WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Digicel Caribbean Limited v. Domains By Proxy, LLC / Frank Flammea, Webcruzer limited
Case No. D2015-1855
1. The Parties
1.1 The Complainant is Digicel Caribbean Limited of Saint Lucia, internally represented.
1.2 The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Frank Flammea, Webcruzer limited of Melbourne, Victoria, Australia, internally represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <digicelsites.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2015. At that time the publically available WhoIs register for the Domain Name recorded that the privacy service “Domains By Proxy, LLC” was the registrant of the Domain Name. On October 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 2015, the Registrar transmitted by email to the Center its verification response disclosing Frank Flammea, Webcruzer Limited as the underlying registrant of the Domain Name (hereinafter referred to as the Respondent) and providing associated contact information. The Center sent the Complainant an email on October 20, 2015, providing the information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 20, 2015.
3.2 On October 21, 2015, the Center received an email from the Respondent that read as follows:
“Webcruzer Limited has a signed Channel Partner Agreement with Digicel Vanuatu to provide services in the Digicel brand and the domain is part of the provision of those services, please see attached, thank you.”
3.3 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”).
3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2015.
3.5 On November 5, 2015 the Respondent sent a further email to the Center as follows:
“Further to my response to the claim, the attachments in my response email will show that Webcruzer Limited has an agreement with Digicel Vanuatu to supply the services and domains as outlined in the Channel Partner Agreement for a 2 year period which concludes on 1st April 2016.”
3.6 This email and its attachments is considered in greater detail later on in this decision.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 13, 2015. 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.
3.8 On review of the case file, it appeared to the Panel that there were problems with the way in which both Parties had put their case. This lead the Panel on November 18, 2015 to issue a procedural order in these proceedings (the “Procedural Order”), directing both parties to submit further submissions in this respect. A copy of the Procedural Order is at Annex A to this decision.
3.9 Neither party filed a supplemental submission as called for in the Procedural Order.
4. Factual Background
4.1 The Complainant is part of a business that provides telecommunications services and related goods in the Americas and in the South Pacific.
4.2 The Domain Name was first registered on October 13, 2012.
5. Parties’ Contentions
5.1 The amended Complaint of the Complainant takes the form of an only partly filed-in template complaint of the sort provided by the Center on its website. For example, the “Language of Proceedings” and “Jurisdictional Basis for the Administrative Proceedings” sections of that template have not been completed.
5.2 The Complainant states that “Digicel” has been operating since 2001. It claims that the “initial operation of the company” was launched in Jamaica and that has since expanded to other markets in the Americas and in the South Pacific. It claims that “each of the company’s operating company [sic] in the respective markets uses the trademark Digicel as part of its name i.e. Digicel (Jamaica) Ltd, Digicel (Barbados) Ltd, Digicel (Guyana) Ltd, Digicel (PNG) Ltd”.
5.3 It refers to its trade mark portfolio and filed with (but not referred to in) the Complaint is a document that appears to be a list of the marks as at January 1, 2014. That document is over 600 pages long and lists a very large number of trade marks. Some of the marks appear to be irrelevant to the proceedings. Others appear to be marks that incorporate the term “Digicel” as part of some device or some longer phrase. Some, but not all of the marks are in the name of the Complainant. Some of the listed marks indicate the renewal date for that mark, whilst others do not do so (stating instead that this is “handled by client”, whatever that might mean).
5.4 However, in this long list there do appear to be some marks that take the form of a word mark for the term “Digicel” alone registered in the name of the Complainant and where the indicated renewal date of the mark post dates these proceedings. They include, on page 92 of the report, United States registered trade mark no 3,331,597 in class 38 applied for on October 14, 2005 and registered on November 6, 2007.
5.5 The Complaint contends that the Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name was registered and being used in bad faith. It claims in this respect that the “Respondent’s sole purpose for registering the domain name is to pass off the website as being relating to legitimate Digicel websites in order to attract customers and benefit financially from the unauthorized use of Digicel’s registered trademarks”. No attempt is made in the Complaint to explain this claim further, but filed with (but again not referred to in) the Complaint is a screenshot that appears to be dated October 15, 2015 (the date is very hard to read) showing a page of a website operating from the Domain Name. This page has the heading “Digicell websites” and appears to be offering website designs.
