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and Mediation Center
Gaylord Entertainment Company v. Nevis Domains LLC
Case No. D2006-0523
1. The Parties
The Complainant is Gaylord Entertainment Company (sometimes referred to as “Gaylord” or the “Complainant”), represented by Waller Lansden Dortch & Davis, PLLC. The Complainant does business in and its legal counsel is located in Nashville, Tennessee, United States of America.
The Respondent is Nevis Domains LLC, an entity of unknown legal status, of
Saint Kitts and Nevis.
2. The Domain Name and Registrar1
The domain name in dispute <rymanauditorium.com> (hereinafter the “Domain
Name”) is registered with Moniker Online Services, LLC (sometimes referred
to as “Moniker” or the “Registrar”).
3. Procedural History2
A. Complainant’s Unsuccessful Attempt to Identify the Bona
Fide Respondent; Filing of Initial Complaint
Gaylord filed its original Complaint via e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2006.3 However, the Registered Name Holder (“RNH”)4 had availed itself of a Whois Privacy Service5 provided by Moniker6, its Registrar. The privacy service,7 in effect, masked the identity and contact information of the actual or underlying Registrant of the domain name that would normally be available to the public on the Whois Registry Database. Instead, the Registrant’s identity and contact information was replaced with that of the privacy service provider, in this case “Moniker Privacy Services”.
This confluence of circumstances prohibited the Complainant from learning the identity of the Respondent. Accordingly, having no knowledge of the person or entity that was the actual domain holder, the Complainant did the best it could with the negligible information it was able to obtain - Gaylord named the disputed Domain Name itself as the Respondent in its initial Complaint.8
Notwithstanding the potential problem created by identifying the domain name in dispute as a party-Respondent,9 the next day, April 26, 2006, the Center expeditiously transmitted by e-mail to Moniker a request for Registrar verification of information regarding the RNH of the Domain Name at issue. So that, in part, the Center could also comply with the short deadlines provided by Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center expressly requested that Moniker provide the necessary “information within two (2) days.…”
B. Registrar’s Response and Complainant’s Amendment of
A timely response from the registrar was not forthcoming. A week later, on May 3, 2006, the registrar transmitted to the Center its verification response by return e-mail. The Registrar confirmed that it had registered the Domain Name in dispute and identified the Registrant as “Nevis Domains LLC”. The registrar also provided certain details regarding the RNH’s administrative, billing, and technical contacts.
Within a day of receiving the Registrar’s verification information, the Center sent an e-mail to the Complainant explaining that in light of the data supplied by Moniker, that the original Complaint had to be deemed administratively deficient; but that Complainant could, if it so chose, amend its initial pleading in order to name the newly identified domain name holder as a Respondent. Accordingly, the Complainant filed an amendment to the Complaint via e-mail on May 16, 2006. That same day, the Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
C. Commencement of Proceedings
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 May 16, 2006. Pursuant to the Rules, paragraph 5(a), the due date for Response was June 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2006.
Applying the provisions of Paragraph 6(f) of the Rules, the Center appointed Craig Edward Stein as the sole panelist in this matter on July 6, 2006. 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.
Due to unforeseen and exceptional circumstances, pursuant to the Rules, Paragraph
10(c), the Panel was compelled to postpone the decision date. Accordingly, a
final decision date was reset for September 6, 2006, and the decision was transmitted
in accordance with this final schedule.
4. Factual Background
A. The Complainant and its Business Activities10
Gaylord, a Delaware corporation listed on the New York Stock Exchange (NYSE: GET), is a leading hospitality and entertainment company based in Nashville, Tennessee. Some of Complainant’s leisure properties include:
(a) Gaylord Opryland Resort & Convention Center in Nashville, Tennessee;
(b) Gaylord Palms Resort & Convention Center, near Orlando, Florida;
(c) Aston Waikiki Beach Hotel in Honolulu, Hawaii,
(d) Whistler Lodging Company, Ltd., and its more than 600 vacation properties in Whistler, British Columbia, Canada, which is the designated host-site for mountain-related sporting competition events for the 2010 Winter Olympics; and,
(e) Gaylord Texan Resort & Convention Center, on Lake Grapevine, near Dallas, Texas.
The Complainant’s most famous entertainment property, however, is not a hotel or resort; rather it is one of America’s legendary entertainment showcases -the “Grand Ole Opry”.
II. Relationship between the Grand Old Opry and the Ryman Auditorium
(a) The Grand Ole Opry
The Grand Ole Opry’s roots begin in 1925, just five years after the advent of commercial radio in the United States of America. That year a new public service radio station, WSN-AM, began broadcasting original programming from a small office in Nashville, Tennessee. Soon after going on the air, the radio station launched a new program, The Barn Dance, which featured a championship fiddler and other live country music acts. This program’s weekly broadcasts were exceptionally popular, and in 1927, it was eventually renamed the “Grand Ole Opry.”
Because of the program’s ever-increasing fame, fans flocked to the radio station each week, clogging its hallways in order to catch a glimpse of the most prominent country music performers in the country. By 1932, the Grand Ole Opry outgrew the confines of the small radio station and moved to an auditorium capable of holding 500 fans. This facility allowed the Grand Ole Opry to perform and broadcast its show before live audiences.
(b) The Ryman Auditorium
(i) The Early Years (1892-1943)
The Ryman Auditorium (sometimes referred to as “The Ryman”) has a rich history that spans a period of 107 years. Its story begins with a Captain Thomas G. Ryman who, in the latter part of the 19th century, was the owner of the largest Cumberland River steamboat company in Nashville, and a riverboat skipper in his own stead.12 After experiencing a religious conversion, Captain Ryman banned drinking and gambling on all his boats. Perhaps, because of his sobriety, his business flourished. In appreciation of his success and as a tribute to the citizens of the City of Nashville, (and so that Captain Ryman’s pastor would have a place to hold his revivals), in 1892 Captain Ryman financed the construction of a church, the Union Gospel Tabernacle, where famed preachers of the day, such as Billy Sunday, were featured speakers. In 1905, the year after Captain Ryman’s death, the Tabernacle was renamed Ryman Auditorium in his honor.
(ii) The Halcyon Years (1943–1974)
As the Grand Old Opry and its live-radio show grew in popularity, so too did its need for yet an even larger and more suitable performance hall. In June 1943, the Grand Ole Opry resolved its need for a new home by moving into The Ryman. From that moment on, The Ryman Auditorium and the Grand Ole Opry became inextricably linked. For the next three decades, The Ryman served as the Grand Ole Opry’s home. Country music aficionados referred to The Ryman as the “Mother Church of Country Music.” The Ryman also became famous for its almost perfect acoustics, which have been reputed to be second only to the Mormon Tabernacle Choir’s home at the Salt Lake Tabernacle, in Salt Lake City, Utah. Indeed, The Ryman is also known as the “Carnegie Hall of the South”.
(iii) The Latter Years (1974-Present)
Over the next thirty-one years, the Grand Ole Opry became an international entertainment phenomenon. By the early 1970’s, not only would country music fans pack The Ryman, but tourists from all over the country and abroad came to see the Grand Ole Opry’s performances. As had occurred thirty years earlier, the Grand Ole Opry was outgrowing its home. Thus, in 1974, the Opry moved to its current home, which is located by the Gaylord Opryland Resort and Convention Center.
For the next twenty years, The Ryman stood vacant; however, the building never lost its reputation as the true home of the Grand Ole Opry. Eventually, in 1994, the Complainant restored The Ryman at a cost of over $8 million dollars. This extensive renovation converted The Ryman into a nationally renowned showplace for the staging of musical and other theatrical events.13 The Ryman is visited by more than 350,000 people annually and can accommodate 2,362 spectators per performance.
(iv) The Ryman’s Unique Reputation
While best known for its long association with the Grand Ole Opry, The Ryman has also hosted renowned performers from other musical genres, including alternative, bluegrass14, blues, classical, gospel, jazz, pop, and rock. So too, The Ryman has played host to other theatrical talent, including movie stars, television personalities, political figures, and well-known orators. A short, eclectic list of individuals who have appeared on The Ryman’s stage include:
Roy Acuff; James Brown; Patsy Cline; Eddy Arnold; Sheryl Crow; Johnny Cash; June Carter Cash; Garth Brooks; Harry Connick Jr.; Tennessee Ernie Ford; Emmylou Harris; Loretta Lynn; Minnie Pearl; Spike Jones; Reba McEntire; Dolly Parton; Ernest Tubb; Dottie West; Hank Williams;; Tammy Wynette; Tallulah Bankhead; Marian Anderson; Ethel Barrymore; Sarah Bernhardt; Victor Borge; Fanny Brice; James Brown; George Carlin; Enrico Caruso; Carol Channing; Charlie Chaplin; Neil Diamond; W.C. Fields; Betty Grable; Helen Hayes; Katharine Hepburn; Bob Hope; Chet Atkins; Anna Pavlova; Martha Graham; Norman Vincent Peale; Betty Grable; Mary Pickford; Jose Greco; Gene Autry; Elvis Presley; Basil Rathbone; Nijinsky; Victor Borge; Fanny Brice; Roy Rogers; Tex Ritter; William Jennings Bryan; Booker T. Washington; Eleanor Roosevelt; Dinah Shore; Tyrone Power; Hank Snow; Will Rogers; Carrie Nation; Hellen Keller; John Phillip Sousa; Bela Lugosi; Isadora Duncan; Jeanette MacDonald; Nelson Eddy; Douglas Fairbanks; Bob Dylan; Bruce Springsteen; Harpo Marx; Orson Welles; W.C. Fields; and Mae West.
Similarly, The Ryman Auditorium has been featured in several movies, including Robert Altman’s Nashville (1975) starring David Arkin, Ned Beatty, and Karen Black; Coal Miner’s Daughter (1980) starring Sissy Spacek and Tommy Lee Jones; and Sweet Dreams (1985) starring Jessica Lange and Ed Harris.
In 2001, The Ryman Auditorium’s important contribution to the development of American country music and the arts was recognized when it was designated a National Historic Landmark (No. 71000819) and included in the National Register of Historic Places.
C. Complainant’s Other Business Ventures
The Complainant also owns the radio station that first broadcasted the Grand Ole Opry: WSM-AM. In addition, the Complainant owns and operates two hotel brands: Gaylord Hotels, which is the Complainant’s network of upscale, meetings-focused resorts; and ResortQuest International, the nation’s largest Vacation Rental-Property Management Company. The Complainant’s entertainment brands and properties also include the Radisson Hotel Opryland, General Jackson Showboat, Springhouse Golf Club, and Wildhorse Saloon. Of course, the Complainant also owns the Grand Old Opry, which, even after 78 consecutive years, continues to present a weekly show that features country music’s finest performers.
D. Complainant’s Intellectual Property Rights
(i) Complainant’s Registered Trademarks and Service Marks
Gaylord is the owner of four trade and service marks contained in the following list.15 All four marks are entered on the Principal Register at the United States Patent and Trademark Office (“USPTO”).16
IC 41; US 100 101 & 107: for entertainment
services, namely, live music concerts, theater productions, television
programs in the field of variety
June 23, 1995
February 2, 1999
IC 41; US 107: for entertainment services,
namely, live music concerts, theater productions, television programs
in the field of variety
IC 41: US 107: for entertainment services,
namely, live music concerts, theater productions, television programs
in the field of variety
December 13, 1994
IC 14,16, 20,.25, 28; US 2, 5, 13, 22, 23,
25, 27, 28, 29, 30, 32, 37, 38, 39,& 50: for jewelry, namely, bracelets,
costume jewelry, earnings, horological instruments, namely, clocks, decorative
pins not of precious metal, printed matter, namely, bookmarks, bumper
stickers, souvenir programs featuring performances at the Ryman, decals,
picture postcards; souvenirs, namely, hand fans, leather key rings, plaster
statutes; clothing, namely, T-shirts, bandannas, vests, sweat shirts and
pants, sports shirts, jackets neckerchiefs, and caps; and games and toys,
namely, toy banks, Christmas tree ornaments, plush toys, yo-yos
(ii) Gaylord’s Registered Domain Names and Web Sites
In addition, the Respondent holds several domain names through which it conducts its various businesses. These include, among others, <gaylordhotels.com>;21 <gaylordentertainment.com>;22 <resortquest.com>;23 and, <ryman.com>24, the last of which resolves to the Complainant’s official Ryman Auditorium website. A visitor to the Ryman Auditorium website can, inter alia, check on upcoming events, purchase tickets, request room reservations for private functions, learn about the history of the landmark venue, obtain employment information and view items that are for sale at The Ryman’s gift shop. In addition, the website contains click-through links to other Gaylord websites where reservations at Gaylord’s other entertainment and leisure properties can be made.
