WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Echobox Audio, LLC v. Nanci Nette
Case No. D2019-0751
1. The Parties
The Complainant is Echobox Audio, LLC of Spokane, Washington, United States of America (“United States”), represented by Thomas P. Howard LLC, United States.
The Respondent is Nanci Nette of Los Angeles, California, United States.
2. The Domain Name and Registrar
The disputed domain name <echoboxaudio.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 April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 2019, 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 Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 30, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a limited liability company organized under the laws of the State of Washington, with a principal place of business in Spokane, Washington, United States. According to the online database operated by the Washington Secretary of State, the Complainant was formed and registered on October 28, 2014, and its individual governor is Shihua Fu. The Complaint identifies Mr. Fu as the owner of the Complainant.
According to the Complaint, Mr. Fu registered the Domain Name in December 2013 to use in promoting the Echobox Audio line of audio devices and accessories (prominently including earphones for use with mobile devices and gaming consoles), which he originally created. Screenshots from the Internet Archive’s Wayback Machine dating from 2015 through 2018 are attached to the Complaint, showing that the Domain Name was used for this purpose and as the commercial website for Echobox Audio, LLC (“Echobox”) after the company was formed in 2014.
The Complaint attaches screenshots of the Registrar’s WhoIs records dated at various times from December 2013 through September 9, 2018, using DomainTools. These show that the Domain Name registration throughout those years listed “Fu Shihua” as the registrant or registrant “organization”, first showing an address in Guandong Province, China and then in Washington State, United States. The Complaint explains that the vice-president of Echobox, a Mr. McKinney, was the administrative contact for the Domain Name in September 2018 when he left the company, locked access to the account registration, and then allowed the Domain Name to expire in December after transferring the registration to himself through a domain proxy service. The Registrar refused to allow the Complainant to regain control of the Domain Name, and the Complaint includes evidence that the Registrar subsequently sold the expired Domain Name at auction to the Respondent on February 4, 2019. Deprived of the Domain Name since late 2018, the Complainant now operates its website at <echoboxaudio.co>.
The Complainant holds three United States trademark registrations for ECHOBOX: United States Registration Numbers 5341600 (word and design, registered on November 21, 2017), 5546240 (word and design, registered on August 21, 2018), and 5561334 (standard character mark, registered on September 11, 2018). The Declaration of Mr. Fu attached to the Complaint states that the Complainant has, over the past five years, spent hundreds of thousands of dollars on advertising and marketing to increase traffic to the website associated with the Domain Name, which incorporates its trademark. The Complaint also observes that Internet search engine and YouTube search results list the Complainant’s website or social media sites among the top five search results for “echobox” and “echobox audio”.
The Registrar confirms that the Domain Name was initially created on December 31, 2013 and is currently registered in the name of the Respondent, an individual listing no organization and giving a postal address in Los Angeles, California, United States and an email address with the domain name “namemanagementgroup.com”. That domain name does not lead to information about the Respondent, as it resolves only to a parking page hosted by the Registrar with pay-per-click (“PPC”) third-party advertising links. Similarly, as shown by screenshots attached to the Complaint, the Domain Name has been used for an advertising portal with “Sponsored Listings”, pay per click (“PPC”) links to advertisers including those that compete with the Complainant in selling audio products such as speakers.
At the time of this Decision, the Domain Name redirects users sequentially to a similar PPC landing page or to one of several third-party websites. Some of these invite the user to download software or produce error messages or “immediate action required” security warnings that appear to be fraudulent and trigger alerts from Internet security software.
The Respondent Ms. Nette (assuming that is the real name of the registrant) appears to be a “domainer” in the business of speculating in the purchase and sale of domain names (see the Urban Dictionary entry on “domainer” and the Wikipedia article on “Domain Name Speculation”). The Complaint attaches DomainTools and ReverseWhoIs results indicating that the Respondent has owned thousands of domain names. A search engine query shows that some of these are so-called “generic” domain names with obvious potential commercial value, such as <partyserver.us> and <boobshare.com>, while others seem to be random domain names acquired on expiration, sometimes generating online pleas from small businesses or nonprofits complaining that their websites suddenly disappeared when the Respondent “scooped up” their domain names. The WhoIs records for some of these domain names list only Nanci Nette as the registrant, with no organization, while others, such as the WhoIs record for <yespornplease.us>, list Nanci Nette as the registrant and “Name Management Group” as the organization. However, according to the online database operated by the California Secretary of State, no entity by that name is listed as a company or partnership licensed to do business in California.
