Wipo arbitration and Mediation Center administrative panel decision western Union Holdings, Inc V. Private Whois Escrow Domains Private Limited / comdot internet services pvt. Ltd., Laksh internet solutions private limited
ADMINISTRATIVE PANEL DECISION Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED. Case No. D2008-1675
1. The Parties 1.1 The Complainant is Western Union Holdings, Inc. of Englewood, Colorado, United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
1.2 The Respondent is Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD. (“Comdot”), LAKSH INTERNET SOLUTIONS PRIVATE LIMITED. (“Laksh”), PLUTO DOMAIN SERVICES PRIVATE LTD. (“Pluto”), COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED. (“Comsys”), all of Mumbai, Maharashtra, India. The exact identity of the Respondent is discussed in greater detail in this decision.
2. The Domain Names and Registrar 2.1 The disputed domain names , , , and (the “Domain Names”) are registered with Lead Networks Domains Pvt. Ltd (the “Registrar”).
3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2008. The Complaint identified Private Whois Escrow Domains Private Limited as the Respondent in these proceedings as this was the name in which the Domain Names were registered as at the date of the Complaint.
3.2 On November 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. By November 11, 2008, the Registrar had not responded to that request, and the Center sent a further email asking once again that verification information be provided. Later that day the Registrar finally transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. In particular the Registrar identified the Registrants of the Domain Names as follows:
COMDOT INTERNET SERVICES PVT. LTD.
3.3 The Center sent an email communication to the Complainant on November 12, 2008, providing the new registrant and contact information disclosed by the Registrar. It contained the following statement:
“There appear to be four distinct entities listed as registrants. Should the Complainant find a common link between the below-listed registrants, the Complaint would proceed as filed. If no such link is found, the Complainant may wish to proceed in the instant case against one registrant, and the other registrants in several separate cases as determined to be appropriate.”
3.4 After providing the details for the “registrants” provided by the Registrar, the Center went on to state as follows:
“In light of this, you are invited to file an amendment to the Complaint or, if no common link between the four entities is found, amend this Complaint and file several separate Complaints as determined to be appropriate.”
3.5 The Complainant filed an amendment to the Complaint (the “Amendment to the Complaint”) on November 17, 2008. In the Amendment to the Complaint (and as is described in greater detail later on in this decision), the Complainant alleged that the four “registrants” identified by the Registrar were in fact the same entity.
3.6 The Center verified that the Complaint together with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.7 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2008.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 5, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.9 The Panel, having reviewed the case file and having commenced preparation of its decision in this case, formed the provisional view that it was likely in this decision to make comments that were critical of the behaviour of the Registrar. In light of this and adopting the procedure followed by the Panel in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886, it issued a Procedural Order on January 14, 2008 in which the Registrar was given an opportunity to file a submission dealing with these criticisms by no later than January 21, 2009 and extending the time for the filling of a decision in this case by two days to January 22, 2009. A submission was filed with the Center by the Registrar in reply to the Procedural Order on January 19, 2009 (the “Registrar’s Submission”).
4. Factual Background 4.1 The Complainant is a United States company forming part of the Western Union Company group. It is the entity within the group that holds intellectual property on behalf of the group.
4.2 Western Union was founded in 1851 and adopted the Western Union name in 1856. In 1871, it began to offer electronic money transfer services by telegram. It continues today to offer various money order, money transfer, and payment services. It has over 335,000 agent locations in more than 200 countries and territories around the world.
4.3 The Complainant is the owner of approximately 950 trade mark registrations comprising or incorporating the words “Western Union”. These include United States Trademark Registration No. 1858889 dated October 18, 1994 for the word mark WESTERN UNION in class 38.
4.4 The exact status and nature of Comdot, Laksh, Pluto, and Comsys, the “registrants” of the Domain Names, and their relationship to one another is discussed in greater detail later on in this decision. For present purposes it is sufficient to note that they prima facie allappear to be private companies registered in India with addresses in Mumbai.
4.5 The Domain Names were registered at various times between February 9 and May 30, 2007 according to the Registrar’s WhoIs database.
