WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stonz Wear Inc. v. Domain Admin, Level2 LLC
Case No. D2019-0217
1. The Parties
The Complainant is Stonz Wear Inc. of Canada, represented by Norton Rose Fulbright LLP, Canada.
The Respondent is Domain Admin, Level2 LLC of United States of America (“United States”), represented by ESQwire.com PC, United States.
2. The Domain Name and Registrar
The disputed domain name <stonz.com> is registered with Find Good Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. On February 22, 2019, the Respondent requested an automatic four-day extension to file the Response under paragraph 5(b) of the Rules. On the same day the Center duly granted the extension until March 2, 2019. The Response was filed with the Center on March 1, 2019.
The Complainant submitted an unsolicited supplemental filing on March 7, 2019. On March 15, 2019, the Respondent made a supplemental filing in reply. The Complainant emailed the Center regarding the Respondent’s filing on March 19, 2019.
The Center appointed Adam Taylor, David H. Bernstein and The Hon Neil Brown Q.C. as panelists in this matter on April 24, 2019. The Panel finds that it was properly constituted. Each member of 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 May 8, 2019, the Panel issued Procedural Order No. 1 inviting the Respondent to supply certain information and the Complainant to respond thereto. The order is summarised in section 6D below. The Respondent submitted information in reply to the order on May 15, 2019. The Complainant made comments in response on May 21, 2019.
4. Factual Background
The Complainant, which was incorporated in 2004, supplies children’s footwear, accessories and apparel under the mark STONZ including in 250 stores in Canada, as well as in the United States and other countries. Since 2004 the Complainant has spent more than CDN 1.5 million advertising its products worldwide. In 2018 its turnover was CDN 2.2 million and there were over one million visits to its main website at “www.stonzwear.ca”.
The Complainant owns a number of registered trade marks for the stylised word STONZ (incorporating some graphic elements) including United States Trademark Registration No. 3,960,291, filed July 31, 2008, registered May 17, 2011, in class 25. This is the only registration on the Principal Register of the United States Patent and Trademark Office for or containing the term “Stonz”.
In 2011, the Complainant lost a UDRP case against the previous owner of the disputed domain name. See Stonz Wear, Inc. v. Framez l-Wear, WIPO Case No. D2011-1764.
A Whois printout supplied by the Complainant lists the Respondent as registrant of the disputed domain name. The creation date is shown as January 5, 2019.
On January 5, 2019, the Complainant received an email from a sender whose name was in Chinese script stating:
“Stonz.com has been registered for many years. Because it is idle for a long time, I plan to sell it. If you are interested, you can contact me by email. Thank you.”
On the next day, January 6, 2019, the Complainant received the following email from a Dan Wilson:
“We received an offer to buy our domain Stonz.com and wanted to check if you would be interested in making an offer on this domain before it is sold. Please let me know.”
The Complainant replied the same day asking to speak by phone because it was being “bombarded by Chinese owners”.
Dan Wilson responded on January 7, 2019:
“Chinese? We did not hire a domain broker to represent this sale from China. Sure I will pass this along to my boss to reach out to you directly. The price on this domain is $5,000 USD.”
Following an exchange of emails regarding a possible telephone conversation, Dan Wilson emailed the Complainant on January 8, 2019, to state:
“I received clarification on this. We are no longer allowed to represent this sale as the owner found too many brokers were trying to promote this domain and caused confusion in pricing and ownership. The owner only wants buyers to contact them directly: www.stonz.com.
Our ability to sell this domain has been withdrawn but the domain appears to still be in a position to be purchased at a rate that was not shared with us.”
According to a screenshot of a Name Jet auction bid history supplied by the Respondent, the Respondent won an auction for the disputed domain name on January 8, 2019.
On January 9, 2019, following an enquiry by the Complainant via the website at the disputed domain name, the Respondent emailed the Complainant stating that it had received many enquiries and asking if the Complainant had an offer for the disputed domain name. In a further email to the Complainant on the same day, the Respondent stated:
“Apologies for the previous automated message.
A domain broker had notified us that you are interested in this domain. It seemed many parties are trying to represent this sale and are causing confusion as to who owns the domain and what price is being charged. We told all brokers who have been in contact with us that we will not work with a buyer unless it is directly given how poorly this has been handled.