The Respondent also appears as the respondent in numerous domain name dispute proceedings, most of them concluding that the Respondent targeted a trademark in bad faith. These other proceedings include: Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nanci Nette, Name Management Group, WIPO Case No. D2018-2573 (<chitchatroulette.com>; no response; domain name transferred); Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / Nanci Nette, Name Management Group, WIPO Case No. D2018-2508 (<chatroulette-tokens.com>; no response; domain name transferred); Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette, WIPO Case No. D2018-1453 (<wikiepedia.com>; no response; domain name transferred); Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, WIPO Case No. D2018-0717 (<fwikipedia.org>; no response; domain name transferred); Getty Images (US), Inc., iStockphoto L.P. v. Nanci Nette, Name Management Group, WIPO Case No. D2017-1645 (<candidate-gettyimages.com>, <istockphp.com> and <istockup.com>; no response; domain names transferred); Veolia Environnement SA v. Nanci Nette, Name Management Group, WIPO Case No. D2017-1511 (<veoliaes.net>; no response, domain name transferred); Kait Robinson v. Nanci Nette, Name Management Group / Domains by Proxy, LLC, WIPO Case No. D2015-1562 (<kaitrobinson.com>; no response; complaint denied for failure to establish common law rights in a personal name); Licensing IP International S.A.R.L. v. Nanci Nette, WIPO Case No. DTV2017-0003 (<redtubehd.tv>; no response; domain name transferred); and OkCupid, operated by Humor Rainbow, Inc. v. Nanci Nette, Name Management Group, WIPO Case No. DCO2017-0008 (<okcupid.co>; no response; domain name transferred).
The Complaint attaches screen shots of the landing pages associated with a number of the domain names held by the Respondent, showing that, like the Domain Name, they are undeveloped, offered for sale, or used for PPC advertising links.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its registered ECHOBOX trademark, for which the Respondent lacks permission or other rights or legitimate interests.
The Complainant argues that the Respondent is a professional domainer who registers domain names in volume and should be held accountable for making a reasonable effort to ascertain whether they infringe on the rights of others. The Complainant contends that it was “willful blindness” not to make such an effort in early 2019, when it acquired the Domain Name. A search engine query would have quickly revealed the Complainant’s dominant online presence, and a visit to the website of the United States Patent and Trademark Office (“USPTO”) would have disclosed the trademark registrations. The Complainant infers that the Respondent was (or should have been) aware of the Complainant and acquired the Domain Name to sell it to the Complainant for an extortionate price, to prevent the Complainant from registering a domain name corresponding to its trademark, or to mislead Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant indisputably holds registered trademarks for the standard-character mark ECHOBOX and for design marks in which the coined word ECHOBOX is prominent. The Domain Name incorporates this string in its entirety and adds the word “audio”, which also appears in the Complainant’s name and product descriptions and, therefore, does not avoid confusion. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
The Panel finds that the Domain Name <echoboxaudio.com> is confusingly similar to the Complainant’s ECHOBOX trademark and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, a lack of permissive use, and the failure to use the Domain Name for an active, relevant website. This shifts the burden to the Respondent. The Respondent has not come forward to assert any rights or legitimate interests, and none are apparent from the use of the Domain Name to date for PPC advertising (some of it competing with the Complainant) and for redirection to a variety of poorly identified and possibly fraudulent sites.
The Panel concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or […]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Given the evidence in the record, the Panel finds that the relevant time for ascertaining bad faith in the registration of the Domain Name is February 2019, when the Respondent acquired the Domain Name at auction. By that time, the record and the Complainant’s website show that the Complainant’s ECHOBOX trademark was registered and the brand was established in the United States, where the Respondent is located, in a niche market for premium earphones and related equipment. The mark has relatively high visibility online and in social media.
As detailed above, the Respondent is evidently a domainer who purchases domain names in volume, makes some money from parking them for PPC advertising revenue (and perhaps from redirects to third-party sites, given the current use of the Domain Name), and resells domain names at a profit when possible. This can be a legitimate business model with “generic” domain names, but it is a practice that risks infringing on trademark rights, especially when the domain names are not merely dictionary words or generic phrases and when, as in this case, they are expiring domain names that have most recently been used for commercial websites. It is highly likely that some of those recent domain name owners have corresponding registered or common law trademarks.
