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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

First SBF Holding, Inc. v. XC2

Case No. D2008-0409

 

1. The Parties

1.1 The Complainant is First SBF Holding, Inc., of New York, United States of America, represented by Weiss & Arons LLP, United States of America.

1.2 The Respondent is XC2, Hong Kong Special Administrative Region of China, represented by Greenberg & Lieberman, United States of America.

 

2. The Domain Name and Registrar

2.1 The disputed domain name <eterna.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2008. At that time the Who-Is record for the Domain Name recorded the registrant as “Moniker Privacy Services” and that was the entity named as the Respondent in the Complaint.

3.2 On March 17, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2008, the Registrar transmitted by email to the Center its verification response. According to the Registrar, the registrant for the Domain Name was “XC2” with a P.O. Box address in Hong Kong. The technical and administrative email contact given by the Registrar was “<Gary Lam sales@xc2.com>“.

3.3 In light of the information provided by the Registrar as to the identity of the registrant, the Center invited the Complainant to amend its Complaint. The Complainant duly filed an amendment to the Complaint on March 25, 2008. Subsequently the Complainant filed a correction to the Amendment of the Complaint on March 28, 2008. The Complaint as amended named both “Moniker Privacy Services” and XC2 as the Respondent. The Panel is satisfied that “Moniker Privacy Services” is simply a Privacy provider, and these proceedings can proceed on the basis that XC2 is named as the Respondent. See also e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070.

3.4 On April 2, 2008, the Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.5 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 April 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2008. The Response was filed with the Center on April 22, 2008 in the name of XC2.

3.6 On April 29, 2008, the Complainant filed a supplementary filing (the “Supplementary Filing”). The admissibility of that filing is discussed in greater detail later on in this Decision.

3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 9, 2008. 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.

 

4. Factual Background

4.1 The Complainant is First SBF Holding, Inc, which is a New York corporation with principal place of business in New York.

4.2 The Respondent is XC2 of Hong Kong, of which a Mr. Gary Lam is the sole proprietor.

4.3 The Domain Name was registered on January 14, 1999.

4.4 The form of the web-site that has operated from the Domain Name in the past is at issue between the parties and is discussed below. The Panel notes that as at the date the papers were forwarded to the Panel, there was no longer any active web-site operating from the Domain Name.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

5.1 The Complainant provides a print-out from the United States Patent and Trademark Office (USPTO) TESS database for a typed drawing mark consisting solely of the word ETERNA and registered in International Class 14 (precious metals; jewellery; horological and chronometric instruments etc.) and specifically for watches (and the like) (federal registration no. 0136798). The mark is registered to Eterna S.A. Fabrique D’Horlogerie (Eterna A.G. Uhrenfabrik) of Switzerland (“Eterna S.A”) and has a registration date of 1920. The Complainant submits that “[it]is the exclusive US licensee of that mark and is charged with US enforcement of it”. No evidence is provided in support of this submission (for instance, there are no copies of the underlying licence agreements or summaries of the same).

5.2 The Complainant submits that the Domain Name is identical to the “Complainant’s ETERNA trade mark”.

Rights or Legitimate Interests

5.3 The Complainant submits that neither it nor Eterna S.A. has authorized the Respondent’s use of the ETERNA mark, the Respondent has not and is not commonly known by the mark and the Respondent has not acquired any common law rights in the term.

5.4 The Complainant provides screen-shots of the web-site operating from the Domain Name (dated March 11, 2008) which web-site it describes as “a typical advertising / click-through landing site offering nothing more than a collection of links … somewhat related to wristwatches…”. The Complainant alleges use of a domain name “that merely offers links to other web-sites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the [Policy]” (citing QVC, Inc. and ER Marks, Inc. v. ActiveIdeas.com, WIPO Case No. D2005-1303). Further, the Respondent is said to be using the “Eterna” name “in a trademark sense” to refer to the Complainant and its goods, and for commercial gain by way of click-through revenue and pop-up / pop-under advertising. In support of these submissions, the Complainant points in particular to: the links on the Respondent’s web-site to “Mens Watches”, “Eterna Watches”, “Eterna Matic Watches”; and, sponsored links relating to its alleged competitors (e.g. <zales.com> and <rolex.com>) including those said to be “ostensibly selling Complainant’s watches, …although it is most likely that those resellers are selling knock-offs or at best gray-market items” (citing Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946).

