WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nishimura & Asahi v. Super Privacy Service LTD c/o Dynadot
Case No. D2019-2070
1. The Parties
1.1 The Complainant is Nishimura & Asahi, Japan, represented by Mason Hayes & Curran, Ireland.
1.2 The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”).
2. The Domain Name and Registrar
2.1 The disputed domain name <nishimuraasahi.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2019.
3.2 On August 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. As part of this request the Center asked the Registrar to provide, inter alia, the following:
“(4) … the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), email address(es)) in your WHOIS database for the domain name Registrant, technical contact, administrative contact and billing contact, for the [Domain Name]”
3.3 On August 25, 2019, the Registrar transmitted by email to the Center its verification response. That response provided the following details for the registrant of the Domain Name:
Registrant Name: Super Privacy Service LTD c/o Dynadot
Registrant Street: PO Box 701
Registrant City: San Mateo
Registrant State/Province: California
Registrant Postal Code: 94401
Registrant Country: US
Registrant Phone: +1.6505854708
Registrant Email: firstname.lastname@example.org
3.4 Exactly the same information was provided by the Registrar as the Admin and Tech contact details for the Domain Name. No billing contact information was provided.
3.5 The Registrar’s verification response also contained the following statement:
“The [Domain Name] was pushed to the current owner’s account on Apr 2, 2019. It is unclear if they were the Registrant prior to that date.”
3.6 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”).
3.7 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2019.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 4, 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.
3.9 Having reviewed the case file, the Panel issued a Procedural Order (“Procedural Order No. 1”). The recitals to Procedural Order No. 1 which observed that (a) the registration details provided by the Registrar appeared to be those of the Registrar and/or its privacy service rather than that of the underlying registrant of the Domain Name; and (b) if this was correct the Registrar prima facie was in breach of Appendix E to the ICANN Temporary Specification for gTLD Registration Data. The operative provision of Procedural Order No. 1 provided, inter alia as follows:
“(1) The Registrar is requested and invited to file by email (copied to the parties) by no later than 5:00 pm Central European Time on Tuesday October 15, 2019 a submission providing the following information and addressing the following issues:
(i) Whether and to what extent Super Privacy Service LTD is the privacy service of the Registrar and/or is otherwise connected with the Registrar.
(ii) Providing all Registration Data retained by or under the control of the Registrar, including but not limited to (a) the name of the registrant (if different from Super Privacy Service Ltd); and (b) all geographical addresses, phone numbers, and email addresses for the registrant of the Domain Name.
(iii) Why the Registrar failed to provide the information requested at 1(ii) above in response to WIPO’s email request of August 23 2019.
(iv) Otherwise addressing any of the issues set out in the Recitals to this order.”
3.10 Paragraph 2 of Procedural Order No. 1 also gave permission to the parties (but did not require them) to file a further submission addressing the same issues.
3.11 By way of an email dated October 14, 2019, the Registrar confirmed that “Super Privacy Service Limited” is the privacy service of the Registrar. It also provided what it described as “the underlying contract record” for the Domain Name. This identified “all star plumbing systems inc”, of Launa Hills, California, United States. A telephone number and email address which was different from that initially provided by the Registrar in response to the Center’s verification request, was also provided.
3.12 The Registrar did not give an explanation of why this information had not previously been provided. It instead asserted as follows:
“Dynadot has always provided the public whois information in our verification responses. To date, it has never been an issue. Correspondence sent to Super Privacy Service LTD. is forwarded directly to our customers. The use of this service has never thwarted any of the UDRP proceedings we have processed.”
3.13 On October 15, 2019, the Complainant’s lawyers sent an email to the Center attaching a letter putting forward further submissions in respect of the new registration data provided by the Registrar. The nature and admissibility of those submissions is addressed later on in this decision.
4. Factual Background
4.1 The Complainant is among the largest law firms in Japan. It has offices throughout East and South‑East Asia as well as an office in the United States.
4.2 The Complainant owns a number of registered trade marks and trade mark applications that incorporate or comprise the text “N&A” and/or “Nishiura & Asahi”. These include:
(i) Japanese registered trade mark No. 5161395 for the word mark NISHIMURA & ASAHI in classes 9, 16, 35, 36, 41, and 45 registered on August 22, 2008;
(ii) Singaporean registered trade mark No. T1211395J for Nishimura & Asahi as a “conventional mark” in classes 9, 16, 35, 36, 41, and 45 with a registration date of August 3, 2012.