4.6 In July 2008, the websites operating from the Domain Names all bore the classic signs of having been generated by “domain name monetization” or “domain name parking” or “pay per click” services. The styles of those web sites pages differed, but each displayed the domain name in question in the top left hand corner and in three out of the four cases the words “find something interesting” were displayed. There then followed a series of sponsored links or searches. This links or searches all had a financial services theme save for those in the case of , where the links pre-dominantly related to the Philippines. All the websites also contained search boxes which if used would produce a page of sponsored links. Each of these pages was relatively sophisticated in style and incorporated pictures that often had a financial services flavour (for example, in one case, the picture of a credit card).
4.7 On July 29, 2008, the Complainant’s lawyers sent a “letter before action” or “cease and desist letter” to “Private Whois Escrow Domains Private Limited”, then recorded in the relevant Whois database as the registrant in relation to all of the Domain Names. It claimed that the Domain Names had been registered and used contrary to the United States Anticybersquatting Consumer Protection Act (“ACPA”) and also violated the Policy. It demanded that the Domain Names be transferred to the Complainant. The Complainant received no response to this letter.
4.8 As a the date of the Complaint the Domain Names continued to resolve to domain name parking pages although the style used in three cases was less sophisticated, with the removal of pictures and the direct display of “sponsored links”. These pages continue to operate as at the date of this decision.
5. Parties’ Contentions A. Complainant 5.1 The Complainant in its Complaint refers to the history of the Western Union Company and its trade mark. It claims that “Western Union” is a “well recognized global brand with 97% brand awareness in the United States”. Reference is also made to a number of past proceedings under the Policy in which it is said the reputation of the brand has been recognised.
5.2 It contends that the only differences between its WESTERN UNION trade marks and the Domain Names are additional words or phrases describing or relating to the Complainant’s services and/or the absence or addition of single letters.
5.3 In the case of one of the Domain Names the additional term is “mastercards”. This is said to be a reference to the trade mark MASTERCARD, which is owned by MasterCard International. According to the Complainant, it has obtained from MasterCard a licence “to the domain name providing [the] Complainant with the right to pursue the [domain name] in this proceeding and to maintain the registration of it thereafter”. Further, it is claimed that “the Panel has the right to order this domain name transferred to [the] Complainant, even in the absence of this license agreement”.
5.4 Accordingly, the Complainant maintains that each of the Domain Names is confusingly similar to its WESTERN UNION trade marks.
5.5 The Complaint contends that the Respondent (then understood to be Private Whois Escrow Domains Private Limited) has no authorisation from the Complainant to use the WESTERN UNION marks. It also contends that the Respondent has never used, or made preparation to use, the Domain Names in connection with a bona fide offering of goods or services. The Complaint also contends that the Respondent has never been commonly known by any of the Domain Names and has never acquired any trade mark or service mark rights in them.
5.6 Instead, the Respondent is said to be using the Domain Names “in connection with a portal site that provides links to various third-party services offering services competitive with [the] Complainant” and from which the Respondent generates “Pay Per Click” revenue. It is said that it can be seen from this that the Respondent is making an illegitimate, commercial, unfair use of each of the Domain Names.
5.7 On the issue of bad faith, the operation of the pay per click site is said to involve activity falling within the scope of paragraph 4(b)(iv) of the Policy. Further given the Complainant’s international presence and brand recognition it claims that “it is likely that the Respondent knew of the Complainant’s mark, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion”.
5.8 In the Amendment to the Complaint, the Complainant puts forward a number of contentions in relation to the change of details in the WhoIs entries in relation to the Domain Names. In particular:
(i) It maintains that where the registrant of a domain name is other than a privacy service that was named in the complaint, it is appropriate to proceed with both the privacy service and the newly identified registrant as respondents (citing Covanta Energy Corporation v. Moniker Privacy Services and Gregory Ricks, WIPO Case No. D2007 0182).
(ii) It claims that the identities given for the four Respondents are fictitious and cites several WIPO cases under the Policy to the effect that in such circumstances the proceedings should be allowed to proceed as if it were brought against one entity.
