WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ustream.TV, Inc. v. Vertical Axis, Inc
Case No. D2008-0598
1. The Parties
The Complainant is Ustream.TV, Inc., Los Altos, California, United States of America, represented by Fenwick & West, LLP, United States of America.
The Respondent is Vertical Axis, Inc, Christ Church, Barbados, represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ustream.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2008. On April 17, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On April 18, 2008, Nameview Inc. transmitted by email to the Center its verification response providing the name and contact details for the registrant of the disputed domain name. In response to a notification by the Center that the registrant of record for the disputed domain name was different to the entity named in the Complaint, the Complainant filed an amendment to the Complaint on April 30, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. The Response was filed with the Center on May 29, 2008.
The Complainant filed a Reply to the Respondent’s response with the Center on June 6, 2008. The Respondent requested the opportunity to file a Sur-Reply on June 10, 2008 and requested that it be granted a period of 10 days for preparing and filing its Sur-Reply, if the request were to be granted.
The Center appointed John Swinson, David H. Bernstein and David E. Sorkin as panelists in this matter on June 24, 2008. The Panel finds that it was properly constituted. Each member of 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.
On June 27, 2008, the Panel granted the Respondent permission to file a Sur-Reply with the Center and requested that the Sur-Reply be filed within 10 days. The Respondent timely filed its Sur-Reply with the Center on July 7, 2008.
4. Factual Background
The Complainant, Ustream.TV, Inc., is a company based in California, United States of America (“USA”). It operates a live interactive video broadcast platform that enables its users to broadcast their videos on the Internet. The Complainant operates the broadcast platform from the website to which the domain name <ustream.tv> resolves. The registrant of the <ustream.tv> domain name is Mr. Johnny Ham. Mr. Ham is a co-founder of Ustream.TV, Inc.
The Respondent, Vertical Axis, Inc., is a company registered in Christ Church, Barbados. The Respondent uses the disputed domain name in connection with a pay-per-click (“PPC”) parking page. When the Panel viewed the website at the disputed domain name, it showed a list of links for conferencing, streaming, Internet television and other associated links.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
The disputed domain name is confusingly similar to the Complainant’s Ustream.TV marks.
The Complainant has protectible, unregistered (common law) trade marks and design marks in Ustream.TV and has used those marks in connection with its platform and broadcast services since the founding of the company in July 2006. Although the Complainant’s Ustream.TV website and services did not officially launch until 2007, the Complainant started using and promoting its prospective services under the Ustream.TV marks in July 2006.
The word “ustream” is not a common English word or a common descriptive term but, rather, an inventive or coined term. The Complainant is not using a purely generic or descriptive word as its domain name.
The Complainant is most commonly known as Ustream. The Complainant’s broadcast platform has more than 260,000 users including entertainers, politicians (including presidential candidates from the USA), individuals, families and other groups (including the United Nations1). The Complainant has spent significant time, money and resources creating and maintaining <ustream.tv> and advertising, marketing and promoting its platform and services.
Ustream.TV and Ustream (as often used by the general public and media) have become distinctive identifiers associated with the Complainant and its platform and services. This is evidenced by the widespread use of the Complainant’s services by a large range of people and widespread media recognition of the Complainant’s services. The Complainant provided, at Annex E to the Complaint, a number of media articles relating to its platform and services dating back to February 2007.
There is no evidence to suggest that there is any other company or business using the Ustream or Ustream.TV name. Google searches conducted by the Complainant on April 16, 2008 for “Ustream.TV” and “Ustream” only returned references to the Complainant and its services within the first 50 results of each of those services (copies of which were attached as Annex F to the Complaint).
The disputed domain name is confusingly similar to the Complainant’s Ustream.TV marks – it incorporates the distinctive part of the Complainant’s marks and consumers would expect the disputed domain name to resolve to a website about the Complainant or its services.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has no relationship with the Complainant. The Complainant has not granted a license or otherwise permitted or authorized the Respondent to use the disputed domain name.
The Respondent is not commonly known by the disputed domain name or Ustream. The Respondent does not own any trademark registrations or applications for Ustream or Ustream.com.
The Respondent has registered and is using the disputed domain name to resolve to a parked website with links to third party websites that directly compete with the Complainant’s platform and broadcast services. The Respondent is using a domain monetization program through HitFarm to receive PPC fees based on the number of visitors who click on the links offered from the website to which the disputed domain name resolves. The Respondent is using the Complainant’s marks in the disputed domain name to take unfair advantage of consumer recognition of the Complainant’s marks and divert consumers to the website at the disputed domain name for financial gain. This is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith.
