WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cricket South Africa v. Sean Stevens, tq6 Inc.
Case No. D2018-0118
1. The Parties
The Complainant is Cricket South Africa of Johannesburg, South Africa, represented by Mota Attorneys, South Africa.
The Respondent is Sean Stevens, tq6 Inc. of Singapore, Singapore, represented by Hrishikesh Baruah, India.
2. The Domain Name and Registrar
The disputed domain name, <t20globalleague.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2018 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 January 30, 2018.
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 February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. On February 14, 2018 and February 18, 2018, the Center received email communications from a third party. The Respondent did not submit any response. On February 23, 2018, the Respondent requested a 20-day extension of the time to file a Response.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 28, 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.
The amendment to the Complaint referred to above was occasioned by the fact that the original Complaint was filed against a privacy service in whose name the Domain Name was held at the date of filing of that Complaint. In response to the Center’s Request for Registrar Verification, the Registrar disclosed that the underlying registrant was the above-named Respondent. The amended Complaint reflects that fact.
On February 28, 2018 the Panel issued Procedural Order No. 1 granting the Respondent a short extension of time within which to file the Response, namely until March 5, 2018. A Response was filed on March 5, 2018, but not in the name of the above-named Respondent. It was filed in the name of TMT Investment Pte Limited (“TMT”) of the same address in Singapore as the Respondent. This issue is dealt with in Section 6 below, but for present purposes the Panel treats the Respondent and TMT as one, TMT’s case being that the Respondent is an ex-employee of TMT.
Having read the Response, on March 6, 2018 the Panel issued Procedural Order No. 2 seeking further information from the Complainant. The Complainant responded to that Order in timely fashion on March 9, 2018. The Respondent filed a submission in response on March 10, 2018. On March 12, 2018 the Panel issued Procedural Order No. 3 seeking responses from the parties by March 15, 2018 and giving them until March 19, 2018 to file any further submissions in response. In the interim the Respondent had submitted a further unsolicited filing dated March 12, 2018, which crossed with Procedural Order No. 3. The parties responded to Procedural Order No. 3, but the Respondent’s response arrived a day or two out of time. The Complainant’s response did not address the Respondent’s unsolicited further filing.
The Respondent’s response to Procedural Order No. 3 combined with its unsolicited further filing, raised issues, which, in the view of the Panel, called for clarification by the Complainant of its case against the Respondent. The Panel sought that clarification from the Complainant by way of Procedural Order No. 4 and gave the Complainant the opportunity to amend its responses to Procedural Orders Nos. 2 and 3 as it saw fit. This is all dealt with in Sections 5 and 6 below.
4. Factual Background
The Complainant is a non-profit company incorporated under the laws of South Africa. It is the administrator and promoter of professional cricket in South Africa. It has made substantial use of the terms T20 GL and T20 GLOBAL LEAGUE in its promotional literature and on social media since February 4, 2017.
On February 4, 2017 the Complainant announced plans to launch a professional cricket competition in South Africa in the T20 format. It was originally planned to be played in the final quarter of 2017. However, for reasons not relevant to the matter in hand, the launch has been delayed. According to press reports annexed to the Response it has been postponed to November 2018.
The Domain Name was created on February 5, 2017, one day after the Complainant announced the launch of its T20 Global League Competition. It was registered by a resident of India and connected to a parking page hosted by the Registrar and indicating that the Domain Name might be for sale.
On June 7, 2017 the Respondent, acting on the instructions of Ortus Sport & Entertainment of London and Singapore (“Ortus Sport”), an agent of the Complainant, and using a domain name broker for the purpose, acquired the Domain Name from the original registrant for a price of SGD 32,665.00. The Complainant contends that Ortus Sport was not authorized in relation to the Domain Name.
On June 9, 2017 the Complainant’s representative, clearly unaware of the above transaction, wrote to the original registrant of the Domain Name drawing his attention to its trade mark rights and seeking cancellation or transfer of the Domain Name. The original registrant replied on June 16, 2017 stating; “Hi, Sorry I do not have this Domain. First of all you can check whois of Domain.” The Complainant then seems to have left the matter there until the filing of the original Complaint in this administrative proceeding on January 18, 2018.