4.3 The terms “Nishimura” and “Asahi” are Japanese surnames and are the names of the founding partners of the Complainant.
4.4 The Domain Name was first registered on July 23, 2018. As the Registrar has belatedly confirmed, the Domain Name was at least recently registered in the name of the Registrar’s privacy service and the underlying contact details held by the Registrar in respect of the Domain Name identify “All Star Plumbing Systems Inc” as the underlying registrant.
4.5 As at August 22, 2019, the Domain Name displayed a web page that appeared to have been generated by “DAN.COM”. It displayed the following text:
“The domain name nishimuraasahi.com has already been sold
There are millions of other domains available on DAN.COM. You can probably find the one that fits you best!”
4.6 That webpage continues to be displayed as at the date of this decision.
5. Parties’ Contentions
5.1 The Complainant complains that it has not been possible to contact whoever is in control of the Domain Name as that person or entities identity was hidden behind a “privacy service”.
5.2 The Complainant provides in its Complaint a long list of registered trade marks and trade mark applications, which include the trade marks identified in the Factual Background section of this decision. That list also includes a large number of what appear to be Chinese and Japanese character trade marks. Although this is not expressly alleged, these appear to represent the Chinese and Japanese character equivalents of “Nishimura & Asahi”. The Complainant also claims to have common law trade mark rights in the United States.
5.3 The Complainant contends that the Domain Name is “identical to many of the Complainant’s trade marks and its common law rights”. In doing so, it observes that it is not possible to incorporate an ampersand into a Domain Name.
5.4 The Complainant asserts that each of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy do not apply in this case. As a consequence, it asserts that it has established a prima facie case that the registrant has no rights or legitimate interests in the Domain Name and that the evidential onus passes to the registrant to demonstrate otherwise.
5.5 It also contends in this respect that the page displayed from the Domain Name demonstrates that the Domain Name was recently acquired by the registrant from a reseller and that the registrant has taken no steps thereafter to develop any website from the Domain Name thereafter.
5.6 So far as bad faith is concerned the Complainant contends that as it is the largest law firm in Japan with offices worldwide and multiple registered trade marks, “it is inconceivable that the Respondent was not aware of the Complainant’s rights in the name “Nishimura & Asahi”. The names “Nishimura” and “Asahi” are when joined together, said to form a “unique combination”. Given this, it contends that it is likely that the Domain Name was registered and is being held primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. It also claims that it can be inferred from the Respondent’s use of a privacy service to conceal its identity that it is not possible to identify who is the underlying registrant of the Domain Name and that the Respondent is engaged in a pattern of conduct to prevent trade mark holders from reflecting their marks in a domain name.
5.7 As has been recorded in the Procedural History section of this decision, on October 15, 2019, the Complainant’s lawyers sent an email to the Center attaching a letter putting forward further submissions in respect of the new registration data provided by the Registrar. Whether or not those submissions strictly fell within the scope of paragraph 2 of the Procedural Order, the Panel is prepared to admit the same. The new registration data is information that should have been previously made available to the Complainant, and it could not prior to its disclosure be addressed in the Complaint. It would, therefore, be unjust not to allow the Complainant an opportunity to comment on the same. In this respect the Panel refers to section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”).
5.8 In that letter the Complainant contends that All Star Plumbing Systms Inc was the name of a domestic corporation in the State of Navada with an address in California. However, it also claims that this corporation is defunct. It therefore questions whether this ever was the true underlying registrant of the Domain Name.
5.9 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in 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)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will address each of the requirements of the Policy in turn, but before it does considers it appropriate to make a number of observations about the Registrars Conduct.
A. Registrar’s Conduct
6.5 Before addressing the substantive issues in these proceedings, it is convenient and appropriate for the Panel to record its concerns about the Registrar’s failure to provided details of the underlying registrant of the Domain Name in response to the Center’s initial verification request.