The disputed domain name was registered by a party other than the Respondent in September 2001. It is unclear when the Respondent became the owner of the disputed domain name but it was owned by a third party at least between March 31, 2004 and February 10, 2005. The earliest the Respondent could have owned the disputed domain name was September 10, 2006, when Nameview, Inc became the registrar and the registrant identity was shielded by Whois Identity Shield.
The Respondent has parked the disputed domain name to take unfair advantage of the recognition associated with the Complainant’s marks by diverting consumers looking for the Complainant’s website to the website at the disputed domain name. The Respondent benefits from consumer confusion and diversion by receiving PPC commissions.
The Respondent has a history of registering domain names that have been found to violate other party’s trademark rights. The Respondent has registered and is using the inventive and coined term “ustream” with the Complainant in mind.
B. Respondent
The Respondent makes the following contentions in the Response:
The disputed domain name is not confusingly similar to the Complainant’s alleged “Ustream.TV” marks because the Complainant has no marks in “ustream”.
In its Response, the Respondent states that it registered the disputed domain name on September 18, 2001 (but see the Respondent’s Sur-Reply, discussed below). It thus registered the domain name nearly 5 years before the Complainant was founded (in July 2006) and before Complainant’s actual launch in 2007. In order to prevail under the Policy, the Complainant must have trade mark rights that predate the registration of a domain name.
The Complainant does not have a registered trade mark and its claim to a common law mark is without merit. “Ustream” is a common descriptive term composed of the common words stream and u (a common abbreviation for “you”). The addition of the .tv top level domain to the end of “ustream” adds no distinctiveness to the mark.
The Complainant uses “ustream” in a descriptive sense and cannot prove that the term has developed secondary meaning such that consumers identify the term exclusively or almost exclusively with the Complainant. The term “ustream” and its phonetic equivalent “you stream” are subject to substantial third party use as evidenced by the Google search results annexed as Exhibit 6 to the Response.
The Respondent has rights or legitimate interests in the disputed domain name.
“Ustream” is a descriptive term that anyone is entitled to register. The Respondent registered the disputed domain name solely based on its descriptive nature and not because of the Complainant’s trade mark. This is corroborated by the fact that the Respondent has registered dozens of other descriptive names containing “u” and “stream” in combination with other words or letters (Response, Section II. Facts at page 4 and Section B. at page 9). The Respondent registered such domain names because they incorporated descriptive terms and because someone else registered them first and failed to renew them.
The Respondent uses the disputed domain name in connection with the bona fide promotion of goods and services in the nature of PPC ads relating to streaming and other similar products and services. The Respondent hosts the disputed domain with HitFarm.com, a service that places sponsored search PPC advertisements provided by Yahoo.com on websites to which domain names owned by third parties resolve, and shares advertising revenue earned from the sponsored search results with the domain name owners.
The Respondent did not register and is not using the disputed domain name in bad faith.
The Respondent claims that the Complainant has admitted that it did not begin use of its alleged mark until long after the Respondent registered the disputed domain name. The Respondent could not have had a non-existent trademark in mind when it registered the disputed domain name.
The Respondent registered the disputed domain name because it became available due to deletion and contained only common words and descriptive terms. There is no evidence that the Respondent had knowledge of the Complainant’s mark or that the disputed domain name, consisting of common words, was registered for the purpose of profiting from the Complainant’s trade mark rights.
The Respondent did not register the disputed domain name to prevent the Complainant from owning a domain name incorporating its trade mark. The Respondent did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website. As noted above, the Respondent hosts the disputed domain with HitFarm to obtain a share of advertising revenue from PPC advertisements. HitFarm and Yahoo’s software automatically displays links that relate to the contextual meaning of the terms in the hosted domain names. Even if the links placed on the website at the disputed domain name are deemed bad faith use, this cannot change the fact that the disputed domain name was originally registered in good faith.
The Respondent has been involved in a number of decisions relating to UDRP complaints – some have been decided in the Respondent’s favor and some have resulted in adverse decisions against the Respondent. Notwithstanding adverse decisions against a respondent, “each case much be judged on its own merits”.
The Complainant filed this proceeding to reverse domain name hijack the disputed domain name from the Respondent.
