WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electronic Frontier Foundation v. WhoisGuard Protected, Whoisguard Inc. / Jan Hasko
Case No. D2017-1355
1. The Parties
The Complainant is Electronic Frontier Foundation of San Francisco, California, United States of America ("United States"), represented internally.
The Respondent is WhoisGuard Protected, Whoisguard Inc. of Panama, Panama / Jan Hasko of Banska Bystrica, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <electronicfrontier.org> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 14, 2017. On July 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 25, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 30, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a non-profit organization organized and existing under the laws of the Commonwealth of Massachusetts with its primary place of business in California, both United States. The Complainant provides advocacy services relating to user privacy, free expression and innovation, and undertakes impact litigation, policy analysis, grassroots activism and technology development. The Complainant has maintained its official website at "www.eff.org" since 1994.
The Complainant is the owner of United States registered trademark no. 1808177 for the word mark ELECTRONIC FRONTIER FOUNDATION registered on November 30, 1993 in international class 42.
Little is known regarding the Respondent. The disputed domain name was created on January 14, 2016. A declaration of the Complainant's Staff Attorney states that on April 5, 2017, a member of the public informed the Complainant that an unauthorized, out-of-date, and complete copy of the Complainant's official website, including blog, "About" pages and store, was being hosted at "www.electronicfrontier.org". The website displayed at the disputed domain name was a version of the Complainant's official website as it existed on January 13, 2016.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name includes the most distinctive elements of the Complainant's registered trademark ELECTRONIC FRONTIER FOUNDATION, excluding only the descriptive term "foundation", adding that in such circumstances, administrative panels find confusing similarity. The Complainant indicates that the disputed domain name uses the ".org" generic Top-Level Domain ("gTLD") which it asserts is frequently used by non-profit organizations such as the Complainant. The Complainant submits that the pairing of "electronicfrontier" with the ".org" gTLD is more likely to give the public the wrong impression that the site is operated by the Complainant.
The Complainant states that it recognizes that there are several circumstances that can demonstrate a respondent's right or legitimate interest in or to a disputed domain name but submits that none of such circumstances are present in this case. The Complainant asserts that to the best of its knowledge, the Respondent is not known by a name consisting in whole or in part of the phrase ELECTRONIC FRONTIER FOUNDATION or its substantial equivalents, and could not be so known without authorization from the Complainant. The Complainant states that the Respondent is not an agent or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant's trademark.
The Complainant contends that the Respondent registered and used the disputed domain name solely for the improper purpose of making it appear that it is the Complainant or is affiliated with the Complainant. The Complainant notes that it supports the position that the nominative fair use of a trademark may in some cases extend to the use of a trademark in a domain name, citing Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1178 (9th Cir. 2010), but adds that the principles relating to nominative fair use do not support the bad faith registration and use of a domain name confusingly similar to a trademark for the purpose of confusing consumers by impersonating or pretending to be the Complainant.
The Complainant asserts that in making a nearly identical and complete version of the Complainant's official website, the Respondent has copied thousands of the Complainant's web pages, most of which include the Complainant's trademark and purport to be its official publication, albeit with content that is more than a year out of date. The Complainant notes that it updates its website with content multiple times every week. The Complainant submits that the website associated with the disputed domain name gives rise to the false impression that the Respondent either is the Complainant or is authorized, sponsored, or endorsed by the Complainant despite there being no such relationship, adding that consumers are likely to be confused into believing that information and software distributed from the disputed domain name is provided by the Complainant.
The Complainant notes that panels under the Policy have repeatedly found bad faith where a confusingly similar domain name is registered for the purpose of impersonating the trademark owner. The Complainant adds that it is also concerned that the disputed domain name could be used for illegitimate phishing purposes asserting that bad actors have registered domain names that purported to be legitimate for the purpose of serving malware to unsuspecting visitors under reference to Electronic Frontier Foundation v. Shawanda Kirlin, WIPO Case No. D2015-1628.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
A. Identical or Confusingly Similar
In addressing this topic, the Complainant relies upon its rights in its registered trademark for the word mark ELECTRONIC FRONTIER FOUNDATION, as described in the factual background section above. The Complainant also makes a claim to unregistered or common law rights in the same mark by virtue of longstanding and substantial use. The Complainant's registered mark differs from the second level of the disputed domain name only in respect of the additional element "foundation", ignoring the spaces in the mark as these are not permitted in a domain name for technical reasons. The gTLD ".org" may also be disregarded for the purposes of comparison as is customary in cases under the Policy.
The Panel agrees with the Complainant that the disputed domain name includes the most distinctive elements of the Complainant's registered mark, namely the words "electronic" and "frontier". These comprise the second level of the disputed domain name in alphanumerically identical terms to the mark, ignoring spaces. The Panel agrees that the word "foundation" is a more descriptive element within the Complainant's mark. In the Panel's view, the absence of this element in the disputed domain name does not serve to distinguish it from the Complainant's mark to any significant degree.
