WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ian Dickson v. Whois Privacy Protection Service by onamae.com / Dinh Hiep
Case No. D2020-0686
1. The Parties
The Complainant is Ian Dickson, Australia, represented by EAGLE & GATE Pty Ltd (EAGLEGATE Lawyers), Australia.
The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Dinh Hiep, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <quackit.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the Center on March 23, 2020. On March 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2020, 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 April 1, 2020 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on April 3, 2020.
On April 1, 2020, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 2, 2020. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2020.
The Center appointed Haig Oghigian as the sole panelist in this matter on May 29, 2020. 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 Panel notes that the Complainant has requested that English be the language of proceeding in this matter. In accordance with paragraph 11 of the Rules, based on the case file, and in the absence of any comments from the Respondent in this matter, the Panel decides that English be the language of proceeding, and will submit the decision in English.
4. Factual Background
The administrative panel finds the following as uncontested facts:
- The Complainant, an individual and resident of Australia, first registered the disputed domain name on June 20, 2000 and has since been using it to offer free tutorials in web coding. As of 2017, the disputed domain name has been registered with ZappyHost, a reseller of Wild West Domains LLC, who is in turn a wholly-owned subsidiary of GoDaddy Inc.
- The Complainant does not own any registered trademarks in relation to the disputed domain name.
- An article published in 2012 on <maketecheasier.com> recommended the <quackit.com> website among the “six useful websites to help you learn coding”, due to its “simple user-friendly layout” and “clear, well-defined tutorial[s]”.
- According to SimilarWeb.com, one of the publicly available online traffic estimator tools, the monthly traffic for the <quackit.com> website between September 2019 and January 2020 ranged between 750,000 and 1.2 million visits. In February 2020, the <quackit.com> website was the 100,000th most popular website globally, with over 460,000 monthly visits.
- SimilarWeb.com’s estimated traffic corresponds with actual traffic measured by Google Analytics.
- The disputed domain name was transferred to GMO Internet Inc. on February 17, 2020 without the Complainant’s authorization. The disputed domain name redirects to <qhmit.com>, which is controlled by the Respondent.
- The Respondent’s email address as provided/verified by the Registrar has been linked to multiple domain hijackings in the past, as evident from a 2018 article titled “Domain Theft Strands Thousands of Web Sites”, published on “Krebs on Security”, a cyber security news website.
5. Parties’ Contentions
The Complainant asserts that he has used <quackit.com> as an unregistered service mark since 2000, gaining “significant reputation in that mark such that he has a very strong entitlement to it globally”. Considering that the Respondent hijacked the Complainant’s <quackit.com> domain name and related website, the Complainant alleges that the requirement that “the domain name [be] identical or confusingly similar to a service mark” is met.
Furthermore, the Complainant submits that the Respondent is not commonly known by the disputed domain name. The Complainant alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent has only hijacked the Complainant’s <quackit.com> website for the specific purpose of diverting traffic and search engine rankings to the Respondent’s copycat version of the Complainant’s website hosted on <qhmit.com>. All references to <quackit.com> have been replaced with <qhmit.com>, and mentions of “Ian” (the Complainant) have been substituted with “Peter”.
Finally, the Complainant asserts that the Respondent’s hijacking of his email accounts on February 17, 2020 and subsequent conduct amount to “perhaps a most severe case of bad faith as there can be”. According to the Complainant, the Respondent hacked into the Complainant’s Yahoo account, which was tied to the <quackit.com> domain name and was the email address for the Complainant’s ZappyHost account, as well as the Complainant’s Hotmail account, which was the recovery email address for the Yahoo account. Although the Complainant managed to regain access to his Yahoo account and undo the changes made by the Respondent, the latter once again hacked into the Complainant’s Yahoo account because the Complainant had re-added his, already compromised, Hotmail account as a recovery email. As the hacker was resetting and changing details in the Yahoo account, so was the Complainant. This kept going on in circles several times until Yahoo locked the Complainant out due to his numerous attempts to reset the password. The Complainant regained access to his Hotmail and Yahoo accounts on February 19, 2020.
