WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Holly Beth Weber v. Anton Novak
Case No. D2017-1506
1. The Parties
1.1 The Complainant is Holly Beth Weber of Irvine, California, United States of America ("United States"), represented by Myers Bernstein LLP, United States.
1.2 The Respondent is Anton Novak of Moscow, Russian Federation.
2. The Domain Name and Registrar
2.1 The disputed domain name <goholly.com> (the "Domain Name") is registered with Regional Network Information Center, JSC dba RU-CENTER (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 3, 2017. At that time the Domain Name was registered in the name of the Registrars "Privacy protection service" using the name "Privacy protection services – whoisproxy.ru" and the Complaint identified the Registrar, "Anthony Jahn Bland" and "Anton Novack" as Respondents.
3.2 In emails dated August 4, 2017 and August 10, 2017, the Registrar provided its verification response in which it identified "Anton Novak" as the underlying registrant of the Domain Name. The Center sent an email to the Complainant on August 9, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint identifying "Anton Novak" as the sole Respondent on August 12, 2017.
3.3 Both the Complaint and Amended Complaint contended that the language of the registration agreement for the domain name was English, but also requested that the language of the proceedings be English, setting out various reasons as to why this was appropriate. On August 14, 2017, the Center notified the Parties in both English and Russian that the Registrar had informed it that the registration agreement for the Domain Name was Russian. On August 24, 2017, the Complainant formally requested that English be the language of the proceedings and referred to the contentions in its Amended Complaint as setting out the basis for that request. The Respondent did not submit any requests regarding the language of the proceedings.
3.4 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").
3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Russian, and the proceedings commenced on August 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2017. The Response was filed with the Center in English on September 14, 2017.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 25, 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.
3.7 On review of the record the Panel formed the view that insofar as the language of the registration agreement and thereby these proceedings was not English, it should determine the language of the proceedings to be English and that it should also seek further submissions from the Parties as to the circumstances surrounding the transfer of the Domain Name to the Respondent in or around 2013 or 2014. Accordingly, the Panel issued Administrative Panel Procedural Order No. 1 (the "Procedural Order") in this respect on September 27, 2017.
3.8 Each of the parties filed supplemental submissions pursuant to the Procedural Order on October 5, 2017.
4. Factual Background
4.1 The Complainant is a model and actress based in the United States who has featured in numerous magazines, and has made appearances in over 30 films and television series. She has used her name "Holly Weber" in connection with these activities.
4.2 The Domain Name was initially registered in April 2005 and was used from the time of registration until 2014 for a website that promoted the activities of the Complainant and sold various merchandise, such as calendars, posters, and trading cards, that bore the Complainant's image. From the time of registration until 2014 the Domain Name was registered in the name of "Domains By Proxy, Inc" or "Domains By Proxy, LLC", the privacy service of the then registrar of the Domain Name, GoDaddy.
4.3 On or about March 4, 2013 the Complainant commenced divorce proceedings in California against her then husband Anthony Bland. It appears to be accepted by both Parties that the effect of the commencement of those proceedings is that the assets of the Complainant and Anthony Bland were subject to a marital freeze.
4.4 On or about March 7, 2013 the Complainant obtained a restraining order against here then husband Anthony Bland in Californian courts. Paragraph 21 of that order stated as follows:
"Cease and desist on the Internet regarding the moving party includes image and anything that depicts the moving party"
4.5 On or about March 4, 2014 the Domain Name was transferred into the name of "Anton Novak" and remained in that name until in or about June 2014, when the Domain Name was transferred into the name of the Registrar's privacy service.