In light of this analysis, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark. It is not therefore necessary for the Panel to assess the Complainant's additional submissions relating to its claim to unregistered or common law trademark rights. Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
"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".
On this topic, the Panel first notes that the Complainant makes reference in its submissions to the concept of nominative fair use of trademarks under United States law, citing Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1178 (9th Cir. 2010). The Complainant explains that it is supportive of the notion that "the public should be provided with the opportunity to make robust nominative fair use of trademarks when truthfully referring to companies or products". The Complainant then goes on to discuss why the Respondent in this particular case should not be regarded as making such nominative fair use of the Complainant's trademark.
In light of the Complainant's submissions, the Panel has reviewed the case of Toyota Motor Sales, U.S.A., Inc., supra,subject to the caveat that the Panel is not a lawyer from the jurisdiction concerned. The case, which came before the United States Ninth Circuit Court of Appeals, concerned independent vehicle brokers who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com> in the course of their business sourcing genuine "Lexus" branded cars for consumers from official dealerships. Such registration and use was challenged by the plaintiff, the exclusive distributor of vehicles under the "Lexus" brand in the United States. The court ultimately found that, in the circumstances of the case, the brokers were entitled to use the plaintiff's LEXUS trademark within the domain names concerned. The case built on the Ninth Circuit's earlier decision in New Kids on the Block v. News American Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992), in which it held that the referential use of another's trademark is permissible where (1) the trademark owner's product or service cannot be readily identified without using the mark, (2) the mark is used only so much as is necessary for such identification, and (3) such use does not suggest sponsorship or endorsement by the mark owner.
In terms of paragraph 15(a) of the Rules, the Panel in this case is directed to make its decision in accordance with the Policy and Rules together with "any rules and principles of law that it deems applicable". A body of decisions under the Policy support the notion that in some limited cases panels may apply the law of a particular jurisdiction where a case raises a legal topic relevant to the issues in dispute and provided that both of the parties to the administrative proceeding are based in that jurisdiction (see the discussion in section 4.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). Nevertheless, the present Panel is mindful of the fact that paragraph 15(a) of the Rules is capable of different interpretations, not all of which suggest that a panel should apply local legal principles in a determination under the Policy (see, for example, the extensive and helpful discussion on such alternative interpretations by the panel in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).
As section 2.8 of the WIPO Overview 3.0 notes, panels under the Policy will typically assess a claim of nominative fair use if this is made by a respondent, for example, in the case of an alleged reseller or distributor. Nevertheless, while court decisions can sometimes be helpful to a panel's deliberations, in most cases this Panel is generally cautious of placing an emphasis on any single national court's interpretation of a particular legal principle, given the non-jurisdictional nature of the Policy and the need, so far as possible, for universal applicability.
In any event, the Panel need not address this particular subject in greater depth in the present matter because the Parties are not both based in the same jurisdiction, no claim of nominative fair use is made by the Respondent, neither is any such use apparent to the Panel, nor would anything appear to turn on this issue on the facts or circumstances of the case. Indeed, the apparent use of the disputed domain name to impersonate the Complainant via a copy of the Complainant's own website strikes the Panel as the antithesis of the species of nominative fair use which the court described in Tabari.
The Panel therefore turns to apply its mind to the question of the Respondent's rights and legitimate interests according to the typical approach adopted by panels under the Policy and Rules. The consensus of previous UDRP decisions is that a complainant may establish the second element under the Policy by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based upon its submissions that the Respondent is not commonly known by the phrase in the disputed domain name, that it is not authorized in any respect to use the Complainant's trademark, that the Respondent is not making noncommercial or fair use of the Complainant's trademark and that the circumstances show that the Respondent appears to have registered the disputed domain name solely for the improper purpose of making it appear that it is, or is affiliated with, the Complainant.
The Respondent has failed to reply to the Complaint and there are no facts and circumstances identified or available to the Panel which appear to rebut the Complainant's prima facie case. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
As noted in the preceding section, the facts and circumstances of this case indicate that the Respondent has registered and used the disputed domain name with intent to impersonate the Complainant or at least to indicate that it is affiliated or otherwise endorsed by the Complainant. Furthermore, the fact that the Respondent copied the Complainant's website demonstrates to the Panel that the Respondent was aware of the Complainant's mark when it registered the disputed domain name. Its use to provide an apparently identical website to that of the Complainant's official site indicates an intent to deceive or, at minimum, act in bad faith with the intent for commercial gain. This conduct is covered by paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to source, affiliation or endorsement of such website.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <electronicfrontier.org> be transferred to the Complainant.
Andrew D. S. Lothian
Date: September 13, 2017