5.6 The Respondent did not file a formal response in this case, although as is mentioned in the Procedural Background section of the decision, it has sent a number of emails to the Center in which it contends that the website operating from the Domain Name was set up as part of an arrangement with Digicel (Vanuatu) Limited, a company apparently forming part of the Complainant’s group of companies.
5.7 The Respondent has provided various materials in this respect. They include a word document with the name “Digicel Channel Agreement” that appears to be an unsigned agreement between the Respondent and Digicel (Vanuatu) Limited. At schedule 1 of this agreement is a list of “DOMAINS AND URL’S” the subject of the agreement. The first of these is the Domain Name together with the word “websites”. The Respondent also provides email correspondence that appears to be between it and a person at Digicel (Vanuatu) Limited in relation to this agreement, and has also provided a copy of a signed signature page that appears to be the signature page for the agreement provided in word format.
6. Discussion and Findings
6.1 Normally it is customary in a decision under the Policy for a panel to address each of the requirements of the Policy in turn. In this case, given the failure of both parties to comply with the Procedural Order issued in these proceedings, it is convenient to approach this case somewhat differently.
6.2 The Complaint has been poorly prepared. As has already been mentioned, the Complainant has taken the template complaint provided by the Center on its website and only completed it in part.
6.3 Further, the Complainant has not seen fit to properly identify the marks it relies upon in this case. To file a schedule of marks that is over 600 pages long and is nearly two years out of date and expect a panel to work out for itself what marks may or may not be relevant to the proceedings, simply will not do. It is for a complainant to properly set out its case under the Policy.
6.4 As it seemed likely that the Complainant did have relevant rights under the Policy, the Panel in its Procedural Order gave the Complainant an opportunity to properly address this issue of what marks it relied upon in an additional submission. The Complainant did not do so. That is to say the least discourteous to the Panel, although it may be that the Complainant saw little point in addressing this aspect of its Complaint, given that there were more fundamental problems with its position when it came to the issue of bad faith.
6.5 Notwithstanding this failure, the Panel has in fact worked its way through the trade mark report provided and (as is recorded under the heading Parties contentions above) has identified at least one trade mark in the hands of the Complainant for the word mark “Digicel”; i.e., United States registered trade mark no 3,331,597 in class 38. Further, the Panel has independently verified (using the online USPTO database) that this mark remains registered in the name of the Complainant as at the date of the decision. Furthermore, the Domain Name takes the form of that mark together with the English word “sites” and the “.com” Top-Level Domain. Therefore had it been necessary, the Panel would have concluded that the Domain Name was for the purposes of the Policy confusingly similar to a trade mark in which the Complainant has rights.
6.6 However, ultimately this does not matter. Although the Respondent did not file a formally compliant Response, it is clear that it took the position that the Domain Name was registered and used with the consent of Digicel (Vanuatu) Limited, apparently one of the companies within the Digicel group. Were this so, it is difficult to see how the registration and use of the Domain Name could be in bad faith.
6.7 Although, the Complainant has been given an opportunity to address that assertion, it has chosen not to do so. The Procedural Order made it clear that if either of the parties failed to address the points they were specifically asked to address in the Procedural Order, then the Panel might draw an adverse inferences from the same. Accordingly, the fact that the Complainant has not addressed this issue, leads the Panel to conclude that there is at least some form of agreement in place between the Respondent and another company apparently within the Complainant’s group. Given this, the Complainant has failed to make out the requirement that it show on the balance of probabilities that the Domain Name was registered and been used in bad faith.
6.8 The Procedural Order also indicated that if turned out that the Domain Name had been registered and used with the consent of a company within the Complainant group of companies, this might be a case where it would be appropriate to make a finding of reverse domain name hijacking. Nevertheless, the Panel declines to do so. No proper Response has been filed in this case, there is the somewhat curious fact that the Domain Name appears to have been initially registered prior to the date when the Respondent claims to have entered into an agreement with Digicel (Vanuatu) Limited, and the Respondent has also failed to file an additional submission pursuant to the Procedural Order addressing the registration date point.
6.9 As a consequence the Panel has ultimately reached the conclusion that whatever is really going on here, it has not been told the whole story and that it would be unsafe for it to do anything more in this case than declare that the Complainant has failed to carry its burden under the Policy.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Date: December 1, 2015
PROCEDURAL ORDER NO 1
Digicel Caribbean Limited v. Domains By Proxy, LLC / Frank Flammea, Webcruzer limited
Case No. D2015-1855
WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy” or “UDRP”) or the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), notes and comments as follows:
(i) The Complainant has filed a Complaint in this case that rather than identify the trade marks relied upon, appends a trade mark report that is 626 pages long.