A rudimentary investigation into the basic facts of this case should have alerted the Complainant, or at least its counsel, that the Complainant had no viable case under the Policy. The Complainant should have known that it could not prove that the disputed domain name was registered in bad faith. The initiation of a UDRP proceeding based on a trade mark whose first-use post-dates a domain name registration is an abuse of the proceedings, warranting a finding of reverse domain name hijacking.
C. Complainant’s Reply on Reverse Domain Name Hijacking
The Complainant made the following additional submissions:
The Respondent did not register the Domain Name in September 2001.
The Complainant argued strenuously that the Respondent’s claim that it registered the disputed domain name in September 2001 had to be false. That is because WHOIS records show that the disputed domain name was owned by a third party during at least the period from March 31, 2004 through February 10, 2005. The Complainant’s efforts to provide more definitive information on ownership is being frustrated by use of the privacy shield, which makes it impossible to know exactly when the Respondent registered the disputed domain name.
The Complainant did not file this proceeding to reverse domain name hijack the disputed domain name from the Respondent.
The Complainant filed this proceeding in good faith under the belief that the Respondent registered the disputed domain name on or after September 10, 2006 – a date after which the Complainant began using and establishing its rights in its Ustream.TV marks.
The Complainant learned of the Respondent’s use of the disputed domain name in February 2008. The Complainant, through counsel, wrote to the Respondent on March 4, 2008 and again on March 24, 2008 requesting the site be disabled and the disputed domain name be transferred to the Complainant. The Respondent did not reply to the Complainant’s requests. Consequently, the Complainant filed the Complaint.
D. Respondent’s Sur-reply
In its Sur-Reply, the Respondent concedes that the sworn declaration it filed with its initial Response was false with respect to the date of registration of the disputed domain name. The Respondent now concedes that it did not register the disputed domain name on September 18, 2001; rather it now contends that it acquired the disputed domain name on November 1, 2005. The Respondent cannot provide written documentation to prove that it acquired the disputed domain name on November 1, 2005 because there was no written agreement between the Respondent and the prior registrant regarding the transfer of the disputed domain name. The Respondent asserts that the error in the sworn declaration it filed with its initial Response was unintentional.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
To prove this element the Complainant must prove that it has trade or service mark rights and that the disputed domain name is identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant concedes that it does not have a registered trade mark or service mark in “ustream” or “ustream.tv”. The Complainant contends, however, that it has an unregistered trade mark and design mark in “ustream” and/or “ustream.tv”.
What evidence is necessary to establish the existence of an unregistered trade mark?
The consensus view of WIPO Panels on this question can be found at paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”) which states2:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in common law trademark…”
The Complainant provided evidence that it has been advertising and promoting its platform and broadcast services under the “ustream” name since 2006. It has advertised extensively under that name expending considerable financial resources on marketing. The Complainant’s services are used by a wide range of people and businesses including presidential candidates in the USA, music artists, television shows and performers, sporting teams and the general public (Annex’s C and E to the Complaint). The services offered by the Complainant are well recognized by consumers and the media as evidenced by the media articles attached as Annex E to the Complaint and the Google searches conducted by both the Complainant and Respondent (Annex F to the Complaint and Annex 6 to the Response). The Complainant is increasing the profile of its service and its marks by promoting at exhibitions and through the broadcast of events and conferences by organizations such as the United Nations.
Based on all the evidence, the Panel is satisfied that the Complainant has established that the marks “Ustream” and “Ustream.tv” have become distinctive identifiers associated with the Complainant or its platform and broadcast services.
Furthermore there is no evidence to suggest that there is a company or business other than the Complainant that uses “ustream” as a name in the same field as the Complainant. The Respondent contends that there is substantial third party use of the term “ustream”. To support that contention, the Respondent has attached, at Exhibit 6 to the Response, Google searches it conducted on May 28, 2008. However, it appears that many of the references to “ustream” in those Google results are references to the Complainant’s services and how those services can be, and are, used. Furthermore, the Panel notes that the Respondent excluded “tv” from its search results rather than just searching for the term “ustream.tv”.
The Panel is satisfied that “Ustream” and “Ustream.tv” are common law trade marks in which the Complainant has rights.
