WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Serverscheck BVBA v. Michael Starr, DCC Corporate
Case No. D2016-1958
1. The Parties
The Complainant is Serverscheck BVBA of Zaventem, Belgium, internally represented.
The Respondent is Michael Starr, DCC Corporate of Carlsbad, California, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <servercheck.com> is registered with Global Domains International, Inc. DBA DomainCostClub.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 October 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 7, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 10, 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 appears to be an entity based in Belgium and is the owner of US registered trademark no. 4601230 for the word mark SERVERSCHECK filed on February 10, 2014 and registered on September 9, 2014 in respect of wired and wireless sensors to monitor environmental conditions and security of infrastructure sites together with related software and cloud storage of data. The Complainant has produced images of two orange colored computer devices, which state “Monitoring Appliance” and “Wireless Sensor Temperature” on their respective faces and both of which bear the Complainant’s trademark. Due to the extremely brief nature of the Complaint, nothing else is known regarding the Complainant.
The disputed domain name was created on December 1, 1997. During the Center’s verification processes, the Registrar stated that the Respondent is Mr. Michael Starr, of the same address as the Registrar, and that the term “DCC Corporate” is displayed on the WhoIs record of the disputed domain name for “domain privacy reasons”. A representative of the Registrar also claimed in correspondence with the Complainant that the Respondent has owned the disputed domain name since it was first created. This claim was repeated by the Registrar during the Center’s verification processes on the basis that the WhoIs history “appears to indicate” this.
A “DomainTools” domain history report produced by the Complainant featuring historic WhoIs records shows that as at December 21, 2000, the registrant of the disputed domain name was an entity named “Planet Earth Communications” with an administrative and technical contact of “Freedomstarr Communications, Inc.” both of the same address in Escondido, California, US. By October 18, 2004, the registrant of the disputed domain name was listed as an entity named “Internet Services Plus” with an address in Encinitas, California, US.
By July 12, 2007, the registrant of the disputed domain name was listed as “Global Domains International”, namely the present Registrar (although before it became the registrar of record in respect of the disputed domain name) and the address of the registrant had also been changed to reflect the present Registrar’s address. These details remained consistent until September 3, 2013 when a registrant name of “Alan Ezeir” was added to the WhoIs record, leaving the registrant’s corporate name and address unchanged. By November 30, 2014, Mr. Ezeir’s name had been removed and the registrant name had been changed to “DCC Corporate”, while the registrant’s address was unchanged, and the present Registrar had also become the registrar of record for the disputed domain name.
A screenshot from a page entitled “The .WS Story” taken from a website relating to the Registrar and produced by the Complainant indicates that Mr. Starr and Mr. Ezeir are co-founders and the CEO and President respectively of the Registrar. A link identifiable on that screenshot named “Meet the Co-Founders” delivers a page which provides biographies of Mr. Starr and Mr. Ezeir and states that they co-founded FreedomStarr Communications, Inc., d.b.a. Planet Earth Communications in October 1995.
In terms of the use to which the disputed domain name has been put, a succession of screenshots from November 23, 2007 indicate that since that date the disputed domain name has featured pay-per-click advertising relating to server, network and website monitoring.
On September 29, 2016, in reply to an email from the Complainant attaching various documents, a representative of the Registrar emailed the Complainant stating that the registrant had held the disputed domain name since 1997 and was “willing to take USD 6,000” if this met with the Complainant’s approval. The Panel does not know whether the Complainant replied to that email.
5. Parties’ Contentions
As noted above, the Complaint is extremely brief. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s own domain name, <serverscheck.com> and refers to its registered trademark SERVERSCHECK, albeit erroneously quoting the year of filing and registration as 2015.
The Complainant states that the Respondent does not have rights or legitimate interests in respect of the disputed domain name because it is only holding this for the purpose of selling it and to generate advertising revenue from a name which is confusingly similar to the Complainant’s trademark. The Complainant adds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also notes that the Respondent is misleading consumers by diverting them to products competitive with those of the Complainant.
The Complainant points out that the disputed domain name was placed in the name of DCC Corporate on November 30, 2014 and adds that this was done for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Complainant states that the disputed domain name has since been offered for sale and that the broker’s history shows several offers and counter-offers over that period. The Complainant produces evidence showing the terms of the Registrar’s email to it of September 29, 2016 and states that this proves the Respondent’s purpose of selling the disputed domain name for an amount in excess of its out-of-pocket costs. The Complainant questions the veracity of the Respondent’s claim to ownership of the disputed domain name since 1997 in light of the WhoIs data.