4.6 In or about April 2014, the Complainant divorced her then husband Anthony Bland. The dissolution of the marriage was recorded in a court order of the Superior Court of the State of California dated April 24, 2014. Paragraph 1 of that Order stated as follows:
"Website and domain name www.goholly.com: The Court finds that the website www.goholly.com is valued at $0, and is awarded to [the Complainant], including the domain name goholly.com"
4.7 Since 2014 a website has continued to operate from the Domain Name. It describes itself as "The Official Website of Holly Weber". The front page of that website contains, inter alia, the text "Click here to read amends for my past activities". If that link is clicked upon, the Internet user is taken to another page on the website that purports to contain the Complainant's lengthy confession as to adulterous behaviour during her marriage. Other pages on the website continue to offer for sale merchandise incorporating the Complainant's image, although it may no longer be possible to purchase such merchandise.
5. Parties' Contentions
5.1 The Complainant contends that although the Domain Name and its associated website were initially set up by her, during the course of her marriage to Anthony Jahn Bland, Mr. Bland was granted access to the website in order to assist with its maintenance. She claims that from 2005 to 2014 she generated income under the claimed unregistered mark "goholly.com" of between USD 80,000 to USD 120,000 per annum.
5.2 She claims that when her relationship with Mr. Bland came to end, he took control of the website and has since then used it to display content that is defamatory of her. It is also claimed that the Domain Name was transferred into the name of the Respondent contrary to a freezing order made in the course of divorce proceeding in the Californian courts made and notwithstanding a further order of the Californian courts determining that the Domain Name and its associated website belonged to the Complainant.
5.3 It is also alleged that the Respondent and current registrant of the Domain Name is a close friend or agent of Mr. Bland or his alter ego.
5.4 The Complainant does not claim rights in any registered trade mark but instead appears to claim rights in "goholly.com" as an unregistered trade mark by reason of the past use of the same to promote her and merchandise associated with her. The Domain Name is said to be identical to that unregistered mark.
5.5 The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. In part that is said to be because the website operating from the Domain Name is being used to defame the Complainant, but also because the content of the website "creates the strong impression that it is actually [the] Complainant that maintains and operates the website". Insofar as the Respondent is Anthony Bland's agent it is said that such content is in breach of the restraining order obtained by the Complainant on March 7, 2013.
5.6 The Complainant further contends that the Domain Name was registered and is being used in bad faith. She claims that paragraph 2 of the Policy is relevant in this case so far as that assessment is concerned and that the Respondent's use of the mark involves a clear violation of multiple laws and court orders. In this respect the Complainant claims that its use involves "1) Trademark Infringement; 2) Violation of a Divorce Decree; 3) Violation of a Restraining Order; 4) Violation of Complainant's Rights of Publicity; 5) Libel/Slander; and 6) Intentional Interference with Prospective Business Relations.
5.7 Further, the Complainant contends that there is bad faith in this case in that the website operating from the Domain Name wrongly and falsely purports to be the official website of the Complainant and that the Respondent has intentionally attempted to attract, for the purpose of defaming the Complainant, Internet users to the website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. This is said to be contrary to paragraph 4(b)(iv) of the Policy.
5.8 The Respondent denies that the Complainant has ever owned the Domain Name and provides evidence to the effect that it was purchased by Mr. Bland together with the domain name <hollyweber.us> in April 2005 and that Mr. Bland was billed in respect of the Domain Name until at least January 2013. The Respondent contends that Mr. Bland "explained" to him that this was for the:
"purpose of furthering his management company 'Webland Entertainment' and production company 'Webland Productions' he established to provide support, information and sales of products he produced for models and actresses, including the Complainant."
5.9 This is also said to be consistent with the terms of a model release form signed by the Complainant on August 21, 2008 (the "Model Release Form"). A copy of this form is provided which appears, inter alia, to grant both Mr. Bland and Webland Entertainment the right to use the Complainant's name and image.
5.10 The Respondent also disputes the level of sales claimed by the Complainant. It contends that the figures alleged by the Complainant:
"correlate[ ] with income generated by [the] Complainant from activities shown within the Journal entries the Complainant uploaded during a February 19, 2017 temporary domain hijacking by [the] Complainant; none of which were listed as sales of merchandise"
5.11 The Respondent claims to have acquired the Domain Name on February 10, 2013, by reason of a domain name assignment agreement between the Complainant and the Respondent dated February 10, 2013 (the "Domain Name Assignment Agreement"). Under the Domain Name Assignment Agreement, Mr. Bland sold the Domain Name to the Respondent in return for consideration of USD 1. A copy of that agreement is provided by the Respondent together with an "Assignment of Contract" of the same date which purports to assign "all rights, title and interest" held by Mr. Bland in the model release form signed by the Complainant on August 21, 2008. This is said to pre-date any martial freeze of assets arising from divorce proceedings between the Complainant and Mr. Bland.
