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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patti LuPone v. XC2/ Moniker Online Services LLC

Case No. D2008-0450

1. The Parties

The Complainant is Patti LuPone, of New York, New York, United States of America, represented by Robert J. Reicher, United States of America.

The Respondent is XC2/ Moniker Online Services LLC, of Hong Kong, SAR of China, and Pompano Beach, Florida, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <pattilupone.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2008, naming “John Doe and Moniker Online Services, LLC” as the Respondent. On March 25, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 28, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that XC2 is listed as the registrant and providing the contact details. In response to an invitation from the Center to amend the Complaint to reflect this information, the Complainant filed an amendment to the Complaint on April 1, 2008, substituting XC2 for John Doe and reproducing the contact information for XC2. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2008.

The Center appointed Alan L. Limbury as the sole panelist in this matter on May 6, 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

The Complainant has had a 35 year career as a singer, dramatic and musical actress and recording artist during which time she has given a solo concert at Carnegie Hall, appeared on Broadway and in London’s West End and had her own television show.

The domain name resolves to a web site containing links to various search categories, including “Broadway Tickets”, “Broadway Shows”, “Theater”, “Theater Tickets”, “Concert Tickets” and numerous others.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have common law trademark rights in her name PATTI LUPONE, having used her name in connection with entertainment services since 1973.

The Complainant says the disputed domain name is identical or confusingly similar to her mark; the Respondent has no rights or legitimate interests in the domain name, which was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Procedural Issue: the proper Respondent

Paragraph 1 of the Rules defines “Respondent” as the holder of a domain name registration against whom a complaint is initiated. The disputed domain name was registered on December 12, 2004 in the name of the Registrar, Moniker Online Services, LLC (“Moniker”). Moniker thereby became the domain name holder. In registering the domain name, Moniker was acting for a customer of Moniker’s “domain whois privacy service”, which, according to Moniker’s website, “acts as an iron curtain between you [the customer] and the outside world”.

In one of the first proxy service cases, Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311 the learned panelist made the very sensible suggestion that, upon being informed of a trademark violation, a proxy service should use best endeavours to support the UDRP system and injured trademark owners. Here, however, upon being notified of the Complainant’s rights on January 15, 2008 and again the following month, Moniker did not reveal to the Complainant the identity of its customer nor did it change the WhoIs registration information so as to transfer the registration to its customer. These steps would have supported the UDRP system by enabling the Complaint to name Moniker’s customer as Respondent and by enabling the Center to review the Complaint for administrative compliance with the Policy and Rules and to communicate the Complaint to the Respondent, as required by the Rules, paragraphs 2(a) and 4. Rather, Moniker changed the WhoIs registration information only after the Complaint was filed and responded to the Center’s request for verification by identifying XC2 as the “current registrant”. For the reasons stated below, this Panel takes the view that this was procedurally inappropriate and in contravention of the Policy, paragraphs 3 and 8.

The Policy under which this dispute is to be determined has been adopted by all ICANN-accredited domain name Registrars and is incorporated by reference into and therefore forms part of a contract between the Registrar (in this case Moniker Online Services, LLC.) and its customer (who should be the domain name holder or registrant): See Notes 2 and 3 to and paragraph 1 of the Policy. In this case it is ridiculous to suppose that Moniker entered into such a contract with itself. According to Moniker, its customer XC2 entered into a registration agreement with Moniker, binding XC2 to the Policy.

When the Policy was introduced in 1999, there were no privacy or proxy services. Early panel decisions took the clear and unequivocal position that there is no place for beneficial ownership under the Policy:

“The register maintained by an ICANN registrar must provide accurate information as to the identity of domain registrants. The human person or other legal entity shown as the registrant must be assumed to be such by third parties seeking to ascertain a registrant’s identity by such means as a Whois search. There is no place for the registration of bare trustees or agents for unnamed beneficiaries, principals or would-be purchasers. In that respect, a domain name register is like the register for land and shipping under the Torrens system found in many common law jurisdictions. In other words, the register is everything: no unregistered interests can prevail against the interests of bona fide third parties relying on information available on the register for all the world to see.” University of Maryland University College v. Nucom Domain Brokers & Urban Music Underground Club, WIPO Case No. D2002-0081.

See also Gloria-Werke H. Schulte-Frankenfeld GmbH & Co. v. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056 and Rug Doctor L.P. v. Barry Bourdage, WIPO Case No. DTV2003-0002.

With the introduction of proxy services the concept of “beneficial”, “underlying” or “true” ownership has been somewhat hesitantly recognized in panel decisions, as has the potential for abuse by cybersquatters: see WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975 and the thorough analysis in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438.

As in many other proxy cases, such as F. Hoffmann-La Roche AG v. PrivacyProtect.org, Contact Id 1328832, Alexey Dronin, WIPO Case No. D2008-0417 (May 5, 2008), upon being informed of the change in registrant details following the filing of the Complaint, the Complainant in this case amended the Complaint so as to name the “true owner” as a joint respondent without raising any objection that this is procedurally inappropriate.