B. The Respondent and the Web site to which <rymanauditorium.com>
(i) The Respondent and its Business Activities
The disputed Domain Name was initially registered on July 25, 2003 - ten years after the Complainant first filed its application for trade and service marks with the USPTO, and almost a century after The Ryman Auditorium acquired its name. However, because of the Respondent’s use of a privacy service, the inaccuracy of certain information submitted to Moniker’s Whois database and the lack of any response from the Respondent, it appeared that very little else could be ascertained about Nevis Domains, including whether it is even an actual entity.
For example, although the name of the Respondent might suggest that it is a Nevian limited liability company, other Whois contact information, such as the phone number that is listed for technical, billing, and administrative matters seems to contradict this assumption. The one phone number that was provided contains both an internal contradiction and a glaring technical impossibility. First, the phone number begins with the country code of (809). However, the (809) telephone country code is designated solely for the Dominican Republic and not for The Federation of St. Kitts and Nevis, which is (869). Secondly, the phone number contains too many digits.
In addition, although the Center sent Respondent the Notification of Complaint and Commencement of Administrative Proceeding via courier to the physical address in Nevis that was listed in Moniker’s Whois database, that package was returned to their headquarters in Geneva as not deliverable.
Assuming for the moment that Nevis Domains is actually a Nevian limited liability company, then obtaining any of the information about the RNH from the Nevian Ministry of Finance, where the records for entities incorporated in that jurisdiction are maintained, would be well-neigh impossible. Pursuant to the Nevis Limited Liability Company Ordinance of 1995 as amended through the January 1, 2002, and the Confidential Relationships Act, 1985 of The Federation of St. Kitts and Nevis, such basic information as a physical address, telephone or fax numbers and e-mails addresses are simply prohibited from disclosure to anyone who is not a member of the LLC.
However, this much is known: recently, Nevis Domains LLC, or entities with almost identical names, have been appearing in several UDRP cases as named Respondents that have been found to have registered and used domain names in bad faith. These cases include:
1. Houston McLane Company, Inc. d/b/a The Houston Astros Baseball Club v. Nevis Domains LLC, NAF Claim Number: FA0602000650935 (April 10, 2006).
2. Sanofi-aventis v. Nevis Domains LLC, WIPO
Case No. D2006-0303 (May 8, 2006).25
3. American Automobile Association, Inc. v. Nevis Domains LLC, WIPO
Case No. D2006-0489 (June 13, 2006).26
4. Barratt American Inc. v. Nevis Domains LLC., NAF Claim Number: FA0605000701239 (June 21, 2006).
5. Olympic Airlines v. Nevis Domains LLC., NAF Claim Number: FA0605000702585 (June 27, 2006).
6. Baltimore Orioles, L.P., d/b/a The Baltimore Orioles Baseball Club v. Nevis Domains, NAF Claim Number: FA0605000707606 (June 29, 2006).
7. MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO
Case No. D2006-0550 (July 7, 2006).27
8. Walter E. Smithe Furniture, Inc. v. Nevis Domains, WIPO
Case No. D2006-0580 (July 14, 2006).28
9. Woodforest National Bank v. Nevis Domains, NAF Claim Number: FA0606000728791 (July 27, 2006).
10. Disney Enterprises Inc. v. Nevis Domains, NAF Claim Number: FA0606000739876 (August 11, 2006).
11. Symantec Corporation v. Nevis Domains, WIPO
Case No. D2006-0747 (August 16, 2006).29
In addition to the eleven above-listed cases, there is one other UDRP decision that bears mentioning: Athenahealth Inc. v. Mighty LLC, NAF Claim Number: FA0502000430934 (April 6, 2005).30 In this matter, Moniker also served as the Registrar for the Respondent, Mighty LLC. The address that was provided from Moniker’s Whois for Mighty LLC was the same as the one provided for Nevis Domains in both the Baltimore Orioles and the Woodforest National Bank UDRP proceedings.
(ii) Website to Which the Domain Name <rymanauditorium.com>
As a part of its proof, Gaylord attached to its original Complaint as Annex
J - a two-page print out of a computer screen-shot taken on April 24, 2006 of
the web pages that the Domain Name <rymanauditorium.com> resolved on that
day. The first page shows a typical landing page31
with a search portal and several click-through buttons for various “related
searches.” The second page shows the list of “Sponsored Results”
after a “click-through” button on the landing page entitled “Buy
Concert Ticket” was engaged.
In addition, Complainant’s Annex P contains four pages that relate to previous versions of the web page to which the Domain Name <rymanauditorium.com> had resolved in the past. These documents were obtained by Gaylord via the Internet Archive’s Wayback Machine. See, http://www.archive.org/web/web.php.32 The first page provides a list of the dates for which the Internet Archive has a copy of what appeared on the web page to which the disputed Domain Name resolved. That list contains 13 dates with the first entry being September 24, 2003 and the last date of March 8, 2005. The second page shows what appeared on the website on March 11, 2005; the third page shows the webpage from April 13, 2004; and the final page is the website as it appeared on March 3, 2004. All three web pages have different formats; but all three have one common denominator: they contain various types of landing pages.
The Panel conducted its own review of the websites to which the disputed domain name had resolved over the past three years via the Wayback Machine as well. However, most likely, because the search was conducted after the Complaint in this matter was filed, that review was hampered in part by the use of robot.txt software.33 Nonetheless, alternative methods were available to retrieve most websites that, at one time or another, the Domain Name in dispute resolved with the added benefit that the web pages that have appeared since the Complaint was filed could also be analyzed.
Interestingly, while the disputed domain name has been active, the RNH utilized the services of three companies that provide domain name parking.34 Although Moniker offers a similar service through its “strategic partner www.TrafficClub.com,”35 apparently its Registrant determined to park the disputed domain name elsewhere.
C. The Parked Domain and Respective Landing Pages
The first landing page, which appeared on September 24, 2003, was a bare-bones template from DomainSpa, LLC (“DomainSpa”), a New Jersey limited liability company.36 The page contains what is essentially a typed paragraph that promotes the “parking” of domains that are under development. At the conclusion of the statement, there is a single hyperlink, which if activated, takes the visitor to what was then the web homepage for DomainSpa37. Once at the DomainSpa website, the visitor could read about the various services DomainSpa provided, including paying any RNH a fee if they parked their domains with its service.
DomainSpa has previously been a UDRP respondent and has been found to have
participated in bad faith registrations. Just last year, in A.V.M. Software,
Inc. d/b/a Paltalk v. Papete.com and Igal Lichtman a/k/a Mrs. Jello LLC a/k/a
Exoticdomains.net a/k/a domainsspa.com, WIPO
Case No. D2005-0917 (November 6, 2005), the panel determined that
DomainSpa, which had been initially listed as the administrative contact for
the disputed domain name, was actually one of many pseudonyms that were utilized
by another Respondent, Igal Lichtman. Mr.
Lichtman was found to have “registered over 6,000 domain names using one
or more aliases” (such as DomainSpa).
The website underwent a transformation on or about March 3, 2004. At that point, the webpage to which <rymanauditorium.com> resolved contained a more fully-developed landing page template. The new website displayed the typical features found in most basic landing pages: links grouped in broad subject categories and a generic search engine. A banner at the top of the page read “Information.com.” By January 22, 2005, while the form of the page remained unchanged, the header had been replaced to reflect the disputed domain name itself: “Rymanauditorium.com.” By checking the properties embedded within this particular web page, it is apparent that the disputed domain name was now parked with a different vendor: DomainSponsor.com.38
DomainSponsor.com has also not been a stranger to UDRP proceedings and the
use of its domain name parking and landing page services have supported findings
that a disputed domain name had been registered and used in bad faith. See,
e.g., Lo Monaco Hogar S. L. v MailPlanet.com, Inc, WIPO
Case No. D2005-0896 (December 2, 2005); Sanofi-Aventis, Aventis Pharma
SA and Aventis Pharma Deutchland GmbH v. 1N4 Web Services, WIPO
Case No. D2005-0938 (November 24, 2005); Herbalife International, Inc.
v. Surinder S. Farmaha, WIPO Case No.
D2005-0765 (October 3, 2005); Wal-Mart Stores, Inc. v. Modern Limited
- Cayman Web Development, Domain Administrator, WIPO
Case No. D2005-0322 (May 24, 2005); PepsiCo, Inc. v. LaPorte Holdings,
Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO
Case No. D2005-0087(March 31, 2005); BWT Brands, Inc. v. Domains By Proxy,
Inc., WIPO Case No. D2005-0105
(March 13, 2005); B and J Garcia, S.L., Arnedo, Spain v. Gorila, WIPO
Case No. D2004-1071 (March 4, 2005); Lowen Corporation d/b/a Lowen Sign
Company v. Henry Chan, WIPO Case No. D2004-0430
(August 5, 2004); Southern Communications Services, Inc. d/b/a Southern LINC
v. Henry Chan, WIPO Case No. D2004-0214
(May 10, 2004); Deloitte Touche Tohmatsu v Henry Chan, WIPO
Case No. D2003-0584 (September 7, 2003); and Ameriquest Mortgage Company
v. Ling Shun Shing, WIPO Case No. D2003-0294
(June 9, 2003).
On or about March 8, 2005, the website changed a third time. The web page from this point forward are classic templates offered by Hitfarm.com (“Hitfarm”)39, which is a web-hosting company that offers pay-per-click (“PPC”) advertising portals.40 However, Hitfarm requires that its clients maintain a minimum of “hits”41 to their domain or, more often, portfolio of domains, to participate in its “Program.” See, http://hitfarm.com/index.php?action=terms. The first version of Hitfarm-hosted website to which the disputed domain name resolved is what Hitfarm terms a “1-Click Lander” that displays “the advertisers directly to the user, thus the name, as only ‘one-click’ is required for revenue to be generated. This type of lander works well for domains with [clear-cut] targeted traffic where there is little doubt what the user is searching for.”42
More recently, when the Panel viewed the website to which <rymanauditorium.com> resolved, the template was changed to Hitfarm’s “2-Click or Related Lander” model. As explained by Hitfarm, this type of landing page “will not display the advertiser links directly to the user, but rather keyword links that are related to the subject matter of the domain. When a user clicks on one of the related keyword links, he or she will be presented with the advertisers directly; thus, two clicks are required for revenue to be generated. This type of lander works well for domains where the user could be searching for any number of topics and/or to track user behavior.”43
Similarly, the most recent landing page shows both a definite theme with large attractive pictures of generic tickets that could be used for a concert, movie, or other theatrical event. At the top of the page is a large colorful GIF44 that contains the disputed domain name <rymanauditorium.com>. Just beneath the GIF is phrase that apparently expresses the landing pages theme and targeted keywords: “For resources and information on Jimmy Buffett tickets and Ryman Auditorium Schedule.” This web page format is all consistent with the Hitfarm Program. See, http://www.hitfarm.com/index.php?action=step5 (“domain themes are paired with matching images and keywords to increase click-throughs”).
That the RNH has parked the disputed domain name at Hitfarm is further confirmed by the limited Whois data that the Complainant was able to submit, See, Annex A and B, which shows that the disputed domain name’s servers are “ns1.hitfarm.com” and “ns2.hitfarm.com.”45
Although Hitfarm does collaborate with other registrars, See, PepsiCo, Inc.,
v. Forum LLC, WIPO Case
No. D2005-0737 (September 13, 2005), and
Moniker’s domain parking program “TrafficClub.com is a gateway
to multiple PPC providers,”46
Hitfarm is not listed among those companies that participate with TrafficClub.47
In any event, Hitfarm has been identified in previous UDRP cases as providing
the types of services described here. See, Yahoo! Inc. and Overture Services,
Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a
XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO
Case No. D2004-0896 (December 30, 2004). See generally, 2018120 Ontario
Inc. dba BattleGoat Studios v. Port Media, WIPO
Case No. D2006-0120 (May 17, 2006).
The only uncertainty about the Respondent having parked the disputed domain name with Hitfarm arose when the Panel conducted an additional Whois search of the disputed domain name in the directory of WebHosting.Info.48 This review was conducted because WebHosting.Info collects additional information regarding domain names that would be relevant to, what it terms “the Web Services industry - Hosting Companies, Registries, Domain Registrars, [and] Data [C]enters.” See, http://directi.com/businessunits/webhosting-info This supplementary data is then included in its Whois database.
Here, the WebHosting.Info Whois data identified the
disputed domain name’s “Hosting Company” as “DomainDeluxe.com.”
However, upon further inspection it became apparent that DomainDeluxe is the
entity that serves as the “formal” web hosting company for Hitfarm.
