”

As to the requirement in paragraph 4(a)(iii) of the Policy, the Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the owner of the trademark or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out of pocket costs. Further, the Complainant contends that the disputed domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name; and to disrupt the Complainant’s business. The Complainant also contends that use of the disputed domain name would amount to an intentional attempt to attract Internet users to a website or other online location for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The Complainant also contends that the disputed domain name was registered and used with the intention of creating confusion to the unfair detriment of the Complainant, its customers and the general public; and that the disputed domain name was registered and used with the intention of perpetrating misleading emails or other communications.

The complainant (through Mr. Newell) states that “given the evidence above, and noting in particular that domain names containing the term ‘server’ are often used and registered in bad faith, and often for phishing and/or malware scams […] I consider that - again noting the relevance of the trademark INTERBRAND, the generic term ‘content server’ and the number ‘126’, the domain name at issue appears to have been registered and used in order to pursue and/or prepare for a similar type of scam, or otherwise registered and used in bad faith, including by relying on and by misappropriating the fame and renown of the INTERBRAND name.”

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) That the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the mark INTERBRAND by reason of its trademark registrations and extensive worldwide use.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks because INTERBRAND is entirely subsumed within the disputed domain name. The additional words of “contentserver126” are insufficient to prevent a finding of confusing similarity given the information provided by Mr. Newell as to the meaning of the terms “content server” and “error 126”, which the Panel accepts.

The Panel therefore finds that paragraph 4(a)(i) is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) That before notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or

(ii) That the respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

(iii) That the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

The Complainant has stated, and the Panel accepts, that there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name, no evidence that the Respondent is commonly known by the disputed domain name, and no evidence that the Respondent is making legitimate non-commercial or fair use of the dispute domain name. Further Mr. Newell has stated that the Respondent is not authorised to use the Complainant’s trademark.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) That by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:

(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant and its rights in the trademark INTERBRAND. The evidence shows that this is a well-known mark that has been in widespread use internationally since at least 1996.

(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” The most cursory trademark or other such search or indeed any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its trademark. See in this regard paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Panel is also satisfied that the disputed domain name has been used in bad faith, for the following reasons:

(i) The Respondent has used a privacy service in conjunction with incomplete or incorrect registrant information. Although use of a privacy service is not in and of itself an indication of bad faith, it is relevant that this has been combined with incomplete or incorrect information. In this regard, paragraph 3.9 of the WIPO Overview 2.0 states “registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrant's actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith.”

(ii) The Respondent’s passive holding of the disputed domain name is evidence of use in bad faith, in combination with the fact that the Complainant’s trademark is well known, the Respondent has not responded to the Complaint, and has made attempts to conceal his or her identity. In this regard, paragraph 3.2 of the WIPO Overview 2.0 states “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

The Panel does not accept the Complainant’s contention that the inclusion of the word “server” in the disputed domain name is a factor that shows registration and use in bad faith, even in combination with the other factors outlined. There are numerous legitimate domain names which contain the word “server”. While the Panel has found that the disputed domain name was registered and used in bad faith, this is not because of the inclusion of the word “server” in the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <interbrand-contentserver126.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: June 8, 2016