WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LYMI, Inc. d.b.a. Reformation v. Host Metro, Hostmetro
Case No. D2016-2549
1. The Parties
Complainant is LYMI, Inc. d.b.a. Reformation of Los Angeles, California, United States of America ("United States" or "U.S."), represented by Knobbe, Martens, Olson & Bear, LLP, United States.
Respondent is Host Metro, Hostmetro of Arlington Heights, Illinois, United States.
2. The Domain Name and Registrar
The disputed domain name <reformation.com> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 17, 2017.
Although not required by the Policy or Rules, and out of an abundance of procedural caution, the Center sent an email communication to the Parties, noting that the Center's previous Notification of Complaint was not copied to an email address accessible by a text hyperlink provided on the website to which the Domain Name resolved. Pursuant to this additional email notice, Respondent was provided until January 24, 2017 to indicate whether it wished to participate in the proceeding. Respondent did not submit any response. Accordingly, on January 25, 2017, the Center indicated that Panel Appointment would commence.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 26, 2017. 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
Complainant is in the business of designing, creating, developing, marketing, and selling apparel and other fashion accessories. Complainant is the owner of the trademark REFORMATION used in connection with apparel, fashion accessories, leather goods, women's footwear, and retail store services featuring apparel and accessories, among others. Complainant owns the following registrations for its REFORMATION mark: United States Registration Nos. 4,111,140 and 4,111,272, both registered in March 2012 and with the same date of first use in commerce – December 11, 2008.
Complainant is the owner of the domain name <thereformation.com>, registered on March 10, 2004 and used in connection with the online sale of apparel and fashion accessories. Further, through the <thereformation.com> domain name and associated website, Complainant sells its REFORMATION apparel and accessories throughout the world.
The Domain Name was registered on May 31, 1996. The contents of the website linked to the Domain Name have not changed since August 2003. Further, historical use of the Domain Name and linked website shows that the Domain Name and website have never been used for offering any goods or services, or linked to any advertising. The content on the website purports to provide information and links to information concerning abuse of children by ministers.
Respondent HostMetro is a technical web services company providing de facto privacy shield services for the true owner of the Domain Name.
5. Parties' Contentions
(i) Identical or Confusingly Similar
Complainant states that the REFORMATION mark and the <thereformation.com> domain name are well-known throughout the United States and internationally as designating Complainant as the source of Reformation products. In 2008, Complainant publicly launched the REFORMATION brand nationally to reform the fashion industry by using sustainable materials and methods in producing apparel and accessories. The REFORMATION brand's mission is "to lead and inspire a sustainable way to be fashionable." REFORMATION products are made from sustainable materials, such as eco fabrics, recycled materials, rescued deadstock fabrics, and repurposed vintage clothing, and are produced using eco-friendly technologies and practices. Due to its promotion and sales around the world, Complainant claims that the REFORMATION mark, in conjunction with the <thereformation.com> domain name, have developed into a famous identifier of Complainant's high quality and eco-friendly clothing and accessories worldwide.
In addition, Complainant states a number of articles have been published in internationally circulated magazines and newspapers, including Forbes, Los Angeles Times, Telegraph, Vogue, and New York Post, describing and referring to the REFORMATION products and to the success of Complainant and the REFORMATION brand, all of which have featured the REFORMATION marks. As a result, Complainant states the REFORMATION mark has received extensive press coverage since the launch of the REFORMATION brand in 2008. Complainant thus contends it has strong rights in the REFORMATION mark resulting from Complainant's U.S. federal trademark registrations for the REFORMATION mark and its 8 years of continuous promotion and use.
Complainant states the Domain Name <reformation.com> incorporates Complainant's REFORMATION mark in its entirety, followed by the generic Top-Level Domain ("gTLD") suffix ".com". Complainant contends that the Domain Name itself suggests that the website to which it resolves is operated by Complainant to sell REFORMATION products to consumers, and it is highly likely that the average customer will associate the Domain Name as a source of products of Complainant. The most distinguishing feature of the Domain Name, i.e., the term "reformation", is identical to Complainant's REFORMATION mark. Accordingly, Complainant contends that Respondent's Domain Name is identical and/or at least confusingly similar to Complainant's trademark.
