Tuesday, June 3, 2008

Use of privacy service and manipulation of Whois information evidences bad faith

A map of Middle Earth from the famed The Lord of the Rings series







In The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156 (James A. Barker, May 20, 2008), the Panel required the transfer of middleearthonline.com to the Complainant owner of several registrations for the mark MIDDLE EARTH. Unlike J.R.R. Tolkein's epic The Lord of the Rings series, with which the MIDDLE EARTH mark is associated, the Panel's opinion here was thankfully short and to the point.

First, in concluding that the disputed domain was confusingly similar to the Complainant's trademark, the Panel highlighted the fact that the addition of "online" to another's trademark does not obviate confusing similarity:

"The disputed domain name is not identical to [the MIDDLE EARTH] mark. But it is clearly confusingly similar. The only difference between them is the addition of the generic term ‘online’. It is well-established that the addition of that generic term to a widely-known mark is not relevant for the purpose of determining confusing similarity."

The remainder of the decision dealt with the Respondent's attempt to frustrate the UDRP proceedings, primarily by manipulating the listed registrant info in the Whois database. When the Complainant first learned of the disputed domain, the domain registrant was listed in the Whois database as Web Advertising Corp. Shortly after the Complainant wrote to Web Advertising Corp. regarding its rights in the disputed domain, the registrant details were changed to reflect the owner as "Eurobox Ltd," a privacy service. Eurobox Ltd. was listed as the domain registrant at the time the Complainant filed its complaint. Shortly after the filing of the Complaint, however, the underlying registrant's details in the Whois database were again changed, this time "to reflect the name of the Complainant itself." It is not clear if Eurobox Ltd. changed these registration details or if it was the presumed underlying registrant (Web Advertising Corp.) that made such changes. In any event, there is at least one other decision involving Eurobox Ltd. where a similar change in registrant details occurred. See Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”, WIPO Case No. D2007-1792 (Irina V. Savelieva, April 28, 2008).

Once the Panel confirmed that the Complainant did not in fact own the disputed domain, the logical conclusion was that the Respondent was engaging in a pattern of deceptive activity to mask its identity and complicate the UDRP proceedings:

"The attempt by the Respondent to hide its identity, and the change of registration details shortly after the Complaint was filed, to a name that was obviously false, also support a finding of bad faith. That activity suggests that the Respondent has sought to frustrate these proceedings."

Continuing, the Panel held:

"Indeed, the use of a proxy [aka "privacy"] service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’. Taking into account the circumstances of this case, the Panel draws such a negative inference from the Respondent’s use of Eurobox Ltd as a proxy service."

And thus, transfer of the disputed domain to the Complainant was justified.

1 comment:

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