To protect yourself please only enquire on the website: www.stonz.com (which you sent the below through) or via the WHOIS data that shows the owner email on file (@level2.com).
Our price to sell this domain name is 24,995 USD […]”
There followed an exchange of emails on January 9, 2019, regarding the best way for the Complainant to communicate with the Respondent about the disputed domain name so that the Complainant could, in the Respondent’s words, “be confident that you are speaking with the company that owns the domain instead of a broker”.
The Complainant then asked: “What made you buy this domain?”
The Respondent responded:
“I can understand how that would be alarming and confusing. Obviously, only one entity can own a single domain so I wanted to explain those two verification methods clearly so you can be 100% sure you are not conversing with yet another ‘broker’ who either claims to own the domain or to exclusively represent it when they have no pricing knowledge or relationship with us.” Later the Respondent added that the disputed domain name was “short, catchy, over 20 years old and our preferred extension: dot-com.”
The Complainant asked if the parties could “meet closer to $8k”.
On January 10, 2019, the Respondent replied that it was efficient at defending itself within the UDRP process and overturning unfavourable decisions in court. The Respondent proposed a deal at USD 19,995. Following some further emails between the parties, on January 25, 2019, the Respondent reiterated that USD 19,995 with a “quick close” was the lowest price and that if the Complainant could get an offer close to this amount with fast funding “perhaps my boss would be swayed”.
As of January 16, 2019, the disputed domain name resolved to a parking page with mainly travel-related pay-per-click (“PPC”) links such as “Adventure Travel”, “African Safaris”, “Europe Tours” and “National Parks”. There was also a link to “Memorial”. The page included a notice that “[t]his premium domain name may be listed for sale” together with a “Click” link.
At some point after the Complaint was filed, the Respondent changed all of the PPC links to those that all mentioned jewellery, including “Buy Jewelry,” “Custom Jewelry,” “Gem Stone Earring,” and “Gem Stone Jewelry”.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The disputed domain name is identical or confusingly similar to the Complainant’s well-known trade mark.
As a result of its sales and advertising, and word of mouth, the Complainant’s trade mark is well recognised in the various countries where it does business and it is exclusively associated with the Complainant’s goods.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not authorised the Respondent to register or use the disputed domain name.
The Respondent is not using the disputed domain name for a bona fide offering of goods or services.
The Respondent registered the disputed domain name some 15 years after the Complainant started using its trade mark.
The Respondent has never been commonly known by the disputed domain name.
The Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name. Rather, it is seeking to sell the disputed domain name for an inflated price, as evidenced by the email exchanges with the Respondent.
The disputed domain name was registered and is being used in bad faith.
The Complainant’s mark is well-known, with a positive reputation amongst celebrities, the press and the consuming public.
The Respondent registered the disputed domain name for sale to the Complainant in accordance with paragraph 4(b)(i) of the Policy. Immediately after the Respondent obtained the disputed domain name, the Complainant immediately received offers from two different brokers to sell the disputed domain name on behalf of the Respondent. This is classic cyberpiracy.
Also, the Respondent directly emailed the Complainant to offer the disputed domain name for sale. The price of USD 19,995 is grossly inflated. The Respondent knows that no-one who did not own rights to the “Stonz” trade mark would pay such a sum. Such an offer would constitute bad faith even if prompted by a demand from the trade mark owner but here the offer preceded any such demand.
Given the speed of the offers and the Respondent’s persistence in attempting to sell it to the Complainant, it is doubtful that the Respondent registered it without knowledge of the Complainant despite the Respondent’s assertion that the reason for purchasing was that “Stonz.com is short, catchy, over 20 years old, and our preferred extension: dot-com”.
The disputed domain name is so obviously connected with the Complainant that use by anyone else would suggest opportunistic bad faith.
The Respondent has also registered the disputed domain name to disrupt the business of a competitor under paragraph 4(a)(iii) of the Policy.
The following is a summary of the Respondent’s contentions:
The Respondent accepts that the Complainant has established trade mark rights for the purposes of the first element.