Both entities are based in Hong Kong, SAR of China. Ironically, the domain name’s
<hitfarm.com> Whois information states that it is hosted by DomainDeluxe.com
(although Hitfarm has a full, interactive registration website.) On the other
hand, <domaindeluxe.com> resolves to a landing page which is, perhaps
not surprisingly, one of Hitfarm’s “1-Click Landers” with
a precisely targeted theme listing subjects such as “Web Hosting,”
“Domain and Names,” and “Buy a Domain.” Finally, DomainDeluxe
has been a respondent in past UDRP proceedings where the domain name in dispute
has been ordered to be transferred. See, Teachers
Insurance and Annuity Association of America v. Domain Deluxe, WIPO
Case No. D2005-1228 (January 25, 2006); Council
of Better Business Bureaus, Inc v. Domain Deluxe, WIPO
Case No. D2005-0614 (October 7, 2005); Blue Cross and Blue Shield Association
(BCBSA) v. Domain Deluxe, WIPO Case No.
D2005-0209 (April 5, 2005); Sociйtй BIC v. Domain Deluxe, WIPO
Case No. D2005-0369 (June 2, 2005); Humana Inc. v. Domain Deluxe,
WIPO Case No. D2005-0231 (May 10, 2005);
Groupe Lactalis and BSA. v. Domain Deluxe, WIPO
Case No. D2003-0314 (June 23, 2003); Z-Tel Technologies, Inc., v. Domain
Deluxe, WIPO Case No. D2001-1427 (February 20, 2002)
(DomainDeluxe found by panel to have “engaged
in a pattern of conduct of registering domain names similar to existing trademarks
and service marks and offering them for sale at prices representing a considerable
profit over their direct costs of registration”).
5. Parties’ Contentions
(i) Identical or Confusingly Similar
The Complainant argues that the domain name <rymanauditorium.com> is identical or confusingly similar to its registered trademarks and service marks, which Gaylord maintains, are now incontestable. (See, 15 U.S.C. § 1065) Accordingly, the Complainant asserts that it has the exclusive right to use the marks and is therefore entitled to pursue all legal remedies to prevent others, such as Respondent, from exploiting its value.
In addition, the Complainant asserts that it has attained common law trademark rights in both the word “RYMAN” and the term “Ryman Auditorium.” To support its claim under this alternative legal theory, Gaylord refers the Panel to the substantial time, expense, and effort it has expended in acquiring and rehabilitating The Ryman Auditorium and returning it to its former grandeur.
Finally, Gaylord points out that the addition of the generic Top Level Domain (“gTLD”) of “.com” to its trademark has no effect on its rights nor does it provide the Respondent any relief.
(ii) Rights or Legitimate Interests
Gaylord also asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name for a number of reasons.
(a) The Respondent is using the Complainant’s marks without its permission.
(b) The Respondent is using the disputed Domain Name to trade on the goodwill and recognition of its trademarks for the sole purpose of obtaining revenue by providing paid advertisement links and commercial “pop up” advertisements. This is not a “bona fide offering of goods or services” as those terms are used in Paragraph 4(c)(i) of the Policy.
(c) The Complainant also maintains that the Respondent can have no legitimate use for the Domain Name because Gaylord’s trademarks provide the Complainant with the right to those marks exclusive use.
(d) Gaylord maintains that there is no evidence whatsoever that the Respondent is utilizing the website in connection with a bona fide offering of goods or services.
(e) So too, there is no evidence that the disputed Domain Name is in any manner connected to the Respondent or is a name that is commonly used by the Respondent.
(iii) Registered and Used in Bad Faith
The Complainant’s arguments that the Domain Name was registered and is being used in bad faith are as follows:
(a) The Complainant maintains that the Respondent has intentionally attempted to attract Internet users by confusing them with Complainant’s trademarks, and then deriving income from advertisers when visitors to the Respondent’s website utilize either the search engine or the advertising links.49
(b) Most of the links on the website to which <rymanauditorium.com> resolves are connected to ticket brokers that are not affiliated with the Complainant. The Complainant contends that these brokers sell tickets for events held at The Ryman Auditorium at a premium.
(c) So too, the Complainant argues that because the ticket brokers are not affiliated with Gaylord, they will and do sell tickets to events at competing venues when the customer might have initially been interested in seeing a particular event at The Ryman.
(d) Complainant also contends, “on information and belief,” that the Respondent’s primary intent in registering the Domain Name in dispute was “for the purpose of selling, renting or otherwise transferring” the Domain Name to Gaylord “for valuable consideration in excess of its documented out of pocket costs.” See, Complaint at Para 32.
(e) Complainant’s next point is that the Respondent knew that its registration of the Domain Name would prevent Gaylord from reflecting its trade and service mark in its own domain name.
(f) Finally, after the Center provided the Complainant with the Whois information obtained from Moniker that identified Nevis Domains LLC as the RNH of the disputed Domain Name, Gaylord asserted one additional argument. The Complainant refers the Panel to the recently issued UDRP decision of Houston McLane Company, Inc. d/b/a The Houston Astros Baseball Club v. Nevis Domains LLC, NAF Claim Number: FA0602000650935 (April 10, 2006). Complainant argues that just as in the Houston Astros v. Nevis Domains case, so too here, the same Respondent was “using the disputed [D]omain [N]ame to operate a website offering links to third-party commercial websites selling tickets to [events held at Complainant’s place of business] as well as merchandise bearing the [Complainant’s] mark without Complainant’s authorization.” Accordingly, Gaylord urges that this Panel to grant the same relief as the Panel did in the Houston Astros v. Nevis Domains decision: transfer of the disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.50
6. Discussion and Findings
A. Preliminary Issues
Before proceeding to the three substantive issues that must be decided in all UDRP proceedings, three other related matters need to be addressed.
I. First Preliminary Issue: Registrar’s Verification of the Domain
Prompted by the Registrar’s unexplained response time to the clarification request, the Panel took a closer look at both the submissions in this case as well as a sampling of other recent UDRP decisions in which Moniker had registered one or more disputed domains names. The purpose for undertaking this review was to ascertain whether the registrar’s action here was simply an aberration or, rather, an indication of a pattern of conduct. In so doing, the Panel utilized technology that is publicly available, such as the WIPO Search Tool at the WIPO website, See, http://arbiter.wipo.int/domains/search/index.html, and the National Arbitration Forum’s (“NAF”) Domain Name Dispute Proceedings and Decisions Database search engine, See, http://fomains.adrforum.com/decision.aspx.
Unfortunately, the review showed that this case was not the first time that Moniker has inexplicably impeded a UDRP proceeding. Indeed, it seemed to be the exception, rather than the rule, when Moniker replied to a Provider’s verification inquiry within two days or less. The following descriptive list of UDRP decisions best illustrates this point.51
1. Lawfinders Associates, Inc. v. Ultimate Search, WIPO
Case No. D2004-0163 (May 28, 2004) (“On March 3, 2004, the Center
transmitted by email to Moniker … a request for registrar verification
in connection with the domain name at issue. On March 12, 2004, the Center transmitted
by email to Moniker … a reminder of the request for registrar verification.”
The response was sent the next day making the total period of delay 10 days).
2. Ryder System, Inc. v. Domain Asia Ventures, WIPO
Case No. D2004-0389 (August 2, 2004) (with two domain names in dispute,
one Registrar replied to the Center’s verification request in one day;
Moniker took ten (10) days to respond).
3. Kip Cashmore v. URLPro, WIPO Case
No. D2004-1023 (March 14, 2005) (Moniker delays verification by eight (8)
4. Yell Limited v. Ultimate Search, WIPO
Case No. D2005-0091 (April 6, 2005) (Moniker’s verification response
delayed for nineteen (19) days).
5. ESPN, Inc. v. XC2, WIPO Case No.
D2005-0444 (June 28, 2005) (Moniker does not provide domain name verification
for twenty-two (22) days).
6. Grupo Televisa, S.A. , Televisa, S.A. de C.V. , Comercio Mбs, S.A. de
C.V. , Estrategia Televisa, S.A. de C.V. , Videoserpel, Ltd. v. LaPorte Holdings,
WIPO Case No. D2005-0590 (August 3, 2005)
(in a case challenging 82 domain names, 81 of which were registered with a Registrar
other than Moniker, all 81 domain names verified within one day; the one domain
name registered by Moniker was not verified for thirteen (13) days).
7. Winshape Centre, Inc. v. Domains Ventures, WIPO
Case No. D2005-0885 (November 4, 2005) (Moniker delays verification response
for twenty (20) days)52.
8. John Tesh v. Payphone Search LLC, WIPO
Case No. D2005-0894 (November 21, 2005) (Moniker verification delay of twenty
9. The Fine China and Porcelain Companies Limited,
and Royal Worcester and Spode Limited v. Domain Admin, WIPO
Case No. D2005-1015 (December 5, 2005) (Moniker delays verification for
10. Nike, Inc. v. Domain Admin c/o Payphone Search LLC, NAF Claim Number: FA0510000579896 (December 9, 2005) (Moniker delays verification by nine days).55
11. Renaissance Learning, Inc. v. Domain Administrator a/k/a Payphone Search LLC, NAF Claim Number: FA0510000578633 (December 14, 2005) (Nine-day delay before Moniker verifies registration information).56
12. 1451 International Ltd. and Second Renaissance, LLC v. Steven Levine
c/o DomainSystems, Inc., NAF Claim Number: FA0510000583774 (December 22, 2005) (Ten-day delay).
13. Ent Federal Credit Union v. Registrant 22181, WIPO
Case No. D2005-1070 (December 16, 2005) (“On October 12, 2005, the
Center transmitted by e-mail to Moniker … the first request for registrar
verification in connection with the domain name at issue. On October 27, 2005,
after four requests from the Center, Moniker … finally transmitted by
e-mail to the Center its verification response”) (Emphasis added). In
sum, the late verification added an additional fifteen days to the period before
which the Center could formally commence the proceedings.
14. Biofarma v. UltimateDomains.com/Jarred Cohen, WIPO
Case No. D2005-0979 (January 4, 2006)(Six domain names in dispute, Registrar
with one domain name verifies within one day; Moniker delays verification of
remaining five domain names for nine days).
15. My Diamond Place, Ltd v. Domains Ventures, WIPO
Case No. D2005-1276 (January 31, 2006) (verification of registration information
sent by Moniker eight days after request sent via e-mail).
16. Intuit Inc. v. Nett Corp., WIPO
Case No. D2005-1206 (February 20, 2006) (Moniker delays verification for
17. Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO
Case No. D2006-0006 (March 20, 2006) (Moniker delays registrant verification
for seven days).
18. Chicago White Sox, Ltd. d/b/a The Chicago White Sox Baseball Club v. Hong Kong Names LLC, NAF Claim Number: FA0602000642531 (April 10, 2006) (Moniker delay of verification for between eight (8) to eleven (11) days).57
19. Patelco Credit Union v. Hong Kong Names LLC, WIPO
Case No. D2006-0202 (April 27, 2006) (Moniker delay of verification information
for eighteen (18) days).58
20. Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation,
Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications
and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant (187640)
firstname.lastname@example.org, WIPO Case No. D2006-0478
(June 12, 2006) (Eight-day delay verification inquiry; Moniker confirms one
disputed domain name had been shielded by its privacy service; Moniker remains
named Respondent in decision).
21. American Automobile Association, Inc. v. Nevis Domains LLC, WIPO
Case No. D2006-0489 (Jun 13, 2006) (“On April 19, 2006, the Center
transmitted by email to Moniker … its first request for registrar verification
in connection with the Domain Name. After repeated attempts to contact Moniker
on May 3, 2006, the registrar transmitted by e-mail to the Center its verification
response” or a verification delay of fourteen (14) days).
22. ING North America Insurance Corporation v. Web Domain Names, WIPO
Case No. D2006-0455 (June 20, 2006) (Moniker delayed responding to verification
request for fourteen (14) days).
23. MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO
Case No. D2006-0550 (July 7, 2006) (“On May 2, 2006, the Center transmitted
by email to Moniker Online Services, LLC its first of six requests for registrar
verification in connection with the domain name at issue. On May 12, 2006, Moniker
Online Services, LLC transmitted by email to the Center its verification response.”
(Emphasis added). In other words, the verification was delayed for ten (10)
24. Walter E. Smithe Furniture, Inc. v. Nevis Domains, WIPO
Case No. D2006-0580 (July 14, 2006) (Moniker takes eight days to respond
to verification request).
25. Symantec Corporation v. Nevis Domains, WIPO
Case No. D2006-0747 (August 16, 20006). (Ten-day delay between verification
request and reply).
Of course, these delays frustrate one of the main goals of the UDRP mandatory administrative proceedings: to expeditiously resolve disputes regarding domain names that allegedly infringe upon another party’s rights and were registered in bad faith. Thus, it is difficult to comprehend why any Registrar would not immediately respond to an ICANN dispute-resolution Provider’s verification request. Moreover, because each Registrar maintains its own Whois database, all that needs to be done is to retrieve the information it has entered on behalf of its own client.
Late last year, one panelist “encourage[d Moniker] in future cases to
cooperate more readily with the Center in expeditiously notifying responding
parties that proceedings have been brought against them under the Policy.”