Under the current ICANN Registrar Accreditation Agreement, section 3.3, the Registrar is required to maintain or take responsibility for an interactive web page and a port 43 Whois service providing free public query-based access to up-to-date (i.e., updated at least daily) data concerning all active Registered Names sponsored by the Registrar for each TLD in which it is accredited. That database is required to contain, inter alia, the name and postal address of the Registered Name Holder.

One reason why the postal address shown in the Whois database is important is because, in order for the Policy to work as intended, a Respondent against whom an order is made by the Panel must be able to initiate court proceedings in a jurisdiction to which the Complainant has submitted. Accordingly, under paragraph 3(xiii) of the Rules, the Complaint must state that the Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the courts in at least one specified “Mutual Jurisdiction”, defined in paragraph 1 of the Rules as:

“a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider.”

In F. Hoffmann-La Roche AG v. PrivacyProtect.org, Contact Id 1328832, Alexey Dronin, WIPO Case No. D2008-0417 (May 5, 2008), the registrant used a privacy service in the Netherlands and did not submit to the jurisdiction of the courts at the principal office of the registrar. The complainant amended the complaint, naming the newly disclosed registrant and submitting to “the jurisdiction of the courts at the location of the domain-holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time when we submitted the Complaint to [the Provider]”. The panel found that this was a submission to the courts of the Netherlands, since that was the address shown in the Whois database for the domain name holder when the Complaint was submitted.

The Rules, paragraph 3(b)(v) require a complainant to “provide the name of the Respondent (domain name holder)” and all contact information known to the complainant, in sufficient detail to allow the Provider to fulfill its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to Respondent of the complaint. In Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886, the learned panelist said:

“So who is the Respondent for the purposes of 3(b)(v) of the Rules? In the Panel’s opinion the only sensible answer to this question is that it is prima facie the entity that is recorded in the registrar’s register as revealed by a Who-Is search. There may be cases where it is believed by the complainant that this is a false address or pseudonym for the “true” or “real” owner of the domain name, and in such a case if the complainant believes it knows who the “true” or “real” owner is, this should be disclosed. However, in a case where this is not known to the complainant, it is sufficient that it simply identifies the individual or entity recorded in the Who-Is search results at the time the Complaint is filed. In such a case, the complaint is compliant so far as this aspect of the Rules is concerned”.

Although the definition of “Respondent” in the Rules does not include the words “at the time the complaint is submitted to the provider”, those words must be implied, both because “the Register is everything” (University of Maryland University College v. Nucom Domain Brokers & Urban Music Underground Club, WIPO Case No. D2002-0081) and because those words appear in the definition of Mutual Jurisdiction.

It would make nonsense of the Rules if the jurisdiction to which a complainant were required to submit were that of the registrant at the time of the filing of the compliant, yet the registrant at the time of the filing of the complaint were not the proper Respondent.

Here there is no dispute that, at the time of the filing of the Complaint on March 22, 2008, the domain name at issue was registered in the name of Moniker Online Services, LLC. as shown in its own Whois registration information.

As was pointed out by the learned panelist in General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834, this situation creates a conflict, in that the entity responsible for enforcing the Policy in accordance with these proceedings (the Registrar) is also the entity against which the proceedings are brought (the Respondent). As also pointed out in that case, this circumstance may create doubt as to the validity of the registration agreement through which the Policy is given effect because it is not clear that the Registrar can validly make a registration agreement with itself.

Although paragraph 3 of the Policy permits a Registrar to make changes to a domain name registration in certain specified circumstances including “in accordance with the terms of your Registration Agreement”, any provision of a Registration Agreement inconsistent with the Policy and the Rules must be ultra vires the Registrar. Having regard to paragraphs 3 and 8(a) of the Rules and the definition of “Respondent”, it is hard to see any proper basis, within the language of the Policy and the Rules (neither of which were devised with proxy services in mind) for a change to be made by the Registrar, after the filing of a Complaint, to the domain name holder’s name in the Whois database, merely because the registrant has agreed to act as proxy or agent for the “true” or “beneficial” owner.

It follows that a Complaint which identifies as the respondent the person or entity named as the registrant in the Whois registration information at the time of the filing of the Complaint is not administratively deficient and does not require amendment in order for it to be forwarded to the respondent by the Provider and considered by the Panel.

