WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corrs Chambers Westgarth v. Whois Agent, Domain Protection Services, Inc. / Domain Vault, Domain Vault LLC
Case No. D2019-2535
1. The Parties
The Complainant is Corrs Chambers Westgarth, Australia, internally represented.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“United States”) / Domain Vault, Domain Vault LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <corrs.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2019. On October 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2019, 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 October 24, 2019.
The Center verified that the Complaint, together with 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 October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2019. On November 14, 2019, the Center received a supplemental filing from the Complainant.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 19, 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 describes itself as Australia’s leading independent law firm, offering a range of commercial legal services, and having offices in Sydney, Melbourne, Brisbane, and Perth, Australia in addition to an affiliated office in Port Moresby, Papua New Guinea. According to the current iteration of its website, the Complainant states that it can trace the history of its firm back for 175 years. The Complainant and its associated entities have over 1,000 employees and over 100 partners.
The Complainant is the owner of a variety of Australian registered trademarks, the earliest of which date from 2005 including, for example, Australian registered trademark no. 1046621 for the word mark CORRS in class 42 (legal and trademark attorney services), filed on March 17, 2005, and registered on November 21, 2005. The Complainant is also the registered owner of the domain name <corrs.com.au> and demonstrates with reference to an entry for the associated website on the Internet Archive “Wayback Machine” dated May 11, 2000, that it was using said domain name and describing itself in certain hyperlinks as “Corrs” as at that date.
The disputed domain name was created on January 17, 2001. No information has been provided by, on behalf of, or about the Respondent. The Complainant demonstrates with reference to various screenshots all dated September 12, 2019, that, as at that date, the disputed domain name forwarded to varying online locations including first, an alleged reward program bearing to be on behalf of Google LLC and targeted to Google customers and/or in some way connected to a telecommunications company named SingTel Optus Pty Limited, second, a typical “pay-per-click” website featuring generic advertisements not specifically targeted to any one industry, and third, a site which attempts to issue malware in the form of a toolkit containing various exploits. The Complainant notes that it is unaware of any connection or affiliation between the Respondent and Google LLC or SingTel Optus Pty Limited.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the disputed domain name is identical to the Complainant’s CORRS registered trademark. The Complainant asserts that it has no awareness of the Respondent being known by the disputed domain name, that it has no awareness of the Respondent having any corresponding trademark rights in any jurisdiction, that the Respondent’s use of the disputed domain name could not be considered a bona fide offering of goods and services or noncommercial or fair use of the disputed domain name, and that the disputed domain name is intended to misleadingly divert consumers or tarnish the Complainant’s trademark.
The Complainant asserts that registration of the disputed domain name has the effect of preventing it from reflecting its mark in a corresponding domain name and that it considers that its clients and potential clients, whether Australian or international, may send email to the disputed domain name without bounce back or any awareness that the intended recipient did not receive the communication. The Complainant argues, as illustrated by a previous case under the Policy, that where the disputed domain name is identical to the Complainant’s name and mark, and absent a credible explanation for the incursion into the Complainant’s rights, it is appropriate for the Panel to draw the inference that the disputed domain name was registered in bad faith. The Complainant argues that it is inconceivable that the Respondent would have been unaware of the Complainant’s longstanding and extensive international reputation in the name “Corrs” at the time of registering the disputed domain name and that this is the only reasonable assumption.
The Complainant describes the current use of the disputed domain name, featuring pay-per-click advertising and malware distribution. The Complainant indicates its concern that the latter may tarnish its reputation. The Complainant submits that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online locations and is creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant asserts that the infringement of its intellectual property rights is considered to be evidence of bad faith, with reference to a previous case under the Policy, and contends that in determining this issue the Panel is able to take into account the Respondent’s anticipated failure to provide evidence of any actual or contemplated good faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary issue: Effect of Court Proceedings
Neither of the Parties has notified the Panel and the Center that it has commenced any separate legal proceeding regarding the disputed domain name before or during the pendency of this administrative proceeding. However, on October 16, 2019, the Registrar indicated to the Center that there was litigation pending regarding the disputed domain name, which was separate from the UDRP proceeding, and which might supersede any decision thereunder. Upon the request of the Center to provide further clarification, on October 18, 2019, the Registrar again confirmed that such litigation had been brought outside the UDRP and added that the Complainant was not a party to it. On October 21, 2019, the Center informed the Parties of the information received from the Registrar and invited them to comment or to instruct the Center on any procedural steps they might wish to take.