John Tesh v. Payphone Search LLC, WIPO
Case No. D2005-0894 (November 21, 2005). Since that time, another seventeen
UDRP decisions59 have
been issued in which Moniker’s response time was between seven and eighteen
days. Thus, that Panel’s admonition does not seem to have had any effect.
Hopefully, however, this matter will be addressed promptly so that whatever
the underlying problem, it can be resolved for the benefit of all parties.
II. Preliminary Issue No. 2: Accuracy of Moniker’s
A review of the above-referenced cases revealed a
second problem: the unreliability of the information contained in Moniker’s
Whois database. At the outset, it should be noted that this issue is not about
privacy services or their effect on UDRP proceedings, See, e.g., Antonio
de Felipe v. Registerfly.com, WIPO Case
No. D2005-0969 (December 19, 2005); Building Trade 1868 Kft. v. RegisterFly.com,
WIPO Case No. D2006-0396 (June 12, 2006), nor
does it concern matters that are beyond a Registrar’s control, such as
a RNH providing false information. Rather, the problem, as documented in many
of the footnotes to the UDRP decisions cited above, concerns (a) missing information
that the RAA mandates that a Registrar obtain, and (b) information that is obviously
contradictory or erroneous.
With regard to the first point, little need be said. The RAA states, in relevant part, that a Registrar must obtain the following information about its Registrants:
18.104.22.168 The name and postal address of the Registered Name Holder;
22.214.171.124 The name, postal address, e-mail address, voice telephone number, and (where available) fax number of the technical contact for the Registered Name; and
126.96.36.199 The name, postal address, e-mail address, voice telephone number, and (where available) fax number of the administrative contact for the Registered Name.60
Indeed, the Moniker Registration Agreement61
at Paragraph 4, entitled “ACCURATE INFORMATION” conforms to the RAA.
reference into its Registration Agreement, expressly requires its Registrants
to provide “[p]ersonal information is requested when you register to be
a client. During registration, you are asked to provide your name, email address,
birth date, gender, postal or zip code, occupation, industry and personal interests,
these provisions, in many instances a country, province or city might be identified,
but a “postal address” was lacking. With regard to the second point,
Moniker’s data was rife with mismatches between cities and countries, phone
numbers and cities and contained other errors that were so obvious that such information
should never have been entered into its Whois system. Again, this matter needs
the immediate attention of the concerned parties.63
III. Preliminary Issue No. 3: The Identity of the Registered Name Holder
Finally, the review of: (i) all the UDRP cases cited above; (ii) the Whois information and corporate documents publicly available regarding the various respondents and others identified in those cases as related to the respective respondents, and; (iii) the Whois information regarding <rymanauditorium.com> provided by Network Solutions, LLC, which includes additional data such as “thumbnail[s] of the Web site home page with traffic ranking, meta descriptions, keywords and more;”64 and other entities revealed the following:
Upon undertaking the above-listed tasks, it became apparent that the respondent in this case, Nevis Domains LLC, had some relation to certain past UDRP Respondents or their associated parties. These entities include S. A. Inc. a/k/a S A Inc., SAI Domains, MyDotCom.Com, LLC, DotComEmail.com, and Payphone Search LLC. One such connection was a common contact address, “S. US Highway 1, PMB 168, Jupiter, FL USA 33477.”65 Thus, by more carefully reviewing the respective UDRP Provider’s decision databases, and reviewing the publicly available corporate records of these companies, the relationships between the various entities, which before had been less than transparent, became patently obvious.
(a) The UDRP Decisions
(i) WEB2YOU, INC. v. MYDOTCOM.COM, eResolution Case Number AF-0268 (August 7, 2000)
The connection between these entities can first be found in the case of WEB2YOU, INC. v. MYDOTCOM.COM, eResolution Case Number AF-0268 (August 7, 2000).66 The Respondent was a Florida limited liability company, MyDotCom.Com, LLC (“MyDotCom.Com”), which was owned by John J. “Jack” Ford. Florida’s publicly available corporate records list a business address of S. US Highway 1, PMB 168, Jupiter, FL USA 33477. MyDotCom.Com operated “a free web based e-mail site” at a website to which the domain name <dotcomemail.com>67 resolved. According to the URDP panel, MyDotCom.Com would register “attractive” domain names and then solicit customers by allowing them to utilize these domain names as the Second-Level Domain (SLD) in their private e-mail address. For example, the Respondent would register a domain name such as “xyzbrand.com”. Then because the registered domain name would be used as the SLD of an e-mail address, the Respondent’s client would be assigned the e-mail address of Client Name@xyzbrand.com. Because the e-mail service was free, revenue was generated through advertising. At the time the UDRP proceeding was filed, MyDotCom.Com had already registered 1,100 domain names.
The fatal flaw with MyDotCom.Com’s business plan, however, was that the most sought after names were those that reflected well-known brands and trademarks. When it discovered this fact, the Respondent simply went out and registered as many well-known brands as possible. Accordingly, among its portfolio of registered domain names were “Ford, BMW, Air Jordan, Budweiser, Harley, Honda, Toyota, Olympics, Lexus, Mazda, Mercedes, Mustang, and NASDAQ.” Thus, the Panel had no problem in concluding that “[i]n short, the Respondent is a domain name pirate. … [I]t is not legitimate to register trademarks of others as domain names for the purpose of leasing them.” (Emphasis added).
After the WEB2YOU case was decided, MyDotCom.Com, LLC was administratively dissolved by the State of Florida because its officers did not file an annual report nor did they pay their annual fees.68 However, the domain names <mydotcom.com> and <dotcomemail.com> are still registered, but all information concerning the RNH is currently shielded by Moniker’s Privacy Service. Of course, these two domain names were not always so protected. Before information concerning the Registered Name Holders was blocked from public view, the Whois information concerning both <mydotcom.com> and <dotcomemail.com> gave the following information for the Registrant and its administrative, technical, and billing contacts:69
- S. A. Inc.
- Host Master (email@example.com)
- [Phone] +1.5617484033
- FAX: +1.5615750377
- 4300 South U. S. Highway 1 PMB 168
- Jupiter, FL
In addition, both domain names currently use the same Hitfarm Domain Servers that service <rymanauditorium.com>; the Whois data for both domain names states: “Web Site Status: Parked”; and both webpages to which each domain name resolves are classic Hitfarm.com 2-Click Landers.
(ii) The Gillette Company v. S. A. Inc., NAF Claim Number: FA0010000095892 (December 18, 2000)
Perhaps because the owner of MyDotCom.Com, LLC, decided to abandon that entity after the WEB2YOU decision, in the next UDRP proceeding in which DotComEmail.com makes an appearance it has a new owner, S.A. Inc., which also became the named Respondent. See, The Gillette Company v. S. A. Inc., NAF Claim Number: FA0010000095892 (December 18, 2000). In the Gillette case, S.A., Inc. provides the same address in Jupiter, Florida: “S. US Highway 1, PMB 168,” and once again, the Respondent is described as “the owner and operator of DotComEmail.com, a free web based e-mail service.” However, in only a few months, the portfolio of domains names that have been registered had increased to “over 1500” but the same problem persisted as the domain names were “based on famous marks, such as Air Jordan, Budweiser, Heineken.” In addition, the Respondent found a new method in which to expand its domain name portfolio. As the Panel explained “[s]ometimes the Respondent couples the famous mark with another descriptive noun to create the domain name,” or it would register famous marks “coupled with descriptive nouns or pluralizing the mark.” Because of the obvious violations of trademark law and the admission that the business plan was intentional,71 thereby supporting a finding of bad faith, the domain name was transferred.72
More intriguing, however, is that a search of the State of Florida’s corporate records demonstrates that at the time of this second UDRP proceeding, and up until the date of this decision, no corporate entity of any kind with the name “S.A., Inc.” has been registered in the State of Florida73 So too, the name has not been registered as a fictitious name. Similarly, no such entity has registered to do business in the State of Florida as a foreign corporation. However, in 1997, at the same Jupiter address, a corporation by the name of “Star Access” was formed, but Mr. Ford’s name did not appear as an officer or director at that time. Not until March 13, 2004, did a “J. Ford”74 appear as the President and Secretary of “Star Access.” Star Access (or S.A.) is still active and records maintained by Florida Secretary of State lists that its place of business is “S. US Highway 1, PMB 168, Jupiter, FL USA 33477.”
(iii) TM Acquisition Corp. v. SAI Domains, NAF Claim Number: FA0502000430743 (April 11, 2005)
The next name to appear among the ever-changing entities was SAI Domains. See, TM Acquisition Corp. v SAI Domains, NAF Claim Number: FA0502000430743 (April 11, 2005). The Whois database stated that the address for SAI Domains was, as with all the previously-named entities, “4300 South U.S. Highway 1, Suite 168, Jupiter, FL 33477.” So too, as was the situation with “S.A., Inc.,” no such corporate entity named “SAI Domains” had ever been formed in the State of Florida, nor has such an organization been registered as a foreign company permitted to conduct business in the State. However, by this time, the business plan of DotComEmail.com seems to have been abandoned for the strategy of parking the domain name portfolio that the Respondent accumulated over the years with the intent of earning fees from advertisers by optimizing those websites’ Internet traffic. As the Panel in that case stated: “the domain name resolved to a web page located at <landing.domainsponsor.com>75, which contained numerous links to sites in direct competition with Complainant.”
However, this case also presents the first occasion that documents what later appears to be a pattern of conduct. As the Panel recounted:
“[o]n March 17, 2004, Complainant’s attorney sent a letter via email to Respondent putting it on notice of Complainant’s rights in the …mark. Respondent failed to reply to this email. On April 8, Complainant’s attorney sent a follow-up letter via email to Respondent stating that its failure to respond would force Complainant to take all appropriate steps to protect its rights. On April 8, Respondent emailed Complainant’s attorney in response and apparently agreed to cease and desist from using the domain name. After trying to visit the website, Complainant’s attorney confirmed that Respondent had ceased use of the domain name by removing the web page. At least as early as May 18—a little more than a month after Respondent’s April 8 email—Respondent resumed use of the domain name.”
The Panel ordered the transfer of the disputed domain name.76
(iv) John Tesh v. Payphone Search LLC, WIPO
Case No. D2005-0894 (November 21, 2005)
The case of John Tesh v. Payphone Search LLC, WIPO
Case No. D2005-0894 (November 21, 2005), has already been discussed in some
detail above. See, footnote 55, supra. In addition, however, the
panel’s discussion regarding the e-mails that Moniker sent to the Center
is worth noting. In an attempt to clarify the discrepancy between the Whois
information that named “S.A. Inc.” as the RNH, and Moniker’s
contrary position that the RNH was actually “Payphone Search,” Moniker
sent the following explanatory e-mail:
“This domain did not change ownership – the domain was using our privacy services and [Payphone Search] is the legal registrant of the domain. Please let me know if you have any additional questions.”
There were additional questions, but according to the panel, they were never adequately answered. Accordingly, the Panel concluded that “[i]t seems, however, that ‘S.A., Inc.’ may actually be [Moniker], which uses that corporate name [S.A., Inc.] to mask the identity of registrants as part of its “privacy service.”
(v) The Fine China and Porcelain Companies Limited, and Royal Worcester
and Spode Limited v. Domain Admin, WIPO
Case No. D2005-1015 (December 5, 2005)
This decision starts to put the various pieces of the ever-changing entities puzzle into place. Again, when the Whois directory was checked, the RNH was listed as “S. A. Inc.” However, the Complainants maintained that S. A. Inc. “operated previously, and possibly still continues to do so, as mydotcom.com and dotcomemail.com.” Of course, the same address in Jupiter, Florida is the thread that ties the various entities together. Moreover, when the Complainants’ legal counsel tried to contact the respondent, the RNH reacted by obtaining Moniker’s Privacy Service to seal from public view its contact information. The tactic bought the respondent some time, but after Moniker was asked twice by the Center to verify its Registrant’s Whois information, the RNH emerges from behind Moniker’s protective cloak as a new entity located in a new venue: “Domain Admin of Charlestown, Nevis, KE.” The panel suspected that the change in Registrants evidenced a case of “cyberflight”; but because the record was sufficient to grant the remedy requested by the Complainant, the panel opted not to pursue the matter and ordered the transfer of the disputed domain name.
(vi) Ent Federal Credit Union v. Registrant 22181, WIPO
Case No. D2005-1070 (December 16, 2005)
“S.A. Inc.” and Payphone Search make another appearance in Ent
Federal Credit Union v. Registrant 22181, WIPO
Case No. D2005-1070 (December 16, 2005) and the decision highlights important
new points about these chameleonic respondents.
- First, the RNH in this matter was also masked by Moniker’s Privacy Service.
