WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Judicial Watch, Inc. v. Whois Privacy, Privacy by Design, LLC / Earl Cassorla
Case No. D2019-1463
1. The Parties
Complainant is Judicial Watch, Inc., United States of America (“United States”), represented by Driscoll & Seltzer, PLLC, United States.
Respondent is Whois Privacy, Privacy by Design, LLC, United States / Earl Cassorla, United States.
2. The Domain Name and Registrar
The disputed domain name <judicial.watch> (the “Domain Name”) is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 2019, 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 Complainant on June 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 28, 2019.
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 Respondent of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 25, 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
Complainant is a public interest law firm in the United States. Since 1994, Complainant has been using the trademark JUDICIAL WATCH to identify and distinguish its services, which include “[p]romoting public awareness of the need for integrity in government and the protection of the public trust against government and judicial abuse” and providing legal services such as “the initiation and prosecution of litigation on behalf of individuals and the public-at-large in order to expose corruption at all levels of government.” Complainant holds several registrations comprised of or including JUDICIAL WATCH, including United States Patent and Trademark Reg. No. 2,819,145 for JUDICIAL WATCH (registered March 2, 2004; first use in commerce August 4, 1994).
Complainant’s main website is located at “www.judicialwatch.org”. The site provides information regarding Complainant’s advocacy and litigation activities. The site also invites visitors to shop for merchandise and to donate to Complainant to support its activities.
The Domain Name was registered on July 20, 2014. The Domain Name resolves to a website identical to Complainant’s site.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent has not replied to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark JUDICIAL WATCH through registration and use demonstrated in the record. The Panel concludes further that the Domain Name is identical to the JUDICIAL WATCH mark. It is well established that, under the Policy, the generic Top-Level Domain (“gTLD”) typically is not considered when determining the “identity or confusing similarity” element. This general rule, however, has admitted more exceptions in recent years, due chiefly to the advent of numerous new gTLDs, including, as is relevant here, the “.watch” gTLD. In some instances, the trademark in question may be said to “straddle” the “dot” in the domain name, thus making the gTLD relevant to the “identity or confusing similarity” analysis. In a seminal case on this point, a prior panel held that the domain name <tes.co> was confusingly similar to the mark TESCO. See Tesco Stores Limited v. Mat Feakins, WIPO Case No. DCO2013-0017 (panel is not barred from considering the gTLD in circumstances where the subject trademark would be identical to the domain name but for the “dot”).
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain his bona fides with respect to the Domain Name.
The Domain Name resolves to a website that mimics Complainant’s site. According to Complainant, Respondent is deceiving consumers who are looking for Complainant’s genuine website, and Respondent is “able to alter and manipulate content presented to consumers” and “able to collect information from Complainant’s consumers [via] the fraudulent website” accessible via the Domain Name. Respondent does not dispute any of this. The Panel cannot perceive any legitimate basis for Respondent’s use of the Domain Name in this manner.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Respondent obviously had Complainant’s JUDICIAL WATCH mark in mind when registering the Domain Name, given the fact that Respondent’s website is a mirror image of Complainant’s site. On the undisputed record here, the Panel also concludes that it is more likely than not that Respondent has used the Domain Name in bad faith through the deceptive website. It is not apparent from the record that Respondent has actually profited commercially from his faux website, but, given the deception already apparent, there is no reason for Complainant to have to wait for this to occur before taking action. As things currently stand, Complainant is at the mercy of Respondent, whose possible forbearance from economic mischief could at any moment cease. Moreover, the Panel also finds that Respondent’s use of the Domain Name disrupts the Complainant’s business.
The Panel concludes on this record that Respondent has registered and used the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <judicial.watch> be transferred to Complainant.
Robert A. Badgley
Date: July 30, 2019