On November 14, 2019, the Complainant filed a supplemental filing in response to the Center’s invitation for comments. As such supplemental filing is confined to the subject of pending litigation, the Panel notes in passing that it is content to receive and consider it in accordance with paragraph 10 of the Rules. The Complainant states that it has only been able to identify one possible proceeding corresponding to the information received from the Registrar, namely Domain Vault LLC et al v. RPV Ltd 2:2018ms00004, filed on February 1, 2018, in the United States District Court for the District of Nevada. According to the Complainant, that case relates to the bankruptcy of an individual and encompasses the disputed domain name by virtue of a broadly worded subpoena which has been served upon the Registrar. Said subpoena captures all documents in the Registrar’s possession relating to “all domain names currently or previously registered” by a range of parties, including the Respondent. The Complainant indicates that the Respondent has filed a motion to quash the subpoena. The Complainant asserts that the subject matter of the litigation is not relevant to the current administrative proceeding, nor are the parties to such litigation the Complainant or the Respondent in the administrative proceeding. The Complainant proposes that the present administrative proceeding should continue on the merits despite there being a remote connection between the disputed domain name and pending litigation and that, in light of the remoteness, the Panel should ascribe minimal weight, if any, to such litigation.
In addition to the information received from the Complainant, the Panel has identified that certain previous cases under the Policy contain information relating to pending litigation which may be connected to the Respondent. The Panel has reviewed 18 previous cases in which the Respondent was called as respondent, dating from 2014 to 2018. In particular, there is a full discussion of pending litigation in two cases, namely Candi Controls, Inc. v. Whois Privacy Protection Service Inc. / Domain Vault LLC, WIPO Case No. D2016-0818, and Bellhops, Inc. v. WhoisAgent, Whois Privacy Protection Services, Inc. / Domain Vault, Domain Vault LLC, WIPO Case No. D2016-0756. In each of those cases, a third party named NovoPoint LLC (“NovoPoint”) unsuccessfully sought to intervene on the basis that it claimed to be the beneficial owner of the domain name concerned and had lost control of it as a result of a United States federal district court order. NovoPoint stated that said court order transferred the domain names concerned, and other domain names, on the basis that these had been part of a receivership in a federal court action in the United States District Court, Northern District of Texas. See also Textura Corporation v. Domain Vault LLC, WIPO Case No. D2015-2117, in which an additional description of the background is provided but in which NovoPoint did not seek to intervene.
In addition to NovoPoint’s attempted interventions in past cases under the Policy, it appears that advisers to the Respondent have previously suggested in at least one other UDRP case that litigation was pending related to a receivership which covered certain of the Respondent’s domain names (see, for example, Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Vault, Domain Vault LLC, WIPO Case No. D2015-0500). The panel in that case noted that such information as was provided by the Respondent’s advisers was lacking in detail and the existence of actual proceedings was not evidenced.
The Panel is unaware of whether any of the history of pending litigation identified in the above cases under the Policy also relates to the disputed domain name in the present case or whether there is any connection between those proceedings and the information contained in the Complainant’s supplemental filing. In any event, the Panel notes that NovoPoint did not seek to intervene in the present case, nor does it seem to have been involved in any of the more recent cases brought against the Respondent under the Policy, namely those filed since 2016. Equally, no information has been tendered by or on behalf of the Respondent in the present case relating to the proceedings described in Yahoo! Inc., supra. In these circumstances, the Panel turns to consider the provisions in the Policy and Rules relating to pending litigation.
Paragraph 4(k) of the Policy states that the mandatory administrative proceeding requirements of paragraph 4 shall not prevent either a respondent or complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. As far as the Panel is aware, neither of the Parties has done this at the date of this Decision. Paragraph 18 of the Rules provides, inter alia:
“Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Paragraph 18(a) of the Rules thus provides that an administrative proceeding may be terminated or suspended in consequence of related legal proceedings, whether initiated prior to or during an administrative proceeding. Alternatively, the Panel may proceed to a decision, according to the exercise of its discretion. The question of how such discretion should be exercised has been considered in detail in a number of cases under the Policy (see, for example, DNA (Housemarks) Limited v. Tucows.com Co, WIPO Case No. D2009-0367, and Navista S.A. v. Virtual Point Inc. dba CrossPath, It Manager, WIPO Case No. D2012-1157). The relationship between the UDRP and court proceedings has also been discussed more recently in section 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The latter notes at section 4.14.1 that appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay. This Panel subscribes to that view.