5.12 The Respondent further claims that after this acquisition of the Domain Name on February 19, 2013, the Complainant temporarily hijacked the Domain Name in an attempt to change the account details for the Domain Name and that it is the Complainant who added the content about which the Complainant now makes complaint. The Respondent contends that this was done deliberately by the Complainant in order to support her application for a restraining order.
5.13 The Respondent appears then to contend that this hijacking was "corrected" on February 20, 2013 through the use of the then-registrar's IRIS fraud detection system. The Respondent also claims that Mr. Bland then advised him to "move the [Domain Name]" but asked him to keep the content of the website unchanged to preserve evidence of the Complainant's actions. This the Respondent claims to have done although he contends that "[u]pon moving hosts", the Respondent "disconnected all point of sale connections".
5.14 In support of the contentions as to hijacking the Respondent provides a copy of a letter from GoDaddy to Mr. Bland dated June 13, 2013 attaching various registrar records. These records appear to demonstrate that:
(i) on February 19, 2013 an email address associated with the Domain Name was changed to one that incorporated the name of the Complainant and that later that same day various credit card accounts associated with the Domain Name were deactivated;
(ii) on February 20, 2013 an "incident" in relation to this Domain Name account was recorded to be "resolved";
(iii) on March 14, 2013 an individual called Tony contacted GoDaddy to obtain certain notes in connection with a legal dispute "with the person who tried to accessed his acct";
(iv) on March 20, 2013 a further "incident" in relation to this Domain Name account was recorded to be "resolved"; and
(v) on March 22, 2013 "Account owner Info" for this this Domain Name account was "updated".
5.15 The Respondent contends that he has a right or legitimate interest in the Domain Name by reason of its purchase and that the Domain Name is being used to display "existing high-quality photos and content originally produced by 'Anthony Bland', that have been legally assigned". The Respondent further contends that the circumstances surrounding the registration of the Domain Name and its subsequent use mean that there has been no registration or use in bad faith.
5.16 The Respondent also seeks a finding of reverse domain name hijacking.
C. Supplemental Submissions
5.17 In Supplemental Submissions filed pursuant to the Procedural Order both Parties provide further evidence and argument in relation to the circumstances surrounding the transfer of the Domain Name to the present Respondent.
5.18 The Complainant in her Supplemental Submission contends that the nominal sum purportedly paid under the Domain Name Assignment Agreement calls the "veracity" of that document into question. She also claims that the material provided by the Respondent in support of the allegation of hijacking suggests that Mr. Bland still controlled the Domain Name as at March 14, 2013. This is said to be significant since it postdates the marital asset freeze resulting from the commencement of divorce proceedings.
5.19 Further, the Complainant contends that these documents also demonstrate that it was Mr. Bland who was responsible for the changed account information on March 22, 2013. In this respect her lawyers point out that these record that user 5307079 made the change and that it is apparent that this is the account number for Mr. Bland, rather than the Respondent.
5.20 Finally, the Complainant's Supplemental Submission contends that insofar as the Respondent has acted pursuant to Mr. Bland's request that the disparaging content remain on the website, the Respondent has acted as Mr. Bland's agent in violating the terms of the restraining order.
5.21 The Respondent in his Supplemental Submission gives a somewhat fuller explanation as to how and when he acquired the Domain Name. He claims that he was a "huge supporter" of the work displayed from the Domain Name since 2007 and had since that date communicated with the Complainant. The Respondent states that in January 2013 he was contacted by Mr. Bland who stated that he was not just the Complainant's photographer but also her manager and "responsible for all website build and maintenance". It is claimed that Mr. Bland suggested that the Respondent take over "all future financial responsibility to keep the [Domain Name] active in exchange for ownership of [the Domain Name] and associated media". He also states that a "verbal agreement was made to evenly divide any revenue the [Domain Name] might generate".