Due to the Respondent’s interferences with the Complainant’s email accounts, the Complainant was unable to log into ZappyHost. This prompted the Complainant to contact the customer service of GoDaddy, which assured him that, although somebody had changed the contact details on his account and initiated a transfer of <quackit.com> to another registrar, the transfer would not be processed. Yet, the disputed domain name was nonetheless transferred to GMO Internet Inc. and remains there as of the date of the submission of the Complaint.
The Complainant, therefore, requests the disputed domain name be transferred to the Complainant accordingly.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the transfer of the disputed domain name may be ordered if the Complainant demonstrates three elements:
(A) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) The disputed domain name has been registered and is being used in bad faith.
The Complainant relies on two previous UDRP Panel decisions: Starks s.r.l.s. v. Super Privacy Service LTD c/o Dynadot / Ishak Moulay, WIPO Case No. D2018-2286 and James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391. Although the Complainant has not enclosed a copy of said decisions with its Complaint, the Panel deems this omission does not prevent it from nonetheless considering them.
A. Identical or Confusingly Similar
Although the Complainant owns no trademarks, he registered the disputed domain name in 2000 and has made a prima facie case that he has used the <quackit.com> website as an unregistered service mark to provide free tutorials in web coding – notably, even in a short period from September 2019 to January 2020 the website had between 750,000 and 1.2 million visits and was ranked as the 100,000th most popular website globally. The disputed domain name incorporates the service mark in its entirety. Considering the Respondent’s failure to contest the Complainant’s allegations in this respect, the Panel finds as undisputed that the disputed domain name is linked to the Complainant’s unregistered rights.
The disputed domain name <quackit.com>is in no way different from the domain name registered by the Complainant. It is in fact the domain name the Complainant registered and has been using for nearly twenty years. As evident from the Complainant’s submission and supporting documents, the Respondent unrightfully gained access to the Complainant’s website, and has since been redirecting visitors to the Complainant’s website to a copycat website.
Although the comparison under this element is to the disputed domain name and the Complaint’s mark, the Panel additionally notes that while the domain names <quackit.com> and <qhmit.com> are not identical and are arguably not that confusingly similar, the Panel finds that in this case the similarity lies in the content provided on the website. Albeit earlier UDRP panels have disregarded the content of the website when considering the first element under paragraph 4(a) of the Policy, as evident from section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, the Panel deems that the facts of the present case demand it to depart from this practice. The content provided on the Respondent’s copycat website is identical to that which was available on the Complainant’s website prior to the hijacking in February 2020, as is evident from the Wayback Machine screenshots. The only distinguishing characteristics of the <qhmit.com> website are that references to <quackit.com> and “Ian” have been replaced with references to <qhmit.com> and “Peter” which in fact supports a finding of intentional confusion on the Respondent’s part.
Considering all of the above, the Panel finds that the first element of paragraph 4(a) of the Policy is present.
B. Rights or Legitimate Interests
It is beyond clear that the Complainant has neither authorized nor licensed the Respondent to use the disputed domain name. Furthermore, no evidence suggests that: (i) the Respondent’s use of the disputed domain name relates to a “bona fide offering of goods or services”; (ii) the Respondent is commonly known by the domain name; or (iii) the Respondent “is making 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”. Quite to the contrary: the Respondent is in appropriately using the disputed domain name to divert traffic from the Complainant’s to his copycat website.
For the foregoing reasons, the Panel agrees with the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains a non-exhaustive list of examples of bad faith registration and use of domain names. The case at bar neatly matches the fourth situation listed: attempting “to attract, for commercial gain, Internet users to use [the hijacker’s] web site […], by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the hijacker’s] web site […].”
The Panel’s finding of bad faith use, within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy, on the part of the Respondent is justified in light of the following:
(i) the nature of the disputed domain name;
(ii) the notoriety of the <quackit.com> website;
(iii) the manner in which the Respondent obtained access to the disputed domain name (by hacking the Complainant’s email accounts);
(iv) the redirecting of all viewers of the <quackit.com> website to a copycat website, which only differs from the Complainant’s website in that all references to <quackit.com> are replaced with <qhmit.com> and the Complainant’s name (“Ian”) is substituted with “Peter”;
(v) the fact that the Respondent has been linked to multiple website hijackings in the past;
(vi) the Respondent’s failure to challenge the Complainant’s contentions.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <quackit.com> be transferred to the Complainant.
Date: June 12, 2020