While the Policy does not demand that every domain name registrant conduct an exhaustive trademark search, in circumstances such as these (mass registrations of expiring domain names, including those that are not common words or generic phrases) it is reasonable to expect a registrant to show a degree of consideration for the rights of others by making a simple online search. Neglecting to do so in these circumstances can be considered bad faith within the meaning of the Policy. See Grundfos A/S v. Texas International Property Associates (“Grundfos”), WIPO Case No. D2007-1448 (<groundfos.com>): “Either [the Respondent] was aware of the Complainant and its mark (in which case this is a blatant case of ‘typosquatting’), or it has been willfully blind in registering an uncommon Domain Name without even a cursory check of Internet search engines or the relevant trade mark register.”
The panel in Mobile Communication Service Inc. v. WebReg, RN (“Mobile Communication”), WIPO Case No. D2005-1304 (<mobilecom.com>), analyzed bad faith given similar facts as follows:
“[I]t appears that Respondent’s business practice includes the registration of domain names containing fanciful trademarks (e.g., SINTEF), trademarks created by the joinder of common or dictionary words (e.g., THE TEXAS LOTTERY), and or that have expired … followed by efforts to resell those names. Although this Panel has held … that it is not bad faith to resell domain names that incorporate common dictionary terms if the respondent was unaware of complainant’s trademark rights at the time of registration, … respondents cannot rely on this precedent to shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks. In other words, where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.
On the record of this case, the Panel believes it a fair inference that Respondent’s conduct falls into the latter category. Respondent has been a respondent in a number of UDRP proceedings; in the majority of those cases, the domain names have been transferred. Moreover, the Domain Name in this case, MOBILCOM, is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark. The Panel thus concludes that Respondent has registered this Domain Name to prevent Complainant from reflecting its mark in the corresponding .com Domain Name, and that Respondent is engaged in a pattern of such conduct.”
The Complainant cites both Grundfos and Mobile Communication. The Complainant’s case for bad faith comes down to this contention, in paragraph 56 of the Complaint:
“Prior to registering the <echoboxaudio.com> domain name, Respondent researched the domain name or should have. She likely searched Google for variations on the Domain Name and also searched the U.S.P.T.O. for recent applications for identical or similar trademarks or should have.”
The Respondent would certainly have found the Complainant’s website, at the old or new address, and its social media sites with a simple search. The Complainant’s trademark registrations might not have been obvious without also visiting the USPTO website, because even at the time of this Decision the Complainant does not display the “circle R” trademark registration symbol by the ECHOBOX marks on its website or Facebook page, nor does it post a trademark statement or policy. Nevertheless, the string that comprises the Domain Name is exactly the Complainant’s company name, including the trademark in its entirety, which is a coined term formed by combining words. This should have suggested to an experienced domainer the strong possibility that the name was reflected in a registered or common law mark, warranting a visit to Google or even the USPTO website, as the name refers to a United States company. Going forward with the acquisition of the Domain Name at auction shows a disregard for the rights of the Complainant, the company with the corresponding name and trademark.
The Respondent may well have considered that the Complainant would be the likeliest ultimate purchaser of the Domain Name, although the Complainant does not report that the Respondent has offered to sell the Domain Name to date. There is also no evidence that the Respondent itself is a competitor of the Complainant, although the Respondent has allowed the Domain Name to be used for PPC links to competitors, which must be considered a bad faith use under the Policy. In any event, the Respondent’s use of the Domain Name for PPC advertising and redirects to commercial third-party sites fits the example of the Policy, paragraph 4(b)(iv), in misdirecting Internet users for commercial gain. Moreover, the examples in paragraph 4(b) are not exhaustive, and the Panel also finds bad faith in the practice of registering non-generic, expiring domain names that could easily be revealed to implicate trademark rights, and then using them for commercial or fraudulent links and redirects, or effectively holding them for ransom by the trademark owners. This appears to be a pattern for the Respondent, and it is consistent with the record in this instance.
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith, in both the registration and the use of the Domain Name.
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 <echoboxaudio.com> be transferred to the Complainant.
W. Scott Blackmer
Date: May 13, 2019