6.6 Why it is important for registrars that offer a “privacy service” to disclose the underlying details of any registrant in response to a Provider’s request was addressed in some detail in Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service, WIPO Case No. D2009-1657 and LEGO Juris A/S v. Whois Privacy Protection Service, Inc. / Domains Secured, LLC, WIPO Case No. D2011-1857. In Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service, supra, this Panel made comments about registrars that refused to do so as follows:
“From a practical perspective it is important that those who offer WhoIs privacy services operate in this way [i.e., disclose the underlying registrant to the Center in response to a verification request]. A refusal by a registrar to disclose to a requesting Policy provider the underlying owner or holder of a domain name (and their contact details) hidden behind a “privacy service” in proceedings under the Policy, involves a potential threat to the operational integrity of the Policy. Registrars who operate in this fashion potentially provide a tool that enable cybersquatters to conduct their activities in secrecy and to help them avoid the extent of their abusive activities becoming public; thereby depriving complainants, potential complainants and panels with information that is potentially highly relevant to the assessment of abusive behaviour. For a registrar to participate in facilitating or aiding these activities risks undermining the operation of the Policy. For the reasons already given, the Panel considers this to be contrary to the provisions of the Policy. It is undoubtedly contrary to its spirit.”
6.7 In those decisions the Panel also observed that where a registrar fails to provide this information, it may be appropriate to invite the Center to bring that failure to the attention of ICANN, with a view to ICANN undertaking such investigation into and enforcement steps against the Registrar as it considers appropriate. In both of these cases that is indeed what the Panel invited the Center to do.
6.8 Since then matters have moved on somewhat. Concerns have been raised as to whether the general public disclosure of WhoIs data for all domain names is consistent with European data protection law and in particularthe General Data Protection Regulation (the “GDPR”), which came into force in May 2018. This in turn led to ICANN issuing the ICANN Temporary Specification for gTLD Registration Data (the “ICANN Temporary Specification”) requiring registrars and registries to redact certain data (absent registrant consent to disclosure) so far as that general public disclosure is concerned. However, the ICANN Temporary Specification has itself come under criticism in some quarters as going far further than the GDPR requires.
6.9 This decision is not the place to debate these GDPR issues. But what is relevant in the present context is that the ICANN Temporary Specification is not only consistent with registrar disclosure to a Provider of registrant details in UDRP proceedings, but appears to mandate it. In particular, the ICANN Temporary Specification provides as follows:
2. Definitions and Interpretation
‘Registration Data’ means collected from a natural and legal person in connection with a domain name registration.
Appendix E: Uniform Domain Name Dispute Resolution Policy
This Appendix contains supplemental requirements for the Rules for Uniform Domain Name Dispute Resolution Policy (the ‘Rules’).
Uniform Domain Name Dispute Resolution Policy
1.1. Registrar Requirement: The Registrar MUST provide the UDRP provider with the full Registration Data for each of the specified domain names, upon the UDRP provider notifying the Registrar of the existence of a complaint, or participate in another mechanism to provide the full Registration Data to the Provider as specified by ICANN.”
6.10 In its response to Procedural Order No.1, the Registrar offers no real justification for its initial failure to provide the relevant underlying registrant information in this case. It also appears to admit that to date its practice has not been to disclose that information in response to UDRP provider verification requests.
6.11 The Registrar does attempt to excuse its conduct by claiming that correspondence sent to “Super Privacy Service LTD” is forwarded directly to its customers and that this “has never thwarted any of the UDRP proceedings”. However, with all due respect to the Registrar, this is not a sensible response to the concerns raised. The issue is not whether correspondence or a complainant’s complaint is forwarded to a registrant. It is whether full details of the registrant are disclosed to a provider and complainant in UDRP proceedings. It is also not clear what the Registrar means when it states that UDRP proceedings have “never [been] thwarted”. But whatever is meant, it is clear that the Registrar has adopted a practice that has denied information to complainants and panels in previous cases that is potentially highly relevant to the assessment of abusive behaviour. Further, in doing so the Registrar has risked aiding cybersquatters in conducting their activities in secret and helping them avoid the extent of their abusive activities becoming public. It also potentially hampers application of Policy paragraph 4(b)(ii).
6.12 The question remains whether given this, it is appropriate to invite the Center to bring this conduct to the attention of ICANN. The Registrar, albeit belatedly, has disclosed at least some of the relevant data in this case. What is not clear is whether this is a one off, or whether having considered this matter further it will now change its practices and properly disclose underlying registrant data in future UDRP proceedings. The Panel could have issued a further procedural order asking for clarification of this point from the Registrar. But that would result in further delay in a decision being issued in this case and that would be unfair to the Complainant. Further, should the Registrar fail to disclose these details in future cases, presumably the Center and/or the complainant in those cases will seek reasons why it has adopted that positing notwithstanding the reasoning set out above. In the circumstances, the Panel is prepared to give the Registrar the benefit of the doubt and will refrain from asking the Center to expressly bring the Registrar’s conduct to the attention of ICANN for compliance purposes. However, it does invite the Center on publication of this decision to bring paragraphs 6.5 to 6.12 of this decision expressly to the Registrar’s attention.
