WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Katerva, Inc. v. Domains by Proxy, LLC / Ron LeClair
Case No. D2019-0007
1. The Parties
The Complainant is Katerva, Inc. of La Jolla, California, United States of America (“United States”), represented by Ballard Spahr, LLP, United States of America.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Ron LeClair of London, Canada.
2. The Domain Name and Registrar
The disputed domain name <katerva.org> (the “Disputed 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 January 2, 2019. On January 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 7, 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 January 8, 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 January 8, 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 the Respondent of the Complaint, and the proceedings commenced on January 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 8, 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.
On March 1, 2019, the Panel issued Administrative Panel Procedural Order No.1. It recorded that the Panel had exercised its discretion to make enquiries of publicly available material, and that it had concluded from Ontario Bar Association records that it was likely the Respondent currently practices at the firm of LeClair and Associates, at an address that is not the same address as the one provided by the Registrar. The Panel made various directions as to further service of the Complaint upon the Respondent and extended the time for any Response accordingly. On March 7, 2019, the Complainant lodged a further submission pursuant to the directions given by the Panel. This submission was accompanied by copies of correspondence with the Respondent not previously placed in evidence. On March 14, 2019, a hard copy of the Complaint and associated documents was delivered to and accepted at the address identified by the Panel. On March 16, 2019, the Respondent sent an email to the Center (see below).
4. Factual Background
The relevant facts can be summarized as follows.
The Complainant is a non-profit sustainability recognition and intelligence organization. It recognizes and supports sustainability efforts around the world. It identifies, evaluates, and advances early-stage innovations. It offers various awards under the name the “Katerva Awards” to encourage and reward disruptive innovation and novel advances.
The Complainant owns United States trademark registration number 5006211, registered on July 26, 2016, for the mark KATERVA for “educational and promotional services, namely, providing recognition and incentives by way of awards to demonstrate excellence in the field of any innovation that aids in global sustainability; and advisory services related thereto” and for “research and development of new products for others”.
The Disputed Domain Name was registered by the Respondent on June 16, 2010. The circumstances in which he did so are discussed below. It does not resolve to any active webpage.
5. Parties’ Contentions
The Complainant says that the Disputed Domain Name is identical to its KATERVA trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “katerva”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. Its case in this regard is explained as follows “The Disputed Domain Name was registered by a Canadian attorney providing initial start-up assistance to Katerva, and was subsequently ‘donated’ to a charitable organization without Katerva’s consent as a result of a disrupted business relationship. Respondent’s actions in unlawfully ‘transferring’ the domain name and its continued registration and use of the Disputed Domain Name is in violation of the Policy and Complainant requests that the Disputed Domain Name be rightfully transferred to Complainant”. This issue is discussed further below.
The Panel will in its discretion treat the email received by the Center on March 16, 2019, as a Response. It simply says “please see below” and then attaches a further email from a third party (the Panel does not know what role the person concerned has – conceivably she may be an employee or assistant to the Respondent) which reads as follows:
“This is from GoDaddy. They explain that, like yourself, they do not have access to the account. The account was created when a different email was being used, [...]@filion.on.ca. Since that email is no longer valid (as of August 2016) there is no way for you to go back and check information.
They noted the domain still shows under your name because the person(s) it was transferred to may have never taken your name off.
They also stated that, in any event, that domain name will expire in 2020 and will again be available for purchase by anyone.
They stated that this email should be provided to WIPO email.
That email is: email@example.com.”
Attached to this email is a further email from the Registrar, the substantive part of which reads as follows:
This email is regarding our conversation earlier about KATERVA.ORG.
The domain seems to have an issue with Ownership
Did check with our specialist and this is the response:
‘Ok so I am seeing the domain is locked for a WIPO dispute, the ownership still shows Ron so that is why the info went out to him so he would need to contact WIPO about not being the owner of the domain anymore’.
You can inform them about the domain being transfer to a charity or a different account, which the person who accepted might have not changed the domain contact info and then the domain is now passed on.
The domain seems to be valid and one of the possibility is you registered it for multiple years and just transferred it to a different owner or the domain is being renewed on the account where it is registered now but the contact info stays with Ron.
As of the moment we have no further information since we don't have access to the account where the domain is currently under.”
6. Discussion and Findings
The Panel will admit the further evidence filed by the Complainant on March 7, 2019. That evidence should have been filed with the Complaint but it seems to the Panel that the evidence concerned is directly relevant to the position the Respondent is taking and helps explain that position further. In circumstances where it seems that the Respondent is consenting to the Disputed Domain Name being transferred to the Complainant (see discussion below) the Panel considers it appropriate to admit the evidence.
The Panel also notes this is a case where one respondent (“Domains by Proxy, LLC”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive respondent to be Ron LeClair and references to “the Respondent” are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the KATERVA trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.org”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the KATERVA trademark is a coined word in which the Complainant has developed a significant reputation and where there is no evidence of anyone else using that term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent 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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use KATERVA trademark. The Complainant has prior rights in the KATERVA trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
It is well established that the requirements set out in paragraph 4(a)(iii) of the Policy are conjunctive.
The Complainant, in its Complaint, puts its case this way: “Mr. LeClair, at the request of and on behalf of it, with the consent of Complainant, procured the domain name KATERVA.ORG at his own expense.”