However, in September/October, 2017 an exchange of email correspondence was running between TMT (or its associated company, “t20 (an idea Tree venture) IdeaTree Inc.” of California, United States of America)(“TMT”) and Ortus Sport).
On September 15, 2017 TMT wrote to Natalie Tay of Ortus Sport (and copy to Venu Nair of Ortus Sport) in the following terms: “I hope this finds you well and that things have been progressing smoothly with the T20GL since we last spoke. Thank you very much for our discussion. As requested by Mr Venu, we have acquired the domain on your organization’s behalf. Please find the invoice attached. Many thanks. I look forward to following the success of the League.” The invoice dated August 10, 2017 was issued on TMT’s headed paper and addressed to Ms. Natalie Tay, T20 Global League c/o Cricket South Africa, at an address in Johannesburg, South Africa. The invoice was for SGD 32,665.00 covering “cost of advisory, negotiation and acquisition of [the Domain Name] on behalf of Cricket South Africa.”
On the same day Ms. Tay of Ortus Sport emailed TMT (copy to Venu Nair) saying: “I hope you’ve been well since we spoke. Thank you for the update. Could you please provide us with some proof that [the Domain Name] is currently held by t20?”. TMT replied “Thank you kindly. Yes, of course, attached please find images from our domain registration account …”.
On September 21, 2017 Ms. Tay emailed the CEO of the Complainant and a gentleman who describes himself on LinkedIn as “Head of Finance & Corporate Strategy at T20 Global League – a subsidiary of Cricket SA”) in the following terms: “Please see attached invoice relating to the domain acquisition (from a domain squatter) for <t20globalleague.com>. The acquisition was initiated by Venu and was done to ensure that the League retains ownership of the domain in order to prevent misuse in future by squatters, and also to host the official website.”
On September 21, 2017 the Head of Finance & Corporate Strategy at T20 Global League (copy to the CEO of the Complainant and Venu Nair) emailed Ms. Tay as follows: “Hi Nat, Please ask TMT to send us a Bank Letter confirming their Banking Details so we can make the payment.”
On September 21, 2017 Ms. Tay emailed TMT (copy to Venu Nair): “Thank you. Could we please have TMT send across a bank letter confirming their banking details? CSA requires this in order to make the payment for this invoice.” There being no reply Ms. Tay sent a chaser on September 26, 2017, which was followed up by another chaser from a colleague of Ms. Tay on October 3, 2017. TMT responded on October 3, 3017: “Please find attached the check from TMT as requested.”
On October 16 and 28, 2017 TMT emailed Ms. Tay enquiring as to the “status of the invoice.” On October 27, 2017 Ms. Tay responded: “Am not sure if you have been following the news but the League has been postponed for a year. CSA is currently putting in place processes to deal with external providers (such as yourselves), and until which time those are finalized, we are unfortunately unable to provide any updates to you regarding payment of this invoice.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its T20 GL and T20 GLOBAL LEAGUE trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith, citing all four sets of circumstances set out in paragraph 4(b) of the Policy.
The Respondent denies the Complainant’s contentions. It contends that the Complainant has no trade mark rights upon which to base a complaint under the Policy. It contends that it has a right or legitimate interest in respect of the Domain Name in that it was instructed by the Complainant’s agent to acquire the Domain Name for the Complainant and duly submitted an invoice to the Complainant’s agent in respect of that acquisition, an invoice which was accepted by the Complainant’s agent, but which has not been settled. On the same basis the Respondent contends that the Domain Name was not acquired in bad faith and has not been used in bad faith.
The Respondent observes that the Complaint makes no mention of the correspondence between the Complainant’s agent (Ortus Sport) and the Respondent, which shows that the Respondent was acquiring the Domain Name for the Complainant at the behest of its agent. The Respondent contends that the Complainant is using the Policy to avoid having to pay for the Domain Name, having previously instructed its agent to employ the Respondent to acquire it. The Respondent seeks a finding of Reverse Domain Name Hijacking.