5.22 The Respondent contends that he initially intended to re-design the website but that this was placed on hold when Mr. Bland:
"forwarded information regarding [the] Complainant[']s initial attempted hi-jack and a more detailed explanation of their relationship (Marriage and Divorce proceedings)."
5.23 The Respondent confirms that publically available WhoIs records show that the Domain Name was not openly transferred into his name until on or about March 4, 2014, which is said to be about the time when the Domain Name purchased by Mr. Bland was due to expire. However, he contends that in "late February 2013" using a password provided by "Anthony Bland" he changed password and all contact information, including name, address, phone number and email address for the Domain Name.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn followed by the Respondent's allegations of reverse domain name hijacking. However, before it does so it will very briefly address the question of the applicable language of these proceedings.
6.3 Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. In this case the Registrar informed the Center that the language of its registration agreement was Russian. It would appear from the material submitted by the Complainant that the Registrar makes its registration agreement available in both English and Russian. However, clause 1.3 of that agreement read as follows:
"This Agreement, Addenda, and instructions may be translated by the Contractor in English. In case of any discrepancy between the Russian and English versions of this Agreement, Addenda, or instructions, the Russian-language version shall prevail."
6.4 Accordingly, the Panel accepts that Russian is indeed the language of the relevant registration agreement.
6.5 Nevertheless, the Panel had little hesitation in determining pursuant to paragraph 11 of the Rules and as part of the Procedural Order that the language of these proceedings should be English. As was recorded in the Procedural Order: (i) the Complaint and Response were both submitted in English; (ii) the Respondent has not submitted any objection to English being the language of the proceeding; and (iii) the website to which the Domain Name resolves is in English. Further, since that date the Parties have submitted supplemental proceedings in English. This Decision has therefore been prepared on that basis.
A. Identical or Confusingly Similar
6.6 The Complainant claims rights in the term "goholly.com" as an unregistered trade mark. There would appear to be a dispute as to the extent of the commercial use of that term. Nevertheless, there does not appear to be any dispute that the term was used for at least eight years prior to 2013 to promote the Complainant and products featuring her likeness. Therefore, the Panel is prepared to accept, particularly in light of the commentary in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), that at least to some degree common law rights in this term exist.
6.7 The complication in this case is where those rights are situated. The Complainant contends that the Domain Name was registered and the term "goholly.com" used to further her career on her instruction and under her control and that therefore she owns those rights. The Panel accepts that the Domain Name was indeed used to further her career but the Panel is sceptical that she was the one who held those rights. First, there is the fact that it is clear from the evidence that the Respondent has filed that the Complainant's claims that she purchased the name is at best partial, if not misleading.
6.8 Second, there is the Model Performance Release, which the Complainant signed in 2008 and which mentions "goholly.com". The wording of that agreement does not seem to be directed to who owns any unregistered rights in the terms "GoHolly" or "goholly.com". It instead makes it clear that all copyright works created by Mr. Bland featuring the Complainant shall belong to him. The document also grants Mr. Bland the right to use the Complainant's name and image, but it does not follow that he is the owner of the rights in the term "goholly.com". However, the document is nevertheless significant in that Mr. Bland signed that document on behalf of "Webland Entertainment / Goholly.com". In other words, this document appears to demonstrate that Mr. Bland was using that term as a trading name for his business and that prima facie he was at least at that time the owner of any unregistered rights in that term.