5.9 In support of its claim that there is only one domain name holder, the Complainant makes reference to the fact that all four Domain Names were registered with the same Indian-based registrar within a span of about three months, all using the same Indian privacy service and “sharing only two sets of domain servers”. Reference is also made to the fact that each entity has an Indian address, contains as part of its name what is claimed to be the “unusual” PRIVATE LIMITED or PVT LTD ending and that all of the Domain Names are used in connection with monetized parking pages.
5.10 The Amendment to the Complaint also claims that the Respondent has abusively used a WhoIs privacy service to disguise its true identity. Lastly, reference is also made to the fact that the named registrants in this case had been involved in no less than 41 cases in which there had been a finding of abusive registration. A long list of these cases is then provided, 23 of which involve Laksh, 17 involve Comdot and one of which involves Comsys.
B. Respondent 5.11 No Response was filed in relation to the Complaint. There was also no response to the claims in the Amendment to the Complaint that the listed registrants for the Domain Names in reality represented a single entity.
C. Registrar 5.12 The Registrar’s Submission is undated but is signed by Mahesh K Maalik, a person who identifies himself as a director of the Registrar. The document does not attach any supporting evidence but it asserts as follows:
(i) The Domain Names are held “under one reseller but in different customer accounts”, and the “registrants as per [the Registrar’s] records for [the “Domain Names”] were different companies and hence [the Registrar] identified them as per [its] records”;
(ii) It is not obliged to reveal the name of the reseller;
(iii) Delay on the part of the Registrar in response to verification requests has been due “to administrative procedures in [its] office”;
(iv) “Most of the domains are held under private whois by clients which is a service being provided by all registrars. It takes some time to verify and see that the correct details are handed out so that there are no problems for the UDRP process”. However, later on in the document it asserts that “[t]he registrant of the domain is identified as per [its] records based on the day when [the Registrar] first receive[s] the verification email from the provider”;
(v) The Registrar “immediately placed the [Domain Names] under lock so that the registrant cannot be changed”. It denies that there has ever been an instance where the registrant details have been changed after receiving the verification email.
(vi) The Registrar has been at the “fore front of identifying the names of domain holders and disabling the private who is service as and when [it] receives complaints of Trade Mark violations and find some material in it”; and
(vii) Reference is also made to the fact that in the past the Registrar has identified domain names belonging to the registrants revealed in this case. It denies any suggestion that it is “giving out false registration details” to “frustrate the UDRP proceedings”.
6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will deal with each of the requirements in turn but, before doing so, it is necessary to consider a number of procedural aspects to this case, and in that context the question of the identification of the Respondent in this case. What follows is a somewhat lengthy discussion, but the conclusions reached enable the rest of the case to be decided relatively easily. It is then necessary briefly to comment on the appropriate remedy in the case of the Domain Name.
A. Procedural Issues and Identity of the Respondent
Registrar Delay 6.5 The first thing the Panel notes in this case is the 7 day delay on the part of the Registrar to respond to the Complainant’s request for registrar verification. No explanation or apology was offered by the Registrar to the Center in relation to that delay. The Panel is disturbed to note that it took so long for the Registrar to respond to that request. Any such delay in responding to a verification request simply plays into the hands of cybersquatters, particularly if the cybersquatter is using the domain name(s) concerned for the purposes of pay per click advertising.
6.6 A delay of 7 days is also difficult to reconcile in any sensible fashion with the three day deadline placed upon a dispute resolution service provider such as the Center, under paragraph 4 of the Rules.
6.7 The Panel also notes that ICANN’s Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution of December 2008 suggests that registrars should provide the relevant information within two days.1 6.8 Sadly, the Registrar’s delay in this case would appear to be far from atypical. An examination of the cases commenced with the Center in 2008 that involved the Registrar, and are available on the Center’s publicly-available database of decisions at the time of this decision, would suggest that delays by this Registrar in responding to the Center’s requests of 7 days and above are common place. In particular:
D2008-0025 - Comdot case - 14 day delay
6.9 It can be seen from this that only in two out of the 28 cases listed did the Registrar act in accordance with ICANN’s suggested two day deadline. Further an examination of the published decisions in these cases reveals that in many instances, the information was only provided after many emails from the Center chasing the Registrar for a response. Why it is that the Registrar has been so tardy cries out for an explanation. One possibility is that it has not put the resources in place to deal properly with requests under the Policy. Another is that it is in no hurry to provide information where a delay is in the interests of its customers.