C. Procedural Order No. 2 – Complainant’s response
The Respondent’s Response to the Complaint had annexed to it email correspondence between the Respondent and an agent of the Complainant (see Section 4 above) supporting the Respondent’s case as set out in B above. Procedural Order No. 2 invited the Complainant either to admit that the Domain Name was acquired by the Respondent with the consent of the Complainant or, failing that, to explain the email correspondence annexed to the Response. The Complainant declined to admit that the Domain Name was acquired by the Respondent with its consent, stating that it was completely unaware of the correspondence annexed to the Response. It acknowledged that Ortus Sport had been appointed agent for the Complainant in certain matters, but not in relation to acquisition of the Domain Name.
D. Respondent’s unsolicited filing No. 1 dated March 12, 2018
This filing crossed with Procedural Order No. 3 (below). While dated March 12, 2018, it was in fact received by the Center on March 10, 2018 and had been copied to the Complainant. It was received by the Panel on March 12, 2018. This unsolicited filing takes issue with the Complainant’s position as stated in the Complainant’s response to Procedural Order No. 2 but adds nothing to what was plain on the face of the documents in the case. The Panel ignores it.
E. Respondent’s unsolicited filing No. 2 dated March 12, 2018
This unsolicited filing was received by the Center on March 12, 2018 and prior to the issue of Procedural Order No. 3, but the Panel did not receive it until after Procedural Order No. 3 had been issued. Annexed to this filing was an email dated September 21, 2017 purporting to come from the Complainant and leading to the email of the same date referred to in the penultimate paragraph of Section 4 above. In other words the email purports to verify the Respondent’s contention that the Complainant was in fact aware of the Respondent’s work on behalf of the Complaint in acquiring the Domain Name and was prepared to settle the Respondent’s invoice. The Complainant had been copied in on this filing on March 12, 2018, but made no reference to it in its response to Procedural Order No. 3.
This filing differs from its predecessor in that it introduces new evidence highly pertinent to an important issue, namely whether or not the Complainant was aware of the correspondence between the Respondent and Ortus Sport in September/October 2017 and the nature of the Complainant’s reaction to that correspondence. The new evidence (attachment 10.1) was not in the possession of the Respondent and in the view of the Panel it was not necessary for the Respondent to seek it out until it became apparent from the Complainant’s response to Procedural Order No. 2 that the Complainant was denying all knowledge of that correspondence. The Panel admits this unsolicited filing into the case.
F. Procedural Order No. 3 [it should be noted that when the Panel issued this Procedural Order, the Panel was unaware of the Respondent’s unsolicited filing referred to at E above]
Noting gaps in the parties’ evidence, the Panel issued Procedural Order No. 3 in which the Panel set out the history of the Domain Name as understood by the Panel. The Panel observed that either the Respondent had been acting in good faith believing that it was acting on behalf of the Complainant on the instructions of the Complainant’s agent or that the Respondent was part of a conspiracy with the original registrant of the Domain Name and Ortus Sport to extort money for the Domain Name from the Complainant. The Panel sought submissions from the parties on the Panel’s observations as set out in Procedural Order No. 3. Among other things the Panel sought information from the Respondent as to the instructions it received from Ortus Sport and information concerning its acquisition of the Domain Name.
The Complainant responded in timely fashion on March 15, 2018 maintaining its claim that the Domain Name was originally registered in bad faith by the original registrant and contending that the taint cannot be cured by transfer to a third party. The Complainant expressly denied that Ortus Sport instructed the Respondent to acquire the Domain Name. In paragraph 4.1 it states that the email correspondence produced by the Respondent “merely proves that the Respondent acquired the disputed domain name and then sought to obtain some sort of financial compensation from Ortus. That is tantamount to extortion.”