- Next, the complainant, “in an effort to halt the infringing activity” “attempted to contact Moniker” before initiating the UDRP proceeding.77
- As occurred in the TM Acquisition Corp. v. SAI Domains proceeding, when contacted directly by the complainant, the respondent (or his representative, an individual who identified himself as “Jack” Martin,) initially acquiesced and deactivated the web site. However, in only a matter of weeks, the RNH reversed course, reactivated the site to which the domain name in dispute resolved and a UDRP proceeding became necessary.78
- Moreover, when the web site went active a second time, the registrant’s identity was changed to “S.A., Inc.” with the same Jupiter, Florida address at 4300 U.S. Highway 1.
- In addition, Moniker took the same course of action as it had in the John Tesh v. Payphone Search case. At first, the identity of the RNH was cloaked by Moniker’s privacy shield. Eventually, Moniker “identified the [Registrant] of the disputed [D]omain [N]name as an offshore entity, Payphone Search LLC, having a West Indies post office address in Saint Kitts and Nevis.
- Once again, the complainant’s efforts to speak with the respondent resulted in a change in the registrant’s Whois information. Here, the registrant’s “privacy reference number” changed, as did its location, from Nevis to Westboro, Massachusetts.
(vii) MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO
Case No. D2006-0550 (July 7, 2006)
The MBI v. Moniker Privacy Services/Nevis Domains decision is interesting for a few reasons. First, as noted above, it took six requests from the Center before Moniker verified its Whois information. Moreover, because the identity of the RNH had been blocked by Moniker’s Privacy Service, the Complainant was required to amend its Complaint when Moniker provided information concerning Nevis Domains. However, the MBI decision adds a new detail when the panel documented the following exchange of communications between the complainant and Moniker. The complainant sent an e-mail to Moniker offering Ј41079 in exchange for a transfer of the domain name in dispute. There was no response for over a month, but then the Complainant received this e-mail reply from Moniker, presumably on behalf of a “new” RNH:
“These domains80 [sic] have actually been recently sold. Please be advised that the current owner of the domain names is not really interested in selling the names. However, if you wish to pursue the purchase of the domains, we can forward offers $25,000.00 USD 81or higher, per domain name, to the current owner to determine if they want to consider the offer.”82
(b) John J. Ford a/k/a “Jack” Ford
As the information for the cases and corporate documents demonstrate, Mr. Ford appears to be connected to all of these transactions. Moreover, as early as 2000, he admitted in the first UDRP proceeding that his interest was in registering domain names that were well recognized, including those with trademark protection. However, there are a few more pieces of information that the documents revealed.
In reviewing a directory of listings attached to an expanded Whois search for the Domain Name <rymanauditorium.com>, one of the first links that appeared resolved to series of posts that were located at DNForum, a website that is dedicated to discussions concerning the buying and selling of domain names.83 Surprisingly, the link resolved to a forum thread that documents the sale of <rymanauditorium.com>.
In brief, the following publicly available posts established that on February 25, 2004, at 11:55 A.M., an unidentified individual offered several registered domain names for sale.84 The list included <rymanauditorium.com> and <sportsmenswarehouse.com>. The next day, at 1:25 P.M., Mr. Ford85 responded and placed a bid on the two domain names.86 Shortly thereafter, the transaction was completed. The two domain names purchased by Mr. Ford in this transaction were registered on the same day only a few minutes apart87. The Whois database shows that <sportsmenswarehouse.com> is also registered with Moniker, it is shielded by its Privacy Service, and it uses the same nameservers as does the disputed Domain Name. So too, the webpage to which it resolves displays a classic Hitfarm “2-Click Lander” with a targeted theme and keywords, “For resources and information on Hunting and Sporting goods stores,” which appears just beneath the large GIF that contains the domain name at the top of the page.
The Whois directory also confirms that other domain names mentioned in Mr. Ford’s posts or contained in Whois searches conducted on certain domain names mentioned in the UDRP decisions listed above, such as <nitronet.net>88, <dnhq.com>89; and <backbones.org>90 are registered at Moniker and are now subject to its Privacy Service. A visit to the respective websites shows typical Hitfarm 1-Click and 2-click landing pages.
Finally, several DNForum posts also establish that Mr. Ford continues to pursue his strategy of obtaining domain names regardless of whether they contain protected trademarks. Indeed, there are too many posts to list, however, the following are two examples. In one thread entitled “TM typos and what happens before WIPO,” an individual sought advice because he had “a few bank and insurance [domain names with] typos” and he was uncertain what his course of action should be. Mr. Ford’s response was “[t]he only answer is to sell your problem names to me.”91 Similarly, Mr. Ford stated in another post that he was “[l]ooking for trademarked or typos with at least 100 OVT with ext. [of] .com only. Sell me your trademarked, typo, and problem domains. Must be .com and have minimum 100 overture with extension results. PM only the domain name and your asking price.”92
B. The Substantive Issues
Paragraph 4(a) of the Policy requires that the Complainant demonstrate that all three of the following factors are present in order to obtain any remedy in the UDRP proceeding93:
(i) The Domain Name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(i) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel has reviewed the submissions in accordance with the Policy, the Rules and the applicable principles of law that apply to this dispute. In addition, here the Respondent has defaulted. Thus, as directed by Paragraph 14(b) of the Rules, the Panel has drawn such inferences as it deems appropriate.
In accordance with these standards, the following are the Panel’s Findings:
I. Paragraph 4(a)(i): Whether <rymanauditorium.com> is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
The Complainant submitted four Registration Certificates and the history of those registrations as reflected on print-outs obtained from the USPTO Trademark Applications and Registrations Retrieval (“TARR”) website.94 See, Annexes F through I. This evidence was authenticated when the Panel checked the USPTO records via its website. At that time, the Panel was also able to review the documents that the Complainant filed when it last renewed these registrations for a ten-year period. Although not submitted directly by Gaylord, it was evident from the USPTO file that the Complainant filed combined Section 8 and Section 15 Affidavits. The former affidavit is necessary to obtain a renewal of the registration. The Section 15 affidavits were filed because a mark cannot become “incontestable” unless it has been registered for at least five years and its holder file an affidavit with the USPTO as required by 15 U.S.C. § 1065.
These Section 15 affidavits were accepted and acknowledged by the USPTO, therefore the Complainant is correct that it has trademark and service mark rights in both the word “RYMAN” and the name “RYMAN AUDITORIUM” and that these marks are currently deemed “incontestable.”
So too, the Complainant’s argument that both the Uniform Resource Locator (“URL”) prefix (www.) and the gTLD (.com) should not be not considered in UDRP proceedings is well founded. These elements of a website address are technically necessary to navigate the Internet, and have no place in ascertaining whether the disputed Domain Name is identical or confusingly similar to the Complainant’s trade and service marks. See generally, United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the [g]TLD have any source-indicating significance…those designations are merely devices that every Internet site provider must use as part of its address”) See, http://www.uspto.gov/go/tac/notices/guide299.htm.
Although the Respondent has defaulted, a comparison of the marks and the Domain
Name in dispute is still necessary. Here, there seem to be only three matters
to address. The first issue pertains to the space that appears between the words
“Ryman” and “Auditorium” in the two marks that contain
both words. The Domain Name in dispute contains no such space. However, just
as with the URL and gTLD, a space between letters in the SLD is a technical
impossibility. Therefore, the omission of a space between words “Ryman”
and “Auditorium” cannot alter the fact that the disputed Domain
Name is identical Gaylord’s established marks. See, Wembley Nat’l
Stadium Ltd. v. Thomson, WIPO Case No.
D2000-1233 (November 16, 2000) (domain name <wembleystadium.net> identical
to “WEMBLEY STADIUM” mark; transfer ordered); Julie & Jason,
Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow,
WIPO Case No. D2005-0073 (March 6, 2005)(“panelists
have uniformly found, spaces between words…are irrelevant, particularly
since prevailing internet convention does not allow spaces between words…in
internet addresses”); Ent Federal Credit Union v. Registrant 22181,
WIPO Case No. D2005-1070 (December 16,
2005) (Even with “the absence of spaces between the words, the domain
name in dispute is identical to Complainant’s name and to Complainant’s
federally registered trademark”: Transfer ordered).
Similarly, the disclaimer to the word “auditorium,” which is also contained in the two registrations for “Ryman Auditorium” marks requires some discussion. Pursuant to United States law, disclaimers in trademark registrations only affect “a claim that the [trade or service mark] registration gives an exclusive right in those disclaimed words…per se. That is, the applicant is merely stating that [it] is claiming only the whole composite mark as [its] property, and makes no claim to those particular portions disclaimed. quoting McCarthy on Trademarks and Unfair Competition, (3d ed. 1992) at § 19.20.” Lonestar Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 362 (11th Cir. 1997)(Emphasis in original). Accord, Insurance Services Office, Inc. v. Nat Collicot and SolidDomains.com, Inc., CPR Case No. 06-01 (January 4, 2006).95 Thus, here, had Respondent registered a domain name that included only the word “auditorium,” then Gaylord would have no claim. However, the Respondent has not just incorporated the word “Ryman,” but also the entire phrase “Ryman Auditorium.” Thus, if anything, the disclaimer further supports the Complainant’s position.
In light of the above findings, the Complainant has demonstrated that it has registered trademark and service mark rights to which the disputed Domain Name is more than confusingly similar; it is identical.
Although Gaylord has satisfied Paragraph 4(a)(i) of the Policy, rendering its alternative legal argument moot, the Panel will briefly address the merits of this claim as well. To prevail on a claim that asserts the existence of a common law trademark, Gaylord.
“must show that the name has become a distinctive identifier associated with the [C]omplainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” (Citations omitted).
Decision Overview § 1.7
In this proceeding, no advertisements, consumer surveys,
sales figures, or similar materials were submitted by Gaylord. Nevertheless,
as is attested to in the account of The Ryman Auditorium in Sections 4. A. I.
through 4. A. II. (b) (iv), supra, The Ryman Auditorium’s reputation
is so prominent that the building has achieved the status of a designated historical
landmark. Moreover, Gaylord’s long association with the legendary Grand
Ole Opry and The Ryman Auditorium makes this one of those rare instances which,
with just a few materials that recount The Ryman’s story, the Complainant
can meet the requite threshold of establishing that it has acquired a common
law trademark in the words “Ryman” and “Ryman Auditorium.”
See, Symark International, Inc. v. Gary McCurty, WIPO
Case No. D2005-0235 (June 15, 2005); National
Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark,
No. D2005-0234 (May 13, 2005) and; DaimlerChrysler Corporation, DaimlerChrysler
Services North America LLC v. LaPorte Holdings, Inc., WIPO
Case No. D2005-0143 (April 1, 2005).
Therefore, Complainant has satisfied its burden of proving the elements required of Paragraph 4(a)(i) of the Policy.
II. Paragraph 4(a)(ii): Whether the Respondent has any Rights or Legitimate Interests in <rymanauditorium.com>
The language contained in WIPO
Decision Overview articulates the consensus view for the procedure to follow
in determining whether the Complainant has proven the second prong of the Policy
“While the overall burden of proof rests with the Complainant, Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore, a Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Decision Overview § 2.1
In light of Respondent’s default, the Panel takes the following attestations of the Complainant as true and established:
(1) There is no known relationship between the Complainant and the Respondent.
(2) This Respondent, whatever its identity, has no connection to, nor is it commonly known as, the words contained in disputed Domain Name.
(3) The Complainant had rights to the registered marks of “Ryman” and “Ryman Auditorium” as much as a decade before the disputed Domain Name was registered. In addition, Gaylord attained rights to those same terms via common law.
(4) The Ryman Auditorium sells tickets to various theatrical events for which there exist competing, alternative shows in the vicinity. Gaylord’s competitors include not only the venues where these other theatrical productions are staged, but also from ticket brokers who sell tickets to a variety of entertainment events.
(5) The Complainant submitted evidence and the Panel has viewed the web site
to which the disputed Domain Name resolves. Thus, it has been proven that the
Respondent is presenting to the viewers of its website a portal to literally
dozens of ticket brokers who are both unaffiliated with the Complainant and
the Complainant’s competitors. Manifestly, the potential for confusion
is heightened by the manner in which the website has been designed and to what
services the web site provides access. See, AltaVista Company v. O.F.E.Z.
et al., WIPO Case No. D2000-1160 (February 28, 2001)
and Ticketmaster Corporation v. Woofer Smith, WIPO
Case No. D2003-0346 (July 4, 2003).
(6) Although the Complainant alleged that the Respondent placed “pop-up” ads in the webpage to which the disputed Domain Name resolved, it submitted no evidence to corroborate that fact. Nonetheless, when the Panel visited the most recent version of the web site, a “pop-up” advertisement did present itself.96 The Hitfarm Program’s Customizable Domain Features permits an RNH to include pop-ups in their landing pages. See,http://www.hitfarm.com/index.php?action=step4. (“Pop-ups. Choose between having pop-ups or popunders associated with your domains or none at all if you prefer.”).
