WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
4chan, LLC v. Oversee Domain Management, LLC
Case No. D2014-0484
1. The Parties
Complainant is 4chan, LLC of New York, New York, United States of America, represented by Leason Ellis LLP, United States of America.
Respondent is Oversee Domain Management, LLC of Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Delgado, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <4chan.com> is registered with NameKing.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 26, 2014. On March 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2014, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2014. Upon request from Respondent and comments from Complainant, the Center extended the due date for Response to May 10, 2014. The Response was filed with the Center May 10, 2014.
The Center appointed Frederick M. Abbott, Mark Partridge and Lynda J. Zadra-Symes as panelists in this matter on June 27, 2014. 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.
By email dated May 30, 2014, Complainant submitted a "Supplemental Filing" that included exhibit evidence. By email dated June 3, 2014, Respondent filed an "Objection and Response to Complainant's Supplemental Filing". The Panel accepts and will consider the supplemental filings. While the Panel is sympathetic to Respondent's observation that certain of the matters addressed in Complainant's Supplemental Filing might have been foreseen at the time of filing the Complaint, Complainant could not reasonably have anticipated Respondent's detailed arguments based on alleged change in ownership and control of the disputed domain name. Moreover, while Complainant has provided additional supporting evidence concerning initiation of its use of the 4CHAN service mark, it provided evidence of early use in its initial Complaint such that a new argument has not been introduced. Respondent has had ample opportunity to address the additional supporting evidence in the Response portion of its Objection and Response.
4. Factual Background
Complainant is the owner of registration of the service mark 4CHAN on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4,414,632, registration dated October 8, 2013, filing date March 5, 2013, in international class 42, covering "providing a website featuring technology that enables users to create, bookmark, annotate, manipulate and share data, pictures, images and digital media". The aforesaid registration asserts a date of first use and first use in commerce of October 1, 2003.
Complainant operates a website at "www.4chan.org" which it self-describes as follows:
"Modeled after Japanese image boards, Complainant's boards were originally used for posting pictures and discussing cartoons and animation; however, Complainant rapidly expanded to other areas. Indeed, the 4chan.org website has been linked to Internet subcultures and activism and its posters have been responsible for the formation and popularization of infamous Internet memes such as 'lolcats', 'Rickrolling' and 'Chocolate Rain' just to name a few. The site's 'random' board is by far it's most popular and notorious feature. Known as '/b/' (often pronounced 'slash B', or simply 'B'), there are minimal rules on posted content, which is attractive to 4chan.org users."
According to Complainant, and uncontested by Respondent, Complainant's "www.4chan.org" bulletin board is one of the most heavily trafficked websites in the world. This information is corroborated by stories appearing in conventional media such as the Wall Street Journal and Los Angeles Times. A current Alexa search lists 4chan.org with a global rank of 1018, and a rank in the United States of 483.1
Complainant has submitted substantial evidence that a bulletin board service operated under the name 4CHAN was initiated as of October 1, 2003. The initial posting can be found at Wikipedia, and was provided by Complainant as part of its Supplemental Filing.2 The webpage postings available to the Panel for the period between the October 1, 2003 initiation of Complainant's bulletin board website and the December 13, 2003 date of registration of the disputed domain name do not include notice of asserted service mark rights, whether registered or unregistered. Complainant has provided evidence that the initial domain name address of the 4CHAN bulletin board was <4chan.net>, and that the bulletin board was moved to <4chan.org> on or about February 14, 2004. Apparently, the <4chan.net> domain name had been suspended by GoDaddy.com, the registrar, for reasons that are not fully explained, and the founder of Complainant used a new address. This transition is fairly well documented.3
There is no indication that the bulletin board under the name 4CHAN has been operated as a profit-generating enterprise, although some of the earliest postings indicate that contributions by PayPal to operation of the bulletin board were accepted, and there is currently the possibility to purchase a "4chan Pass" for USD 20 that facilitates the login process, but does not otherwise confer privileges on its purchasers.4
Respondent is in the business of "domain name monetization". A published report in the Los Angeles Business Journal regarding the asset transaction in which Respondent was involved describes its business as follows:
"Downtown Los Angeles Web and mobile publisher Oversee.net has sold its domain monetization business known as 'DomainSponsor' to Rook Media, a Swiss tech firm.