The Respondent’s response to Procedural Order No. 3 (dated March 17, 2018, but received by the Center after hours on March 16, 2018 and again on March 19, 2018) contends that the Respondent acquired the Domain Name from the original registrant, a cybersquatter, on the instructions of Ortus Sport acting on behalf of the Complainant. The Respondent produces evidence to show that it used a specialist domain broking agency to conduct the negotiations. It acquired the Domain Name on or about June 7, 2017. It refers to the email exchange at attachment 10.1 to its unsolicited filing (see E above), which it argues confirms that the Respondent’s acquisition of the Domain Name was with the knowledge and consent of the Complainant and not in bad faith. The Respondent draws attention to the seniority of the Complainant’s officials involved in the email exchange on September 21, 2017. It observes that despite having knowledge of the Respondent’s arguments and evidence as set out in the Response and in the Respondent’s unsolicited filing No. 2, the Complainant makes no reference to it in its response to Procedural Order No. 3.
The time given to the parties to respond to Procedural Order No. 3 expired at 4 pm Geneva time on Thursday March 15, 2018. It also gave the parties until 4 pm Geneva time on Monday March 19, 2018 to respond to any responses to that Procedural Order. The Respondent’s response to Procedural Order No. 3 was out of time by just over a day, it being first received after hours on March 16, 2018, albeit dated March 17, 2018. It was drafted with knowledge of the Complainant’s response to that same Order and to the extent that it might be said to have been in response to the Complainant’s submission it was within time. Either way the Panel is satisfied that it contains important factual verification, filling in some of the evidentiary gaps and is helpful to the Panel in coming to a fair decision. The Panel accepts it into the case.
G. Procedural Order No. 4
On March 20, 2018 the Panel issued Procedural Order No. 4 seeking from the Complainant clarification as to the nature of its case against the Respondent and giving it an opportunity to amend its responses to Procedural Orders Nos. 2 and 3, should it feel it appropriate to do so. The date for this decision was extended to March 28, 2018.
In this document the Complainant takes the Panel to task for taking note of unsolicited filings and for admitting into the proceedings documents filed by the Respondent out of time arguing inter alia that the Panel has not approached the matter with the requisite fairness. These issues are dealt with in detail in 6B below.
Nonetheless, without prejudice to the Complainant’s contentions that it should not be required to deal with the questions set out in Procedural Order No. 4, it goes on to deal with the questions set out in Procedural Order No. 4. First it confirms that it has no reason to believe that the email exchange between Ortus Sport and the Complainant on September 21, 2017 and set out in Section 4 above is anything other than it purports to be. Secondly, it amends aspects of its responses to Procedural Orders Nos. 2 and 3. Thirdly, it accepts that the Domain Name was acquired by the Respondent at the request of Ortus Sport. It denies that Ortus Sport was acting on the instructions of the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Procedural Issues
General Powers of the Panel
These are dealt with in Paragraph 10 of the Rules. The first four sub-paragraphs of Rule 10 are relevant to the Complainant’s objections to the procedure adopted by the Panel in handling this case. Those sub-paragraphs read:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
Identity of the Respondent.
As indicated in Section 3 above the Response was filed in the name of TMT and not the name of the Respondent. The Respondent asserts that the Respondent was (but is no longer) an employee of TMT. The Respondent’s contact details on the Registrar’s WhoIs database are the same as that given for TMT and the Complainant has accepted that TMT is an appropriate respondent as can be seen from the heading to its response to Procedural Order No. 3, for example. It is probable that the named Respondent acquired the Domain Name in his capacity as an employee of the Respondent. The Panel treats the Respondent and TMT as one.
The Complainant objects to the Panel’s acceptance of the Respondent’s unsolicited filing leading to Procedural Order No. 4. The Complainant correctly draws attention to the fact that the Policy and the Rules make no provision for unsolicited filings. The Complainant incorrectly contends that the Panel has no discretion to consider unsolicited filings. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), in merely asking the question: “In what circumstances would a panel accept a party’s unsolicited supplemental filing?” recognizes the existence of a discretion to accept them. Paragraph 12 of the Rules makes it clear that it is for the Panel to request, in its sole discretion, any further statements or documents from the parties that it deems necessary. That discretion extends to accepting into the proceedings unsolicited supplemental filings, which the Panel deems necessary to arriving at a fair and just result.