Registered and Used in Bad Faith

5.5 By adopting the whole of the Complainant’s trademark as the Domain Name, the Respondent is said to “inevitably” be diverting the Complainant’s customers to the Respondent’s web-site and to be “trading for commercial gain on the good name and reputation of the Complainant’s business and trademark”. The content of the Respondent’s web-site is also said to “[suggest] that the Respondent must have been aware of the Complainant’s trademark”. These factors are said to amount to bad faith registration and use by the Respondent (Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085); TAG HEUER v. Whois Privacy Protection Service, Inc., WIPO Case No. D2005-0133). Further, “Respondent’s commercial benefit from a confusingly similar domain name is further evidence of Respondent’s bad faith registration and use” (Fossil, Inc. v. Vorpoj c/o N/A, NAF Case No. FA 1099471).

B. Respondent

5.6 The Response is in the name of XC2, Gary Lam of Hong Kong. Included with the Response is a signed declaration by Mr. Lam (stated by him to be the sole proprietor of XC2) which ends with a declaration of truth and is stated to be “under penalty of perjury”.

Identical or Confusingly Similar

5.7 The Respondent “admits [the] Complainant has a registered US trademark for the mark ETERNA in association with [watches and the like]” but claims that the Complainant does not and cannot have exclusive rights to the term. The Respondent refers to third party use of the word “eterna” (and provides supporting evidence in the form of print-outs from the USPTO trademark database and Google searches). Further the Respondent states that “since the domain was available in 1999, Complainant was capable of obtaining the domain at that time for its own use”.

Rights or Legitimate Interests

5.8 The mark ETERNA.COM is said to be used by the Respondent for global search engine services and advertising and promotional services of third parties. As a result of such use, the Respondent claims to have “over nine (9) years of common law rights in the mark ETERNA.COM for its services”.

Registered and used in bad faith

5.9 In his declaration Mr. Lam states he registered the Domain Name on January 14, 1999 when he “understood the word ETERNA (in Spanish and Italian) to mean ‘eternal’” and thought that it “would be a good name for a web page that offered ‘global search engine services’ and ‘advertising and promotional services for third parties’”. The phrase “What you need when you need it” that appears on the page is said to be associated with such services.

5.10 Further Mr. Lam expressly declares that he was not aware of Eterna S.A. at registration and did not register the Domain Name to sell it to the Complainant (or other trademark owner), to prevent them from reflecting their mark in a domain name or to confuse customers. In addition to this express denial, the Respondent submits that the Complainant has not shown that the Domain Name was registered with the Complainant in mind. In particular there is said to be “no evidence that shows Complainant’s mark is so famous that it would be unreasonable to believe Respondent knew or should have known of Complainant’s trademark rights in the mark ETERNA” (Ultrafem, Inc. v. Warren R. Royal, NAF Case No. FA97682 relied upon). Further, it is said that “any value in the Domain [Name] derives not from any alleged fame of Complainant’s mark but, rather, from the fact that it is a generic term and used by a plethora of third parties”.

5.11 The Respondent takes issue with the Complainant’s screen-shots of the web-site at the Domain Name; claiming they are the result of entering “eterna” in the web-site’s ‘search box’ (which is said to bring up all of Google’s paid searches). The Respondent provides its own screen-shot of the web-site, further shots showing the results of entering “eterna” in the ‘search box’ and the results of a search for the same term performed on Google (dated April 17, 2008).

5.12 The Respondent claims the ETERNA.COM web-site “does not create the impression that the site is affiliated only with Complainant” and that to succeed under paragraph 4(b)(iv) of the Policy the Complainant must show the Respondent “intended to create a likelihood of confusion” (Williams, Babbitt & Weisman, Inc v. Ultimate Search, NAF Case No. FA 98813; First American Funds v. Ult. Search, Inc., WIPO Case No. D2000-1840). Further, given third party usage of “eterna”, it is said that it cannot be inferred that the Respondent intended to confuse Internet users searching for the Complainant specifically, nor that all Internet users are looking for the Complainant (as opposed to such third parties) (Canned Foods, Inc. v Ult. Search Inc., NAF Case No. FA 96320).