In the present case, the Panel has been presented with no official documentation relating to any relevant pending litigation. As far as the Panel has been informed by the Complainant, the only pending litigation which it has identified does not directly relate to the disputed domain name. The Panel is told that a subpoena has been issued in a bankruptcy proceeding which calls for certain documents in the hands of the Registrar relating to domain names currently or previously registered by a number of parties. There is no sense that the disputed domain name itself is the subject matter or the object of that court action or court order, or that there is any court action in force “in respect of a domain-name dispute that is the subject of the complaint” in the words of paragraph 18(a) of the Rules.
The Panel notes that the Registrar has placed the disputed domain name on lock in light of pending court proceedings, although it has not reported whether it was ordered to do so by the court, nor did it supply any related documentation. The Panel also notes that the Respondent has not chosen to comment upon the content of the Complainant’s supplemental filing, or otherwise regarding the issue of pending litigation despite reportedly seeking the quashing of the subpoena. There is no indication, therefore, that the Respondent takes any contrary view to that expressed by the Complainant on this topic. Furthermore, no suggestion has been received from either of the Parties, the Registrar, or any third party that any history put forward in previous cases brought against the Respondent under the Policy has any connection to or bearing upon the present case. Even if it had, the Panel notes that, in each of those cases, the appointed panel chose to proceed to a decision.
Based on the information received from the Complainant, the Panel assumes that the current court proceedings do not overlap with the current proceeding. In any event, it is noted at section 4.14.2 of the WIPO Overview 3.0 that panels generally issue a UDRP decision on the merits even in an overlapping scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. The section adds that panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding.
In all of the above circumstances, the Panel considers that it is reasonable for it to exercise its discretion in favor of proceeding to a Decision in this matter. The Panel notes, however, that this Decision is without prejudice to any action the relevant court may deem appropriate or necessary, whether in furtherance of the existing subpoena or otherwise, and is not addressed to any particular forum that is, or may ultimately be, seized of the matter.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has UDRP-relevant rights in its CORRS registered trademark. For the purposes of paragraph 4(a)(i) of the Policy it is not relevant that such trademark post-dates the date of creation of the disputed domain name, although this is relevant to the analysis in respect of paragraph 4(a)(iii) of the Policy as further discussed below.
Comparing the Complainant’s registered trademark to the disputed domain name, the Panel notes that the former is alphanumerically identical to the second level of the latter. The generic Top-Level Domain in the disputed domain name, namely “.com” is typically disregarded under such comparison. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
It is widely accepted among UDRP panels that, for bad faith registration and use to be made out, a degree of targeting of the Complainant or its mark by the Respondent must be evident from the record, or at the very least that there must be sufficient grounds to infer that the Respondent had the Complainant or its trademark in mind when the disputed domain name was created (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). If there is evidence that the domain name concerned has been acquired by a new arms-length registrant after its creation date, the matter is tested as at the date of such acquisition rather than at the date of creation. In the present case, despite the creation date of the disputed domain name being more than 18 years in the past, namely January 17, 2001, the Complainant has provided no evidence of the history of the disputed domain name. In these circumstances, the Panel assumes that the disputed domain name has been held continuously by the present Respondent since it was created in January 2001 and will test the question of registration in bad faith as at that date.
The Panel asks itself whether the evidence on the present record indicates that the Respondent had the requisite knowledge and intent to target the Complainant when the disputed domain name was created. Clearly, the Respondent could have had no knowledge of the Complainant’s registered trademarks in 2001. The earliest of these marks was filed in March 2005, more than four years after the disputed domain name was created. What, then, was the extent of the Complainant’s rights in the CORRS mark in January 2001 and is there any reasonable basis on which to infer that the Respondent could have had prior notice of such rights? In this context, the Panel reminds itself that the Respondent appears to be based in the United States, while the Complainant is based in Australia. The Panel presumes that the term “Corrs” generally derives from the surname “Corr” (for example, as in the name of the eponymous musical act “The Corrs”). As far as the Panel is aware, it is not a term coined by the Complainant, nor does it appear to reference the Complainant exclusively, nor is it otherwise so distinctive that the mere registration of the term in the disputed domain name necessarily signifies targeting of the Complainant in and of itself.