(ii) Rights or Legitimate Interests
Complainant states that Respondent does not use, and has not made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. First, the Domain Name and linked website do not involve a bona fide offering of goods or services; the Domain Name and website has never advertised or provided any goods or services. Instead, Complainant asserts that the Domain Name and associated website have been used to spread malware and having used the Domain Name to perpetrate a malware attack, it is clear that the Domain Name has not been used for any bona fide offering of services.
Complainant also indicates that Respondent's name of business, "HostMetro," does not bear any similarity to the Domain Name <reformation.com>. This is evidence that Respondent is not commonly known by the name "Reformation." Complainant also contends that for a mark that is well-known, such as Complainant's REFORMATION mark, it can support an inference that a respondent is not commonly known by a domain name. Moreover, the original registrant of the Domain Name, before privacy services were used in 2005, was listed as D. Nofziger, which is a name that bears no resemblance to the term "reformation."
In addition, Respondent has never been an agent of Complainant, nor is there any contractual relationship between Respondent and Complainant. Complainant has not licensed or otherwise authorized Respondent to use any of Complainant's trademarks or to apply for any domain name incorporating the trademarks. For these reasons, Complainant contends that Respondent has no rights or legitimate interests in the Domain Name under Policy, paragraph 4(a)(ii).
(iii) Registered and Used in Bad Faith
Complainant contends the Domain Name and associated website have been used to spread malware. A number of UDRP panels have found use of a domain name to spread malware constitutes use of the domain name in bad faith, even though the conduct does not fall strictly within one of the specific examples set forth in the Policy. As such, Complainant maintains that Respondent's use of the Domain Name to spread malware constitutes bad faith use.
Furthermore, Complainant asserts that the Domain Name was registered in bad faith by using false registrant information. Complainant explains that when Complainant's representative contacted Respondent HostMetro, Respondent stated that it was not the legal owner of the Domain Name. Complainant used Domain Tools (which offers a searchable database of domain name registration and hosting data) to review the historical WhoIs registration records for the Domain Name. That information indicated that the first registrant of record for the Domain Name (based on a WhoIs record dating from April 2004) was named D. Nofziger, having an address in Ohio, with a phone number and email address listed. However, Complainant hired an investigator to confirm that the listed address is fictitious as it does not exist. In addition, the listed phone number is for Verizon's Local and National Directory Assistance and as such was false information. Furthermore, the listed email address is inoperable and is presumed by Complainant to have been given fraudulently. Complainant was able to locate a person named D. Nofziger in Ohio, who claims in an affidavit that he has never had any connection to the Domain Name or its website. Mr. Nofziger is a religious counselor in Ohio, and stated that his name is fraudulently being used by a third party without his consent in relation to the website. Further, Complainant contends that the probability of two persons having the same name, D. Nofziger, and being within 122 miles of each other in a scarcely populated region of Ohio, is extremely low. Complainant argues that this, at the very least, suggests that the Domain Name was obtained and used without the consent of "D. Nofziger" of Ohio, and instead has been used to conceal the true registrant.
Complainant states that a number of panels have found that providing false information in registering a domain name constitutes evidence of bad faith. In the case at hand, Complainant contends that use of a non-existent address, a third-party's directory assistance telephone number, and a dubious email address show bad faith in registering and using the Domain Name. Furthermore, in this instance, there is also the issue of a presumably stolen identity, which may have harmed the reputation of the real Mr. Nofziger. Accordingly, for all these reasons, Complainant contends that Respondent's activities constitute bad faith registration and use of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
Respondent's failure to file a response does not automatically result in a decision in favor of Complainant.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has submitted evidence to show that it owns trademark registrations dating from 2008 for its REFORMATION trademark, and that it has developed strong rights in its marks in the field of women's apparel and fashion accessories. The Panel observes that the Domain Name was registered in 1996, predating Complainant's trademarks. However, for purposes of the first element under paragraph 4(a) of the Policy, the "UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") (noting also that in circumstances where the complainant acquired trademark rights after registration of a domain name, it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP).
The Panel finds that the Domain Name is identical to Complainant's REFORMATION trademark, except for the ".com" Top-Level Domain ("TLD"), which can be disregarded for purposes of comparing the Domain Name to Complainant's mark.