C. The Complainant’s Supplemental Submission

5.13 The Complainant’s Supplemental Submission is said to “respond narrowly to the misrepresentations and misstatements of the Respondent” and can be summarised as follows:

(i) The Respondent has never used the web-site at the Domain Name to offer global search engine services and cannot lay claim to over 9 years of common law rights by virtue of such use. Rather, the Respondent has used the web-site as “a parking site, first simply for sale and later … as a site designed to trade on the ETERNA mark in horological devices”. The Complainant provides Internet Archive records for the Respondent’s web-site from September 2002 showing that at that time its principle content was the prominent statement “This domain is for sale”.

(ii) The screen-shots of the web-site at the Domain Name provided in the Complaint are not (as the Respondent alleges) the result of searching on that web-site for “eterna”; they are simply the natural result of inputting the Domain Name in an Internet browser and clicking on links displayed. The Complainant also points to the Respondent’s screen-shot of the web-site homepage and, in particular, to the large central blank space which the Complainant says corresponds to an excision of the watch-related links that occupy this space in the Complainant’s corresponding screen-shot.

 

6. Discussion and Findings

6.1 Paragraph 4(a) of the Policy states that the Complainant must prove the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

6.2 Having reviewed the documents and annexes filed by the parties, the Panel sets out its findings in respect of each of these issues below. However, it is convenient first to addresses whether the Complainant’s Supplemental Submission should be taken into account in these proceedings.

The Complainant’s Supplemental Submission

6.3 As a general rule, a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780, the panel stated as follows:

“As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly.”

6.4 In this case, the Complainant’s Supplemental Submission for the most part sought to address arguments of the Respondent’s in the Response that could not have been reasonably anticipated in advance by the Complainant (for example, the Respondent’s criticisms of the screen shots produced by the Complainant). In the circumstances, the Panel believes that this material falls within the exception to the general rule set out above, and the Panel considers it to be appropriate to take into account in coming to its Decision.

A. Identical or Confusingly Similar

6.5 Eterna S.A. is the registered proprietor of US registered trademark No. 0136798 for ETERNA and the Panel has little difficulty in coming to the conclusion that this trademark is essentially identical to the Domain Name. The somewhat more difficult question is whether the Complainant also has sufficient rights in that mark for the purposes of the Policy.

6.6 The Complainant states “it is the exclusive US licensee of that mark and is charged with US enforcement of it”. By this sentence the Panel understands that the Complainant is claiming exclusive rights to use the mark in the US (including but not limited to use for the purpose of enforcement) and the Panel accepts that, if they exist, such licensed rights would be enforceable rights for the purposes of paragraph 4(a) of the Policy (see paragraph 1.8 of the “Overview of WIPO Panel Views on Selected UDRP Questions” (the “WIPO Overview”)). Unfortunately, the Complainant provides no further details of, and no evidence as to, the existence or scope of this licence. For instance, the Complainant is called “First SBF Holdings, Inc” (which name does not on its face imply any link to the Eterna S.A. group of companies or ETERNA brand) and the Complainant provides no description or evidence as to what the Complainant’s actual business is nor, specifically, how it itself uses the ETERNA mark.

6.7 However, despite this failing, the Panel accepts that the Complainant’s express assertion may be accorded some evidential weight and, given that the Respondent does not make any submissions to the contrary (and in fact expressly (albeit somewhat confusedly) admits that the Complainant “has a registered US trade mark for the mark ETERNA”), the Panel on balance accepts, for the purpose of the present proceedings that the Complainant does have the benefit of such a licence. Accordingly the Complainant has made out paragraph 4(a)(i) of the Policy.