6.9 The Complainant of course relies upon the fact that she is the beneficiary of an order of the Californian courts dated April 24, 2014 in which the Domain Name and the associated website were transferred to her. However, this order was made over a year after the purported Domain Name Assignment Agreement dated February 10, 2013 and the Domain Name Assignment Agreement purports to transfer not only the Domain Name itself but also:
"all … goodwill associated with the Domain Name together with any unregistered or registered trademarks in any way related to the Domain Name"
6.10 Further, the Complainant does not claim that the Domain Name Assignment Agreement was a document that was before the California court at the time this order was made or that there was any argument as to its effect. Therefore, if this document is taken at face value, then at the time of the order, Mr. Bland held no rights in the Domain Name and it is difficult to see how that order could have granted the Complainant any unregistered trade mark rights in the term "goholly.com".
6.11 That said, for reasons that the Panel will explore later on in this Decision, the Panel has reached the conclusion that notwithstanding the wording of the Domain Name Assignment Agreement, the Complainant is correct when she contends that after that agreement the Complainant still has significant control over the Domain Name and all associated rights in the same. The wording of paragraph 4(i) requires a complaint to identify "a trademark or service mark in which the complainant has rights". This phrase has generally been considered to be wide enough to encompass rights under a trade mark license (see section 1.4 of the WIPO Overview 3.0) and the Panel is prepared to accept that this similarly extends to a person who has significant control over a mark, particularly in this complex case where the mark at issue has a personal identity aspect. It is also an approach that would be broadly consistent with the consensus view that the first element of the UDRP serves essentially as a standing requirement (see section 1.7 of the WIPO Overview 3.0).
6.12 If that is so, and if Mr. Bland continued to hold such rights notwithstanding the wording of the Domain Name Assignment Agreement, it also must follow that those rights transferred to the Complainant on April 24, 2014. In the rather unusual circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.13 It is customary in decisions under the Policy separately to address the issues of rights and legitimate interests and bad faith registration and use. However, in some cases it is more convenient to address these second and third elements of the Policy together (see section 2.15 of the WIPO Overview 3.0). This is just such a case.
6.14 The reason for this is a fundamental dispute in this case as to whether the transfer of the Domain Name from Mr. Bland to the Respondent formed part of a legitimate business transaction or whether in acquiring, holding and using the Domain Name, the Respondent was acting either as the agent for or as the alter ego of Mr. Bland. The answer to that question in turn goes to the heart of whether the Complainant can satisfy both the second and third aspects of the Policy.
6.15 The Respondent relies upon several contractual documents recording the transfer of the Domain Name and associated rights from Mr. Bland. The Panel is prepared to accept for the purposes of these proceedings that these contractual documents are genuine in the sense that they were signed on the dates that the Respondent says they were and that the Respondent exists as a separate individual. Nevertheless, the Panel has reached the conclusion that notwithstanding this and the contents of these documents, that the Domain Name has effectively remained under the control of Mr. Bland and that the Domain Name has been both registered and held in the name of the Respondent for the primary purpose of displaying a website that sets out the Complainant's "confession".
6.16 Initially, the Respondent did not give any explanation of the reasons as to why he acquired the Domain Name. That of itself is problematic since frequently this is the key question in proceedings under the Policy and therefore a respondent who decides to put in a response and yet avoids addressing that fundamental question may find that a panel draws adverse inferences against him as a result (see the comments at paragraph 6.21 of the three-person panel in Nexans S.A. v. Mr. Edip Özdemir / MXN Kablo San. Tic. Ltd. Sti., WIPO Case No. D2015-1056). In the present case an explanation was finally offered by the Respondent in his Supplemental Submission i.e., that Mr. Bland approached him and suggested that the Respondent take over all future financial responsibility to keep the Domain Name active in exchange for ownership of the Domain Name and associated media, in return for a share of the revenue the Domain Name might generate.