DomainSponsor is a service that populates unclaimed domains with advertising, pointing consumers who may have been looking for a product or service with a similar name to the advertiser's sites." (April 23, 2014)
According to Respondent, the change in control of ownership of Respondent's assets, including the disputed domain name, took place on April 18, 2014 (i.e., after formal notification by the Center of the commencement of the instant proceeding).
According to the Registrar's verification, Respondent "Oversee Domain Management, LLC" is registrant of the disputed domain name. According to that verification, Respondent has been registrant of the disputed domain name since December 13, 2003. According to a WhoIs record provided (as a standard practice) by the Center, the creation date of the disputed domain name was December 13, 2003. The Registrar has verified that the disputed domain name registration has been "locked" since at least March 27, 2014.
Respondent has used the disputed domain name to host a webpage that uses the disputed domain name as a title and displays pay per click advertising links. Based on a screenshot taken by the Center (in Geneva) on April 10, 2014, links appearing on the webpage as "Sponsored Listings" included "Russian brides to Swiss", "Date Filipina Girls", "Beautiful Asian Women" and "Meet Your China Girl Now". Based on a screenshot (undated but stated to be May 29, 2014 by Complainant's attorney) submitted by Complainant with its Supplemental Filing (from Los Angeles), the link labels are associated with free credit reports, credit cards, health insurance plans, payday loans and so forth. Other than the webpage title, there is no reference to 4CHAN. Both screenshots include an "Inquire about this domain" link in the footer. Complainant provided a screenshot of the click-through for that link showing the disputed domain name offered for sale at a minimum USD 10,000.
Respondent on four previous occasions has been subject to orders to transfer disputed domain names on the basis of WIPO UDRP panel decisions.5
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, such as the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges rights in the service mark 4CHAN as evidenced by registration at the USPTO and based on use since at least as early as October 1, 2003. Complainant argues that "its immediate success [in 2003] was such that it obtained secondary meaning in the 4CHAN mark prior to Respondent's alleged initial registration of 'www.4chan.com' on December 13, 2003."
Complainant contends that the disputed domain name is identical or confusingly similar to its service mark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant's mark enjoyed "meteoric" popularity and the disputed domain name infringes its mark, Respondent cannot have legitimate interests in the disputed domain name; (2) Respondent is not known as or doing business as 4CHAN; (3) Respondent is not affiliated with Complainant and has not been authorized to use the disputed domain name; (4) Respondent is using the disputed domain name in a way likely to cause Internet user confusion and to divert Internet traffic to Respondent's website and this is not a legitimate bona fide use of the disputed domain name; (5) use by Respondent of the most common generic Top-Level Domain (gTLD) (.com) in connection with Complainant's mark indicates that Respondent intended to disrupt Complainant's business; (6) Respondent is using the disputed domain name to host a pay-per-click parking page which is for commercial gain, and; (7) because Respondent's website can tailor pay-per-click links to each particular user, Respondent's website can contain links to sites that compete with Complainant.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is a known cybersquatter and has been a respondent in at least four (4) WIPO UDRP proceedings in which it has been ordered to transfer the disputed domain names; (2) Respondent is using the disputed domain name in a way that is not lawful; (3) Respondent is intentionally attempting to profit from its bad faith registration because it registered Complainant's valuable commercial asset with substantial notoriety and is using the disputed domain name to divert Internet users; (4) Respondent is intentionally using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant's mark and diverting Internet users to a pay-per-click website; (5) Respondent registered the disputed domain name with knowledge of Complainant's goodwill in its mark; (6) Respondent is offering the disputed domain name for sale, and; (7) the totality of the circumstances are obvious evidence of bad faith.
Complainant contends that it is not important to the outcome of this proceeding whether Respondent's transfer of assets, including the disputed domain name, is treated as a new registration. If the transfer is treated as a new registration, Respondent has clearly registered the disputed domain name subsequent to and with full knowledge of Complainant's rights in its mark. If Respondent stands in the shoes of its initial registration, it is a serial cybersquatter.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent asserts that it received notification of the Complaint on April 20, 2014, and that on April 18, 2014 the assets of the parent company of Respondent were sold to a third-party (Sol Invictus Comiti, LP "SIC"), and that the assets that were sold and transferred included the disputed domain name. According to Respondent, SIC is the owner of the registration of the disputed domain name.