6.8 The Panel accepts that the Respondent is correct that the Complainant does not have absolute exclusivity in relation to use of the word “eterna”. However, if the Respondent is suggesting that such absolute exclusivity is a requirement of paragraph 4(a)(i) of the Policy, then that is misconceived. The degree to which a mark is seen to be the exclusive preserve of a particular company or entity is, of course, potentially of significance when it comes to assessing as a matter of fact whether a respondent was aware of that mark when the domain name was registered. This in turn is likely to be relevant to the assessment of whether the other requirements of the Policy are made out. However, in this case it is irrelevant to the assessment under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.9 According to the Who-Is record for the Domain Name it was registered in January 1999 and the Respondent (i.e. XC2) submits, and the Panel accepts, that the Respondent made that registration.

6.10 The Panel accepts that the word “eterna” is a word with an ordinary dictionary meaning (meaning “eternal” in Spanish for example) and one that also has trademark meaning in relation to Eterna S.A. and the Complainant (in relation to watches) and, indeed, to other third parties who use the word as a trademark in respect of their various goods and services.

6.11 Nevertheless, the Panel finds the Respondent’s arguments as to its global search engine business and that this business has somehow developed its own goodwill and reputation both contrived and unconvincing.

6.12 It is quite clear to the Panel that there is no real “eterna” search engine business in any sensible sense of that term. The recent screen-shots of the web-site at the Domain Name provided by both parties quite clearly show the classic hall-marks of a parking site with sponsored links, other click through links and pop-up / under advertising. Even the term “what you need when you need it” is one that has long been associated with the pages produced by these services. For examples of other cases in which it features, see Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695, and First Magnus Financial Corp. v. Domains Ventures, WIPO Case No. D2006-1427 and Nominet cases, McClure Naismith LLP -v- 123 Domains Limited, DRS 05127 and Dr Marilyn Glenville Clinic v. Digital Assets Inc., DRS-05421.

6.13 Therefore, in this case there is no real doubt that in this case the Respondent has used the Domain Name with a view to earning a share of the click through revenue generated by the domain name parking page in question. Against that background, the suggestion that by reason of use of the Domain Name over a 9 year period the Respondent has generated its own common law rights in the “mark ETERNA.COM” is risible. Leaving aside that it seems that the claim of 9 years use is untrue (as to which see the Panel’s comments under the heading of bad faith below), the Panel simply does not believe that the public has come to associate the Domain Name with the “business” and “service” of providing sponsored links to Internet users. This is notwithstanding the fact that “ETERNA.COM” is prominently displayed at the top of the page that contains those links. The vast majority of Internet users reaching this site are likely to have done so by accident having intended to go elsewhere. It is possible that having done this once and having used the links provided to get to their chosen destination, some Internet users may remember this and deliberately follow that route again. However, the Panel is unconvinced in the absence of any evidence on the point that the public would consider the term “ETERNA.COM” as it appears on that page to have any trade mark meaning or significance.

6.14 However, that is not the end of the matter. It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. The key question is whether a respondent intended to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant’s rights and reputation in that term. If that is the case, then the respondent may have a legitimate interest in the domain name (see the WIPO Overview at paragraph 2.2 in this respect). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v Windgather Investments Ltd., WIPO Case No. D2007-0267).

6.15 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the ETERNA mark in mind and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little.

6.16 For the reasons that are explained in greater detail under the heading of bad faith the Panel concludes that the answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.17 The Panel has little doubt in this case that the Domain Name has been used by the Respondent in bad faith. Key here are the screenshots that the Complainant has provided that show that the web page operating from the Domain Name predominantly displayed watch related links.

6.18 The Respondent appears to claim that these screen-shots do not accurately represent the home page that appeared on the relevant website and produces its own screen shots. However, the Complainant essentially claims that the Respondent’s screen shots have been doctored in that the watch related links that appear at the centre of the home page have been removed, leaving a large blank space where the links used to be.

6.19 The Panel has little hesitation in preferring the Complainant’s evidence on this issue. The format of the parking page in question is common and one which the Panel has encountered on numerous previous occasions. The centre panel of the relevant page would ordinarily contain links of some sort and the Panel does not believe that in ordinary operation that panel would be blank. It therefore accepts the Complainant’s contention that ordinarily that panel contained links and that those links predominantly comprised watch related sponsored and click-through links¹.