6.17 However, the Panel rejects this explanation for the following reasons:
- Had there really been either discussions or an agreement of that sort, one would expect there to be documentation that demonstrates those discussions and agreement. Notwithstanding that the Respondent has been able to provide extensive material both surrounding the initial registration by Mr. Bland back in 2005 and the later claimed transfer to the Respondent, no such material has been provided to the Panel;
- Considerable effort was expended to record the agreement to transfer the Domain Name and associated rights to the Respondent. They include not only the formal Domain Name Assignment Agreement but also an assignment of rights under the Model Performance Release. Had there really been a revenue sharing agreement of the sort that the Respondent contends, it is inherently improbable that the circumstances surrounding the transfer of rights to the Respondent would have been so impeccably recorded and yet the revenue sharing agreement would not; and
- If the Respondent had indeed taken over the website operating under the "www.goholly.com" website and business, one would have expected the Respondent to have taken steps in the 4.5 years since the Domain Name was acquired to develop that business and not leave the website unchanged during that period. The Respondent's explanation for not doing this is that Mr. Bland requested that the Respondent preserve evidence of the Complainant's attempts to hijack the Domain Name in the context of litigation between the Complainant and Mr. Bland. However, that claim makes little inherent sense. As the evidence annexed to the Respondent's Response demonstrates, Mr. Bland had at least by June 2013 been able to secure detailed records from the registrar of the Domain Name as at the time of the alleged hijacking. Further no explanation is offered as to why the website needs to remain live to provide evidence of what was done and what it looked like in 2013 and 2014. Further, the Panel is being asked to believe that the Respondent has decided to leave it unchanged until now, notwithstanding that on the Respondent's own case he has not been able to contact Mr. Bland since 2014. The Panel therefore rejects that claim in the absence of any contemporaneous supporting documentary evidence.
6.18 There is also one aspect of the Respondent's case that appears to be demonstrably false. That is the Respondent's claim, contained in his additional submission, that in late February 2013 he effectively transferred the Domain Name (then held behind GoDaddy's privacy shield) into his name by using a password provided by Mr. Bland. However, no documentary evidence supplied supports that contention, and it appears to be inconsistent with the GoDaddy records supplied by the Respondent in his Response. These records suggest that there was no change in "Account owner Info" until March 22, 2013.
6.19 Both Parties in this proceeding appear to consider it to be significant whether the transfer behind the GoDaddy's privacy shield took place in late February 2013 or late March 2013, given that divorce proceedings between the Complainant and Mr. Bland commenced on March 4, 2013. In this respect, the Complainant appears to allege that if and insofar as the transfer took place after March 4, 2013 Mr. Bland was in breach of Californian law. The Panel is neither qualified to comment on that allegation and even if it were, it would be inappropriate for it to do so. But the fact that the Panel has concluded that the Respondent's timing claims are false is something that at the very least suggests that the Panel should be careful in accepting at face value factual contentions from the Respondent absent any contemporaneous documentary evidence in support.
6.20 Given the Panel's rejections of the Respondent's contentions, the question still remains why the Domain Name was transferred. Given the timing of the Domain Name Assignment Agreement and the assignment of rights under the Model Performance Release (i.e., at about the time that divorce proceedings between Mr. Bland and the Complainant commenced) and the content of the website that has appeared from the Domain Name for at least the last 4.5 years, the Panel finds that the most credible explanation for this "transaction" is that it was designed to ensure that the website would continue to operate from the Domain Name that professed to be "The Official Website of Holly Webster" containing the Complainant's "confession". Further, even if that is not correct and this was not the Respondent's intention at the time of the initial "transaction", the Panel is persuaded that this had become the Respondent predominant intention by March 22, 2013.
6.21 In so doing, the Respondent has sought to impersonate the Complainant and it is clear that there is no right or legitimate interest in impersonating another absent that person's consent and to use a domain name for such a purpose is use in bad faith.
6.22 The Respondent contends that the content was created and uploaded by the Complainant herself in order to obtain a restraining order. However, that claim strikes the Panel as inherently improbable, particularly given the lurid nature of the allegations contained in the "confession". The Panel does accept that there is evidence before the Panel that the Complainant did try, on or about February 22, 2013 to take control of the Domain Name. Indeed, it is noticeable that this allegation does not appear to be disputed by the Complainant's attorneys in their Supplemental Submission. And the fact that this had not been previously disclosed by the Complainant, does the Complainant little credit. Nevertheless, the Respondent does not explain how the documents he has provided also demonstrates that the Complainant has uploaded the material herself. Absent such explanation, the Panel is not prepared to accept that this remarkable allegation is true.