Accordingly, the Panel finds that Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Here, Complainant has indicated that Respondent has not been commonly known by the name "Reformation." Based on the evidence and the DomainTools reports provided by Complainant, we cannot be certain of the true identity of the owner of the Domain Name. The technical web services company, HostMetro, is named as the registrant of record (and Respondent in this case), but has indicated that it is not the legal owner of the Domain Name. It thus appears that the true owner of the Domain Name is effectively using HostMetro as a sort of privacy shield. The only other indication of a name for the owner is "D. Nofziger," but Complainant has provided evidence to indicate that that name appears to have been provided falsely in the early registration records for the Domain Name. Complainant has also confirmed that it has not authorized or licensed Respondent to use its REFORMATION mark. In addition, the Domain Name has never been used commercially in connection with a bona fide offering of goods or services.
The evidence submitted by Complainant also establishes the Domain Name has been linked to a static webpage with content that has not changed for approximately 13 years. The website states on its home page that it provides "a collection of news reports of ministers sexually abusing children." The website also states that "[i]n accordance with Title 17 U.S.C. Section 107, this material is available here without profit to people who want to read it for research and educational purposes." Clicking on the links included on the site provides access to purported news reports from around the world about Protestant ministers who have allegedly abused minors. Moreover, the Domain Name consists of the dictionary word "reformation," which means the action or process of reforming an institution or practice. The word also refers to a 16th-century movement in Europe for the reform of abuses in the Roman Catholic Church, ending in the establishment of the Reformed and Protestant churches. Thus, the owner of the Domain Name may have considered the word "reformation," when initially registering the Domain Name in 1996, as an appropriate label for a website that – by reporting information about ministers allegedly engaged in child abuse – was seeking reform on this issue within the Protestant churches. The type of information presented on the website, at face value and if offered in good faith, could provide a basis for Respondent to have claimed that it was making a legitimate noncommercial or fair use of the Domain Name in accordance with paragraph 4(c)(iii) of the Policy. Moreover, concealing identity through the use of privacy shield services, which appears to have commenced sometime between April and August 2005 – and 3 years before Complainant started using its REFORMATION mark in December 2008 – may have been considered prudent given the type of controversial information that was being provided through the website. The fact that Respondent has not provided a Response does not automatically negate these possible deductions.
However, Complainant has also provided evidence, through the declaration of its technical representative, that in his "professional opinion" the website linked to the Domain Name, at least as of June 2016, was being used to distribute malware. The Panel is not in a position to question this technical finding by Complainant's representative. To the extent there are questions about any of these points, Respondent was in a position to shed light on them by providing a Response indicating and documenting its objectives for use of the Domain Name. However, Respondent has failed to submit a Response in this case or to react at all in the face of these proceedings.
In view of the prima facie showing presented by Complainant, this case presents a close call on the question of whether Respondent has rights or legitimate interests in the Domain Name. On the one hand, the Domain Name was registered in 1996, well before Complainant first acquired trademark rights (starting in 2008), and consists of a dictionary word that has been used to link to a noncommercial website purportedly providing information (now dated) concerning alleged instances of child abuse by Protestant ministers. Further, there is nothing in the evidence provided by Complainant to indicate that Respondent (or the website linked to the Domain Name) has ever intentionally targeted any trademark owner including Complainant and its REFORMATION trademark. On the other hand, Complainant contends Respondent is not known by the Domain Name and has provided plausible evidence that false contact details were provided in the early registration of the Domain Name (with the identity of the owner now hidden behind a privacy shield), and that the Domain Name resolves to a website that distributes malware.
In light of the close call on the question of rights or legitimate interests, and because of the conclusion drawn by this Panel on the issue of bad faith, discussed below, this Panel is inclined to find in Complainant's favor but ultimately does not need to reach a conclusive view on whether Respondent has any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel's finds that Complainant has failed to establish that Respondent registered and is using the Domain Name in bad faith.
As noted above, Respondent registered the Domain Name in 1996, more than 12 years before Complainant first commenced use of its REFORMATION trademark in commerce in 2008. In this regard, WIPO Overview 2.0, paragraph 3.1, poses the question, "[c]an bad faith be found if the domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?" In response to this question, the Overview provides the consensus view:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."