6.20 In the case of a domain name (like this one) that has both potential descriptive and trade mark meanings, the links displayed on the web-site operating from that domain name are often a factor that can be taken into account in assessing whether the respondent is acting with the complainant’s interests in the domain name in mind. The deliberate inclusion of links tailored to the trade mark meaning of the domain name (particularly with a view to obtaining click-through revenue) will ordinarily fall within the scope of paragraph 4(b)(iv) of the Policy, because they evidence knowledge on the part of the respondent of the complainant and an intention to take advantage of the reputation that the complainant has developed in the relevant name.

6.21 Sometimes, it is argued by respondents that the links in question were automatically generated by some domain name parking service or the like and as a consequence it is simply not possible to draw the relevant inferences of intent from the existence of these links. In fact, in many cases these sorts of arguments are unconvincing given that it is frequently possible for the owner of a domain name to influence the sponsored links produced by the choice of key words, meta tags and the like.

6.22 Indeed, the Respondent’s own submissions in this case suggest to the Panel that some manipulation of this sort has occurred in this case. The Respondent has produced a screen-shot of the sponsored search results that appear when an ordinary Google search is undertaken on the word “eterna”. This shows that seven sponsored links are displayed, of which only one is directly watch related. The contrast between these results and the predominantly watch related sponsored search results that on the Complainant’s evidence previously appeared on the parking page is striking.

6.23 Therefore, the Panel finds that the Respondent has as recently as March 2008 used the Domain Name in bad faith and in order to take advantage of the Complainant’s rights in the ETERNA mark.

6.24 However, to succeed under the Policy, this is not enough. The Complainant must prove not only bad faith use but also bad faith registration and ordinarily to show bad faith registration it is necessary to prove that the Respondent was aware of the Complainant’s mark at the time of registration. Often it is possible to infer that fact from subsequent bad faith use but it all depends on the particular facts of the case.

6.25 In this case the question of the Respondent’s knowledge is not straight forward and the Complainant has not helped itself by the way it has put its case.

6.26 First, a factor which is obviously relevant to whether the Respondent was aware of the ETERNA mark at the time the Domain Name was registered, is the degree of fame that the “ETERNA” watch brand had at that time. The more well-known, the more likely it is that the Respondent was aware of it. The converse is, of course, also true. Whilst the Complainant has explained (and the Panel accepted as set out above) that it is a US licensee of the ETERNA mark; it has not provided any description of the nature or extent of the Complainant’s activities (or the activities of others with interests in the “ETERNA” watch brand) nor the degree of fame and reputation that exists in the term “Eterna” as a result. The Panel accepts that the Eterna S.A. ETERNA trade mark was registered in 1920 and that because it is still valid it has been used to at least the degree necessary to maintain such registration under US law. However, that of itself is simply not sufficient for the Panel to infer that the Respondent (who appears to be based in Hong Kong) must have been aware of that brand at the time the Domain Name was registered.

6.27 Second, in this case it is known that the Domain Name was not always used to host sponsored links focused on the ETERNA watch brand. In September 2002 the Respondent’s website simply offered the Domain Name for sale and (as far as the Panel can see) had no references to watches or any other indication that at that time the Respondent knew of the ETERNA watch brand.

6.28 Third, there is the express declaration of Mr. Lam that he did not register the Domain Name with the Complainant in mind but instead registered it because of its descriptive meaning and the Panel accepts that the Domain Name does in some languages have a potential descriptive meaning.

6.29 Nevertheless, ultimately the Panel does not accept the Respondent’s version of events. First, the explanation given by the Respondent is at best partial and raises as many questions as it answers. The word “eterna” whilst descriptive in Italian and Spanish is not ordinarily so in English. In the absence of evidence to the effect that the Respondent was engaged in a more general process of registering “ordinary” Spanish or Italian words of which this particular registration formed a part, or a more compelling explanation as to why this word was chosen over others, the Respondent’s explanation strikes the Panel as implausible. As has already been explained under the heading of rights and interests, the Panel rejects the Respondent’s contention (if it is so alleged) that the word was chosen because of some sort of inherent connection with “search engine services”. This combined with the subsequent bad faith use of the Domain Name leads the Panel to infer that it was with the Complainant’s brand in mind that the Domain Name was registered. The Respondent may not have intended from the start to use it in connection with a domain name parking services but the Panel believes that it was registered with the intention in some manner or another to take advantage of the reputation that existed in the ETERNA brand. This is sufficient in this case for bad faith registration.