Respondent contends that registration of the disputed domain name predated Complainant's federal trademark by nearly a decade, and this demonstrates that Complainant did not believe it had rights to enforce until 2013. Respondent argues that Complainant presented no evidence of common law rights that actually date back as early as October 1, 2003. Respondent points to registration of the domain name used by Complainant to host its website, <4chan.org>, on February 14, 2004, as evidence that Complainant could not have been operating a website using the 4CHAN mark as early as October 1, 2003. According to Respondent, even if Complainant began using 4CHAN on February 14, 2004, that would still postdate Respondent's registration of the disputed domain name.
Respondent acknowledges that WIPO UDRP panelists as a consensus view have treated transfer of a domain name to a third-party as a new registration. Respondent argues that the sale of a portfolio of domain names, as in this case, which includes all rights inured in the domain names, should not be eviscerated by the transfer. Respondent further argues that the United States Court of Appeals for the Ninth Circuit (the Ninth Circuit) has held that rights belonging to an initial registrant of a domain name are not lost when the name is transferred to a new owner in interpreting the Anticybersquatting Consumer Protection Act (ACPA) (GoPets, Ltd. v. Hise, et al., 657 F. 3d 1024 (9th Cir. 2011), and that this reasoning has been extended by a federal district court to transfers to unrelated third parties, Airfx.com et al. v. Airfx LLC, 2012 WL 3638721 (D. Ariz. Aug. 23, 2012)). Respondent acknowledges that at least one WIPO UDRP panel has distinguished GoPets on grounds that the Ninth Circuit was interpreting the ACPA. Respondent considers that the Panel should follow the jurisprudence of the Ninth Circuit because the Registrar is located within the Ninth Circuit, and Complainant has agreed that a challenge to a Panel decision ordering transfer would be heard in the courts at a location of the concerned Registrar. Respondent argues that a decision of this Panel would be given no deference in the Ninth Circuit. Respondent states "[i]n sum, there is no reason why SIC should be entitled to any less rights than ODM [Oversee Domain Management, LLC]", which include reliance on the disputed domain name registration date of December 13, 2003.
Respondent argues that because it is the senior user of the term 4CHAN, the issue of rights or legitimate interests need not be addressed. It states that because it is the senior user, it can legitimately populate the disputed domain name with pay-per-click advertising. Respondent further argues that Complainant's alleged mark is not unique, and that similar terms have been used in connection with other websites.
Respondent contends that it did not register and use the disputed domain name in bad faith because: (1) Respondent has not offered to sell the disputed domain name to Complainant or a competitor; (2) Respondent has not engaged in a pattern of registering domain names incorporating trademarks to prevent their owners from registering corresponding domain names (distinguishing the UDRP cases in which it was ordered to transfer); (3) Respondent did not register the disputed domain name to disrupt the business of a competitor; (4) Complainant has not presented any evidence that Respondent knew of and targeted Complainant at the time the disputed domain name was registered; (5) Respondent does not operate a website that is likely to be confused with Complainant's bulletin board website.
Respondent argues that in light of the scale of its domain name registration business, the fact that it may have been ordered to transfer several disputed domain names does not reflect a meaningful pattern of conduct.
Respondent argues that the equitable defense of laches should apply to it here because the facts are compellingly in its favor. Respondent contends that when Complainant initially registered the domain name at which it currently operates its bulletin board (February 14, 2004), Complainant must have been aware that Respondent had registered the disputed domain name, and that Complainant has slept on its alleged (in Respondent's words) rights for more than 10 years. Respondent contends that because of this delay, evidence has been lost and witnesses have disappeared, and Respondent does not have documents dating back to 2003 that could demonstrate why it originally registered the disputed domain name. Respondent argues that this creates a clear prejudice against it, and that this prejudice results from Complainant's delay.
Respondent requests the Panel to reject the Complaint.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified the Complaint on April 10, 2014, to Respondent at the email and physical addresses provided in its record of registration. The courier service engaged by the Center shows proof of delivery and signature for receipt on April 15, 2014 at the address shown in the record of registration of Respondent in Los Angeles. There is an email inquiry dated April 16, 2014 from Respondent to the Center in response to the Center's email notification of the Complaint on April 10, 2014. Respondent filed a Response and a supplemental submission. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the 4CHAN service mark at the USPTO, and of use in commerce in the United States (and elsewhere) (see Factual Background, supra). Registration at the USPTO establishes a presumption of rights in the service mark. Respondent has not specifically challenged Complainant's rights in the 4CHAN mark as evidenced by registration in 2013.