In this case, even in the absence of a Response from Respondent, there is simply no evidence provided by Complainant that Respondent registered the Domain Name to intentionally target a trademark owner including Complainant and its REFORMATION trademark or any trademark for that matter. Instead, as discussed above, the Domain Name corresponds to the dictionary word "reformation" and has been used, inter alia, to link to a webpage providing information concerning cases of alleged child abuse by Protestant ministers.
Complainant contends that the Domain Name was registered in bad faith because Respondent initially provided false registrant information. Even assuming this is true, this behavior, without any evidence of targeting of a trademark, does not alone amount to bad faith registration in this case for purposes of the Policy. In particular, Complainant referenced two UDRP decisions finding that false information in registering a domain name may be "further" evidence of bad faith registration. See Dell Inc. v. DellDomains.com, WIPO Case No. D2003-0854 ("provision of false or incomplete contact information to the Registrar...is further evidence of bad faith"); Realm Entertainment Limited v. Ahmet Turk, WIPO Case No. D2015-0965 (use of a false address "may be considered as further evidence of bad faith in registering and using the disputed domain name"). A review of UDRP cases reveals that providing false registration information is sometimes considered as one of several elements, which on a cumulative basis (e.g., in combination with the targeting of a complainant's trademark), can result in a finding of bad faith registration. The Panel agrees with the decisions on this point. Here, however, there is no evidence that Respondent (or the legal owner of the Domain Name) targeted Complainant and its marks at the time of registration, and no evidence that there has been any effort to take advantage of Complainant or other trademark owners while using the Domain Name over a period of 13 years.
Further, as to use of the Domain Name, again there is no evidence to indicate that the Domain Name has been used to interfere with the trademark rights of Complainant or any third party. Instead, it has been linked to a webpage providing information about alleged child abuse by Protestant ministers, a purely noncommercial, informational use, without a basis for concluding there is intent to target a trademark.
The UDRP is fundamentally concerned with cases of cybersquatting in which domain names have been registered and used in bad faith, interfering with, harming, or otherwise taking unfair advantage of the rights of trademark owners. Paragraph 4(b) of the Policy provides four circumstances that, if found by the Panel to be present, are considered evidence of the registration and use of a domain name in bad faith. While this list is intended to be illustrative and not exclusive, all of the examples pertain to circumstances where the rights of a trademark owner are implicated and potentially adversely affected:
(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 is no evidence that any of these circumstances are present in this case. Moreover, the use of the Domain Name in this case – a use that commenced before Complainant acquired its trademark rights and which appears to have remained constant since that time – has nothing to do with Complainant's REFORMATION mark.
Finally, as discussed above, while Complainant provided the declaration of one of its technical employees to claim that the website linked to the Domain Name has been used to distribute malware, even assuming this is true, this point alone does not sustain Complainant's Complaint. It is not clear from the record when this use (distributing malware) first started or for how long it has persisted or whether it may be ascribed to Respondent. Complainant's evaluation dates from June 2016, while the website linked to the Domain Name has been in place since as early as August 2003. The Panel agrees with those previous UDRP panels finding that, although not specifically enumerated among the illustrative examples in the Policy, using a Domain Name to resolve to a website spreading malware, when done with intent to harm a mark owner, can be considered use in bad faith. See Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; BJ's Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No. D2015-1601. However, without any evidence whatsoever showing that Respondent's use has sought to harm Complainant – noting the possibility of pretextual "free speech" for such purpose has not escaped the Panel – in this case there is insufficient evidence to demonstrate bad faith within the scope of the Policy.
In sum, there is no evidence in this case to show that the registration and use of the Domain Name has had anything to do with Complainant and its REFORMATION trademark (or the mark of any third party). Accordingly, the Panel finds that, in view of all of the above circumstances in this case, Complainant has failed to establish Respondent's bad faith. To the extent malware is being distributed via the Domain Name, Complainant should have available means to stop such conduct, including by seeking to have the webpage content rendered inaccessible at the registrar or host level for e.g. violation of terms of service.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: February 19, 2017