The Respondent bought the disputed domain name after winning it in an auction in January 2019. The acquisition was a good faith purchase after the previous owner allowed the disputed domain name to lapse. The Respondent believed that no one could claim exclusive rights to this valuable short, aged and memorable domain name, which is a creative spelling of the dictionary word “stones”. The Respondent had no knowledge of the Complainant.
The Respondent has legitimate interests in the disputed domain name as it reflects an intentional misspelling of a common word and it was not registered with the Complainant’s trade mark in mind.
A Google search for “Stonz,” excluding terms relating to the Complainant’s products in order to show third party results, indicates shows that there are over 327,000 references to the term.
The Respondent has registered other inherently valuable domain names that substitute “z” for “s” including: <framez.com>, <rockerz.com>, <roez.com>, <spadez.com> and <cyclez.com>.
The Respondent also possesses legitimate interests in the disputed domain name as a generic or descriptive domain name investor and reseller. The Respondent has registered and sold thousands of the common word and combined letter domain names for investment and development. The Respondent’s pattern of descriptive domain names supports an inference that the disputed domain name was not registered with intent to target a trade mark.
The Respondent’s use of advertising links further establishes rights and legitimate interests.
The Respondent hosts under-developed domain names with domain name parking services which pay a share of advertising revenue, an industry-wide accepted practice.
The PPC links were auto-generated by Google or the parking page provider. In any case, they were selected on the basis of the generic or descriptive terms in the disputed domain name, not to profit from the Complainant’s trade mark. There are no links related to the Complainant or its business on the webpage.
The Respondent did not register or use the disputed domain name in bad faith. It acquired the disputed domain name simply because it incorporated a generic descriptive term that became available when its prior owner allowed the disputed domain name to expire.
The lack of PPC links targeting the Complainant indicate that the Respondent did not set out to create a likelihood of confusion with the Complainant’s mark in accordance with paragraph 4(b)(iv) of the Policy.
The Respondent’s offer to sell the disputed domain name is not evidence of bad faith. There is no evidence that the Respondent registered the disputed domain name with the intention of selling it to the Complainant or a competitor. The Respondent’s offer of USD 19,995 was made in response to an enquiry by the Complainant.
After purchasing the disputed domain name, the Respondent “followed its regular practice by working with a single domain broker to facilitate potential leads”. The Respondent is not aware of the multiple other parties that the Complainant alleges were also inquiring regarding the disputed domain name. The Complainant’s assertion that “Chinese” brokers were contacting the Complainant to “sell” the disputed domain name indicates that these were “pirate brokers”, who improperly prey on parties when domain names are in “pending delete” status and offered for auction. They engage in “front running” by searching listings on domain auctions for expired domain names and then, as here, targeting them to purchase a domain that the pirate broker has no right to sell.
C. Complainant’s supplemental filing (insofar as admitted by the Panel)
The following is a summary of the Complainant’s contentions:
The Respondent’s assertions lack credibility in the face of offers to sell the domain by brokers who, at least from their own conduct, evidently believed they were acting for the Respondent and stopped when told to do so by the Respondent. For example, when the Respondent took over sale negotiations, it wrote “We are no longer allowed to represent this sale as the owner found too many brokers were trying to promote this domain…”.
D. Respondent’s supplemental filing (insofar as admitted by the Panel)
The following is a summary of the Respondent’s contentions:
Amongst the factors which determined the attractiveness of the disputed domain name to the Respondent was the fact that, in the auction for the disputed domain name, four parties including the Respondent had bid over USD 500. (An auction history screenshot supplied by the Respondent shows bids by a number of different parties on January 8, 2019, culminating in the Respondent’s final bid of USD 814, timed at 14:20 PST.).
The Complainant was likely, and rightfully, upset by the unscrupulous calls by pirate or front running brokers. This is a nefarious practice that the Respondent does not condone and is something related to the auction, not the Respondent. For both brands and reputable domain investors this is a harmful practice.
The Respondent did not retain the “pirate” or “front running” brokers that were alleged to have repeatedly contacted Complainant. Rather, as the Respondent typically does when it acquires new domain name assets, it retains the services of one broker who responds to inquiries and reviews the entire market to consider potential sales.