The Panel determines that Complainant has rights in the service mark 4CHAN, at least in the United States, as evidenced by registration at the USPTO.
Complainant has provided evidence of use of the term "4chan" in connection with operation of a web-based bulletin board dating back as early as October 1, 2003. Complainant has argued that it established common law rights in 4CHAN at or about the time it began using the term in connection with its bulletin board website.
Respondent argues that Complainant did not and could not demonstrate rights dating back to October 2003 because Complainant did not register the domain name where it currently operates its bulletin board, <4chan.org>, until February 14, 2004. However, Complainant has submitted evidence that it initially operated its 4CHAN bulletin board at the domain name <4chan.net> as of October 1, 2003, and that a dispute with its registrar made it necessary or expedient to move the website address. Nonetheless, the bulletin board was operated under the name 4CHAN since October 1, 2003.
In the Panel's view, the term 4CHAN is arbitrary or suggestive in connection with a web-based bulletin board. As a consequence, as a matter of United States law, Complainant does not need to demonstrate secondary meaning in order to establish service mark rights (see Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763 (1992)).6
Complainant need only demonstrate use of 4CHAN to identify a service in commerce. Complainant has done that from as early as October 1, 2003.7
There was no form of notice of asserted unregistered service mark rights on Complainant's bulletin board web pages as of the date it initially asserts common law rights, nor has the Panel been made aware of any such notice through the date of Respondent's initial registration of the disputed domain name.
The disputed domain name directly incorporates Complainant's 4CHAN service mark, adding only the gTLD ".com". Internet users of Complainant's bulletin board services may primarily associate Complainant with its present ".org" gTLD used to host its website (at <4chan.org>), and its prior ".net" gTLD (at <4chan.net>, precisely because Complainant did not use the more common ".com" gTLD in association with its service mark. Nonetheless, because the disputed domain name identically incorporates the inherently distinctive term, "4chan" (at <4chan.com>), it is visually very similar to Complainant's service mark and likely to confuse Internet users.
The Panel determines that Complainant has rights in the service mark 4CHAN at least in the United States, and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has primarily attempted to rebut Complainant's prima facie showing by arguing that as senior user of the term "4chan" (i.e., as initial creation registrant prior to Complainant's establishment of service mark rights), it is entitled to use the disputed domain name in connection with pay per click advertising links. In this regard, the Panel has found that Respondent has not demonstrated that it is the senior user of the term 4CHAN (nor that it has used the term in a trademark sense).
Respondent has attempted to portray "4chan" as a commonly used term and therefore to suggest that its use in the disputed domain name is associated with a generic, or at least non-trademark, usage. The Panel does not accept that "4chan" is a commonly used term, even if there are websites associated with similar terms (e.g., "2chan" and "7chan").
Respondent has further argued that the advertising links generated on its webpage addressed by the disputed domain name are not in any way competitive with the services offered by Complainant. However, while the links appearing in Complainant's supplemental submission would not necessarily be construed as competitive, it appears that Complainant generated the screenshot for that submission sometime after filing of the Complaint. The links appearing in the screenshot generated by the Center - more contemporaneous with the filing of the Complaint - referred to women (e.g. "Beautiful Asian Women"). From the information submitted to the Panel, it appears that "beautiful women" are a fairly regular theme of Complainant's bulletin board. Respondent's pay per click website does appear to be designed to generate links that may be competitive with Complainant's services. In any case, unless it is associated with a generic or commonly descriptive term, a pay per click page does not ordinarily suffice to establish rights or legitimate interests in a disputed domain name.
The Panel determines that Respondent has failed to rebut Complainant's prima facie showing that it lacks rights or legitimate interests in the disputed domain name. The Panel determines that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are "(i) circumstances indicating that [the respondent] ha[s] registered or 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 [the respondent's] documented out-of-pocket costs directly related to the domain name"; "(ii) [respondent has] 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 [respondent has] engaged in a pattern of such conduct; "(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor"; and "(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [respondent's] website or location or of a product or service on [respondent's] website or location".
