WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
1IQ PTY LTD v. 1337 Services LLC
Case No. D2017-2156
1. The Parties
1.1 The Complainant is 1IQ PTY LTD of Bayswater, Australia, internally represented.
1.2 The Respondent is 1337 Services LLC of Charlestown, Saint Kitts and Nevis, internally represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <devestigator.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2017. On November 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 8, 2017, 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 Complainant filed an amended Complaint on December 2, 2017.
3.2 The Center verified that the Complaint together with the amended Complaint (hereinafter referred to simply as 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. On December 14, 2017, the Respondent requested an automatic 4-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed the new deadline for the Response was December 28, 2017. The Response was filed with the Center on December 27, 2017.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 8, 2018. 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
4.1 The Complainant is a company registered and located in Australia. Mr. Simon Smith is the CEO and owner of the Complainant and claims to have worked for over 20 years as a private investigator, with a particular interest in information security and Internet based investigations.
4.2 Mr. Smith's services are promoted from a website operating from the <evestigator.com.au> domain name. The Complainant is also the owner of Australian registered trade mark no 1280980 lodged on January 21, 2009 and entered in the register on August 31, 2009. That trade mark is for the word mark EVESTIGATOR in class 45.
4.3 The Respondent on its face appears to be a corporation located in Saint Kitts and Nevis; although the "LLC" part of its name would suggest that if and insofar as it is incorporated anywhere, it is not in Saint Kitts and Nevis. It would appear to be an entity whose business model is to register domain names for at the request of others and to keep the underlying "purchaser" confidential. As its website (operating from the domain name <njal.la>) states:
"When you buy a domain in our system, we're actually purchasing it for ourselves. We will be the actual owners of the domain, it's not an ownership by proxy as found with all other providers. However, you will still have the full control over the domain name. You can either use our information, our nameservers or you can go with your custom data.
The idea is to make sure that we minimise your visibility to the public. We're not going to give your customer data out easily, …"
4.4 The Domain Name was registered on July 18, 2017. It has since been used for a website that displays what appears to be a photograph of Mr. Smith, followed by text that is highly critical of Mr. Smith and his various alleged business practices. They include allegations in relation to software that Mr. Smith is alleged to have been associated with and which call into question his qualifications.
4.5 The website remains operational as at the date of this decision.
5. Parties' Contentions
5.1 The Complainant both in the Complaint and in numerous emails sent by Mr. Smith both at the time the Complaint was filed and subsequently, makes various allegations of wrongdoing on the part of the Respondent and the person or persons who are actually behind the website that has operated from the Domain Name. These allegations include allegations of criminal behaviour and claims that various reports have been made to the police and other authorities. In one of the more recent of the emails sent by Mr. Smith he claims to have identified the person behind the registration to be a named individual in the Netherlands and provides, among other things, screenshots of a series of texts between him and an individual using a Netherlands telephone number which is said to support those claims. Mr. Smith also complains at some length after the Response was filed that the Respondent did not reveal the identity of the person responsible for the website.
5.2 The Complainant contends that the Domain Name is only one letter different from its trade mark. The Complainant claims that it has granted an exclusive licence to use that mark to Official Intelligence PTY Limited, which is another company owned and controlled by Mr. Smith and through which Mr. Smith is said to provide his services.
5.3 The Complainant further contends that the Domain Name has been registered and used for the specific purpose of defaming and being abusive of Mr. Smith and to damage his business.
5.4 The Complainant asserts that the Respondent has no legitimate interest in the Domain Name. The Complaint contends that none of the examples of rights or legitimate interests set out in the Policy apply. But at its heart the allegation appears to be that the content of the website operating from the Domain Name is so extreme and abusive that whoever is really responsible for the content on that website has as a consequence no legitimate interest in the same. The Complainant also appears to allege that the Domain Name and website forms part of a larger campaign to vilify Mr. Smith.
5.5 The Complainant claims that the Respondent or perhaps the underlying purchaser of the Domain Name is seeking to attract Internet users to the website operating from the Domain Name for commercial gain. However, what form this commercial gain is alleged to take is not entirely clear.
5.6 In its Response, the Respondent identifies itself as 1337 Services LLC and does not identify or contend that any other person or entity is behind the registration of the Domain Name or the website operating from the Domain Name.
5.7 The Respondent contends that the pre-fix "de" in English and Latin has the primary function of undoing or reversing the meaning of the rest of the word (e.g., as in "defuse" and "defrost"). Accordingly, the text "devestigator" in the Domain Name is said to be intended to be interpreted as "de-Vestigator" or "not eVestigator" and is thereby intended "to explicitly distance the website from the Complainant's mark".