The Complainant notes that the Respondent is the CEO of the Registrar and suggests that it is odd that the Registrar would maintain incorrect registrant information in those circumstances and that this is potentially indicative of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Matters: Respondent Identity
The registrant name on the WhoIs record for the disputed domain name is “DCC Corporate”. However, during the Center’s verification process the Registrar disclosed Mr. Starr as the underlying registrant and the Center therefore invited the Complainant to amend the Complaint to replace the Respondent with the newly identified registrant or to add such registrant as a respondent. The Complainant chose the latter course. The Center also informed the Complainant that the determination of the Respondent’s identity would ultimately be at the Panel’s discretion.
The UDRP Rules give the Panel power to conduct proceedings in such manner as it considers appropriate, in accordance with the Rules and the Policy, and in the Panel’s opinion, this power is capable of extending to the making of a determination as to the correct respondent in a proceeding.
Before reaching the following determination as to the Respondent’s identity, the Panel noted that the Registrar itself featured as the registrant of the disputed domain name at various times in the historic WhoIs records before it became the registrar of record thereof. The Panel noted that the Registrar had stated that Mr. Starr had been the owner of the disputed domain name since its creation in 1997. The Panel reviewed the materials provided by the Complainant and noted in particular that the screenshot of the Registrar’s website stated that Mr. Starr was a co-founder of the Registrar. Finally, the Panel identified from the Complainant’s screenshot that there appeared to be a further link on the Registrar’s website purporting to provide more information about the co-founders of the Registrar.
The Panel determined that in the particular circumstances of this case it was reasonable for it to undertake limited factual research restricted to visiting the Registrar’s website in order to follow the link displayed on the Complainant’s screenshot (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) on the topic of independent research by UDRP panels). The Panel also determined that it was not necessary to issue a procedural order in this case inviting the Parties to comment on its review of such website on the basis that both Parties were already familiar with this material, in the Respondent’s case because the website is under the Registrar’s control and in the Complainant’s case because it produced and sought to rely upon the screenshot of the related page. As noted above, the link led to a page containing biographies of Mr. Starr and Mr. Ezeir, noting that they co-founded FreedomStarr Communications, Inc., d.b.a. Planet Earth Communications. Based upon the earliest historic WhoIs entry for December 21, 2000, this entity appears to be the original registrant of the disputed domain name.
While the above does not demonstrate conclusively that Mr. Starr should be the correct Respondent in these proceedings, it is reasonable to infer from the information obtained from the Registrar’s website coupled with the historic WhoIs records that both Mr. Starr and Mr. Ezeir have had a close connection with the disputed domain name over the course of its life and certainly for a good deal of time before November 30, 2014 being the acquisition date contended for by the Complainant. Accordingly, all of the information available to the Panel is reasonably consistent with and broadly supportive of the Registrar’s statement that Mr. Starr is the underlying registrant of the disputed domain name. The Panel therefore finds that Mr. Starr is the correct Respondent in the present administrative proceeding.
B. Identical or Confusingly Similar
The Panel notes that the disputed domain name contains the juxtaposition of two elements, namely “server” and “check” together with the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that it is required for technical reasons only. The second level of the disputed domain name is alphanumerically identical to the Complainant’s registered trademark except for the fact that the trademark contains an additional letter “s” on the end of the “server” element to give the plural “servers”. The Panel is of the view that the absence of this letter in the disputed domain name, rendering the first element as the singular form “server”, is insufficient to distinguish the disputed domain name from the Complainant’s mark.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding on the question of registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
There are two elements to the inquiry under this part of the Policy. First, the Panel must determine whether the Respondent registered or acquired the disputed domain name in bad faith. Secondly, assuming that it finds registration or acquisition in bad faith, the Panel must go on to decide whether the disputed domain name is being used in bad faith, the elements of this inquiry being conjunctive. Before it may address the first element, the Panel must determine when the Respondent’s interest in the disputed domain name came into existence by reference to the WhoIs history.
In the present case, the Respondent’s interest has never been shown directly on the WhoIs record. The Parties take different views as to when such interest was acquired. Although the Respondent has not engaged directly in the administrative proceeding, its position is clearly that it acquired its interest at the creation date of the disputed domain name in 1997. This stance is set out in the Registrar verification response and in the email from an employee of the Registrar to the Complainant dated September 29, 2016. It should be borne in mind that the Respondent is the CEO of the Registrar and therefore that the Registrar’s assertions regarding the disputed domain name, and the assertions of its employee, may reasonably be presumed to accord with the position of the Respondent.