Respondent has indicated that the disputed domain name was included in a sale of assets that took place on or about April 18, 2014, and that as of that date there is a new third party owner of the domain name registration. This fact, according to Respondent, requires the Panel to make a determination as to whether the sale and transfer of the disputed domain name between owners constitutes a new registration within the meaning of the Policy, and if so what the consequences of that new registration are in respect to Respondent's legal posture as new registrant. In this regard, Respondent has alluded to the jurisprudence of the Ninth Circuit, and in particular its decision in GoPets, Ltd. v. Hise, supra, as standing for the proposition that transfer to a new owner does not constitute a new registration. Respondent refers to a subsequent decision by an Arizona District Court (Airfx.com v. Airfx, LLC, supra), to support the proposition that it is not relevant whether the new owner is affiliated with the transferor or a third-party purchaser/transferee. Respondent recognizes that up to this point UDRP panelists have not applied the reasoning of GoPets insofar as it might be construed to apply to third-party purchaser/transferees. 8
The Panel does not consider the issue of whether there has been a new registration to be raised in a way that is relevant to a determination in this proceeding.
This proceeding was formally commenced by notification by an email to Respondent by the Center on April 10, 2014 pursuant to Paragraph 4(c) and 2(f) of the Rules.9 Prior to that date, registration of the disputed domain name was "locked" by the Registrar. Pursuant to Paragraph 8 of the Policy, no transfer of a disputed domain name may take place during a pending administrative proceeding.10 No transfer of the disputed domain name in the sense of modification of the registration itself could take place subsequent to commencement of this proceeding.11 The conduct of Respondent to be assessed in this proceeding is that which took place at or before the time transfer of the disputed domain name was prohibited by the Policy. The Panel appreciates that (unbeknownst to Complainant) actual ownership of the registration of the disputed domain name may have transferred to a third-party other than the initial or creation registrant subsequent to commencement of this proceeding (including the locking of the registration). In the circumstances of this case, the Panel does not believe that ex post facto transfer of ownership should affect its assessment of facts that preceded that transfer of ownership. Under the Policy, Respondent can and could not modify registration data relating to the disputed domain name until this proceeding is resolved (notwithstanding that the "owner in fact" may have changed, but which change is not reflected in the WhoIs register). It cannot make "new" representations or warranties regarding compliance with the terms of the Policy or the registration agreement even if it cares to do so. The Panel declines Respondent's invitation to make a determination whether sale and transfer of Respondent's interest in the disputed domain name in the circumstances here constitutes a new registration within the meaning of the Policy because the Policy precludes a formal transfer (i.e., a change in registrant information) during a pending administrative proceeding. Whether or not parties may have elected to exchange beneficial interests outside the formal context of registration is not relevant to the determination of the Panel.
The fact that Respondent is not able to transfer registration of the disputed domain name until this proceeding is resolved creates a somewhat problematic situation. If Respondent does transfer registration of the disputed domain name following resolution of this proceeding, Complainant may elect to initiate another proceeding based on the new registration of the disputed domain name. The Panel refers to the jurisprudence so far followed by WIPO UDRP panelists regarding whether transfer to a third-party unaffiliated with a transferee is considered to be a new registration, as per the discussion above. This Panel is not in the position to render a decision regarding such a future prospect. This Panel further recognizes that initiation of a separate new proceeding may impose a seemingly unfair burden on Complainant. That being said, the Panel must rely on the existing contractual situation reflected in the registration agreement that places identity of the disputed domain name in the hands of Respondent Oversee Domain Management, LLC, and which identity is presently locked as a consequence of Complainant's initiation of this proceeding.
Complainant, which for good reason was unaware of the alleged sale of assets that took place after initiation of the proceeding, has argued that it established common law rights prior to Respondent's initial creation registration of the disputed domain name in December 2003 such that Respondent's conduct evidenced bad faith at that time. Indeed, if the Panel recognized the alleged April 18, 2014 transfer of assets, including registration of the disputed domain name, Complainant might be in a better position because it would be obvious that Respondent's new registration as transferee took place following Complainant's federal registration of its service mark and continued pay-per-click usage (assuming that the Panel consistent with prior UDRP jurisprudence considered the transferee to be undertaking a new registration). Respondent, for its part, has argued that the Panel should reject prior UDRP jurisprudence in favor of what it contends is the jurisprudential consequence of GoPets and Airfx.com. The Panel does not share Respondent's perspective regarding GoPets and Airfx.com. However, it remains that the Panel does not recognize the ex post facto sale of assets for purposes of this proceeding. That is, the Panel believes that it should assess the dispute on the basis of the December 2003 initial creation registration of the disputed domain name. That said, the Panel recognizes that in certain circumstances (e.g., an agent/principal or employee/employer relationship) effective control of a domain name (registration) may be taken into account in a proceeding under the Policy.