Finally, there is no doubt that the disputed domain name is confusingly similar to the Complainant’s “Ustream” trade mark. The disputed domain name contains the entirety of the Complainant’s trade mark. It is well established that the specific top level domain, such as “.com”, “.net” or “.travel”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Respondent contends that it is well established that a complainant’s trademark rights (whether registered or common law rights) must pre-date the registration of a disputed domain name in order for complainant to prevail under the first factor of the Policy. That is not a correct statement of the relevant law. Rather, it is commonly accepted, as demonstrated by paragraph 1.4 of the WIPO Decision Overview that the “[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights.” If the registration of the disputed domain name by the Respondent predates the Complainant’s acquisition of trademark rights in the mark “Ustream”, that fact is only, if at all, relevant to the assessment of whether or not the Respondent has rights or legitimate interests in the domain name or of registration in bad faith, which is considered below (see, e.g., Digital Vision, Ltd. v. Advance Chemill Systems, WIPO Case No. D2001-0827; Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193).
The Panel finds that the disputed domain name is identical to the Complainant’s trade mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy states that a respondent can show that it has a right or legitimate interest in a disputed domain name in the following circumstances:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is the complainant’s burden to prove, by a preponderance of the evidence, that the respondent lacks rights or a legitimate interest in the domain name (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270). Panels long have recognized, though, that it can be difficult to prove a negative, especially where information concerning a respondent’s rights or legitimate interests is within the sole knowledge of the respondent. Accordingly, it is the consensus view of WIPO UDRP panels that the threshold for the complainant to prove a lack of rights or legitimate interests is low, and that, once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see id.; see also paragraph 2.1 of the WIPO Decision Overview; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; First Quality Musical Supplies v. Vertical Axis, NAF Claim No. 1070187). As discussed in detail below, the Complainant has adduced evidence sufficient to support a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to come forward with credible evidence to rebut that showing.
The Respondent’s principal argument in favor of a finding of rights is that it is using the disputed domain name descriptively for a page with content related to the word “ustream.” The Respondent is correct that registering a domain name for its descriptive value may constitute a legitimate interest for the purposes of paragraph 4(c) of the Policy. However, this proposition is true only so long as the domain name has not been registered because of its value as a trademark, and only if it is being used solely in connection with its descriptive meaning (Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964); Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459; The Knot, Inc. v. In Knot we Trust Ltd., WIPO Case No. D2006-0340; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; (Mobile Communication Service Inc v. Webreg, RN, WIPO Case No. D2005-1304; HSBC Finance Corporation v. Clear Blue Sky Inc., WIPO Case No. D2007-0062).
Even if “you stream” is descriptive of some services (an issue the Panel need not resolve), the content of the Respondent’s website belies its argument that it is using the disputed domain name solely in connection with its descriptive meaning. For example, there is no descriptive relationship between the disputed domain name <ustream.com> and conference call services, computer science training, and business continuity services, all of which are advertised on the website to which the Respondent’s disputed domain name resolves.
Moreover, the content of the Respondent’s website does not reflect a bona fide offering of goods or a legitimate noncommercial or fair use of the disputed domain name. Rather, the disputed domain name is being used for a PPC parking page at which advertisements are displayed keyed to the term “ustream” and the revenue from those advertisements is shared with the Respondent. It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii) (see mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailPlanet.com, WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340).
The Panel thus finds that the Complainant has proven that the Respondent lacks rights to, or legitimate interests in, the disputed domain name.
C. Registered and Used in Bad Faith
For a complainant to succeed under the Policy it must prove that the respondent has both registered and used the domain name in bad faith (e-Duction, Inc. v. John Zuccarini, WIPO Case No. D2000-1369). Paragraph 4(b) of the Policy lists, by way of example, circumstances that can support a finding of registration and use of a domain name in bad faith.
The Complainant argues that the Respondent registered the disputed domain name to take unfair advantage of the recognition associated with the Complainant’s marks, that it is using the disputed domain name in bad faith to divert consumers looking for the Complainant’s website to the Respondent’s website, and that these circumstances satisfy paragraph 4(b)(iv) of the Policy. The Respondent, in response, asserts that, even if the Panel finds that the disputed domain name is being used in bad faith, it cannot find that the Respondent registered the disputed domain name in bad faith because the Respondent registered the disputed domain name before the Complainant established trade mark rights.