6.23 The Panel wishes to make it clear that the Panel is expressing no view as to whether the allegations about the Complainant's life, found on that website, are true and/or defamatory. Not only is there no evidence before the Panel in this respect, but the Panel is firmly of the view that such questions fall outside the scope of what a panel should determine under the Policy. Similarly, the Panel expresses no view as to whether such activities involve a breach of any order of the Californian courts.
6.24 The Complainant contends otherwise and states that this alleged defamatory content, alleged breaches and other alleged wrongful behaviour on the part of the Respondent, involve the Respondent being in breach of paragraph 2 of the Policy and that this is of itself demonstrates bad faith. However, paragraph 2 of the Policy primarily comprises a series of representations and warranties made by a registrant for the benefit of the registrar. Therefore, as a general matter, the Panel is sceptical that arguments of this sort based upon the wording of this paragraph are of any real assistance under the Policy. Indeed, as the current case perhaps amply demonstrates, it is an approach that would risk drawing the UDRP into a broad-ranging assessment of questions of alleged wrongful or illegal behaviour that the UDRP was not set up to address and which UDRP panels are often ill-equipped to assess.
6.25 Finally, it is necessary for the Panel to address the question of bad faith registration. It has long been the consensus view under the Policy that a transfer of a domain name to another person constitutes a fresh registration for the purposes of the Policy. However, inherent in each of the Panel's conclusions as to the existence of rights in a trade mark, lack of rights or legitimate interests on the part of the Respondent, and use in bad faith, is the Panel's conclusion that Mr. Bland somehow retains an interest in and some degree of control over the Domain Name. Indeed the Complainant goes further and contends that the Respondent is Mr. Bland's agent or alter ego. If at all times Mr. Bland controlled the Domain Name, was there any fresh registration at all?
6.26 The Panel is of the view that even if Mr. Bland remained in control of the Domain Name there was still a fresh registration when it transferred into the Respondent's name. The reasons for this were set out by this Panel in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785 (the "ehotel AG case"). In that case the domain name in dispute had been transferred out of the name of an individual into the name of company in circumstances where the domain name remained under the individual's control. At paragraph 6.20 of its decision in that case the Panel noted that (as was recorded in what was then the first edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions) the consensus appeared to be that where there was a change in registration from one entity to another that would be a fresh registration for the purposes of the Policy. It then went on to state (at paragraphs 6.21 and 6.22) as follows:
"Here although there has been a change to the listed registrant of record, there appears to have been no change in control over the Domain Name. Does this latter factor make a difference in the circumstances of the present case? In the opinion of the Panel it does not. Not all changes in registration details necessarily involve transfers and re-registrations for the purposes of the Policy. Examples might be where a registrant seeks to correct a typographical error in its name, or a company changes its name and changes the register to reflect that change. There may be other examples (see the discussion of the consequences of company "mergers" in Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). However, where there has been a change in registration details from one legal entity to another, then in the opinion of the Panel there will typically be a fresh registration. A transfer into the hands of an agent or proxy may still be a transfer and re-registration for the purposes of the Policy, even if that agent holds the domain name on the instructions of the original registrant. Therefore, whatever the arrangement between Mr. Lutoborski and the Respondent, and notwithstanding Mr. Lutoborski's apparent involvement in the Respondent's company, the Panel finds that there has been a fresh registration in this case.
Such an approach may mean that a domain name owner who transfers a domain name to another legal entity as evident from the WhoIs risks losing a domain name that may once have been legitimately acquired but is now being used in bad faith even where there is no change in underlying control. However, the Panel is unconvinced that this provides a good reason for interpreting the concept of registration under the Policy more restrictively. If at the time of transfer of the domain name the owner is using and intends to continue to use the domain name in good faith, then he will have nothing to fear. Second, it is questionable whether the Policy should be that indulgent to those who decide to use registration details that do not properly reflect or disguise (whether before or after a transfer) the true owner of that domain name."