Section 4.6 of the WIPO Overview 3.0 includes the following passage:
“Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.
On receipt of a request to submit an unsolicited supplemental filing or the actual receipt of such filing, the WIPO Center will confirm receipt of the request or filing to the parties, and forward such request or filing to the panel for its consideration as to admissibility.
In all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some ‘exceptional’ circumstance).
Depending on the content of any admitted supplemental filing, the panel may issue further instructions to the parties, including a rebuttal/reply opportunity to the non-initiating party.”
In the case of the second of the Respondent’s unsolicited supplemental filings, the relevance of its attachment 10.1 was obvious and the filing demonstrates by way of other attachments that attachment 10.1, which was not in the possession of the Respondent, was sought by the Respondent as soon as the Complainant had made clear in its response to Procedural Order No. 2 that the Complainant knew nothing of the correspondence of which it formed part. The Panel had no hesitation in exercising its discretion to allow it into the case file. In Procedural Order No. 4 the Panel gave the Complainant the opportunity to amend its responses to Procedural Orders Nos. 2 and 3, thereby giving the Complainant a fair opportunity of rectifying its previous responses in light of the Respondent’s further filing.
The Complainant objects to the decision of the Panel to consider the Respondent’s response to Procedural Order No. 3 on the basis that it was received by the Center out of time. The Panel is not certain as to precisely how far out of time it was, but it was probably somewhere between 24 and 32 hours out of time. That the Panel has the discretion to extend time limits is evident from the terms of paragraph 10(c) of the Rules, albeit in exceptional circumstances. As will be seen below, the circumstances surrounding the filings in the case are exceptional and in no small part due to the terms of the Complaint and the Complainant’s responses to Procedural Orders Nos. 2, 3, and 4.
The position taken by the Complainant in this case has given the Panel difficulties. In an endeavor to encourage the Complainant to check some of its assertions, the Panel issued Procedural Orders Nos. 2 and 4 directed solely at the Complainant. The aim was to enable the Complainant to clarify its case for the benefit of the Panel. Procedural Order No. 3 had questions for both parties. Procedural Order No. 4 expressly invited the Complainant to re-visit some of its earlier responses. At no stage has the Respondent been given any advantage over the Complainant. The Complainant has been given every opportunity of presenting its case fairly.
C. Identical or Confusingly Similar
The Complainant has no registered trade mark rights in respect of T20 GLOBAL and T20 GLOBAL LEAGUE, but claims unregistered trade mark rights in those terms acquired as a result of significant use since February 4, 2017, promoting and setting up its planned T20 tournament.
While those terms are somewhat descriptive, they appear on the evidence before the Panel to have been used to a significant extent in the course of trade to refer exclusively to the Complainant’s planned tournament.
The Panel accepts that the Complainant is more likely than not to have acquired unregistered or common law trade mark rights in respect of those terms, although, given their descriptiveness, the rights are likely to be narrow in scope. Nonetheless the Panel is satisfied for the purposes of paragraph 4(a)(i) of the Policy that the Complainant has trade mark rights in respect of T20 GLOBAL and T20 GLOBAL LEAGUE.
The Domain Name comprises or includes those trade marks in their entirety. The Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights.
D. Rights or Legitimate Interests and E. Registered and Used in Bad Faith
The Panel deems it sensible to take these two elements of the Policy together. Everything turns on the circumstances under which the Respondent acquired the Domain Name. Was it acting in bad faith in negotiating for and acquiring the Domain Name?
The Respondent contends that it acquired the Domain Name on the instructions of an agent for the Complainant and in the belief that it was acquiring the Domain Name for the Complainant. The Respondent’s invoice to the Complainant (sent to the Complainant’s agent) is for a substantial sum of money and is said to cover “Cost of advisory, negotiation and acquisition of Domain Name t20globalleague.com on behalf of Cricket South Africa” and agency fees.