The Panel turns therefore to the question of whether Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
The disputed domain name was initially registered on December 13, 2003 by the party named as Respondent in this proceeding. This fact is not in dispute. The Panel has earlier determined that Complainant established common law rights in the service mark 4CHAN as of October 1, 2003. There is substantial evidence of exchanges on Complainant's bulletin board well before December 2003, and there was some awareness in the Internet community of Complainant's service product before Respondent's registration of the disputed domain name.
This finding alone, however, is not sufficient to result in a finding against Respondent. The Panel must determine Respondent's intent in registering the disputed domain name in December 2003. The Policy's nonexhaustive list of elements potentially evidencing bad faith each speak in terms of a respondent's intent or purpose in registering a domain name.
Respondent has indicated that because of the passage of more than a decade since the initial creation registration of the disputed domain name, and because of the recent change in beneficial ownership of registration, it is not in a position to determine why the disputed domain name was registered. Respondent has further argued that Complainant's delay in initiating a proceeding based on its "alleged" (in Respondent's words) service mark rights adversely prejudices Respondent, at the least giving rise to an equitable defense of laches. In other words, if Complainant secured service mark rights in October 2003 and was surely aware that Respondent had registered its service mark with the ".com" gTLD in December 2003, Complainant should have initiated a proceeding against Respondent more expeditiously.
In fact, Complainant has presented no direct evidence of what Respondent did (or did not do) with the disputed domain name at any time reasonably congruent with the initial creation date of the disputed domain name. The only direct evidence Complainant presented with respect to use of the disputed domain name is a screenshot that was submitted with its Supplemental Filing and appears to have been generated after initiation of this proceeding. The Center generated, as it does as a matter of standard practice, a screenshot of the website associated with the disputed domain name following Respondent's filing of the Complaint.
Circumstantially, Complainant has referred to four UDRP disputes in which Respondent was alleged to have engaged in abusive registration and use under the Policy. But, even assuming the Panel was prepared to draw an inference from those decisions, the earliest registration of a domain name by Respondent considered among those four disputes was in November 2008 (Birger Christensen A/S v. Oversee Domain Management, LLC, WIPO Case No. D2011-0814), approximately five years following registration of the disputed domain name in this proceeding. On the record before it, the Panel does not consider that it can reasonably draw an inference regarding why Respondent registered the disputed domain name in December 2003 based on what it may have done in November 2008. The next registration for which it was challenged took place in September 2010 (Carol House Furniture, Inc. v. Registrant : Oversee Domain Management LLC, WIPO Case No. D2010-2103).
Inferentially, Complainant has argued that Respondent must have registered the disputed domain name to take unfair advantage of Complainant's rights in its service mark because (1) Complainant's service mark is distinctive and unique and (2) there was no plausible reason for Respondent to have registered the disputed domain name (i.e. the distinctive term "4chan") other than to take unfair advantage of Complainant's rights in its service mark.
This is Complainant's most persuasive argument in the absence of direct evidence regarding Respondent's intent in registering the disputed domain name in December 2003. There is a chain of events: (1) Complainant initiates its bulletin board service using the 4CHAN service mark in October 2003; (2) the bulletin board gains a following (apparently very swiftly) among Internet users, and; (3) Respondent registers the disputed domain name, <4chan.com>, in December 2003. Why would Respondent have registered <4chan.com> if it had not somehow become aware of Complainant's service mark before it did so?
The facts before the Panel, including factual evidence submitted by Respondent, make it plain that Respondent is in the business of "domain name monetization", which in its case has included registering and using domain names (some of which have been found to violate the Policy) to operate pay per click parking pages based on algorithms designed to achieve profitability. Yet, this fact is insufficient to explain what motivated Respondent to register the disputed domain name in December 2003. As Respondent has substantiated, the domain name <7chan.com> was created by a third party on March 4, 2003, the domain name <8chan.com> was created by a third party on April 30, 2001, and the domain name <9chan.com> was created by a third party on July 4, 2000. These registrations of alternative "[numeral]chan.com" domain names by third parties prior to Complainant's initial registration of <4chan.net> suggest, but do not prove, that Respondent might reasonably have had a motivation for selecting the disputed domain name <4chan.com> other than having been aware of Complainant's bulletin board web site. Complainant has indicated that its founder selected the bulletin board name 4CHAN after viewing a Japanese bulletin board with the name "2chan" on which Complainant's web site was modelled (see 4chan Founder Chris "Moot" Poole to Headline SXSW, NEW YORK OBSERVER, Sept. 20, 2010 and Nick Bilton, One on One: Chris Poole, Founder of 4chan, NEW YORK TIMES, Mar. 19, 2010).