In sum, the Complainant has more than established its prima facie case.
Moreover, not only has Respondent defaulted, in this instance, it is more than
apparent that the Respondent’s modus operandi runs completely contrary
to its ability to establish either a right or legitimate interest in this, or
any domain name, that the Respondent registers. Indeed, by registering trademarked
names, or those that are “confusingly similar,” in which another
party has an exclusive right, the Respondent flaunts the very concept that this
portion of the Policy was designed to protect. So too, when, as here, the stated
purpose of a respondent is to attract as many Internet users as possible to
its websites, which act as mere doors to other sites, but for which the respondent
is compensated97 the
respondent’s actions can not constitute a bona fide offering of
goods or services.” See generally, Sanofi-Aventis, Aventis Pharma SA
and Aventis Pharma Deutchland GmbH v. 1N4 Web Services, WIPO
Case No. D2005-0938 (November 24, 2005).
Therefore, in light of the above-listed findings, the Complainant has also satisfied Paragraph 4(a)(ii) of the Policy.
III. Paragraph 4(a)(iii): Whether <rymanauditorium.com> was Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative, non-exclusive circumstances, which, if demonstrated by the Complainant, for the purposes of Paragraph 4(a)(iii) are deemed evidence of a Respondent’s bad faith registration and use of a challenged domain name. In this case, while several are satisfied, the one that predominates is set forth in Paragraph 4(b)(iv) of the Policy.
That Paragraph states that it is evidence of bad faith when in using
“the domain name, [a Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” See, http://www.icann.org/udrp/udrp-policy-24oct99.htm.
Here, the Respondent’s business is the registration of domain names that
infringe the trademarks of others. See, Southern Communications Services,
Inc. d/b/a Southern LINC v. Henry Chan, WIPO
Case No. D2004-0214,(May 10, 2004). Moreover, the Panel concurs with the
understanding of several other UDRP panels that the use of a domain name to
point to a web site that offers search engine services and sponsored links to
the complainant’s competitors is evidence of bad faith. See, Mudd,
LLC v. Unasi, Inc., WIPO Case No. D2005-0591
(September 27, 2005); Volvo Trademark Holding AB v. Unais, Inc., WIPO
Case No. D2005-0556 (July 29, 2005).
So too, as in Saint-Gobain Performance Plastics Corporation v. Forum LLC,
WIPO Case No. D2006-0204 (April 10, 2006),
the Complainant’s second contention of bad faith is based on the argument
that Respondent’s registration and use of the disputed domain name is
an attempt to capitalize, for profit, on errors made by Internet users attempting
to locate Complainant. The Complainant’s contention has merit. If Internet
users seeking to buy tickets or take advantage of other services provided by
The Ryman arrive at the Respondent’s web site, they may access and utilize
the goods offered by competitors, instead of those offered by the Complainant.
The assumption is well-taken because the goods and services offered through
the “sponsored links” will transport the Internet visitor to other
entities that provide the same type of goods and services as those listed in
the Complainant’s trademark registrations.
Here, it appears that the Respondent obtained the disputed Domain Name from
a third party in late February 2004, registered it in July 2004 and eventually
had a rudimentary web landing page up and running by September of that year.
However, where this Respondent sits the “chain of Registrants” offers
no protection. Manifestly, because of the manner in which the Domain Name was
acquired and used, every person and entity up and down this chain can be found
to have taken possession and, of necessity, registered the Domain Name with
the same intent. See, e.g., DHL Operations B.V. v. Karel Salovsky, WIPO
Case No. D2006-0520 (June 22, 2006); MC Enterprises v. Mark Segal (Namegiant.com),
WIPO Case No. D2005-1270 (January 27,
2006)(“Respondent is not the original registrant of the subject domain
name, but for the purposes of the Policy, his acquisition of the subject domain
name constitutes registration”).
The only argument of Complainant that the Panel rejects is that the Respondent’s primary purpose for registering the Domain Name in dispute was to “sell, rent or otherwise transfer” the Domain Name to Gaylord “for valuable consideration in excess of its documented out-of–pocket costs.” On this record, there is absolutely no evidence on which to base this allegation. Similarly, that has not been the pattern of this Respondent in the past.98 The rejection, however, of this single contention does not otherwise outweigh the points that the Complainant has established.99
Accordingly, the conditions set forth in Paragraph 4(a)(iii) of the Policy
have been demonstrated. This Respondent has been shown to have acted in bad
faith when registering and using the Domain Name in dispute.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <rymanauditorium.com> be transferred to the Complainant.
Craig Edward Stein
Dated: September 6, 2006
1 A Registrar is defined in two separate sections in the ICANN Registrar Accreditation Agreement (17 May 2001) (sometimes referred to hereinafter as the “RAA”). When used with an initial capital letter in an RAA, then the term “Registrar” “refers to [the actual] party to [the specific RAA].” See, RAA at Section 1, Definitions, Sub-section 1.9. When used without an initial capital letter, the word “registrar” is meant to be read generically as “a person or entity that contracts with Registered Name Holders and with a Registry Operator and collects registration data about the Registered Name Holders and submits registration information for entry in the Registry Database.” See, RAA at Section 1, Definitions, Sub-section 1.10. As used in this decision, the definition contained in Sub-section 1.10 applies, although the initial letter will be capitalized. For the most recent version of the ICAAN-approved RAA, See, http://www.icann.org/registrars/ra-agreement-17may01.htm.
2 As has been noted recently
by one distinguished UDRP Panelist “[i]t is well accepted that Panels
may conduct their own research, including reviewing the parties’ websites
(both in the current and past versions) and examining other publicly-available
information (such as trademark office records), in connection with rendering
decisions in UDRP proceedings.” See, Mobile Communication Service Inc.
v. WebReg, RN, WIPO Case No. D2005-1304
(February 24, 2006) at n. 5 (Citations omitted). Moreover, ‘[i]t is appropriate
for panels to consider publicly available facts even if not offered by a party.”
See, Tightrope Media Systems Corporation v. DomainCollection.com, WIPO
Case No. D2006-0446 (June 2, 2006) at n. 2. (Citations omitted). As will
become apparent, it became necessary for this Panel to utilize the above-referenced
resources and other relevant public documents that were accessible via the Internet.
In particular, because of the questions that were raised concerning the identity,
existence and relationships of certain individuals and entities, the corporate
records maintained by various state governments were analyzed.
3 The Center received the hard copy of the Complaint on April 28, 2006.
4 See, RAA at Section 1, Definitions; Sub-section 1.8. The term "Registered Name Holder” is sometimes used interchangeably with the appellations “domain holder,” “registrant” or “domain owner”. The last term, however, is a misnomer. While a registrant may have some property rights in a domain name, See generally, Kremen v. Cohen, 337 F.3d 1024 (9th Cir.2003), those rights are more like that of a leaseholder, who is seized of property for a fixed period of time, as opposed to an owner, whose property interests are not so temporally limited.
5 According to Moniker, its “domain privacy services acts as an iron curtain between [the Domain Holder] and the outside world. Instead of [the Domain Registrant’s] information being available in the public [W]hois lookup … prying eyes will be directed to Moniker Privacy Services… [which then] becomes the domain contact … so the only emails you receive are legitimate business correspondence (i.e. legal matters, sales inquiries, etc).” (Emphasis added). See, www.moniker.com/domains/domain-privacy.jsp.
6 Moniker’s genesis began sometime between 1999 and 2000 when two Florida-based Internet companies, HitDomains.com, Inc. and SolutionHome.com, Inc. merged to form DomainSystems, Inc. In 2002, DomainSystems acquired an existing ICAAN-approved Registrar based in Canada, Mr.DotReg.com, Inc. that was the RNH of the Domain Name <mrdomreg.com>. (The Whois information shows that the Domain Name’s Registrant is currently Moniker.) That same year, DS/MDR Holdings, LLC, a Florida limited liability company was formed and its sole member was DomainSystems, Inc. The following year, Moniker, at the time a Delaware Limited Liability Company, merged into DS/MDR, the latter of which became the surviving corporate entity. However, upon effecting the merger, the name of the surviving corporation was changed to Moniker Online Services, LLC.
Three years later, in September 2005, DomainSystems, Inc. merged into a specially created, Florida merger sub-corporation, Kanoodle.com Merger Sub, Inc. Once that transaction was concluded, DomainSystems was denominated as the surviving corporate entity.
There was no public announcement about the Moniker-Kanoodle merger transaction in September 2005. Instead, on August 8, 2006, almost one year later, the parties announced that:
- Moniker had been acquired by a new parent holding company that had just been incorporated in the State of New York.
- The name of the new parent company was Seevast, Inc.
- That Moniker, along with Kanoodle.com, Inc., a Delaware corporation, would become one of three distinct subsidiary operating companies in the newly organized Seevast corporate organization.
- Finally, the third company, Pulse 360, Inc., had been incorporated in the State of Delaware and had filed the necessary documents that authorized it to conduct business in the State of New York.
For the corporate records from which the above-chronology were derived: See, http://www.sunbiz.org for the State of Florida; https://sos-res.state.de.us/tin/GINameSearch.jsp for the State of Delaware; and http://appsext5.dos.state.ny.us/corp_public/corpsearch.entity_search_entry for the State of New York.
7 This same function has
been described in a number of different ways, depending upon the vendor that
provides the service. See, Spice Entertainment Inc. v. AWOS and Steve
Fleming, WIPO Case No. D2006-0114 (April 21,
2006) (“domain name proxy service”);
Fox News Network, L.L.C. v. C&D International Ltd.
and Whois Privacy Protection Service, WIPO
Case No. D2004-0108 (July 22, 2004) (“alias service”); and
Marian Keyes v. Old Barn Studios Ltd., WIPO
Case No. D2002-0687 (September 23, 2002) (“account masking”).
For ease of reference, this decision shall refer to such a service as a “privacy
8 Oftentimes, Complainants who have been unable to identify the actual Registered Name Holder have named either the Privacy Service or the Registrar itself as the initial Respondent. See, e.g., Diners Club International, Ltd. v. Mainstream Advertising a/k/a Moniker Privacy Services, NAF Claim No.: FA0604000672091 (July 5, 2006). In fairness to Gaylord, the original Complaint at Paragraph B. (6) attempted to resolve the dilemma it faced by asserting that the proceeding was being brought “directly against…<rymanaduitorium.com> and its anonymous [R]egistrant (collectively, the ‘Respondent’).” (Emphasis added).
9 “Respondent” is defined in the Rules at Paragraph 1 as “the holder of a domain-name registration against which a complaint is initiated.”
10 The prominence of
a Complainant’s business activities can be a factor that supports a claim
of a party to a trademark or service mark as required by Paragraph 4 (a) of
the Policy. See, Caesars Entertainment, Inc. f/k/a Park Place Entertainment
Corporation v. Ad Dreamer Inc., WIPO Case
No. D2005-0293 (May 22, 2005). Therefore, an examination of the Complainant’s
history may contribute both to a resolution of the issues to be decided and
a better understanding by the public of the conclusions that have been reached
in an UDRP proceeding.
11 The following rendition of the history of The Ryman Auditorium and Gaylord’s business activities were derived from: (a) Annexes D and E attached to the original Complaint; and (b) the official websites of both entities from which material contained in the two Annexes was obtained. The Internet addresses of the respective websites are set forth later in this decision.
12 Steamboats were a major source of business commerce during this era and because of its location, Nashville became the link between the mid-Tennessee region and other parts of the country. From Nashville, steamboats would ply the Cumberland River, which eventually flowed into the Ohio River, and from there, the Mississippi River and eventually, into the Gulf of Mexico
13 The Ryman Auditorium also serves as the home to Gaylord's historic collection of country music memorabilia, including an outstanding photographic history of the Grand Ole Opry and its many legendary stars.
14 In 2005, The Ryman was designated as the “Birthplace of Bluegrass” by the Tennessee Historical Commission.
15 Registration Nos. 1,867,249 and 1,867,250 acknowledge that Gaylord’s predecessors-in-interest first used the terms “RYMAN” and “RYMAN Auditorium” in commerce as early as 1905.
on the Principal Register confers a presumption of validity of the mark on behalf
of Complainant.” AeroTurbine, Inc. v. Aero Turbine, Inc., WIPO
Case No. D2004-0669 (October 27, 2004) citing 15 USCS § 1057(b) and
Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
17 The USPTO Principal Register notes that this registration is for both a trademark and a service mark. The Registration also includes an express disclaimer that “no claim is made to the exclusive right to use “auditorium,” apart from the mark as shown.”
18 The registration is for use of the word “Ryman” as a service mark.
19 This service mark registration contains the same disclaimer as that described above for Registration No. 2,221,888.
20 This is the trademark registration for the word “Ryman.”
21 The Complainant first registered this Domain Name on August 3, 2001 and it resolves to the homepage for the subsidiary that owns Gaylord’s luxury hotel properties.