The Respondent contends that it had no reason to believe that it was acting otherwise than in the interests of the Complainant, that manifestly the Respondent was acting in good faith throughout and that therefore the Complaint must fail.
The Complaint proceeds on the basis that there is no connection direct or indirect between the parties. In its response to Procedural Order No. 2 it contends (paragraph 6.1) that it was wholly unaware of the activities of Ortus Sport in relation to the Domain Name. While Ortus Sport had acted as agent for the Complainant in respect of other matters, it was not authorized in respect of the Domain Name. In its response to Procedural Order No. 3 the Complainant goes further expressly stating at paragraph 4.1: “We reiterate our position that Ortus [sic] did not instruct and/or engage the Respondent to acquire the disputed domain name.” In other words, not only did the Complainant not instruct Ortus, but also Ortus did not instruct the Respondent. The Complainant also contends in its response to Procedural Order No. 3 that once a domain name has been registered in bad faith, that bad faith cannot be cured by a transfer to a third party.
Ultimately, and for the first time, in its response to Procedural Order No. 4 it seeks deletion of paragraph 4.1 of its response to Procedural Order No. 3 quoted in the preceding paragraph and accepts that the Domain Name was acquired by the Respondent at the request of Ortus Sport.
The Respondent contends that it was instructed by Ortus Sport to obtain the Domain Name for the Complainant. Is there any reason to doubt that Ortus Sport was acting in good faith when giving the Respondent instructions to acquire the Domain Name? The Complainant does not offer any reason. It simply says that while Ortus Sport was an agent for the Complainant in certain matters, it was not authorized by the Complainant in respect of the Domain Name.
Assuming for the moment that that is a fair assessment, does that mean that the Respondent is to be saddled with the unauthorized behaviour of Ortus Sport? Should the Respondent have been aware of Ortus Sport’s lack of authority?
The Complainant has not provided the Panel with any information as to the scope of Ortus Sport’s agency, save to say that it “was appointed by the Complainant to provide certain services to it in relation to the cricket league launched by the Complainant and to which the disputed domain name relates”, but that those services did not cover acquisition of the Domain Name. Significantly, the Complainant has not come forward with any reason as to why the Respondent should have been aware that Ortus Sport was acting beyond its authority.
On that basis and on the evidence before the Panel, the Panel concludes on the balance of probabilities that the Respondent accepted Ortus Sport’s instructions in good faith believing them to be an agent acting on behalf of the Complainant and acquired the Domain Name acting in good faith in accordance with those instructions.
The Complainant’s fallback position as set out in its response to Procedural Order No. 2 is that as the Domain Name was first registered by a cybersquatter – a matter that is not in doubt, it having been registered by a stranger only one day after the Complainant had announced its new tournament – it was a bad faith registration from the start, a taint which cannot be cured by transfer to a third party. Much depends upon the circumstances. Ordinarily, that may often be the case, but the transferee has to be aware of the taint and will usually have a bad faith intent in relation to the Domain Name. In this case, as the Panel has found on the evidence before it, the transferee, while aware of the taint (the Respondent has acknowledged that the vendor was a cybersquatter), believed that it was acquiring the Domain Name for the benefit of the Complainant and had no reason to believe that there might be anything defective in Ortus Sport’s authority to give the Respondent the instructions that it did.
The fact that the Domain Name is still in the hands of the Respondent is simply because the Complainant has declined to pay the Respondent’s invoice, having in September 2017 indicated to Ortus Sport that it was willing to pay it.
The Panel finds that the Respondent has been acting in good faith throughout and that any contention that the Domain Name was acquired by the Respondent and is being used in bad faith must fail.
E. Reverse Domain Name Hijacking (“RDNH”)
RDNH, which is defined at A above, arises where a panel comes to the conclusion on the papers before it that a complainant has been “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Section 4.16 of WIPO Overview 3.0 addresses the question: “In what circumstances will panels issue a finding of Reverse Domain Name Hijacking?” The answer includes the following passage:
“Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trade mark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trade mark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.
Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.”
The chronology of this case throws up some puzzling features. The Domain Name was registered on February 5, 2017 by a cybersquatter. The Complainant first became aware of this in the course of May 2017 and instructed its representative to write to the cybersquatter seeking inter alia transfer of the Domain Name. That letter was dated June 9, 2017 and the cybersquatter replied on June 16, 2017 stating that he no longer owned the Domain Name. It was found to have been transferred into the name of a privacy service. If the Complaint is to be believed, nothing further was then done about it until the Complaint in this proceeding was filed on January 21, 2018.
However, it now transpires from the evidence of the Respondent (verified by a well-known domain name broking service used by the Respondent) that the Respondent acquired the Domain Name on June 7, 2017 from the cybersquatter. Accordingly, when the Complainant’s representative wrote to the cybersquatter on June 9, 2017 the Domain Name was already in the hands of the Respondent. Moreover, the Respondent had acquired the Domain Name acting on the instructions of Ortus Sport, an agent of the Complainant, albeit one whose agency according to the Complainant did not embrace acquisition of the Domain Name.
The Complaint contains no reference to the correspondence passing between Ortus Sport and the Respondent, which is referred to in Section 4 above. Indeed, in response to Procedural Order No. 2 the Complainant stated: “The reason why the email correspondence in question was not mentioned in the Compliant [sic] is because the Complainant was not aware of the email correspondence.”
That statement was an odd one to make given that the correspondence appeared to indicate that Ortus Sport had been in touch with the Complainant on the subject of the Respondent’s invoice for the acquisition of the Domain Name. It galvanized the Respondent into action.
The Respondent contacted Ortus Sport on March 11, 2018 seeking verification of Ortus Sport’s authority to act on behalf of the Complainant in connection with the Domain Name. On the same day Ortus Sport sent to the Respondent the exchange of emails between Ortus Sport and the Complainant dated September 21, 2017. In this exchange Ortus Sport sent to the Complainant (addressed to both the CEO of the Complainant and a gentleman who describes himself on LinkedIn as “Head of Finance & Corporate Strategy at T20 Global League – a subsidiary of Cricket SA” the Respondent’s invoice for services rendered in relation to the Domain Name. The Complainant’s reply is interesting.
How would the Complainant have responded if Ortus Sport had been acting beyond the scope of its authority? Surely, it would have objected to the invoice, which was for SGD 32,665.00, and refused to pay it. But the reply simply said: “Please ask TMT to send us a Bank Letter confirming their Banking Details so we can make the payment.” Moreover the response, copied to the Complainant’s CEO, came from a senior member of the Complainant’s financial team concerned with the Complainant’s T20 Global League tournament. This was not a reply from a junior member of staff unaware of what was going on. While the invoice has never been paid, it was for a very different reason (see the final paragraph of Section 4).
This exchange satisfies the Panel that even if the instructions to the Respondent had been initiated by Ortus Sport and not the Complainant, the Complainant in the person of the Head of Finance & Corporate Strategy at T20 Global League – a subsidiary of Cricket SA – was content that Ortus Sport had been acting within the scope of its authority in instructing the Respondent to acquire the Domain Name.
The Complaint, featuring the requisite certificate to the effect that “the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate” fails to mention this correspondence. Why? Because the Complainant said that it was unaware of it at the time the Complaint was filed? This was untrue.
The Response is filed on March 5, 2017 and has attached to it an annex featuring the email correspondence between Ortus Sport and the Respondent and indicating that back in September 2017 Ortus Sport had been in contact with the Complainant over the Respondent’s acquisition of the Domain Name. The Response seeks a finding of RDNH based largely on the failure of the Complainant to mention that correspondence in the Complaint.