It may have been that an algorithm identified the term 4CHAN as an interesting combination of numbers and letters, or that algorithm and associated data set may even have identified that someone had registered the domain name <4chan.net> and saw that it had significant web traffic. But, even assuming the intervention of a human review team by Respondent, it may have taken a legal inference to conclude that someone, i.e., Complainant, was using 4CHAN in a way that established service mark rights in October 2003.
Complainant had not previously submitted an Intent To Use application for registration of its service mark, nor did it submit a use-based application in October or November 2003. Had it done so, there would have been a means by which Respondent might have presumptively been made aware of Complainant's assertion of service mark rights, even if registration had not yet issued. The Panel would have had a basis for finding constructive notice to Respondent of Complainant's service mark. In October and November 2003, Complainant could have, but on the evidence before the Panel did not, include notice of a claim to unregistered or common law service mark rights (e.g., "TM" or "SM") on its webpages. While the Panel was and is prepared to conclude that Complainant established some unregistered or common law service mark rights as early as October 1, 2003, it is not prepared to impose a duty on Respondent to have been aware of those rights as of that early date. Complainant did not apply for service mark registration until March 5, 2013, almost 10 years following the establishment of its bulletin board website. It has now made transparent its claim to service mark rights, and has notified others of that claim. For the Panel, it stretches too far the concepts of constructive or implied notice of rights to impose a duty on Respondent to have been aware of a claim of common law rights that, in the Panel's view, would not have been clear from viewing Complainant's October 2003 bulletin board pages.12
The fact that in March 2014 Respondent was using the disputed domain name to operate a pay-per-click advertising website is insufficient to establish that Respondent intended in 2003 when it registered the disputed domain name to take unfair advantage of Complainant by using its service mark to draw Internet users to a pay-per-click website operated by Respondent. The Panel is not applying an equitable doctrine of laches. The Panel is rather declining to infer motivation across the span of more than a decade when the evidence is insufficient to establish that Respondent knew or reasonably should have known of Complainant's common law service mark rights, and when there is little direct evidence on the record (which would have been prima facie in the control of the Respondent, and discovery of which would be beyond the scope of the Policy) as to what might have motivated Respondent's registration of the disputed domain name in December 2003.
There is a line of WIPO UDRP panel decisions starting with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that establish a basis for a finding of bad faith based on "passive holding" of a domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, at paragraph 3.2 ("WIPO Overview 2.0")). That is, in circumstances where there is no reasonably plausible explanation for registering a particular term in a domain name other than to take unfair advantage of a trademark owner, a panel may draw an inference that the registration was undertaken in bad faith in the absence of "active use" of the disputed domain name. Telstra and its progeny involve a contextual analysis of the facts and circumstances of each case. Nonetheless, a relatively consistent theme is that the registration in question should have been of a domain name incorporating a trademark that is at least reasonably well known in an appropriate context/market. Otherwise, the incentive to abuse the trademark such as through a sale of the domain name would not be manifest.
In the present proceeding, while Complainant may have succeeded in establishing common law service mark rights as of the date the disputed domain name was registered, there is no basis for the Panel to determine that 4CHAN was a well-known or famous mark at the time of registration of the disputed domain name. It may have been known by a particular community of Internet users back in October 2003, but this is not sufficient to establish a well-known character or fame in a trademark law sense. For this reason, the Panel does not consider that Respondent can be found to have engaged in bad faith based on the passive holding rationale of Telstra.
In a UDRP proceeding, "the complainant must prove that each of these three elements are present" (Policy, paragraph 4(a), including bad faith pursuant to paragraph 4(b). In this proceeding, Complainant has made assertions about Respondent's intent in registering the disputed domain name in 2003, but it has not presented direct evidence of what Respondent did or did not do with the disputed domain name in 2003, or at any time reasonably proximate to 2003. Complainant is arguing on the basis of common law service mark rights. While (based on its inherent distinctiveness) it may have established those rights prior to registration by Respondent of the disputed domain name, it has not sufficiently demonstrated that Respondent knew of or reasonably should have known of those rights. Complainant was not the owner of a well-known brand from which intent based on passive holding can be inferred. The Panel declines to find that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy. The Panel will not direct the Registrar to transfer the disputed domain name to Complainant.