To assess the validity of this argument, the Panel needs to determine when the disputed domain name was registered or acquired by the Respondent3 and whether that date predates any possible rights the Complainant may have either through the development of trade mark rights or through pre-launch activities.4
Normally, determining the date a disputed domain name was registered by a respondent is a simple matter. That is not the case here. That is because the Respondent’s use of a privacy shield has obscured not only the identity of the Respondent (which shield has since been lifted by virtue of the information in the Registrar Verification), but also the date on which the Respondent registered the disputed domain name (an issue that was not addressed at all in the Registrar Verification). The Registrar Verification discloses that the Respondent is the current registrant of the disputed domain name, but it does not provide any historical report of when the Respondent became the registrant. It is impossible to know, for example, whether the Respondent was the registrant from the start, or whether two or more registrants have held the disputed domain name, all of whom used the same privacy shield to mask their identities and also the fact of transfer(s) of the disputed domain name.
The Respondent has attempted to clarify, with declaration evidence, the date upon which it registered the disputed domain name. As discussed above, though, the Respondent has provided contradictory evidence. In its Response, the Respondent claimed that it registered the disputed domain name in 2001. After the Complainant persuasively pointed out in its Reply the impossibility of that assertion (since an unrelated third party owned the disputed domain name for a period of time from 2004 to 2005), the Respondent conceded in its Sur-Reply that the sworn declaration submitted with its initial Response was incorrect. In its Sur-Reply, the Respondent provided a new declaration, from a different declarant from the one who originally provided a declaration in connection with the initial Response, that provided a new date on which it now claims to have registered the disputed domain name – November 1, 2005. The Respondent has failed, however, to provide any credible basis for the error in the first declaration attached to its Response.
The Respondent has also not provided any documentary support to substantiate the claim in its new declaration that it acquired the disputed domain name on November 1, 2005. That is because, the Respondent claims, it acquired the disputed domain name from the prior registrant without having entered into any written agreement. Respondent has not even submitted any documentary evidence of a payment to the prior registrant.
In light of the Respondent’s shifting story, its failure to provide any documentary evidence to support its assertions, its failure to provide a compelling explanation for why its first declaration was materially incorrect, and the fact that the Respondent’s latest story smacks of being a post-hoc justification for a date just prior to the date that the Complainant began public use of its mark, the majority of the Panel finds the Respondent’s declaration testimony to be inherently incredible and the majority of the Panel therefore disregards it.5
The majority of the Panel also finds that the use of a privacy shield in this case further supports its finding of bad faith registration. Although privacy shields might be legitimate in some cases – such as protecting the identity of a critic against reprisal – it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting. In circumstances like this, the privacy shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy (see Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, which held that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Such use defies the Policy’s overriding objectives to preserve accountability for unlawful acts on the Internet and to curb the abusive registration of domain names and cybersquatting (see, e.g., Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; HSBC Finance Corporation v. Clear Blue Sky Inc., WIPO Case No. D2007-0062).
The Panel acknowledges that a proper balance between privacy, on the one hand, and the need for accountability and cybersquatting prevention, on the other hand, must be struck. Thus, while the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences in appropriate cases (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542). In the circumstances of this case, the majority of the Panel is of the view that it is appropriate to draw adverse inferences from the Respondent’s use of a privacy shield. The use of the privacy shield here gives rise to the suspicion that the shield was manipulated to mask both the identity of the true registrant and the Respondent’s actual date of registration in an attempt to facilitate cybersquatting. The Respondent’s failure to offer any documentary evidence at all to substantiate its claimed date of acquisition, coupled with its submission of a declaration that it has since been forced to acknowledge was false, strengthens those suspicions.
In sum, because the Complainant has made a prima facie showing that the Respondent registered the disputed domain name in bad faith sometime after the Complainant first announced its intention to offer services under the Ustream.TV mark in July 2006,6 and because the Respondent has failed to rebut that showing with credible evidence, the majority of the Panel finds that the Complainant has proven that the Respondent registered the disputed domain name in bad faith.
Having found bad faith registration, the Panel easily concludes that the Respondent has used the disputed domain name in bad faith. The same facts that support the finding that the Respondent lacks rights to or a legitimate interest in the disputed domain name also support a finding that the Respondent is using the disputed domain name in bad faith (see, e.g., Barnes and Noble College Bookstores, Inc. v. Leasure Interactive, WIPO Case No. D2001-1216, which held that lack of a right or legitimate interest may, in appropriate cases, assist in determining bad faith). The Respondent’s use of the disputed domain name for a PPC parking page constitutes bad faith use because the Respondent is attracting Internet users to its website by causing confusion as to whether its website is, or is associated with, the Complainant or its services. This conduct disrupts the Complainant’s business by diverting consumers away from the Complainant’s website. The diversion is for the Respondent’s commercial gain because the Respondent receives PPC revenue from those visitors to its website who click through to the advertising on the site. Thus, the Respondent’s conduct constitutes classic bad faith registration and use under paragraph 4(b)(iv) of the Policy (Mobile Communication Service Inc v. Webreg, RN, WIPO Case No. D2005-1304; Royal Bank of Canada v. Chan; Fox News v. Reid; TT-Line Company Pty v. Vertical Axis, Inc., WIPO Case No. D2007-1742).