5.8 The Respondent further contends that the website operating from the Domain Name is a genuine noncommercial criticism site that falls within the scope of paragraph 4(c)(iii) of the Policy. It cites various UDRP decisions that in essence are said to support the contention that in such a case, no matter how objectionable a complainant may find such critical content, then (save perhaps in cases where pornographic material or images associated with criminal activity are used) the respondent has a right or legitimate interest under the Policy.
5.9 The Respondent also claims that in this case none of the examples of circumstances indicating bad faith registration or use set out in paragraph 4(b) of the Policy apply.
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.
A. Identical or Confusingly Similar
6.3 Although the Respondent in this case claims that the Domain Name was chosen to distance the website operating from that Domain Name from the Complainant's mark, the Respondent does not appear to advance a positive case that the Domain Name is not confusingly similar to the Complainant's trade mark. It was right not to do so.
6.4 It is undisputed that the Complainant owns rights in the form of an Australian registered trade mark in the term "eVestigator" and that the only difference between the Domain Name and that mark is the addition of the letter "d" and the ".com" Top-Level Domain ("TLD"). As is recorded in section 1.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0"), even where a domain name incorporates a pejorative term such as "sucks" that might be said to clearly indicate that the Domain Name is not associated with or authorised by the trade mark holder, the overwhelming view of panellists is that the Domain Name will be still be "confusingly similar" to that mark as those words are understood under the Policy.
6.5 The distancing from the mark that the Respondent alleges is, insofar as it exists, nowhere near as great as that which exists in such "sucks cases" (a point to which the Panel will return when it comes to the assessment of Rights or Legitimate Interests). In the circumstances, the Panel concludes that the Domain Name is confusingly similar to a mark in which the Complainant has rights and the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Complainant contends that Mr. Smith has been subject to a concerted campaign of vilification, of which the website operating from the Domain Name forms a part. If that is so, then the Panel has some sympathy for Mr. Smith, but it is a claim that the Panel is not really in a position to judge. There is little concrete evidence before the Panel in this respect, and even if there were such evidence the Panel remains unconvinced that proceedings under the UDRP are the appropriate forum in which to give the Complainant redress.
6.7 The Panel's role is a narrower one, and involves assessing whether the elements of the Policy are made out, including whether the use of the Domain Name made by the Respondent (or whomever actually controls the registration) provides the Respondent with a right or legitimate interest.
6.8 With this in mind, the Panel is prepared to accept that the website operating from the Domain Name is a noncommercial genuine criticism site. The criticism here is very robust and perhaps the Complainant is correct when it asserts it is defamatory. However, ultimately the Panel agrees with the Respondent and the various cases that the Respondent cites, that this of itself (i.e., a claim of defamation) is insufficient under the Policy. The Complainant's or Mr. Smith's remedy in such a case, if he has one, is to be found in the courts.
6.9 Had the Domain Name taken the form <evestigator-sucks.com>, then so far as person who stands behind the registration is concerned, the Panel may have concluded that paragraph 4(c)(iii) of the Policy applies. However, for purposes of the Policy, this is not quite the end of the matter, because the Domain Name does not quite take that form.
6.10 The debate as to when and in what circumstances a domain name can legitimately incorporate the trade mark of another has a long, and in earlier years, evolving history. However, matters now appear to be more settled and the present position is summarised in sections 2.6.2 and 2.6.3 of the WIPO Overview 3.0, which states as follows:
"2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
2.6.3 Where the domain name is not identical to the complainant's trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as "fundraising" to offset registration or hosting costs associated with the domain name and website)."
6.11 In 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 the present Panel questioned the suggestion that cases involving exclusively United States parties should be judged by different criteria to other cases. This remains this Panel's view to this day. Further, as the reference to "some panels" in the WIPO Overview 3.0 perhaps suggests, a United States parties exception is not supported by many United States panellists. However, as the parties in this case are not from the United States, there is no need to explore this issue further. And otherwise, sections 2.6.2 and 2.6.3 describe what seems to be a consensus view.
6.12 But even if sections 2.6.2 and 2.6.3 generally represent the consensus position, that still leaves the question as to where exactly the line is to be drawn between on the one hand <trademarksucks.tld> domain names where there may be a legitimate interest and on the other hand <trademark.tld> domain names where there is not. It is an issue that the Panel attempted to explore in Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031. That was not a case which involved a criticism site, but the same issues arose of when an addition to a trade mark in a domain name meant that the domain name no longer impermissibly impersonated the trade mark owner.