E. Respondent’s response to Procedural Order No. 1
The following is a summary of the Respondent’s response to Procedural Order No. 1:
The Respondent does not have any information regarding the purported “other brokers” or any control over such purported brokers. The Complainant has only provided one example of what appears to be a Chinese broker trying to contact the Complainant.
The Respondent is not connected with the purported multiple broker calls. The Respondent had one broker, Dan Wilson, who was retained to respond to enquiries and review the entire market to consider potential sales.
On January 8, 2019, Dan Wilson informed the Respondent in a telephone conversation that there were two “interested sales leads” to purchase the disputed domain name, one of which the Respondent considered “unqualified”, and the Complainant, who the Respondent felt was “quite qualified” and a potential buyer. The Respondent told Dan Wilson to direct the Complainant to the website at the disputed domain name and for this potential buyer to communicate directly with the Respondent. Because the Respondent had more industry experience than the broker and since the Complainant seemed interested and qualified and had complained to Dan Wilson about receiving too many email solicitations, the Respondent hoped that this directive was the most effective way of procuring an agreement. Dan Wilson blind copied to the Respondent his email of January 8, 2019. Regrettably the Respondent has “limited email communications” about the disputed domain name between it and Dan Wilson.
The Respondent has produced examples of emails with Dan Wilson relating to other domain names in order to demonstrate Dan Wilson’s similar transactional activity with the Respondent prior to the dealings relating to the disputed domain name.
The Respondent no longer has full cooperation from Dan Wilson and has no evidence of communications between Dan Wilson and any other brokers or between other brokers and the Complainant – other than as exhibited to the Complainant. The Respondent believes that the registration date of the WhoIs record for the disputed domain name triggered many automated spam programs to scrape the Internet and send email solicitations. The email from the Chinese sender exactly matches the WhoIs registration date.
The Respondent’s comment on January 9, 2019, that it had told “all brokers who have been in contact with us” that the Respondent would only work directly with buyers due to the poor handling of the transaction was made to ease the Complainant’s concerns that the Respondent could deliver the disputed domain name. The Respondent did not in fact have contact with any of the other domain brokers that were in contact with the Complainant.
The Respondent has sometimes encountered potential domain buyers who were recently in contact with unauthorised domain brokers or purported domain name owners who do not in fact own the domain name. The Respondent made the comment about “poor handling” to try and alleviate the Complainant’s understandable concern as to why she was being bombarded with different solicitations to sell the disputed domain name. Although uncommon the Respondent has had purposed owners of the Respondent’s own domain names attempt to sabotage negotiations with legitimate potential buyers.
Until the Complainant stated otherwise, the Respondent was aware only of Dan Wilson’s email solicitation.
F. Complainant’s comments on Respondent’s response to Procedural Order No. 1
The following is a summary of the Complainant’s comments on the Respondent’s response to Procedural Order No. 1:
The Respondent admits, and its disclosure reveals, that Dan Wilson was its employee when he contacted the Complainant in January 2019. Various emails from Dan Wilson mention his “boss” and “employer”, clearly referring to the Complainant. Irrespective of their precise relationship, it is clear that Dan Wilson was at all times acting on the Respondent’s behalf.
Despite the Panel’s request, the Respondent did not disclose its communications with Dan Wilson.
The language used by Dan Wilson when approaching potential buyers on behalf of the Respondent in relation to other domain names is similar to the wording of his January 6 email to the Complainant regarding the disputed domain name.
The Respondent did not actually acquire the disputed domain name until January 8, 2019, when the auction completed, and so Dan Wilson himself was a “front running” broker.
The additional Dan Wilson emails disclosed by the Respondent are further evidence of bad faith in that they show Dan Wilson attempting to sell <sherylsandberg.com> to a representative of the Sheryl Sandberg and Dave Goldberg Family Foundation.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Supplemental Filings
Each party has made an unsolicited supplemental filing.
Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance.
In this case, the Panel has decided to admit only (1) evidence supplied by the Respondent relevant to the timing of its acquisition of the disputed domain name and (2) comments by the parties relating to the important “broker” issue as these further inform the Panel’s understanding of the parties’ respective positions on this point. The responses to the parties’ respective submissions about the import of the broker communications could not necessarily have been anticipated in the initial pleadings. The Panel has elected not to admit the remainder of either of the supplemental filings on the grounds that they largely repeat submissions made in the parties’ primary submissions or should have been addressed by the parties in their initial submissions or are not necessary for the Panel’s disposition of the case.