The Complainant goes on to say as follows:
“Shortly thereafter, Mr. LeClair and the webmaster for the domain, Mr. [name], ceased their relationship with Katerva. Mr. LeClair did not relinquish ownership of the domain name prior to the end of the relationship. Instead, Mr. LeClair purportedly ‘donated’ the Disputed Domain Name to a charitable organization called Giveall2Charity. Katerva formally demanded Mr. LeClair to transfer the domain name to it. Mr. LeClair agreed to transfer the domain name so long as Complainant donated $1,000.00 USD to Giveall2Charity, which Katerva promptly did. Katerva sought to obtain the transfer of the domain name from the purported owner – Giveall2charity. Giveall2charity advised Katerva that it did not own or control the Disputed Domain Name and the ‘donation’ of the domain name to the charitable organization was in name only. Mr. LeClair reportedly maintained ownership of the Disputed Domain Name. Mr. LeClair, however, on many occasions, either denied owning the registration, or claimed that he did not have the requisite information to initiate and effect the transfer. Mr. LeClair has been less than forthcoming or cooperative with Katerva.”
There is however no evidence that the Respondent effected an actual transfer of the Disputed Domain Name to a third party. It seems clear on the record that the Disputed Domain Name has always been registered in the name of the Respondent and remains registered in the name of the Respondent.
As the Panel understands it, the Complainant’s says that the Disputed Domain Name has been registered and used by the Respondent in bad faith, and that the relevant facts are precisely analogous to those in The Procter & Gamble Co. v. Neuroweb Sdn Bhd, WIPO Case No. D2001-0943. The Panel infers that what the Complainant is saying is that when the Respondent registered the Disputed Domain Name he should have done so in the name of the Complainant, and his failure to do so supports a finding he registered it in bad faith. Similarly his failure to transfer the name either as agreed or at all amounts to use in bad faith.
The Panel does not consider the evidence here to be very satisfactory. No detail at all has been provided as to what was agreed, or what was said or done, as between the parties at the time of registration. The further evidence filed by the Complainant on March 7, 2019, comprises an email exchange (parts of which have been heavily redacted for reasons that are not explained and are not obvious to the Panel). This exchange does not relate to what occurred at the time of registration, but to subsequent requests by or on behalf of the Complainant for the transfer of the Disputed Domain Name. The overall gist of the exchange appears to be the Complainant requesting the Respondent to transfer the Disputed Domain Name1 , and he apparently being willing to do so in principle, but unable to do so for technical reasons associated with not having the relevant permissions with the Registrar. So for example on February 3, 2015, the Respondent stated:
“I am happy to do whatever is easiest. The only limitation is I don’t know my GoDaddy account information. I have looked for it but I don’t have an email from GoDaddy with that information. Any assistance that you could provide me in getting that information would be greatly appreciated.”
On March 3, 2015, he stated as follows:
“I've tried to secure the customer number and password but unfortunately I'm unable to do so. I've contacted GoDaddy directly and they have advised that the names on the account are [name1] and [name2], along with email addresses linked to those two gentlemen. I would have thought that you or someone that you're working on behalf of would have checked that out before sending me a threatening email. There's nothing more I can do, and enough of my time has been wasted.”
As the Panel understands it from the Response (see above) that remains the Respondent’s position.
Nowhere in the evidence is anything suggesting the Respondent did anything wrong when he registered the Disputed Domain Name in his own name. Nowhere is there any suggestion that the Respondent has demanded any money for the transfer of the Disputed Domain Name. As best the Panel can tell the Respondent has been prepared to transfer the Disputed Domain Name but says he is unable to do so as he lacks the necessary information required by the Registrar to initiate or authorise a transfer. Nowhere is it suggested by the Complainant that this is incorrect or untrue. These facts are not analogous to those in WIPO Case No. D2001-0943 (supra).
Accordingly in the present case the Panel is not satisfied the Complainant has established that the Disputed Domain Name has been registered and is being used in bad faith or that the third condition of paragraph 4(a) of the Policy has been fulfilled.
Whilst the Panel finds for the reasons set out above that the Complaint has failed to establish the elements necessary to succeed in accordance with paragraph 4(a) of the Policy, the Panel nevertheless reaches the conclusion based on the correspondence and the Response (see above) that the Respondent is consenting to the transfer of the Disputed Domain Name to the Complainant. The Panel therefore adopts the approach set out in WIPO Overview 3.0, section 4.10 as follows:
“How do panels handle cases involving a respondent’s informal or unilateral consent for the transfer of the domain name to the complainant outside the ‘standard settlement process’ described above?
Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).”
See for example Infonxx.Inc v. Lou Kerner, WildSites.com, WIPO Case No. D2008-0434, where the Panel stated as follows:
“However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements. As was noted by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, when the Complainant seeks the transfer of the disputed domain name, and the Respondent consents to transfer, the Panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules. Accordingly, and in light of the parties’ stipulations set forth above, the Panel will order the transfer of the disputed domain name to the Complainant. This is clearly the most expeditious course. Id.; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.”
Accordingly pursuant to paragraph 10 of the Rules the Panel orders that the Disputed Domain Name <katerva.org> be transferred to the Complainant.
Nick J. Gardner
Date: March 25, 2019
1 At one point this correspondence refers to <katerva.com> rather than <katerva.org> but it is clear from the context that this is simply a mistake.