22 This Domain Name resolves to the Complainant’s corporate website and was registered on September 17, 1997.
23 The Domain Name originally registered on November 23, 1998, resolves to the website for Gaylord’s vacation property management company.
24 Gaylord or its predecessors in interest first registered the <ryman.com> Domain Name on May 9, 1995.
25 The Respondent’s address in this matter contained in Moniker’s Whois database was “Nevis Domains LLC, Charlestown, Nevis, KN, United States of America.” Of course, Nevis is not a part of the United States of America, but rather one of two islands that comprise The Federation of St. Kitts and Nevis.
26 Again, Moniker’s Whois database erroneously includes the “United States of America” as a part of the Respondent’s purported physical address in Nevis. See, footnotes 27, supra.
27 Moniker’s Whois database contained only the following truncated information as to where its Registrant was located or could receive mail: “Charlestown, Nevis, KN.” In short, the entry is missing either a street address or a post office box; one of which is required by the RAA.
28 In this case, Moniker’s Whois database is limited to the following address “Charlestown, Nevis, Saint Kitts and Nevis.” Again, the required postal address is missing.
29 The entire mailing address derived from Moniker’s Whois database was “Charlestown, Nevis, 00000, KN.” There is no street address or post office box number as the RAA requires.
on the same day that the Athena decision was issued, a three-person UDRP Panel
decided the case of Deutsche Telekom AG v. Mighty LLC/Domain Admin, WIPO
Case No. D2005-0027 (April 5, 2005). Although the eventual Respondent was
the same “Mighty LLC,” there is no discussion regarding how or when
this entity became the Registered Name Holder for the Domain Name in dispute.
31 A “landing
page” has been described as “a non-active web site that offers a
search engine for Internet users to locate products and services that compete
with Complainant’s products and services and to locate non-competing products
and services that Complainant neither endorses nor recommends to its members/customers.”
Patelco Credit Union v. Activeideas.com, Inc., WIPO
Case No. D2005-1295 (February 7, 2006); Accord, Patelco Credit
Union v. Hong Kong Names LLC, WIPO Case No. D2006-0202
(April 27, 2006) (“Patelco II”).
32 The Internet Archive (“IA”) is a non-profit organization that is continually building a library of web pages that have appeared on the Internet. The organization maintains these historical web pages in an archive and permits public access to the data by means of a “Wayback Machine” that is maintained on IA’s website. To retrieve an archived version of a particular web page, the Domain Name that is being researched is simply inserted in the Wayback Machine’s browser. See, http://www.archive.org/about/about.php.
33 For the effect of
robot.txt software on webpages that are being copied for archival purposes,
See generally, Yell Limited v. Ultimate Search, WIPO
Case No. D2005-0091 (April 6, 2005).
34 “Domain Name
Parking” is a form of advertising that is used to earn revenue from Internet
traffic that visits a webpage to which a Domain Name resolves. The webpages
for parked domains usually contain advertising listings, links and search engines
that are targeted to the predicted interests of the visitor. Those interests
are initially derived from the characteristics of the Domain Name. For example,
in this case, links were eventually established that related to purchasing concert
and other major event tickets as well as other subjects related to tourist venues
located in Nashville Tennessee. For a further discussion about “domain
name parking,” See generally, Deutsche Telekom AG v. SKK, WIPO
Case No. D2003-0744 (November 17, 2003).
35 See, http://www.moniker.com/aftermarket/domain-name-traffic.jsp. Moniker also represents that “its customized landing pages drive revenue through pay per click (PPC) and ad networks.” Id.
36 To obtain information via the Internet concerning corporations formed in the State of New Jersey, See, https://accessnet.state.nj.us/GatewayWatchNameSearch.asp.
37 For the version of the webpage to which <domainspa.com> resolved in the third quarter of 2003, See, http://web.archive.org/web/20030804180907/http://domainspa.com.
38 DomainSponsor is a service of Oversee.net. Oversee.net is a privately held internet advertising service company that represents its services as applying technology in order to “enhance and optimize paid search traffic and online advertising campaigns.” See, http://www.domainsponsor.com/aboutus.html. Oversee.net is a California corporation. For information concerning entities incorporated in the State of California, See, http://kepler.ss.ca.gov/list.html.
39 The word “hitfarm” has also acquired a generic meaning that describes any website that includes PPC portals, such as a parked domain landing page. See, http://en.wikipedia.org/wiki/Hitfarm.
40 See, http://hitfarm.com/index.php?action=step2.
41 Sometimes also referred to as “impressions” (“IMPS”), a “hit” is the actual number of times advertising on a webpage has been viewed. The Hitfarm minimum is 5,000 IMPS per day.
42 http://hitfarm.com/index.php?action=step6. (Grammar corrected).
43 Id. (Grammar corrected).
44 A “GIF” is an acronym that refers to “Graphics Interchange Format.” In laymen’s terms, a GIF is a file that in the late 1980s and early 1990s became popular as a medium for transmission of pictures over the Internet. The main reason was that the GIF was more efficiently compressed than other media of the time and therefore would not reduce the speed at which files could be downloaded.
45 The Network Solutions’ Whois also affirms the obvious: “Web Site Status: Parked.”
46 http://www.trafficclub.com/support/faq/. See generally, http://www.moniker.com/aftermarket/domain-parking.jsp.
47 Traffic Club lists Domain Sponsor, Google, Skenzo, and Grant Media as the PPC ad networks with which it cooperates. Id.
48 WebHosting.Info is a division of Direct Information Pvt Ltd., d/b/a Directi, a privately held web services company. Both entities are based in Mumbai, India. See, http://www.webhosting.info.
49 In its Complaint, Gaylord also states “[i]n fact, Complaint [ant] has received multiple complaints of actual consumer confusion arising out of the use of the Disputed Domain Name and [that] the Disputed Domain Name [is] being used to promote the fraudulent sale of concert tickets.” See, Complaint at Para. 29. While these allegations may have merit, the Complainant has failed to submit any evidence to the Panel, such as an affidavit or an e-mail message, to demonstrate that it has received such information. Thus, even in the face of Respondent’s default, as there is no support for this contention in the record, it cannot be considered.
50 Given the absence of a response, the Panel has reviewed the record to be certain that the Respondent was given fair notice of the Complaint and these proceedings. Here, as noted above, the Center mailed and sent via courier the Notification of the Complaint and Commencement of Proceedings to the Respondent at the mailing address that was contained in Moniker’s Whois database. So too, all pleadings and notices were sent to Respondent via e-mail. There was no bounce-back of any e-mail message that had been sent to the Respondent. The notifications sent to the physical address in Nevis, however, could not be delivered and were returned to the Center. In addition, all notices were also sent to Moniker, which acted both as Respondent’s Registrar and is the vendor that provided Respondent with a Privacy Service. According to the terms of Moniker’s Privacy Service Agreement, Moniker represents that it transmits any e-mail that concerns “legal matters” to its clients. See, www.moniker.com/domains/domain-privacy.jsp. Thus, it must be assumed that Moniker fulfilled this task. In light of the above actions taken by the Center, the Panel finds that the obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules has been satisfied.
51 It should be noted that it matters not whether the Complainant or the Respondent prevailed in any case delayed by a Registrar’s protracted response to a verification request. The delay itself needlessly harms the UDRP process.
52 The entire address for Respondent derived from Moniker was “Domains Ventures, Fujian, China.” However, Fujian is a province that has a total area of over 120,000 sq. km. and a population in excess of 34 million people. In sum, the “contact information” lacks both a street address and the name of a city and does not comply with the RAA.
53 The Tesh v. Payphone Service decision describes one of the more egregious examples of Moniker’s procrastination. A portion of the Tesh Panel’s decision bears reiteration here.
“The Center e-mailed [to Moniker] its Request for Registrar Verification on August 22, 2005, asking for confirmation of, among other things, the fact that S.A., Inc. was the current registrant of the disputed domain name. Noting the tight schedule imposed by the Rules, the Center requested a response within two days. Ten days later, there had been no response, and the Center e-mailed a reminder to the [Moniker] on September 1, 2005. Another ten days passed before [Moniker] finally replied on September 11, 2005.
In its reply, [Moniker] listed Payphone Search LLC as the current registrant, without further explanation, although the Whois database had shown S.A., Inc. as the registrant as of August 22, 2005, when the Center had sent its initial verification request. The day after receiving [Moniker]’s response, the Center sent an e-mail to [Moniker] noting the discrepancy and pointing out that the transfer of a domain name registration during a pending administrative proceeding is prohibited by Paragraph 8(a) of the Policy. The Center asked for information concerning the circumstances of the transfer and requested that the disputed domain name be retransferred to S.A., Inc.
[Moniker] replied on the following day, September 13, 2005, as follows: “This domain did not change ownership – the domain was using our privacy services and this is the legal registrant of the domain. Please let me know if you have any additional questions.” The Center e-mailed another request for clarification on September 15, 2005, and received a very similar response on September 18, 2005, although this time [Moniker]’s response explicitly confirmed that Payphone Search LLC was “the legal registrant.”
More time passed as the Center contacted the Complainant and requested (and received) an amendment to the Complaint naming Payphone Search LLC as the Respondent. Although this change was handled expeditiously by both the Center and the Complainant, it was not until October 5, 2005—more than six weeks after the submission of the original Complaint—that this proceeding formally commenced and the Center began its effort to notify the Respondent of the proceeding.”
54 When Moniker verified the Whois information for this Respondent, it provided the following contact mailing address: “Charlestown, Nevis, KE.” However, the postal country code of “KE” is assigned to country of Kenya; the correct postal country code abbreviation for The Federation of Saint Christopher (St. Kitts) and Nevis, where ‘Charlestown, Nevis’ is located, is actually “KN.” For confirmation of country postal codes, see the website maintained by the Universal Postal Union (“UPU”) at http://www.upu.int/. Established in 1874, the UPU became a specialized agency of the United Nations on July 1, 1948 and maintains its headquarters in Bern, Switzerland. See, http://www.upu.int/members/en/members.html#S (for St. Kitts and Nevis) and http://www.upu.int/post_code/en/countries/KEN.pdf (for Kenya). So too, the contact information contained no postal address whatsoever; a clear violation of the RAA.
55 In the Nike UDRP proceeding, Moniker provided yet another contact mailing address in Nevis. This new address was “P.O. Box 8188, Charlestown-Nevis, Kenya 00000.” Of course, Nevis is an island in the Caribbean and is situated just a few miles southeast of its sister island, St. Kitts. Kenya, on the other hand, is a country located in East Africa. See, footnote 56, supra.
56 The information regarding the Respondent in this decision was Domain Administrator a/k/a Payphone Search LLC P.O. Box 8188, Charlestown, NEVIS 00000, KE. The designation “KE” is for the country of Kenya, not St. Kitts and Nevis, which is KN. See, footnote 56, supra.
57 The exact period cannot be ascertained from the face of the decision because it does not state whether the approved ICANN dispute-resolution Provider sought verification when it first received the Complaint via e-mail or whether it waited until it obtained a hard copy.
58 In addition, as a result of utilizing Moniker’s Privacy Service, the “Complaint was originally filed against “Moniker Online Services, LLC,” the Registrar, but, following confirmation from the Registrar that the registrant of the disputed domain name had used the Registrar’s identity protection service, the Complaint was amended to reflect that the domain name registrant and Respondent is “Hong Kong Names LLC.”
59 This case marks number 18 in the string of UDRP decision since the Tesh v. Payphone Services decision was rendered.
60 See, http://www.icann.org/registrars/ra-agreement-17may01.htm.
61 Moniker’s most recent Registration Agreement is located at http://www.moniker.com/help/dtc.jsp.
62 See, http://www.moniker.com/help/privacy.jsp
63 See, e.g., http://www.icann.org/announcements/announcement-03sep02.htm and http://www.icann.org/announcements/advisory-10may02.htm.
65 See especially,
John Tesh v. Payphone Search LLC, WIPO
Case No. D2005-0894 (November 21, 2005); The Fine China and Porcelain
Companies Limited, and Royal Worcester and Spode Limited v. Domain Admin, WIPO
Case No. D2005-1015 (December 5, 2005); Nike, Inc. v. Domain Admin c/o
Payphone Search LLC, NAF Claim Number: FA0510000579896 (December 9, 2005);
Ent Federal Credit Union v. Registrant 22181, WIPO
Case No. D2005-1070 (December 16, 2005); Renaissance Learning, Inc. v.
Domain Administrator a/k/a Payphone Search LLC, NAF Claim Number: FA0510000578633
(December 14, 2005); American Automobile Association, Inc. v. Nevis Domains
LLC, WIPO Case No.D2006-0489 (Jun 13, 2006);
MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO
Case No.D2006-0550 (July 7, 2006).