For its part, the Complainant argues that the failure to show the Respondent’s interest on the WhoIs record for the disputed domain name at any point since its creation date calls into question the veracity of the Respondent’s claim to such interest. The Complainant appears to prefer the date of November 30, 2014 as the date of likely acquisition being the date on which the disputed domain name was placed into the name of “DCC Corporate”, although it also notes that it is not possible to determine the exact date of acquisition.
The Panel regards it as significant that the earliest available WhoIs record in respect of the disputed domain name shows the registrant as “Planet Earth Communications” with an administrative contact of “Freedomstarr Communications, Inc.”. This is an entity with which the Respondent claims a close association in that the Registrar’s website asserts that he was its co-founder. Furthermore, in the term “Freedomstarr” it evidently shares the Respondent’s surname as an element of its name, being a further possible link. No explanation is available concerning the next registrant of the disputed domain name, although it is significant that the administrative contact address bears some relation to later addresses which are directly associated with the present Registrar and thus with the Respondent as its CEO. Similarly, from July 2007, the historic WhoIs record shows the present Registrar itself as the registrant. The other co-founder of the present Registrar begins to appear on WhoIs records from 2011 and ultimately from November 30, 2014, the disputed domain name is transferred to DCC Corporate. The Registrar asserts that the latter is a privacy service and that the Respondent has always been the underlying registrant since 1997.
Each of the various registrants over the entire life of the disputed domain name appears to have had more than a passing connection to the Respondent, whether by virtue of addresses, contact details, related persons or businesses allegedly controlled by the Respondent. The Panel is mindful of the fact that, particularly in the early days of domain name registrations, registrants were not always careful to ensure that they were represented on the WhoIs record with the utmost accuracy, especially if they were in the business of managing a large domain name estate as the Respondent’s various businesses are likely to have been (it should be noted that the 2004 to 2007 WhoIs records indicate that the present Registrar was originally a domain name registration service provider before it became an ICANN accredited registrar in its own right). In many cases, the domain names in a portfolio may adopt the registrant name of the then holder of the account with the registrar of record through which they are managed. Consequently, the Panel is reluctant against the unique background of this case to take an unduly strict approach that each new registrant name appearing on the WhoIs necessarily constitutes a transfer between wholly unrelated parties, particularly if, as here, there is substantive evidence linking each such named entity with a person claiming to be the underlying registrant throughout a domain name’s existence (on this topic, see the Panel’s discussion of a similar chain of registrants in Qwalify, Inc. v. Domain Administrator, Fundacion Private Whois / Gregory Ricks, WIPO Case No. D2014-0313).
In all of these circumstances, the Panel finds that the correct date for the assessment of registration in bad faith is the creation date of the disputed domain name, or, at the latest, December 21, 2000. It follows that the Respondent’s registration of the disputed domain name long pre-dates the coming into existence of the Complainant’s rights and accordingly that there can be no finding of registration in bad faith in the present case. Furthermore, there is no suggestion that the variety of registrants listed in connection with the disputed domain name, most of which predate the coming into existence of the Complainant’s rights, represent a series of transfers designed to frustrate an assessment of liability in relation to registration or use of the disputed domain name (on this subject, see BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882). Consequently, the Complainant’s case on bad faith must fail in that the Respondent could not have contemplated the Complainant’s non-existent rights at the time of registration of the disputed domain name (see paragraph 3.1 of the WIPO Overview 2.0).
The Panel adds for completeness that even had it accepted the Complainant’s contention that the relevant date for assessment of bad faith registration was November 30, 2014, it considers that the Complaint would still have failed. By that date, the Complainant’s rights had been in existence for just under two months. The Complaint is extremely brief and there is no information in it which would have allowed the Panel to find on the balance of probabilities that the Respondent was targeting the Complainant’s rights. The second level of the disputed domain name is the combination of two ordinary English words, “server” and “check”. The terms used in pay-per-click advertising both before and after November 30, 2014 seem to the Panel to be related to the ordinary meaning of those combined words, namely, some type of monitoring of computer systems. Without additional evidence, which was not forthcoming in the Complaint, there is nothing to suggest that the Respondent is likely to have acquired the disputed domain name with the Complainant, its trademark or its unspecified business activities in mind. For example, no information has been provided regarding the extent of the Complainant’s use of its SERVERSCHECK trademark or of its online presence, whereby knowledge of these matters could reasonably be inferred on the Respondent’s part (on the topic of a substantial online presence leading to an inference of respondent knowledge, see for example the discussion in Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535).
In addition, taking into account the above-mentioned circumstances, the Panel considers that, in the present case, the offer for sale of the disputed domain name to the Complainant is not in itself enough evidence of registration of the disputed domain name in bad faith.
The Panel concludes, therefore, that the Complaint fails on the third element and that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: November 24, 2016