Finally, the Panel takes notice of the Respondent’s reputation as a serial registrant of domain names that cybersquat on others’ trademarks.7 Although this is not conclusive, and, as the Respondent rightly notes, each case must be assessed on its own facts (e-Duction, Inc. v. John Zuccarini, WIPO Case No. D2000-1369), the Respondent’s pattern of cybersquatting in other cases can be considered as an additional factor in determining whether the Respondent’s factual assertions and protestations of good faith are credible, and whether the Respondent’s conduct in this case also constitutes abusive cybersquatting (see Nabisco Brands Co. v. The Patron Group, WIPO Case No. D2000-0032).
In conclusion, the Respondent’s unjustified use of a privacy shield, the Complainant’s prima facie showing that the Respondent registered the disputed domain name after the Complainant publicized its prospective Ustream.TV services, the Respondent’s initial submission of false testimony, the Respondent’s failure to credibly explain the circumstances of the error in its initial affidavit, the Respondent’s failure to provide any documentary or other independent evidence showing when it did, in fact, register the disputed domain name, and the Respondent’s past record, all lead to the conclusion that the Complainant has proven, by a preponderance of the evidence, that the Respondent registered and used the disputed domain name in bad faith. The majority of the Panel thus finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the majority of the Panel orders that the domain name <ustream.com> be transferred to the Complainant.
John Swinson | |
David H. Bernstein | David E. Sorkin |
Dated: July 29, 2008
DISSENT
I respectfully dissent, on the ground that I do not believe the Complainant has sustained its burden of proving that the disputed domain name was registered in bad faith. (I concur in the decision of the majority as to the questions of confusing similarity, lack of rights or legitimate interests, and bad faith use.)
The disputed domain name was registered on September 18, 2001. In the initial Response, the Respondent claimed that it was the registrant of the disputed domain name at that time. In its Sur-reply, however, the Respondent acknowledges that its earlier claim was false, and states that it acquired the disputed domain name on November 1, 2005. The Complainant states that it was founded in and began using its USTREAM.TV marks in July 2006, launching its service under that name in 2007.
Like the majority, I do not consider the Respondent’s claims to be particularly credible, but at the same time I am mindful that the Complainant bears the burden of proof on each of the elements set forth in paragraph 4(a) of the Policy. The Respondent’s claim regarding the acquisition date may not merit much weight, but it is consistent with the other available evidence. More importantly, there is no evidence before us to the effect that the Respondent in fact acquired the disputed domain name on a much later date, after the Complainant and its mark had come into existence (and to the Respondent’s attention).
As the majority notes, it is not clear precisely when the Respondent acquired the disputed domain name, primarily because of the Respondent’s use of a privacy shield, and because of the dubious credibility of the affidavit evidence offered by the Respondent. The historical Whois data presented by the Complainant contains a gap between February 10, 2005, and September 10, 2006. A different registrant appears in the February 2005 data, while the September 2006 data matches the present registration data (including the same privacy shield listed as the registrant, and the same nameservers). The conclusion that I draw from this data is that the Respondent acquired the disputed domain name at some time between February 10, 2005, and September 10, 2006. That conclusion is consistent with the Respondent’s claim that it acquired the disputed domain name on November 1, 2005. And even if the Respondent’s affidavit evidence is entirely disregarded, September 2006 is the latest date on which the Respondent could have acquired the disputed domain name based solely upon the Complainant’s own evidence.
Whether the domain name was acquired by the Respondent in November 2005 or even as late as September 2006, however, I do not believe that the evidence in either case supports an inference of bad faith registration. The Complainant did exist by September 2006, but it has not offered evidence that its USTREAM.TV marks were well known until long thereafter. The Complainant did not launch its service until 2007, and the earliest of the many media references cited by the Complainant appear to be from no earlier than February 2007.
I believe that the evidence before the Panel is insufficient to prove that the Respondent registered or acquired the disputed domain name for reasons relating to the Complainant or its mark, as required by the Policy, and would deny the Complaint on that basis.