6.10 The Registrar’s response to this issue in the Registrar’s Submission is wholly inadequate. It claims that the delay in the current case (and perhaps earlier cases) was due to “administrative procedures”, but does not provide any explanation of what these administrative procedures might be. It is difficult to see what they could be. Other registrars are quite capable of responding in a timely fashion to verification requests from the Center and there is no apparent reason why the Registrar could not also do so. The assertion of the Registrar that “it takes time to verify and see that the correct details are handed out” makes little sense. As is explained in greater detail later on in this decision, where, as here, a registrar operates a “WhoIs privacy service”, it is required to identify the registration details that it holds on any underlying “true” registrant that lies behind that service. It is difficult to see why this information cannot be promptly retrieved and provided to the applicable provider (at the very least) within ICANN’s suggested two day deadline. No lengthy “verification” or “checking” process should be required. Indeed, the fact that the Registrar claims it needs to go through such a “verification” or “checking” process is of itself concerning (a point that the Panel will return to in the context of a discussion of paragraph 8(a)(i) later on in this decision).
6.11 It is clear that the Panel has not been told the whole story of what is going on here. Whatever is the true reason for these persistent delays, the Registrar’s behaviour is deeply concerning. In order for the UDRP process as a whole to function efficiently, timely registrar verification is essential and all the more so given the now apparently wide-spread offering by registrars and others of privacy and proxy registration services which may obscure the identity and contact information of any underlying “true” registrant. Even more concerning is that there is no statement in the Registrar’s Submission that the Registrar is seeking to address these problems and no reassurance is provided that these delays will not reoccur in future cases.
Multiple Registrants 6.12 The next procedural issue that the Panel has to consider is the fact that prima facie there are four different registrants in this case. This raises the question whether or not these proceedings can continue in respect of all of the Domain Names, or whether they can proceed against one only and that it is necessary for the Complainant to file separate proceedings in respect of the other Domain Names.
6.13 The Policy, Rules, and WIPO Supplemental Rules do not expressly provide for multiple parties in proceedings. Reference is made through out to the “complainant” and “respondent” in the singular. However, there are cases in which multiple complainants have been permitted, particularly where different complainants each have different interests in the same underlying mark (for example, cases of both trade mark owner and licensee interests in a domain name or where different complainants each have different interests in more than one mark combined in a single or number of domain names registered by the same entity). In the opinion of the Panel this is often a sensible practice. It may dispel any doubt as to whether the proceedings of a trade mark licensee are brought with the consent of the licensor and avoids the at least historically difficult question as to whether or not a licensee has sufficient rights for the purposes of the Policy (as to which question see paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”)). For one example of a case in which the issue was expressly addressed and multiple complainants were allowed, see ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008 0936.
6.14 The issue so far as respondents are concerned is more difficult. It cannot be the case that a complainant can bring a complainant in relation to a number of domain names against a number of registrants where there is no plausible connection between the registrants. To join together what are in reality separate proceedings against separate parties into a single complaint merely because each involve the same complainant is essentially an abuse of the Policy. It risks placing an unfair burden on what may be wholly unrelated registrants to answer what are in reality separate complaints, and on panelists who are engaged on a fixed fee basis in accordance with the scale set out in Annex D to the Supplemental Rules. Therefore, if it is to be allowed at all, some further connection between the registrants is required. In this respect, the fact that the domain names share the same mark and were registered using the same proxy or privacy registration service would without more appear to be insufficient to establish the requisite connection between registrants (see, for example, Boehringer Ingelheim Pharma GmbH & Co. KG v. Domains by Proxy, Inc / Pradeep Dadha / Jonathan Valicenti, WIPO Case No. D2006 0465).
6.15 This still leaves open the question what is the correct approach where the same WhoIs privacy service entries are provided in relation to different domains. The Policy and Rules were drafted at a time that these services did not exist, and neither the Policy nor the Rules were drafted with these services in mind. It has been argued that the legality of these services is questionable given the obligation of registrars under paragraph 3.3 of the ICANN Registration Accreditation Agreement (the “RAA”). However, that is not an issue on which this Panel is minded to comment in this case. Whatever the legitimacy of such services, the reality is that they have proliferated. These services are, for good or ill, now a widely established feature of domain name registration services and panels are required to deal with the consequences of this so far as the operation of the Policy and the Rules are concerned.