This decision is without prejudice to initiation of a new complaint.
Moreover, if Respondent uses the disputed domain name in a way that infringes service mark rights of Complainant, Complainant may have recourse to the courts for injunction and damages. By this, the Panel does not intend to suggest whether such an action might be successful. That would depend on the facts and circumstances of the case.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Lynda J. Zadra-Symes
Date: August 6, 2014
1 Panel search of July 4, 2014 http://www.alexa.com/siteinfo/4chan.org undertaken as confirmation of information appearing in Wikipedia, http://en.wikipedia.org/wiki/4chan and in particular notes 2 and 22.
2 See Wikipedia, id., at note 1, http://www.4chan.org/news?all#2 (visited by Presiding Panelist, July 4, 2014).
3 See 4CHAN postings at http://www.4chan.org/news?all#20 from around February 14, 2004.
4 At https://www.4chan.org/pass (visited by Presiding Panelist, July 4, 2014).
5 Baccarat SA v. Admin - Oversee Domain Management, LLC, WIPO Case No. D2013-0317; Birger Christensen A/S v. Oversee Domain Management, LLC, WIPO Case No. D2011-0814; Infoglobo Comunicação e Participações S.A. v. Admin, Oversee Domain Management, LLC, WIPO Case No. D2011-1378; Carol House Furniture, Inc. v. Registrant : Oversee Domain Management LLC, WIPO Case No. D2010-2103.
7 The requirement of use in commerce is not dependent on whether an activity is undertaken for a profit (see, e.g., 1 McCarthy on Trademarks and Unfair Competition § 9:5 (4th ed.), and Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693).
8 The Presiding Panelist in this proceeding was sole panelist for one of the first two cases post-dating GoPets, and the first post-dating Airfx.com and involving comparable facts (i.e., Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609; the first was Twitter, Inc. v. Geigo, Inc, WIPO Case No. 2011-1210). The Presiding Panelist has published an article addressing the issues arising in connection with these cases. Abbott, Frederick M., On the Duality of Internet Domain Names: Propertization and Its Discontents (October 14, 2013). 3 N.Y.U. Journal of Intellectual Property and Entertainment Law 1, Fall 2013. Available at SSRN: http://ssrn.com/abstract=2257562.
9 There is also a signed courier delivery receipt for the Written Notice of the Complaint at the address of Respondent dated April 15, 2014, and an email communication dated April 16, 2014 from Respondent to the Center's April 10, 2014 email notice.
10 The Policy provides:
"8. Transfers During a Dispute.
a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 …
b. Changing Registrars. You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 …"
11 As a practical matter, no transfer could take place following the Registrar's lock which took place by March 27, 2014. The Policy does not expressly define the date from which a proceeding is considered to be "pending" for purposes of Paragraph 8. In September 2013, ICANN adopted a Policy clarifying the obligation of registrars to "lock" disputed domain names within 2 days following receipt of a request for registrar verification (see GNSO Locking of a Domain Name Subject to UDRP Proceedings PDP Recommendations, https://features.icann.org/gnso-locking-domain-name-subject-udrp-proceedings-pdp-recommendations), and a registrar is not permitted to notify the disputed domain name registrant of the proceeding prior to the lock. Given these requirements that prohibit changes in registration subsequent to locking by the registrar, which were adopted to prevent cyberflight, it might well be that "pending" within the meaning of paragraph 8 should be interpreted as subsequent to locking by the registrar, or perhaps subsequent to the filing of the complaint and transmittal to the registrar. The Panel need not, however, make a determination concerning the precise date from which transfer cannot be undertaken because it is clear in this case that the transfer alleged by Respondent took place subsequent to formal commencement of the proceeding, at which point it is clearly prohibited pursuant to paragraph 8 of the Policy read in conjunction with paragraphs 4(c) and 2(f) of the Rules.
12 The Panel reaches this decision regarding notice of common law or unregistered service mark rights based on the specific facts of this case. It is not deciding that a party relying on common law service mark rights must always have placed notice on its webpages in order to invoke those rights against a respondent or other third parties.