The Panel would add, however, that, had the Panel considered the disallowed material in the supplemental filings, it would have made no difference to the outcome of this case.
B. Identical or Confusingly Similar
It is not in dispute that the Complainant has established trade mark rights in the term “STONZ” and that this is identical to the disputed domain name.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
As to paragraph 4(c)(i) of the Policy, the Respondent has used the disputed domain name for a parking page with PPC links principally related to travel services. The majority of the Panel does not consider that this usage constitutes rights or legitimate interests given that the PPC links do not reference or relate to any potential generic or descriptive meaning of “stones”, for which the disputed domain name is said to be a creative spelling. The Panel further notes that, in its Response, the Respondent did not claim that those PPC links were related to “stones” and that it added PPC links about “stones” (in the context of jewellery) to the webpage only after the Complaint was filed.
The dissent takes the majority to task for failing to recognize that “stonz” may be seen as a creative spelling of “stones,” but that is not a correct reading of the majority’s position. The majority fully acknowledges that some consumers may read “stonz” as a homonym of “stones”, and acknowledges the Respondent’s assertion that it registered the disputed domain name because it has a practice of registering domain names that substitute “z” for “s” such as <framez.com>, <rockerz.com>, <roez.com>, <spadez.com> and <cyclez.com> (though even there, Respondent’s argument is a bit inconsistent given that the disputed domain name is <stonz.com>, not <stonez.com>). The majority agrees that a domain name registrant may well have a legitimate interest if it registers a domain name containing a creative spelling of a dictionary word if it then uses the domain name in ways consistent with the dictionary word and does not otherwise infringe, dilute, cybersquat upon, or violate Complainant’s rights. That, though, is not what this Respondent has done. Instead, even before the Respondent acquired the disputed domain name, it targetted the Complainant through its agent with an offer to sell the disputed domain name, not because of its value to the Complainant as a creative spelling of a dictionary word but rather because its value to the Complainant as an exact spelling of its registered trade mark – see section 6D below. That misconduct is the antithesis of a legitimate interest, and is completely distinguishable from the conduct of the Respondent in Sébastien Paches v. Dvlpmnt Marketing, Inc. WIPO Case No. D2019-0742, on which the dissent relies, and in which the domain name was “obtained by the Respondent […] without any knowledge of the Complainant”. Here, in contrast, the disputed domain name was acquired with full knowledge of the Complainant and its trade mark rights.
The dissent’s suggestion that the single PPC reference to “memorial” amongst the travel links establishes Respondent’s legitimate interest given that “memorial” is related to “stones” requires too many leaps of imagination to be credible. Not only has the Respondent itself not advanced such an argument, the Respondent has more recently changed the PPC links on the website to which the domain name resolves to focus entirely on jewellery, including “Gem Stone Earring” and “Gem Stone Jewelry.” That the Respondent itself added those references to jewellery-related stones to try to bolster its claimed legitimate interest only after the Complaint was filed speaks volumes about the Respondent’s true intentions.
Finally, the majority cannot accept the dissent’s assertion that there is no evidence that “the Respondent registered [the disputed domain name] because of the Complainant’s STONZ trademark”. To the contrary, the factual record described above can support no finding other than that the Respondent was engaged in its own front running, which it tried to hide through use of an agent, and that it registered the disputed domain name in order to capitalise on the Complainant’s trade mark.
The majority of the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
As set out in section 4 above, on January 5, 2019, the Complainant received an email from a sender whose name was in Chinese script offering the disputed domain name for sale. The next day, the Complainant received an email from someone who identified himself as “Dan Wilson” claiming to have received an offer to buy “our domain” and asking if the Complainant was interested in making an offer.
In the view of the majority, the key issue in this case is whether either or both of these approaches were made on behalf of the Respondent.