6.13 So far as the present case is concerned, the Panel has reached the conclusion that the Domain Name is on the wrong side of the line. The Respondent's contention that the Domain Name might be read as "de-vestigator" is ingenious. Perhaps it was even with this reading in mind that the Domain Name was chosen (although the Response does not quite allege this). However, the Panel is not convinced that this is indeed how this would be read by Internet users. The reason is that what the Respondent is actually contending is that "devestigator" would be read as "de-vestigator", which would be read as "de-evestigator" which would finally be read as (as the Respondent puts it) "not eVestigator". This involves too many jumps. The addition of the term "de" to a word may sometimes indicate a meaning that is the reverse of that word, but that normally requires the word that follows the term "de" to remain intelligible as such. That is not really the case so far as "devestigator" is concerned.
6.14 Given this, the Panel is unconvinced that the addition of the letter "d" alone sufficiently signals to the Internet user that the Domain Name is likely to be unauthorised by the Complainant. The Domain Name is instead more likely to be read as simply that trade mark with the letter "d" added to it. As such this is closer to, if not actually, the "typo" scenario referred to in section 2.6 of the WIPO Overview 3.0.
6.15 It follows from this that the Respondent has no rights or legitimate interests in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.16 The Panel would add that as is recorded in the context of the assessment of bad faith, the Panel is of the view that the Respondent is not the person who caused the Domain Name to be registered and thereafter has in any real sense used it. It follows from this that there is a serious question as to whether the Respondent can rely upon paragraph 4(c)(iii) at all. Even if the person who caused the Domain Name to be registered were engaged in noncommercial fair use of the domain name, it does not follow from this that this is also correct so far as the Respondent is concerned. Indeed, on the contrary the Respondent would appear to be an organisation that is benefiting commercially from the registration and use of the Domain Name by another person. If the Respondent makes great play (as it does on its website) that it is not a normal proxy service as it retains ownership of the domain names it registers, it should not be surprised if that has consequences under the UDRP. However, given the Panel's findings as to impermissible impersonation, it is not necessary to consider this issue further.
C. Registered and Used in Bad Faith
6.17 There is little doubt that the Domain Name was registered with the knowledge of the Complainant and its mark and for the purposes of use with a criticism site of the sort that has operated from the Domain Name since registration.
6.18 It follows from this and the conclusions as to impersonation so far as rights and legitimate interests is concerned, that the Domain Name was also both registered and used in order to unfairly impersonate the Complainant and its mark and therefore in bad faith (see for example, 1066 Housing Association Ltd, supra).
6.19 There is also another factor that points to bad faith in this case. That is the fact that although the Respondent has put in a Response in its own name, the Panel accepts that the Respondent registered and has held the Domain Name for someone else who is deliberately trying to hide his or her identity.
6.20 As is recorded in section 3.6 of the WIPO Overview 3.0 there are potential legitimate uses of a Privacy or Proxy Service and the use of such a service is no longer per se considered to indicate bad faith. However, it can do so if a Panel concludes that the service is being used as part of a scheme to hide the identity of a potential respondent in UDRP proceedings. A procedure has now also developed in UDRP proceedings whereby most legitimate services of this sort will disclose the name of the underlying registrant in response to the Center's Registrar Verification Request (see sections 4.4 and 4.4.1 of the WIPO Overview 3.0) and a complainant can then amend its complaint to address this information. Although not perfect, this does address to some degree the potential misuse of such services. But if for example, the Registrar reveals another privacy of proxy service behind the initial privacy shield (the so called "Russian Doll scenario"), this deliberate attempt to frustrate disclosure of the real registrant's identity will often indicate bad faith (see sections 4.4.6 of the WIPO Overview 3.0).
6.21 The Panel accepts that the Registrar is not a traditional privacy service of this sort. Nevertheless, the principles in these cases appear to be equally applicable here. The entity or person who was behind the registration had not been disclosed and the Respondent appears to have been deliberately chosen and engaged by that person to prevent such disclosure in an attempt to frustrate the Complainant from exercising any rights it may have. The Panel sees no legitimate interest in that person or the Respondent acting in this way. This is not, for example, a case where the relevant person is engaging in acts of political free speech and where disclosure of that person could result in some form of political oppression or harm.
6.22 Given this the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
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 <devestigator.com> be transferred to the Complainant.
Matthew S. Harris
Date: January 22, 2018