David E. Sorkin
Panelist (Dissenting)
Dated: July 29, 2008
1 That the United Nations is a user of the Ustream.TV services is not a conflict of interest that gives rise to any justifiable doubt as to the impartiality of the Panel, which was appointed through WIPO, a United Nations-related agency. See generally AFMA, Inc. v. Globemedia, WIPO Case No. D2001-0558.
2 As the panel held in Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061, at n.3 : “ Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions .”
3 In considering the Respondent’s argument, the issue is not when the domain name was first created and registered, but rather when the Respondent itself registered the domain name. Pursuant to the Policy’s objectives of curbing abusive registration of domain names, Panels have consistently held that a previous registrant’s good faith registration cannot immunize or carry over to a subsequent purchaser of the domain name. The Knot, Inc v. In Knot we Trust Ltd., WIPO Case No. D2006-0340; HSBC Finance Corporation v. Clear Blue Sky Inc., WIPO Case No. D2007-0062. Rather, it is the consensus view of WIPO UDRP panels that, although a mere renewal of a domain name does not amount to a new registration for purposes of determining bad faith, the transfer of a domain name to a third party does. Thus the issue of bad faith registration must be determined at the time when the current registrant took possession of the domain name (see paragraph 3.7 of WIPO Decision Overview).
4 In certain circumstances, a domain name registration may be in bad faith even if the trademark rights arose after the registration of the domain name. For example, this may be the case where a registrant has heard of a prospective trademark use by a third party, speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners, or based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter’s development of a new trademark (see, e.g., ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669).
5 It is worth noting that at least one other panel has found a declaration proffered by one of the Respondent’s managers to be unreliable (see Candid Color Systems, Inc. v. Vertical Axis, Inc., NAF Claim No. 702669).
6 The dissent properly notes that there remains some question as to when the Respondent first registered the disputed domain name. It is known that a third party owned the disputed domain name registration until February 2005 and that the privacy shield registration was established in September 2006. There is no evidence in the record as to whether the disputed domain name was registered (and if so, to whom) between February 2005 and September 2006. Although the dissent finds that the burden was on the Complainant to prove when the Respondent registered the disputed domain name given the absence of any information about the ownership since February 2005, the majority of the Panel holds that, given that the date when the Respondent registered the disputed domain name is uniquely within the Respondent’s knowledge and control, it was sufficient for the Complainant to make a prima facie showing and for the burden of production to then shift to the Respondent. Here, the Complainant met that burden – not only did the Complainant show that the current privacy shield was first initiated in September 2006, after the Complainant announced its Ustream.TV services, but also the majority of the Panel notes that there is no evidence in the record to support a finding of an earlier registration date (other than the second affidavit submitted by the Respondent with its Sur-Reply, which the majority of the Panel has concluded lacks credibility and ought be disregarded). Moreover, the majority of the Panel notes, a review of the Internet Wayback Machine at “www.archive.org” shows that there were archived pages from 2003 through February 2005, and then there were no archived pages again until March 2007, which, as the dissent acknowledges, is after the spate of publicity the Complainant received in February 2007. These facts, though hardly conclusive, further support the inference that the disputed domain name was unregistered (or at least unused) during the period between February 2005 and March 2007. If the Respondent, an active PPC parking page provider, did own the disputed domain name during this period, one would expect the Respondent to have posted a PPC landing page which would have been picked up by the Wayback Machine. At the minimum, one would expect the Respondent to have documentary evidence that it received revenue during this period on account of click-throughs. The Respondent’s failure to provide any of this evidence, or any other objective evidence of its ownership of the disputed domain name during the period at issue, speaks volumes.
7 See MBNA America Bank v. Vertical Axis, Inc., NAF Claim No. 133632 (“Respondent has established a pattern of infringing on famous marks and then using them to mislead Internet users into viewing pop-up advertisements”); First Quality Musical Supplies v. Vertical Axis, Inc., NAF Claim No. 1070187 (“Respondent’s pattern of registering domain names that incorporate other’s marks is a further indication of Respondent’s bad faith registration and use”); E-Switch v. Vertical Axis, Inc., NAF Claim No. 1163985 (“Vertical Axis is a serial registrant of domain names that infringe the trademarks of others in order to exploit confusion with the trademark”); Harvey Casion Resorts v. Vertical Axis, Inc., NAF Claim No. 117320).