Taken together, the emails from Dan Wilson, who was acting for the Respondent (as has now become clear - see below), show that, on January 6, 7 and 8, 2019 – that is to say, before, and at the time of, the Respondent’s acquisition of the disputed domain name in auction – he was actively canvassing the Complainant to buy the disputed domain name, stating that the Respondent’s price was USD 5,000, and urging the Complainant to contact the Respondent directly for the sole purpose of consummating the sale, all clearly with a view to the Complainant’s buying the domain name from the Respondent.
Moreover, the Respondent’s email of January 9, 2019, failed to acknowledge that Dan Wilson was its agent, simply saying that the Complainant’s interest in the disputed domain name had been notified to it by “[a] domain broker” and, in this and subsequent emails, the Respondent complained in general terms about the involvement of unspecified brokers in a way which gave the impression that none of them had any relationship with the Respondent.
In its Response, the Respondent again sidestepped its relationship with Dan Wilson. The Respondent claimed that, after purchase of the disputed domain name, the Respondent followed its usual practice of working with a “single” domain broker to facilitate leads. The Respondent denied knowledge of the “multiple other parties” that the Complainant alleged were also inquiring regarding the disputed domain name, suggesting in particular that the Chinese brokers mentioned by the Complainant had engaged in “front running”, i.e., approaching potential buyers of expired domain names which had come up for auction and which the “pirate brokers” has no right to sell. The Respondent criticized this practice.
But the Respondent did not identify the “single” broker or exhibit any correspondence with this or any other broker (despite having stated to the Complainant that it was in contact with various brokers) – or make any mention of Dan Wilson.
Accordingly, the Panel unanimously decided to issue Procedural Order No. 1, the gist of which was to invite the Respondent to identify the “single” broker and also to disclose (a) all of its communications with the “single” broker and Dan Wilson as well as with the various brokers referred to in its pre-action correspondence and (b) all communications between the “single” broker and any other domain brokers.
In response, the Respondent admitted that Dan Wilson was the “single” broker appointed by the Respondent. But, still, the Respondent produced no broker correspondence relating to the disputed domain name (apart from a blind copy version of Dan Wilson’s email to the Complainant of January 8, 2019), claiming that were there only “limited email communications” between the Respondent and Dan Wilson, who had allegedly stopped cooperating with the Complainant.
The Respondent’s reticence can perhaps be explained by the fact that the Respondent knew that its agent, Dan Wilson, had committed a classic act of cybersquatting, which he recorded step by step in a series of emails, namely offering a domain name for sale to the owner of a corresponding trade mark at around the time of his principal’s acquisition of the domain name. Moreover, it seems that the Respondent and its agent targeted only the owner of the trade mark; there is no evidence in the record that the Respondent or Dan Wilson offered the disputed domain name to any other party.
Indeed, as explained in section 4 above, it appears from the auction records produced by the Respondent that the Respondent did not acquire the disputed domain name until at least January 8, 2019, when the auction ended. If so, then the earlier Dan Wilson email of January 6, 2019, constituted the very “front running” activities which the Respondent itself described as “nefarious”, i.e., approaching the Complainant to sell a domain name which the Respondent did not (yet) own. Moreover, and by the same token, Dan Wilson’s email of the next day went as far as to reveal the Respondent’s price to sell the domain name to the Complainant and his email of the following day urged the Complainant to go directly to the Respondent, clearly to advance the sale.
The Respondent now admits that it was aware of the Dan Wilson’s “email solicitation”. In any case, the Respondent must be held accountable for the actions of its authorised broker. Clearly domain name registrants cannot evade the consequences of the UDRP by seeking to hide behind brokers who they send out into the world to procure sales. Of course, in principle, registrants are entitled to use brokers to sell domain names but those brokers must be careful to seek sales based on independent factors such as the inherent value of short, catchy domain names (which was the Respondent’s alleged rationale for acquiring the disputed domain name) rather than on the value of any corresponding trade marks. If they do not follow these principles, the domain name registrant will most likely be held responsible for such illicit activities.
Also, parties should also expect careful panel scrutiny of claims that approaches purportedly on behalf of domain name owners were in fact made by unauthorised “pirate brokers” allegedly engaged in “front running”.
Generally, where UDRP complainants invoke unsolicited broker activity, respondents would be well advised to approach the issue with complete candour, including full disclosure of all of their broker dealings.
