Thursday, April 24, 2008

A caution against use of a privacy service

In Darkside Productions Inc. v. Whois Guard Protected, WIPO Case No. D2008-0263 (Frederick M. Aboott, April 11, 2008), the Panel required the transfer of to the Complainant. The Complainant, an escort services provider, had trademark rights in EROS and a few EROS-formative marks. The Panel found that, because the Respondent provided escort services, EROS was the dominant portion of the domain name. The Panel further found that the Respondent used "hq" in the domain name to signify "high quality," which heightened the confusing similarity between the marks. Given that the Respondent provided competing services to those of the Complainant, the case was a slam dunk.

Interestingly, you will notice that the Respondent is identified as a privacy service. Where an underlying registrant uses a privacy service, some Panels only include the name of the underlying registrant as the Respondent, others include both the underlying registrant and privacy service as Co-Respondents, and still others, as here, solely list the privacy service as the Respondent.

In this case, the Panel sent the Complaint to the privacy service via email, fax, and courier. Attempts to reach the privacy service via fax and courier were unsuccessful. The privacy service apparently did not provide the Panel with any information regarding the underlying registrant.

In some cases, the Panel will hold that use of a privacy service is evidence of bad faith, especially where there is other evidence of bad faith. The Panel did not go that far here: "The Panel does not draw a negative factual inference from Respondent’s use of a privacy shield in its domain name registration." The Panel did, however, raise another caution against using a privacy service: "However, Respondent bears the risk associated with re-transmission of communications by its privacy provider." (Emphasis added.)

In essence, the Panel held that if the underlying registrant provides incorrect information to its privacy service such that it cannot be reached, or if the privacy service fails to transmit the Complaint, the underlying registrant bears the consequences of such failures and may have its domain transferred without notice of the dispute. In light of the foregoing, domain registrants determined to use a privacy service should ensure that the contact information they provide to a privacy service is accurate. Domain registrants should also ensure that their agreements with privacy services require the privacy services to transfer any incoming correspondence generally or at least as to domain disputes.

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