6.16 One of the difficulties caused by these services is that where a potential complainant believes that multiple abusive domain names have been registered with a single service, it cannot from the WhoIs record tell in advance how many entities are behind these domain names and therefore the number of complaints it may need to file. A complainant cannot be criticised in such a case for filing a single set of proceedings with the Center against the WhoIs privacy service. Indeed, it may in practice have little choice but to do so in order to facilitate access to the identity of any “true” underlying registrant. But then what should the Center, panel, and complainant do where, as here, the registrar in response to the Center’s verification request reveals different registrant details for different names?
6.17 The Center’s typical position in such circumstances was briefly summarized in its email of November 12, 2008. In short, it left it to the Complainant to make certain choices and to the Panel to make certain determinations, but noted that if the Complainant chose to proceed with a single Complaint and the as yet unappointed Panel held that there was no connection between the registrants, the Panel might elect to proceed in respect of one domain name only. It therefore invited the Complainant “to file an amendment to the Complaint or, if no common link between the four entities is found, amend this Complaint and file separate Complaints as determined to be appropriate [by the Complainant]”.
6.18 The Complainant in this case contends, citing Covanta Energy Corporation, supra, that the proceedings should proceed with both the privacy service and the revealed registrants listed as Respondents.
6.19 The Panel accepts that in the Covanta case the panel proceeded on the basis that the privacy service and the individual disclosed in response to the Center’s verification request should be jointly treated as the respondent. Indeed, it is fairly common practice in proceedings where a registrar reveals the “true” registrant behind the privacy service, for both the privacy service and the revealed registrant to be named in the heading of the proceedings.2 6.20 Nevertheless, as is explored in Mrs. Eva Padberg, supra, the Panel believes that the heading used in proceedings under the Policy is simply a matter of administrative convenience. Further, whilst the Panel in Covanta reached its conclusions as to who was the respondent given a consideration of paragraph 1 of the Rules, the question of whether an entity has been correctly named as the respondent for the purposes of the filing of a complaint and what is the entity against whom the assessment of rights or legitimate interests and bad faith is to be judged, are not necessarily the same thing.
6.21 The Complainant may not disagree with any of this and its point is perhaps somewhat more straight forward: i.e., if it was legitimate (or at least no criticism can be levelled against the Complainant) to have filed a single set of proceedings in relation to all of these Domain Names because the same entity was recorded in the Registrar’s WhoIs database at the time of registration, why should it be forced to start its proceedings again with all the associated delay that this involves because when any “true” registration details are revealed these indicate what may be different entities behind the registrations?
6.22 In the Panel’s opinion this is a powerful point3. But similarly, it is also unfair to genuinely unrelated “true” registrants to require them to participate as co-respondents in a single consolidated proceeding, or to expect a panel to have to decide in single case what are essentially multiple proceedings.
6.23 Perhaps in such a case the complainant may not necessarily be required to commence fresh proceedings, and the Panel could direct that upon the payment of appropriate additional fees, the matter could be subdivided into “split” proceedings with each referred to a different panelist or panelists. This approach might have the advantage of allowing the matter to proceed relatively rapidly. It would allow for continuity of “pending” proceedings under paragraph 8(a) of the Policy, and (depending on the circumstances of the case) there might not be the need for the parties to file fresh submissions. However, it is an approach that would require a wide reading of the powers granted to the Panel under paragraph 10 of the Rules and/or the agreement of the complainant pursuant to paragraph 19(d) of the Rules.
6.24 There is also little guidance on this issue in previous cases, and the Panel is not aware of a panel previously making an order of the sort suggested above. The Covanta case involved a single domain name, so the question of how to deal with different respondents did not arise. The Panel also notes that in Boehringer Ingelheim Pharma GmbH & Co. KG, supra, a domain name privacy service revealed two registrants and the panel proceeded in relation to one registrant and that the complaint against the other be “dismissed from this proceeding without prejudice [to the filing of a future complaint]”.