For the reasons stated above, the majority of the Panel finds that the Respondent acquired the disputed domain name “primarily for the purpose of selling […] the domain name registration to the complainant who is the owner of the trademark […]” and that it therefore registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(i) of the Policy.
The majority of the Panel concludes that the Complainant has established the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the majority of the Panel orders that the disputed domain name <stonz.com> be transferred to the Complainant.
David H. Bernstein
The Hon Neil Brown Q.C.
Date: June 10, 2019
Dissenting opinion by The Honourable Neil Anthony Brown QC
Panelist Brown dissents from this decision because he is of the view that the Respondent has a right or legitimate interest in the disputed domain name. He therefore finds that it is not necessary to express a view on the issue of bad faith. Accordingly, the Complainant in his view has not succeeded on all three elements and the Complaint should be dismissed.
The reasons for concluding that the Respondent has a right or legitimate interest in the domain name are as follows.
The domain name is <stonz.com>. It is fairly clear that “stonz” is meant to be a creative form of spelling the word “stones” as it is more likely than not that anyone devising a domain name to be used in business, such as the Complainant, would prefer the word to mean something rather than that it should mean nothing. Accordingly, if the word can be given an understandable and practical meaning, such an interpretation is preferable. In the present case there is an understandable and practical meaning to the word created by the Complainant and that is to read it for all purposes as “stones” which is probably what the Complainant intended. That is not such a radical interpretation of the domain name, as it is clearly how the Complainant itself has used the word. We know that because the Complainant has a loyalty program on its website which is in evidence and it is called “MileStonz”. It is clear therefore that the Complainant uses the word “stonz” to mean “stones.” Moreover, there is something to be said for panelists recognising that people will adopt and indeed make up novel ways of spelling common words, in some cases to avoid confusion, in other cases because the literal word may not be available to them and in other cases for no reason at all. But provided that the actual meaning is clear, there is no reason why for all practical purposes the ordinary and traditional meaning of the word used should not be accepted and used for determining if the registrant has a right or legitimate interest in the domain name. It is therefore pleasing to see that approach adopted in a recent decision that also dealt with an unusual spelling of a word. Sébastien Paches v. Dvlpmnt Marketing, Inc. WIPO Case No. D2019-0742 concerned the domain name <paches.com>, where the Complainant was a clothing manufacturer with a trademark for PACHES. The learned panelist had no difficulty in observing in his decision that “[t]he term ‘paches’ is not a word in English. There is no evidence before the Panel of it being a word in any other language. It is however a six-letter character string which is readily pronounceable, and also is similar to the English word ‘patches’”. Nor did he have any difficulty in concluding that this was one (although only one) of the factors why “the Disputed Domain Name is likely to have at least some potential intrinsic value and could have been obtained by the Respondent because of its intrinsic value and without any knowledge of the Complainant”. Those remarks could just as easily be applied to the present case and lead to a finding, which this panelist would make, that the domain name is a creative, if not eccentric, misspelling of a common English word which should be treated as a generic or common dictionary word.
That being so, it gives rise to a right or legitimate interest in the domain name on the part of the Respondent, unless the Respondent registered it because of the Complainant’s STONZ trademark, of which there is no evidence whatsoever and which seems extremely unlikely, given that the Respondent bought the domain name when its previous registration expired.
The right that the Respondent acquired could of course be negated if it then used the domain name to compete with the Complainant, tried to pass itself off as the Complainant, sought to mislead the public or engaged in any other untoward conduct. But not only is there no evidence of any such misbehaviour, the evidence that there is shows the contrary, namely that the Respondent used the domain name to provide legitimate links to items of general interest which is a lawful and regular practice. The majority draw attention to the PPC links to travel services as being inadequate, but the links were also to “memorial”, connoting memorial stones, tombstones and the like and more recently to jewellery. More importantly, none of the PPC links or other uses of the domain name were in competition with the Complainant or in any way connected to its business or sought to confuse members of the public.
Accordingly, this panelist finds that the Respondent has demonstrated a well-established right and legitimate interest in the disputed domain name.
The Honourable Neil Anthony Brown QC
Date: June 10, 2019