One might have expected the Complainant to seek to file a supplemental submission dealing with that correspondence; maybe at the very least seeking an extension of time enabling it to investigate the background to that correspondence, which on its face threatened to undermine the validity of the Complainant’s allegations of bad faith registration and use. But the Complainant does nothing. The Panel issued Procedural Order No. 2 inviting the Complainant either to admit that the Domain Name was acquired by the Respondent with the knowledge and consent of the Complainant or to explain that correspondence. The Complainant responded by denying that the Domain Name was acquired with its knowledge and consent and denying all knowledge of the correspondence. A proper internal investigation should have unearthed the correspondence and its background.
The Respondent then obtains from Ortus Sport its September 21, 2017 email exchange with the Complainant and submits it to the Center on March 12, 2018 by way of its second unsolicited supplemental filing. This must have alerted the Complainant to a fundamental flaw in (a) its certification at the end of the Complaint that to the best of Complainant’s knowledge the information contained in the Complaint was complete and accurate and (b) its responses to Procedural Orders Nos. 2 and 3. What was the Complainant’s reaction? Was it to do its best to rectify what appeared to be a series of serious errors, which could have led to an unjust result in this proceeding and apologise? No, in response to Procedural Order 4, while acknowledging that some of its allegations had been misplaced, it spent the first 4 pages objecting to the Panel’s acceptance of both the unsolicited filing that verified the Complainant’s knowledge of the correspondence and the verificatory response of the Respondent to Procedural Order No. 3, which was submitted out of time.
The Panel notes the Complainant’s performance in this proceeding and the fact that it was the Respondent’s second unsolicited supplemental filing verified and amplified by its out of time response to Procedural Order No. 3, which produced evidence of the circumstances of the Respondent’s acquisition of the Domain Name
In conducting proceedings of this nature there is a balance to be drawn between, on the one hand, sticking strictly to the normal and timely procedure and, on the other, allowing a flexibility to enable the Panel to be as certain as it can be that it has enough information to come to a fair result. Happily, as set out in B above, the Policy allows for that flexibility. However, it is also true that flexibility in favour of one party has to be used carefully to ensure that the other party is not unfairly disadvantaged.
The Panel observes that if the Panel had not allowed any flexibility, the Response would have been ruled out of time, the Respondent’s second unsolicited filing would have been ignored as would the Respondent’s response to Procedural Order No. 3. The Complaint would probably have succeeded on the basis of Respondent default. In the view of the Panel that would have been an unjust result.
The Respondent sought a finding of RDNH in the Response based upon the Complainant’s failure to disclose in the Complaint the September/October correspondence set out in Section 4 above. The Complaint failed to mention that correspondence because the person responsible for drafting the Complaint was unaware of it. Is that good reason for declining to make a finding of RDNH? The Panel does not believe so. Abusive complainants could simply tailor their instructions to their representatives, omitting inconvenient facts. The Panel believes that it is entitled to assume that before signing the certificate at the end of the Complaint and filing it with the Center, the Complainant’s representative sent the Complaint in draft to the Complainant and obtained the Complainant’s approval to its content, thereby assuming responsibility for its accuracy.
In the view of the Panel the Complaint was materially incomplete and thus materially inaccurate and, as indicated, could have led to an unjust result. On that basis alone the Panel would have made a finding of RDNH.
However, the subsequent behavior of the Complainant made matters worse. It persistently failed to investigate the situation properly once the existence of the correspondence was disclosed in the Response. Moreover, when the Respondent was finally able to produce the Complainant’s email to Ortus Sport of September 21, 2017, demonstrating beyond doubt that at that date (nearly four months prior to the filing of the Complaint) the Complainant was indeed aware of that correspondence, the Complainant’s response (in the form of the Complainant’s response to Procedural Order No. 4) was to seek to keep it from the Panel, arguing on a formal technicality that the Panel should not look at it.
At no stage in the course of this proceeding has the Complainant offered any indication of remorse for its lamentable conduct.
The Panel declares that the Complainant has used the Policy in bad faith to attempt to deprive the Respondent of the Domain Name and is guilty of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: March 27, 2018