(ii) Many of the marks identified in the report referred to at (i) above appear to be irrelevant to any issue in these proceedings.
(iii) Many of the marks identified in the report are not in the name of the Complainant. The Panel suspects that the marks are held by other companies with the same group of companies and that the Complainant may have some interest or right in the same. However, this is not alleged nor explained in the Complaint.
(iv) The Respondent has filed material in this case that does not satisfy the formal requirements for a Response set out in paragraph 5 of the Rules. The importance of that formal compliance is something that the Panel commented upon in Christian Dior Couture v. Christina Dior/Chris Vella, WIPO Case No. D2009-0032.
(v) The material filed by the Respondent suggests that <digicelsites.com>, the domain name the subject of these proceedings (the “Domain Name”) was registered in our about 2014 as part of a contractual arrangement with and/or with the agreement of another company forming part of the Complainant’s groups of companies (i.e. Digicel (Vanatu) Limited).
(vi) If the Respondent registered the Domain Name in the genuine and reasonable belief that the Domain Name was registered with the consent of a company with the Complainant’s groups of companies, it would be difficult to characterise that registration as one in bad faith.
(vii) Further, for a Complainant to fail to disclose in its Complaint the fact that a Respondent had registered the Domain Name with the consent of a company within the Complainant’s groups of companies would prima facie constitute material non-disclosure which might support a finding of reverse domain name hijacking by the Complainant (as to which see section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
(viii) However, any claim that the Domain Names were registered as part of some 2014 agreement is difficult to reconcile with the WhoIs material supplied for the Domain Name, which suggests that the Domain Name was registered on October 13, 2012.
The Panel, pursuant to paragraphs 10, 11 and 12 of the Rules HEREBY MAKES THE FOLLOWING ORDER:
(1) The Complainant shall file with the Center by email (copied to the other party) a supplemental submission in this case by no later than 7:00 pm Central European Time on Friday November 27, 2015, limited to addressing the facts and matters set out in the recitals to this Procedural Order. In particular, that submission should specifically:
(i) identify those trade marks among those that are identified in the trade mark report appended to the Complaint, that are relied upon by the Complainant in these proceedings and insofar as any trade mark relied upon by the Complainant is not registered in the name of the Complainant, on what basis the Complainant has rights in the same;
(ii) address whether and to what extent the Domain Name was registered with the consent of a company within the Complainant’s group of companies;
(iii) address whether there is any good reason why the Panel should not make a finding of reverse domain name hijacking against the Complaint;
(iv) include a declaration signed by a named individual as follows:
“The Complainant certifies that the information contained in this submission is to the best of the Complainant’s knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
(v) identify that named individual’s connection with the party upon whose behalf the submission has been filed and why that individual has knowledge of the matters referred to in the submission.
(vi) either be in a form that is text searchable (for example, a .doc Word document or a text searchable .PDF document) or be accompanied by a copy that is text searchable.
(2) The Respondent shall file with the Center by email (copied to the other party) a supplemental submission in this case by no later than 7:00 pm Central European Time on Friday November 27, 2015 limited to addressing the facts and matters set out in the recitals to this Procedural Order. That submission should specifically:
(i) address the Panel’s observation that the Domain Name was registered prior to the date of the Respondent’s alleged agreement with Digicel (Vanuatu) Limited
(ii) include a declaration signed by a named individual as follows:
“The Respondent certifies that the information contained in this submission is to the best of the Respondent’s knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under the Policy and the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
(iii) identify that named individual’s connection with the party upon whose behalf the submission has been filed and why that individual has knowledge of the matters referred to in the submission.
(iv) either be in a form that is text searchable (for example, a .doc Word document or a text searchable .PDF document) or be accompanied by a copy that is text searchable.
(3) The Parties are placed on notice that if they do not file a submission as provided for by this Procedural Order or if that submission does not address in the case of the Complainant the specific points raised or comply with the formalities provided for in paragraph 1 of this Order above; and in the case of the Respondent the specific points raised or comply with the formalities provided for in paragraph 2 of this Order above, the Panel may draw adverse inferences from the same.
(4) The date by which the Panel’s decision should be forwarded to the Center in accordance with paragraph 15(c) of the Rules be extended to December 4, 2015.
Matthew S. Harris
Date: November 18, 2015