66 The ICANN-approved dispute resolution provider, eResolution, is no longer adjudicating domain name disputes. However, this opinion can be found at http://www.disputes.org/decisions/0268.htm.
67 Just after the WEB2YOU decision was issued, the Domain Name <dotorgemail.com> was registered and was soon resolving to a webpage that appeared very similar to that which the disputed domain name <web2you.com> had resolved. See, http://web.archive.org/web/20001204204500/http://www.dotorgemail.com/. The webpage also displayed the same slogan previously used by MyDotCom.Com: “The Name You Always Wanted @ The Domain That Fits You Best!” In addition, the webpage gave the following examples of the types of e-mail addresses a subscriber could obtain, including, “firstname.lastname@example.org, and “email@example.com.” Of course, <juno.com> is the registered Domain Name for a nationwide ISP, Juno Online Services, Inc. (“Juno”), which is now a wholly-owned subsidiary of United Online, Inc. (“United”). United provides a variety of consumer Internet and media services through a number of well-known brands in addition to Juno, including NetZero, Classmates, PhotoSite, The Names Database, FreeServers, Bizhosting and MySite. Juno’s home webpage can be reached by using the domain names of <juno.com> and <juno.net>, but apparently not <juno.org>. More important is that Juno and the Juno logo are registered service marks of Juno Online Services, Inc. See, http://www.juno.com/ and http://www.untd.com/about.html. Currently, <dotorgemail.com> is registered at Moniker, is protected by its Privacy Service, utilizes the same two nameservers as does the disputed domain name in this case and displays a classic Hitfarm 2-Click Lander. Also registered was the domain name <dotnetemail.com.>. Although no Wayback search was performed, a Whois query showed and a visit to the website by the Panel confirmed that the information and webpage for this domain name are the same as that for <dotorgemail.com>.
68 The actual date of dissolution was on September 28, 2001. The history and official filings of all Florida corporate entities can be found on the Internet at http://www.sunbiz.org/corpweb/inquiry/cormenu.html.
69 The two listed nameservers were NS1.NITRONET.NET and NS2.NITRONET.NET. The <dotcomemail.com> domain name also had two other listed servers: Name Servers: DNS1.STARGATEINC.NET (188.8.131.52) and DNS2.STARGATEINC.NET (184.108.40.206).
70 The information regarding the RNH of these two domain names was located on the Internet, among other places, at http://www.spamhaus.org/rokso/evidence.lasso?rokso_id=ROK2393, which contains the “ROKSO record” for “Jack Ford aka John Ford.” Mr. Ford’s ROSKO record is maintained on two webpages, the second of which is located at http://www.spamhaus.org/rokso/evidence.lasso?rokso_id=ROK2392. ROSKO is the acronym for “The Register of Known Spam Operations.” The ROSKO register is a list of known professional spam operations (spam gangs) that have been thrown off Internet Service Providers 3 times or more and are therefore repeat offenders. The Register also contains information regarding some of the spammers various domain names, businesses and other Internet activity. ROSKO is updated and maintained by Spamhaus, which is an international non-profit organization whose mission is to track the Internet’s Spam Gangs, to provide dependable real-time anti-spam protection for Internet networks, and to work with Law Enforcement Agencies to identify and pursue spammers worldwide. Some of Spamhaus’ main working partners are the Federal Bureau of Investigation, the National Cyber-Forensics and Training Alliance, the United States Department of the Treasury’s Internal Revenue Service, the Internet Crime Complaint Center, the London Action Plan (LAP), and the United States Postal Inspection Service. In addition, many web hosting and other Internet Service Providers (“ISP”) are now including clauses that prohibit operating an account on behalf of, or in connection with, or reselling any service to, persons or firms listed in the ROKSO database at “www.spamhaus.org”. To do so is deemed a breach of these companies’ Terms of Service (“TOS”).
71 Indeed, Respondent well-knew the value of a trademark because at the same time these two UDRP proceedings were pending, MyDotCom.Com, LLC filed with the USPTO a request for a service mark for the word “DOTCOMEMAIL.COM.” The application was assigned Serial Number 75937625, but eventually was abandoned on March 23, 2004.
72 Apparently not pleased with the result from the UDRP proceeding, less than ten days after the panel’s decision was issued, “S A Inc” filed a lawsuit in the Fifteenth Judicial Circuit in and for Palm Beach County, Florida. See, S A Inc v. Gillette Company, Case No. 502000-CA-012687-XX-0C-AF. That litigation, however, was voluntarily dismissed with prejudice on May 3, 2001. For the docket sheet in this matter, See, http://courtcon.co.palm-beach.fl.us/pls/jiwp/ck_public_qry_cpty.cp_personcase_setup_idx.
73 Florida’s public records show that an “S A Inc” was incorporated on November 11, 1968, but that company was dissolved by proclamation on July 11, 1972. Since that time, no other entity was formed in the State of Florida with such a name. See, http://www.sunbiz.org/, Document No. 337881.
74 Over the years, Mr. Ford has been involved in number of Florida corporations. However, this is the only Florida corporate entity with which he is associated where the corporate records refer to Mr. Ford with only the first initial of his given name. In all others, he is referred to in the corporate documents as either “John Ford” or “John J. Ford.”
75 The period in which the disputed domain name in this case was parked at DomainSponsor matches the time during which the disputed domain name at issue here was also parked at DomainSponsor.
76 A few months after this case was decided, another UDRP decision was issued with S.A., Inc. as the named Respondent and Moniker as the sponsoring Registrar of the disputed domain name. However, none of the issues regarding privacy services, or any of the shuffling of corporate entities seems to have occurred as has been reflected in all the other UDRP panel decisions. See, The Dannon Company, Inc. v. S.A. Inc., NAF Claim Number: FA0505000485800 (July 5, 2005) (Transfer ordered).
77 The panel says no more about the complainant’s communications to the Registrar, but from the context of the decision, it appears that its efforts met with little, if any success.
78 No other details of the manner, mode, or method of these communications with “Jack” Martin are contained in the decision.
79 At the rate of exchange when this decision was rendered, the amount offered equaled slightly over $ 782 in U.S. Dollars.
80 There was only one domain name in dispute: <thedanburymint.com>.
81 For a better idea of the difference between the offer and the “counter-offer,” at the same exchange rate employed above, in British Pounds the request was for somewhat more than Ј13,105.
82 Apparently, this e-mail may represent a Moniker standard operating procedure. On checking the various websites referred and linked to the various above-named “phantom” entities, the Panel came across an extremely similar e-mail exchange. The messages have been edited for spelling, grammar and to protect the privacy of the individuals involved. The relevant text follows:
Sent: Friday, February 24, 2006 2:19 PM
Hi, my name is [Deleted] and I live in [Deleted]. I was the original owner of ******.com during the .com boom and hosted a web site there that was briefly popular. Unfortunately, I let the domain registration lapse, it went back up for sale, and it appears you have bought it. With Web 2.0 back in fashion and things getting a little crazy again in [deleted][, I’ve had some people ask me to resurrect the site as a reminder of what happened the last time things got out of hand. I have bought ***.org to host the site, but it would be a lot more fun if it was at the original address. Would you be interested in donating the URL back to me? I assure you that this is a non-profit type of deal and I can send you the original graphics I used on the site to prove the authenticity of my story. Thanks for your time. Sincerely, [Deleted]
From: Moniker [mailto:*****@moniker.com]
Sent: Friday, February 24, 2006 2:31 PM
Subject: RE: *********.com
Hello. Thank you for your inquiry. This domain has actually been recently sold. Please be advised that the current owner of the domain name is not interested in selling the name. However, if you wish to pursue the purchase of the domain, we can forward offers $25,000.00 USD or higher to the current owner to determine if they want to consider the offer. Sincerely, [Deleted]
mailto:*******@Moniker.com See, http://blowthedotoutyourass.org/mission_01/moniker.html.
83 See, http://www.dnforum.com/
84 A full list of the names was also posted at http://www.dotwords.com/domeenid.txt.
85 Mr. Ford’s identity is confirmed in several places throughout the forum where Mr. Ford utilizes the handle of “nitronet.” (The Domain Name <nitronet.net> is one of the several Domain Names linked to Mr. Ford in the Spamhaus directory.) Similarly, the DNForum membership directory contains additional confirmatory information that links “nitronet” to Mr. Ford such as “Location: Palm Beach Florida; Domains Owned: 6000+; Preferred Registrar: moniker” See, http://www.dnforum.com/member.php?u=4792. (The town of Jupiter, Florida is located in Palm Beach County, Florida.) Other posts in the forum also confirm Mr. Ford’s identity. See e.g., http://www.dnforum.com/showthread.php?t=172159&highlight=nitronet
Post on 08-15-2006, 09:56 AM (“dnforum member 'nitronet'…. Buyer's Name: John Ford”). See also, http://www.dnforum.com/showthread.php?t=57129&highlight=nitronet. In another post that is dated June 18, 2004, Mr. Ford directs potential domain name buyers to a website, http://www.dnhq.com/, at which he had listed from his portfolio the domain names that he wanted to sell..
86 See, http://www.dnforum.com/showthread.php?t=49126&highlight=700+domains.
87 The dates and times of the two registrations are 2003-07-25 14:30:00.0 for <sportsmenswarehouse.com> and 2003-07-25 14:12:00.0 for the disputed Domain Name at issue in this proceeding.
88 The first retrievable webpage for this domain name advertised a Web Hosting service named “NitroNet.Net Web Hosting.” The webpage informed potential subscribers that their credit cards would be charged to One Plus Services, Inc. See,http://web.archive.org/web/19990508015242/http://www.nitronet.net/. One Plus Service, Inc. was one of the many Florida corporations that Mr. Ford had formed over the past decade. This company was first formed on March 26, 1997 and it was administratively dissolved by the Florida Secretary of State for the failure to file an annual report or pay its annual fees on October 4, 2002. See, http://www.sunbiz.org/scripts/cordet.exe?a1=DETFIL&n1=P97000028247&n2=NAMFWD&n3=0000&n4=N&r1=&r2=&r3=&r4=ONEPLUSSER&r5=.
89 As a webpage to which this domain name once resolved explains, the acronym “DNHQ” stands for “The Domain Name Headquarters.” So too, the webpage contains a representation that “'DNHQ' and 'The Domain Name Headquarters' are trademarks of DNHQ.com, Inc.” See, http://web.archive.org/web/20020921140810/http://backbones.org./. However, a search of Florida’s corporate records shows that there is not and has never been a legal entity formed in Florida named “DNHQ.com, Inc.” nor has a foreign corporation by that name ever registered to do business in Florida. A search of the TESS database provided at the USPTO website likewise could find no trademarks, service marks or even a filing seeking such a registration for the terms “DNHQ” or “The Domain Name Headquarters.” Ironically, the webpage selected begins with the following statement:
“Your domain name is nothing less than your brand. The primary symbol of your entire online identity.”
90 This domain name appears in the Whois information for <nitronet.net> and several other domain names registered by one of Mr. Ford’s entities set forth above.
91 http://www.dnforum.com/thread132235.html at 02-02-2006, 9:18 P.M. 02-02-2006, 09:18 PM
92 http://www.dnforum.com/thread55427.html at 05-22-2004, 9:15 P.M.
93 Pursuant to Paragraph 4 (i) of the Policy, the remedies in these administrative proceedings are expressly limited to “requiring the cancellation of [the disputed] domain name or the transfer of [the] domain name registration to the complainant.”
95 See, http://www.cpradr.org/ICANN/icanndecisioncpr0601-060302.pdf.
96 A review of the properties embedded in the “pop-up” showed the following URL: http://rymanauditorium.com/kwpop.php?epop=true.
97 Accordingly, the exception set forth in Paragraph 4(c)(iii) does not apply.
98 The Panel acknowledges that the following active hyperlinked notation still appears on the Whois data provided by Moniker: “The domain <rymanauditorium.com>: This name may be for sale - Make an unsolicited offer” See, http://www.moniker.com/pub/Whois and Amended Complaint at Annex A. However, that is a notice which is appended to the Registrar’s Whois website and may not necessarily be attributed to the Respondent in this case.
99 Although not raised
by the Complainant, the fact that Respondent has provided inaccurate data for
inclusion in the Whois directory also supports a bad-faith finding. See,
Caesars Entertainment, Inc. f/k/a Park Place Entertainment Corporation v.
Ad Dreamer Inc., WIPO Case No. D2005-0293
(May 22, 2005). Similarly, the obvious pattern of bad faith registrations, even
if the UDRP decisions are limited only to those cases when the Respondent allegedly
became a Nevian corporate entity, also supports a finding of bad-faith here.
See, DaimlerChrysler Corporation, DaimlerChrysler Services North America
LLC v. LaPorte Holdings, Inc., WIPO Case
No. D2005-0143 (April 1, 2005) and; National
Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark,
Case No. D2005-0234 (May 13, 2005).