WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Spamhaus Project, Ltd. v. Damon Nelson, Ondova Limited Company
Case No. D2014-1121
1. The Parties
The Complainant is the Spamhaus Project of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Steve Linford, UK.
The Respondent is Damon Nelson, Ondova Limited Company of Dallas, Texas, United States of America ("US") who is unrepresented and who did not file a Response.
2. The Domain Name and Registrar
The disputed domain name <spamhaus.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2014. On June 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2014.
On July 30, 2014, the Center received an email letter from lawyers acting for a United States Bankruptcy Trustee of Ondova Limited Company ("Ondova"), indicating that the disputed domain name may be the subject of a receivership action in the United States.
The grounds were that Ondova had been placed in "Chapter 11 administration" on September 17, 2009, thereby creating an automatic stay of all actions against Ondova. The letter threatened to seek damages (from whom was not clear) if any action were to be taken in respect of the disputed domain name. The Panel notes that according to the Registrar, the disputed domain name registrant is Damon Nelson and the "Registrant Organization" is Ondova.
On August 6, 2014, the Center requested the Complainant to provide any comments it may wish to make arising out of the lawyers' letter. On August 8, 2014, the Complainant requested the Center to proceed to a decision in the present proceeding. The Complainant sought however that any decision not be presented to the Registrar or that there be a suspension of the present administrative proceeding until the stay ceased to be operative. The Complaint cited paragraph 18(a) of the Rules.
By letter dated August 26, 2014 the same Bankruptcy Trustee lawyers wrote to the Complainant, the Center and the Panel alleging that the continuation of the present administrative proceedings violated the automatic stay regardless of any delay in enforcement of any decision. Once again, threats of damages claims were made if the proceedings were to be continued.
The Center appointed Sir Ian Barker as the sole panelist in this matter on August 12, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel subsequently extended the decision due date to October 10, 2014.
4. Factual Background
The Complainant is a United Kingdom corporation. It is the holder of a European Community registered trademark 005703392 for SPAMHAUS. The trademark was registered on June 11, 2008. No information concerning the activities of the Complainant was supplied.
The disputed domain name was first registered on January 18, 2003. However, the registration to the present Respondent, according to the Registrar, occurred on October 1, 2012.
According to the Internet Archive Wayback Machine, for the past decade, the website accessed by the dispute domain name has shown either a generic parking page or an offer to sell the disputed domain name. Currently, that website contains a large "For Sale" sign and an email address, offering the disputed domain name for sale.
The Complainant registered the domain name <spamhaus.org> in 1999 and has used it continuously with its Spamhaus Project since then. No detail was provided about the Spamhaus Project. The Panel is able to ascertain however from its trademark registration and website that the Complainant operates in the area of preventing spam and malicious activity on the Internet.
5. Application to Suspend Proceedings
As noted above, the Complainant asked the Panel to proceed to a decision but not to present the decision to the Registrar or in the alternative to suspend the proceedings pending the Bankruptcy stay.
In the circumstances, the Panel believes that such request cannot be granted because, notwithstanding paragraph 18(a) of the Rules, once any decision is made allowing the Complaint, the Registrar must be advised.
The Panel could decide to cancel the disputed domain name. Cancellation does not appear to be an option in view of the needlessly hostile letter from the United States lawyers for the Bankruptcy Trustee of Ondova. They clearly seem to regard the disputed domain name as the property of that company to which the stay laws accompanying a Chapter 11 Bankruptcy apply. The relevant Code prohibits "any act to obtain possession of property of the estate or of property from the estate or to exercise control over property of the estate".
The lawyers appear to ignore the fact that an individual – not Ondova – is the registrant of the disputed domain name. It is a basic tenet of corporation law in most common law jurisdictions that a shareholder/director of a company may own property which does not belong to and which is separate from the company. That said, it is notorious that, when action is taken against a shareholder/director in respect of property associated with the company, the traditional defence raised to recovery action is for that person to say: "It belongs to me and not to the company". The situation in reverse applies just as often.
Where, a respondent has initiated judicial proceedings concerning a domain name dispute in a court of competent jurisdiction (either before or after the UDRP complaint is filed), any UDRP decision ordering the transfer of a domain name to the complainant may be subject to resolution of the relevant judicial proceeding.
This does not mean that the UDRP proceeding is automatically suspended or terminated, however. Paragraph 18(a) of the Rules gives the panel discretion to suspend or terminate a UDRP proceeding where a domain name is the subject of other legal proceedings:
"(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision."
Helpful discussions of paragraph 18(a) of the Rules are found in several UDRP decisions, e.g. Galley Inc v. Pride Marketing or Procurement/Richard's Restaurant Supply Inc, WIPO Case No. D2008-1283 and Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041.
In most cases where paragraph 18(a) of the Rules has been considered, the panel has proceeded to a decision on solid grounds. In many, the complainant did not seek an indefinite suspension, as the Complainant in effect does here. Often UDRP panels have proceeded to a decision because to do so would not prevent either party proceeding to seek relief in the court procedure. The situations revealed in various cases are somewhat diverse.