B. Identical or Confusingly Similar
6.13 The Panel accepts that the Complainant has registered trade mark rights in a number of jurisdictions that comprise the text “Nishimura & Asahi”. The Panel also accepts that the most sensible reading of the Domain Name is as the terms “Nishimura” and “Asahi” with the “.com” generic Top-Level Domain (“gTLD”).
6.14 Accordingly, the Complainant’s trade mark is not only recognisable, but clearly recognisable in the Domain Name. This is particularly so given that, as the Complainant contends, an ampersand cannot be used in a domain name. That the Complainant’s trade mark is clearly recognisable in the Domain Name is sufficient for a finding that the Domain Name and the Complainant’s trade mark are “confusingly similar” as that term is understood under the Policy (see section 1.7 of the WIPO Overview 3.0). In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.15 The Panel accepts the Complainant’s contention that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply in this case. Further, for reasons that the Panel sets out in the context of its discussion of bad faith later on in this decision, the Panel has reached the conclusion that the Domain Name was registered and continues to be held in order to take unfair advantage of its trade mark rights. There is no right or legitimate interest in holding a domain name for such a purpose and the fact that a domain name is being held for such a purposes is of itself evidence that no right or legitimate interest exists.
6.16 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.17 The Panel accepts that the Respondent is likely to have been aware of the Complainant’s business and likely trade mark rights as at the date that the Domain Name was registered. The Domain Name was initially registered on July 23, 2018. The comments of the Registrar in response to the initial verification request that the Domain Name was “pushed to the current owner’s account” in April 2, 2019 raises the possibility that there was a fresh registration at that date. However, whether the relevant registration date is July 23, 2018 or April 2, 2019 does not in this case matter. In this respect, the Panel accepts the Complainant’s uncontested assertion that the combination of “Nishimura” and “Asahi” is uniquely associated with the Complainant’s business and it follows that the only sensible conclusion is that the Domain Name was registered or acquired with that association in mind.
6.18 As to why exactly the Domain Name was registered, this is less clear. The Complainant contends that it was most likely for the purposes of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant for more than the Respondent’s out of pocket costs and that therefore the Respondent’s activities fall within the scope of paragraph 4(b)(i) of the Policy. That may well be the case, but given the very limited use made of the Domain Name in this case, it is difficult to say. This is no doubt why the Complainant also asserts that other examples of circumstances indicating bad faith set out in the Policy may apply in this case.
6.19 However, which or whether any of the non-exclusive specific examples of circumstances indicating bad faith registration and use might apply in this case ultimately does not matter. This is case where the Domain Name (when one discounts the impermissible ampersand) takes the form <[trademark].com>. As such the Domain Name inherently involves an impersonation of the Complainant. It is also difficult to conceive of any legitimate use of the Domain Name without the Complainant’s authorisation (as to which see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as elaborated upon by the Three-Member Panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455).
6.20 It follows that the most likely explanation is that the Domain Name was registered and has been held with the intention of taking of unfair commercial advantage of its association with the Complainant’s business and marks. That is sufficient to found a finding of bad faith registration and use (see for example Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
6.21 There is also the use of a privacy service in this case and the information finally provided by the Registrar as to the underlying details held for the registrant. The approach of panels to the use of privacy services has evolved since the introduction of the UDRP.
6.22 A number of early UDRP decisions suggested that the mere use of a privacy service was an indicator of bad faith. Subsequently, panels have tended to adopt a more nuanced approach in accepting there can be legitimate uses of such services but in particular cases the way that they have been used may support a finding of bad faith (see section 3.6 of the WIPO Overview 3.0). It may be that if the ICANN Temporary Specification continues to apply for a significant period of time, the pendulum may swing back somewhat. If general WhoIs details are redacted as a matter of course, it is more difficult to see what is the legitimate additional purpose that such services provide.
6.23 However, regardless of whether the approach to privacy services in general changes, the Panel accepts the Complainant’s contention that in this case the details held behind the privacy service and belated provided by the Registrar relate to a defunct company. The Panel also accepts that given that the entity concerned is no longer operating it is unlikely that this accurately reflects the true identity of the person or entity that controls the Domain Name. This is a factor that is supportive of a finding of bad faith registration and use.
6.24 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) 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 be transferred to the Complainant.
Matthew S. Harris
Date: October 18, 2019