The Complainant claims a “long-standing and extensive international reputation in CORRS”. This conclusory allegation is not supported by any meaningful evidence on the present record. It is true that the “Wayback Machine” entry for the Complainant’s website, dating from just under a year before the creation date of the disputed domain name, indicates that the Complainant was already trading as “Corrs Chambers Westgarth” and that it used the hyperlinks “About Corrs”, “Working for Corrs”, and “Corrs People”. It also follows that the Complainant was already using the corresponding Australian country code Top-Level Domain name <corrs.com.au>, although its creation date is not specified and is not available from the provided WhoIs entry. However, importantly for the Complainant’s case, no information is provided as to the extent or notoriety of the Complainant’s business under the CORRS mark at that time.
The only other relevant information which the Panel has been able to glean from the record is an indication on the Complainant’s current website that the Complainant can trace its origins back for 175 years. This does not necessarily mean that it has been using the term “Corrs” for any particular period or that its notoriety started to extend beyond Australia at any particular point. The Panel is left with a series of questions to which it does not know the answer. When did the Complainant adopt the name “Corrs”? To what extent had it been trading under such name by 2001? In particular, to what extent had the Complainant engaged in international business which might have reached the notice of the Respondent? What was the substance of the Complainant’s online presence by 2001 (see, for example, Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535, “the fact that a respondent is in a different jurisdiction than a complainant is something that some people can consider to be of greater significance than it actually is, particularly if the complainant has a significant online presence”)? Does any other information exist showing or tending to show that the Complainant’s fame would likely have reached the attention of a United States-based entity such as the Respondent? In the absence of suitable answers, the Panel is not satisfied on the balance of probabilities that the Complainant has proved its case on bad faith registration.
The Panel accepts the Complainant’s evidence that the disputed domain name was being used abusively in September of this year, at least on the basis that the corresponding website appears to have been concerned in the distribution of malware when visited by the Complainant. At best, this might indicate use in bad faith today, but, on its own, does not support an inference of registration in bad faith more than 18 years ago. It is also of some significance that while the disputed domain name has been used for pay-per-click advertising, none of the advertisements reference the Complainant or its line of business. Accordingly, the present use of the disputed domain name, abusive though it may be, does not lend any support to the notion that it was more probably than not created in 2001 with the Complainant’s rights in mind and with intent to target these. While there may be other remedies available to the Complainant relating to the deployment of malware by the disputed domain name, those are beyond the scope of this proceeding.
As noted above, the Panel has identified some 18 previous decisions under the Policy, which appear to relate to the same Respondent as the present case. These were not referred to in the Complainant’s submissions but, even if the Panel does consider these for the sake of completeness, they do not appear to provide support for the Complainant’s case, at least on the basis of the present record. In many of the prior cases, transfer of the domain name concerned was ordered but, in those instances, the complainant was able to satisfy the panel as to the strength and reach of the applicable trademark, which pre-dated the creation of the disputed domain name at the material time. The Complainant has not done so here.
On the other hand, the facts in one of the prior cases involving the Respondent do have some parallels with those of the present case. In Zeca S.p.A. v. Whois Privacy Protection Service, Inc. / Domain Vault LLC, WIPO Case No. D2017-0158, the panel noted that there was no evidence as to when the domain name concerned had been acquired by the Respondent. It had been registered over 13 years before. Although the complainant stated that it had been in business for over 60 years, no substantive evidence as to the extent of its commercial activities or of its marketing or turnover over that period or, in particular, in the period prior to the date of registration of the domain name, had been produced with the complaint. No specific evidence of the complainant having established any reputation or goodwill in the United States, being the Respondent’s home country, was put forward. In those circumstances, the panel found that the complainant had failed to establish, on the balance of probabilities, that the Respondent would have been aware of the complainant or its rights at the date of registration of the domain name and the complaint was denied. The Panel also finds some similarities in Bellhops, Inc., supra, in which the disputed domain name had been registered some 13 years earlier and before the date of registration of the complainant’s trademark. The complaint in that case was also denied.
In the present case, for the reasons outlined above, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain name was registered in bad faith. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied and the Complaint fails.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: December 3, 2019