Although the Panel has been unable readily to find another case in which indefinite suspension of the administrative proceeding was ordered due to the existence of litigation, the Panel considers that suspension is not the appropriate remedy here because there is no knowing for how long any suspension would last; this uncertainty is at odds with the expedited nature of Policy proceedings. The information provided by the bankruptcy lawyers indicates that for years there has been much litigation in the Ondova bankruptcy with possibly more to come. Suspension would achieve little because the Registrar would be bound to comply with the automatic stay should it transpire that the disputed domain name was to be treated as an asset covered by such automatic stay.
The situation with regard to concurrent Chapter 11 proceedings has been discussed in several cases. In Petroleo Brasileiro S.A. - Petrobas v. Whois Privacy Services Pty Ltd / Quantec LLC / Novo Point LLC, WIPO Case No. D2013-2080 it was said:
"As this panelist stated in NYSE Group, Inc., Euronext N.V., LIFFE Administration and Management v Steven Stanwyck, Eduardo Garcia Gil, WIPO Case No. D2008-0104:
The Panel notes the decision of Jerome A Rich v Jim Rich, WIPO Case No. D2007-1346, where the panelist in that case wrote:
Under a provision of United States bankruptcy law, 11 U.SC Ş362, no person may commence legal proceedings against the debtor (Respondent) without the permission of the bankruptcy court presiding over the estate. Whether commencement of this proceeding under the Policy or implementation of the Panel's order violates that provision is a matter for the bankruptcy court, not the Panel, to determine; the Panel expresses no opinion on these questions. To the extent that it has discretion under paragraph 18(a) of the Rules : "to suspend or terminate the administrative proceeding, or to proceed to a decision," the Panel elects to proceed to decision. Either party may raise any applicable Bankruptcy Act issues with the bankruptcy court or United States Trustee.
The Panel in this case is satisfied that the approach adopted by the US panelist in Jerome A. Rich (supra) is apposite to the circumstances of the present case.
Accordingly, as these UDRP proceedings have been commenced, the Panel believes it is appropriate in the context of this expedited process to proceed to render this decision. It is for the parties and the U.S. bankruptcy court to decide whether this decision can be implemented, and it is clearly upon to a relevant court to make a contrary finding if it believes that it is appropriate."
The choice then for the Panel is whether to proceed to a decision or to terminate the proceedings without prejudice to the Complainant being able to re-file – presumably once it is established either that the disputed domain name is not subject to the automatic stay because it is not an asset of Ondova or because the Bankruptcy Court lifts the stay in respect of the disputed domain name.
Cases such as Galley Inc. (supra) deal with situations where litigation in the United States had been commenced over the registration of a disputed domain name. In Galley Inc. (supra), the Panel was split over whether it should decide the proceedings under the Policy or allow the United States Court to decide on the legitimacy of the disputed domain name registration.
In this case there is no proceeding in a court to determine the legitimacy of the disputed domain name registration. Only an automatic stay of all (i.e., unspecified) proceedings. These administrative proceedings may or may not be covered by the stay. But the Panel is in no position to decide that.
The Panel sees no reason why it should not proceed to a decision. If the Complainant has made out its case, then there is no reason why it should not be deprived of its right to invoke the Policy against a party using an infringing domain name. Accordingly, the Panel now considers the criteria under the Policy.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's registered trademark. Therefore, paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no right to reflect the Complainant's registered trademark in a domain name. There is no evidence the Respondent is known by or has used the disputed domain name for legitimate purpose (or planned to use). The Complainant has therefore made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In the absence of any Response from the Respondent, the fact is sufficient to satisfy the requirements of paragraph 4(a)(ii) of the Policy. The Respondent could have filed a response which provided evidence which could satisfy one or other of the three arms of paragraph 4(c) of the Policy but it has elected not to do so. Therefore, paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
Although the information provided by the Complainant is far from comprehensive, the Panel is able to infer bad faith registration and use in the circumstances.
The disputed domain name was registered to the Respondent, an individual, in 2012, well after the Complainant's European Community trademark was registered. The Complainant's name is distinctive and it indicates an organization which is concerned with combatting Internet spam. So it was probably not coincidental that the disputed domain name was registered to take advantage of the association with the Complainant, given that the Complainant had been operating its domain name <spamhaus.org> since 1999.
Accordingly, despite the shortfall in information from the Complainant about the full scope of its activities and the fame of its mark, the Panel is able to infer, in the absence of any response, that the disputed domain name was registered and is being used in bad faith. The Panel notes that the applicable date is that when the disputed domain name was acquired by the named Respondent in 2012, some decade plus after the Complainant began its activities.
Therefore, paragraph 4(a)(iii) of the Policy is made out.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <spamhaus.com> be transferred to the Complainant.
Sir Ian Barker
Date: September 18, 2014