6.30 There are also a whole host of other factors that point towards bad faith in this case. First there is the secrecy with which the Respondent has conducted its business activities. This secrecy has included the use of a Who-Is privacy service. There have now been a large number of cases under the Policy in which panels held that the use of such a service can be an indicator of bad faith. For example, in Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015, the panel stated as follows:

“6.23 The Panel also accepts that another factor that weighs in the Complainant’s favour on the issue of bad faith is the use by the Respondent of a Domain Name privacy service to hide his identity.

6.24 It is sometimes argued by those who use such services that the provision of registration and contact details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. To hide one’s contact details so as to prevent such unsolicited contact is said to be legitimate (particularly if the registrant is an individual). Therefore, it is argued that no inference of bad faith can be drawn from the use of these services. However, even if this argument were accepted by this Panel, it is difficult to see why it would justify the masking of a registrant’s identity as opposed to just its contact details. Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.

6.25 The Panel believes that its approach on the question of the use of domain name privacy services is consistent with the decision of other panels on this issue including TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 and The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 as well as the Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 and Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642, cases cited on this issue by the Complainant.”

6.31 Also nowhere in the Response or in Mr. Lam’s declaration is to be found a full business address for the Respondent. Instead, the Respondent simply gives a PO Box number in Hong Kong.

6.32 If the Respondent honestly believed that it was engaged in the legitimate use of descriptive domain names for domain name parking purposes, this degree of coyness on the part of the Respondent is hard to understand.

6.33 Of even greater significance in this case is the way in which the Respondent has put its case. The Respondent’s characterisation of its business activities as involving some sort of genuine search engine business does it no credit. The Panel accepts that domain name parking necessarily involves the presentation of selected search engine results, and therefore in this limited sense it can be described as a search engine related business. Nevertheless, the impression that the Respondent’s evidence attempts to impart is that the Respondent is doing something more than this and that there is some inherent association between the Domain Name and those services. This is, to say the least, misleading.

6.34 Further, the Respondent seems to claim that it has been using the Domain Name in its current form for years when it would appear from the Complainant’s evidence that this has only been the case since 2002. If the Respondent’s assertion here is false that calls into question the veracity of other aspects of its evidence.

6.35 However, by far the greatest concern is the way in which the Respondent sought to misrepresent in these proceedings what the home page of the website operating from the Domain Name looked like and the nature of the links that appeared on that page.

6.36 In short, the overall impression formed by the Panel in this case is that the Respondent has been prepared to put forward a version of events which it believed would further its interests with little regard for the truthfulness of what was being asserted. In the circumstances, the Panel is not prepared to accept Mr. Lam’s claims as to the Respondent’s motives for registering the Domain Name, nor Mr. Lam’s assertions as to what he and the Respondent did and did not know at the time that the Domain Name was registered.

6.37 In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

6.38 Lastly, there is one further point which since it has not been put to the Respondent for comment, does not form part of the Panel’s reasoning in this case, but which the Panel believes that it is useful to record since it is broadly consistent with and supportive of the Panel’s conclusions in this case. The Panel notes that the Respondent appears to have a history of engaging in abusive registrations. The Panel refers in this respect to following WIPO UDRP decisions: Deere & Company v. XC2 (Moniker Privacy Services), WIPO Case No. D2007-1805; Scandic Hotels AB v. xc2, WIPO Case No. D2007-0810; Wal-Mart Stores, Inc. v. xc2, WIPO Case No.D2006-0811; The Belo Company, Belo Investments II, Belo Corp. v. XC2 / Internet Coordinator, WIPO Case No.. D2006-0790; Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; 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; and, Martha Stewart Living Omnimedia, Inc. v. XC2, WIPO Case No. D2003-0944. WIPO Case No. D2004-0896 involved a finding against Respondent in relation to no less than 78 domain names.

 

7. Decision

7.1 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 <eterna.com> be transferred to the Complainant.

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Matthew S. Harris
Sole Panelist

Dated: May 23, 2008