The practice of Providers in seeking from Registrars verification of the identity of the registrant is not required under the Policy or the Rules but is prudent and appropriate, having regard to the responsibility of Providers under paragraph 4(a) of the Rules to review the Complaint for administrative compliance with the Policy and the Rules before forwarding it to the Respondent. It should go without saying that the information which the Registrar is required by the Provider to verify upon a Complaint being filed is the Whois registration information at the time of the filing of the Complaint. This approach is supported by paragraph 8(a) of the Policy, which prohibits a “transfer” of a domain name registration during a pending proceeding, i.e. a proceeding that has been initiated by the filing of a Complaint. See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292; Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc., WIPO Case No. D2001-0732 and Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Microsoft Corporation v. WDW Inc. and William Claude Dukenfield, WIPO Case No. D2002-0412 and L’Oreal S.A. v. Munhyunja WIPO Case No. D2003-0585.

Accordingly, the practice of Registrars in permitting or themselves effecting changes to the Whois registration information after receiving a copy of the Complaint at the time of its filing and purporting to “verify” that information, rather than the information as at the time of the filing of the Complaint, is not in keeping with the intent nor within the language of the Policy or the Rules.

In a press release dated March 27, 2008, WIPO drew attention to increasing concerns about proxy registration services and Registrars:

“Privacy or Proxy Registration Services

[…] Recent WIPO panel decisions have pointed out that a privacy shield should not be used to protect cybersquatting practices. Panels have recognized legitimate uses of such services, but also make it clear that the shielding of information can create difficulties for panelists, parties and providers in determining the identity of the domain name registrant for cases brought under the UDRP ( WIPO Case No. D2007-1438) […]

Registrar Issues

[…] In certain instances the intended functioning of the UDRP is frustrated by […] ‘cyberflight’- related or other modifications to registrant data after a complaint is filed […] Rights holders, panels and the Center have felt the effects of the increasing complexity posed by these developments”.

For the purpose of enabling trademark owners to identify the appropriate Respondent and to determine to which jurisdiction they should agree to submit, this Panel considers that the Policy and the Rules require that the Respondent be the domain name holder whose name and postal address appear in the Registrar’s Whois registration information at the time the Complaint is submitted to the Center, even if that person or entity be a proxy or agent.

Accordingly, the Panel finds that Moniker Online Services, LLC is the proper Respondent in this case since it was the Registrant named in the Whois registration information in relation to the disputed domain name when the Complaint was filed.

That does not mean, however, that Respondent’s customer, having been identified more precisely than “John Doe”, should not, as a matter of fairness, be afforded an opportunity to make submissions and to have them taken into account. Treating it as a joint Respondent is one (procedurally questionable) way by which it may be brought into the proceeding, to receive copies of the Complaint and to make submissions, which, by bending over backwards, the Panel may choose to treat as being made by Respondent for the purposes of paragraphs 10 and 12 of the Rules.

Because proxy services were not contemplated when the Policy was adopted, leading to the strained interpretations that various panels (including this one) have placed on the Policy and Rules in order to cope with this phenomenon, it is respectfully suggested that ICANN consider making suitable amendments to the Policy and the Rules to accommodate and regulate proxy services so as to serve the legitimate interests of both trademark owners and domain name registrants. As was suggested in Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, a balance between domain privacy and accountability might be achieved by listing the actual registrant’s name with a proxy service’s mail-forwarding address. And as was suggested in Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311, a proxy service, when informed of a trademark violation, should use best endeavours to support the UDRP system and the injured trademark owners.

Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTA VISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et al., WIPO Case No. D2000-0848.

A. Identical or Confusingly Similar

Although the Complainant has not produced evidence in support of the assertions made in the Complaint that she has, indeed, appeared in the many shows and television programmes mentioned, in the absence of any Response the Panel accepts that she has, through extensive use, acquired common law rights in her name. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

The disputed domain name is identical to the Complainant’s trademark, save for the suffix “.com”, which is inconsequential. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The Complainant has established this element.

B. Rights or Legitimate Interests

Panels have consistently found that the burden is on the Respondent to provide evidence of its right or legitimate interests under paragraph 4(c). See for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. That burden arises once the Complainant establishes a prima facie case against the Respondent. The Complainant has established that case, as set out below. No response to that case was made by the Respondent. As also indicated below, there is no other evidence contrary to the case made by the Complainant.

The Respondent does not appear to be known by the domain name. There is no evidence that the mark PATTI LUPONE may be used so as to refer to anyone or anything other than the Complainant and her services as an entertainer and performer. The website to which the domain name resolves has links, of the kind which generate “pay-per-click” revenue, to sites with offerings within the entertainment industry, in which the Complainant has made her reputation, indicating that the Respondent is using the domain name to trade off her reputation and has no rights or legitimate interests in the domain name. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

The Complainant has established this element.

C. Registered and Used in Bad Faith

The use to which the domain name has been put indicates that the Respondent had the Complainant and her services in mind when registering the domain name and that the domain name has been used to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site. This constitutes evidence of both bad faith registration and bad faith use under the Policy, paragraph 4(b)(iv).

The Complainant has established this element.

7. Decision

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 <pattilupone.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist

Dated: May 20, 2008