6.27 Since the date of that decision matters have now moved on somewhat, particularly so far as the use of privacy services are concerned. Section 3.9 of the WIPO Overview 3.0 records that "panels typically would not treat merely "formal' changes or updates to registrant contact information as a new registration". That section then goes on to suggest that a change in registrations behind a shield of a privacy service would still be a fresh registration for the purposes of the Policy. It also cites cases which suggest that where a domain name is moved into the name of a privacy service or there is a change in privacy service provider, if the underlying owner of the domain name remains the same, such changes in name can usually be ignored (as to which see in particular the comments in footnote 8 to the decision of the three-person panel in BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882, <bme.com>).
6.28 More fundamentally there are also been cases where panels have concluded that inter-group transfers or transfers to related entities should not be treated as new transfers for the purposes of the Policy. They include Mirza Juddani v. CDN Properties Incorporated CDN Properties Incorporated, WIPO Case No. D2014-1354 and Angelica Fuentes Téllez v. Domains by Proxy, LLC / Angela Brink, WIPO Case No. D2014-1860. In the Mirza Juddani case the panel cited with approval text in a previous edition of the Overview that there will not be a new registration:
"where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name"
Similarly, in the Angelica Fuentes Téllez case the Panel stated:
"it is also generally accepted that such is not the case where there is evidence to establish an unbroken chain of underlying ownership by a single person, and any change in the WhoIs registrant data is not being made to conceal the underlying owner's identity"
6.29 With all due respect to the learned panels in those cases, this Panel is sceptical that these comments regarding "formal transfers" are right and it still inclines to the view set out in the ehotel AG case, supra. Why "formal transfers" of this sort should be ignored is not really explained in either of these decisions and the Panel has difficulty understanding the rationale for this in the Policy. Even within a single corporate group, these are still transfers to separate legal entities and it should not be a surprise that this might have legal consequences. Further, there is no obvious provision in the Policy or Rules that supports the contended "formal transfer" exception. However, there is no need to discuss this issue any further in this case. The reason is that both the Mirza Juddani case and the Angelica Fuentes Téllez caseappear to accept that the "formal transfer" exception does not apply if the transfer is being used to obfuscate who at least in part controls the mark. As the Panel has already explained, it is of the view that this was indeed what has happened in this case.
6.30 Accordingly, the Panel concludes that the transfer of the Domain Name from Mr. Bland into the hands of the Respondent, whether that be on March 22, 2013, behind the GoDaddy privacy shield or in 2014 as reflected in the WhoIs record, constituted a fresh registration for the purposes of the Policy, and is the relevant registration date, regardless of the degree of control that Mr. Bland continued to have over the Domain Name thereafter. Further, for reasons already explained, that registration was a registration in bad faith.
6.31 In the circumstances, the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
B. Reverse Domain Name Hijacking
6.32 Given the Panel's findings on paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, the question of reverse domain name hijacking does not arise. However, even had the Panel reached some different conclusion in this regard (for example because it took a more restrictive view as to whether the Complainant possessed relevant rights in a trade mark), it is unlikely that the Panel would have made a finding of reverse domain name hijacking. This is so even while the Complainant has done herself no favours by the way she described the original registration of the Domain Name and in failing to disclose or explain that attempts had been made by her in February 2013 to take over the Domain Name. The reason for this is that the timing of and motivations behind the Domain Name Assignment Agreement relied upon by the Respondent cry out for an explanation. There is no evidence before the Panel that the Complainant was even aware of this document prior to commencement of these proceedings and it was only when prompted by the Procedural Order did the Respondent offer any explanation as to why Mr. Bland and the Respondent had entered into such an agreement. In such circumstances, it is difficult to see how the Complaint might have been brought in bad faith.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <goholly.com> be transferred to the Complainant.
Matthew S. Harris
Date: November 1, 2017