In a case decided under the Uniform Domain Name Dispute Resolution Policy (UDRP), a Panel from the World Intellectual Property Organisation (WIPO) recently denied transfer of the domain name <kirkpatrick.com> (the Domain Name).
The Complaint was filed against Fred Kirkpatrick, an individual residing in Las Vegas, Nevada, in the United States. The Complainant, Office Kirkpatrick SA, an Intellectual Property law firm based in Belgium and founded in 1852, had registered several trade marks, including OFFICE KIRKPATRICK in Benelux in 1987 and in the European Community in 1996 and KIRKPATRICK in Benelux in 2004 and 2005. The Domain Name resolved to an "Under Construction" web page provided by the registrar including sponsored links relating to online learning. The Domain Name was registered in 1995.
To be successful in a UDRP procedure, a complainant must evidence that:
- The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As for the first limb of the UDRP, the Complainant evidenced that the Domain Name was identical or confusingly similar to its OFFICE KIRKPATRICK and KIRKPATRICK trade marks and the Panel found that the Domain Name was clearly identical to the Complainant's registered KIRKPATRICK trade mark. Although the KIRKPATRICK trade mark was registered after the Domain Name was registered, the Panel explained that it was sufficient, for the purposes of the UDRP, for the Complainant to have rights in a mark at the time of the filing of the Complaint.
Despite the fact that the Domain Name was identical to the KIRKPATRICK trade mark, the Complainant still had to prove that the Respondent had no rights or legitimate interests in the Domain Name under the second limb referred to above. In general, whilst the overall burden of proof rests with complainants, panels have recognised that this may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore complainants are simply required to make out a prima facie case that respondents lack rights or legitimate interests. Once such prima facie case is made, it is the respondent who carries the burden of demonstrating rights or legitimate interests in the domain name.
In this case the Complainant attempted to make out its case by asserting that the Respondent had never used the Domain Name personally and that the "pay-per-click" web page, which, according to the Complainant, misled consumers expecting a website associated with the Complainant, was neither a bona fide offering of goods nor a legitimate noncommercial or fair use because the Respondent presumably received compensation for each misdirected internet user. In addition, the Complainant stated that, upon the return of its cease and desist letter as undeliverable, it had engaged private investigators who reported that no one and no business named Kirkpatrick was currently at the North Las Vegas or Ohio address indicated in the WHOIS report for the Domain Name for the registrant and the administrative contact respectively. Therefore, according to the Complainant, the Respondent had registered the Domain Name under the false name "Kirkpatrick" simply to justify a legitimate interest.
However, the Respondent responded by submitting evidence that he had purchased the Domain Name in 1996 because it was freely available and because Kirkpatrick was his surname and the name of his company, Kirkpatrick Enterprises Inc., which was incorporated in 1995, as a one-man operation with the Respondent as its president. In this regard he submitted evidence that his surname was Kirkpatrick by way of a copy of his Nevada driving license. The Respondent also supplied evidence that his former addresses were the North Las Vegas and Ohio addresses and that the Domain Name had been used by his company, Kirkpatrick Enterprises, Inc. With regard to the absence of any company under the name Kirkpatrick in North Las Vegas or in Ohio, the Respondent explained that the company Kirkpatrick Enterprises Inc. has been dissolved, in particular due to the Respondent's divorce in 2005. The Respondent further explained that the Ohio address had been his home for over 20 years and remained the home of his former wife and that the North Las Vegas address was his home until June 2010.
Finally, the Complainant sought to establish the third requirement by submitting that the Respondent registered and used the Domain Name in bad faith. The Complainant claimed that the Respondent provided a false name and false contact details in an effort to make identification and communication impossible. In addition, the Complainant submitted that the Respondent had failed to provide accurate telephone or fax numbers or even an email address for the administrative contact, in violation of the domain name registration agreement. The Complainant added that the timing of the Respondent's registration in conjunction with the lack of contact information indicated that the Respondent registered the Domain Name for the purpose of "blocking" the Complainant from using the Domain Name and ensuring the Complainant's inability to find a legally recognisable business entity against which to assert a claim. The Complainant concluded that it was evident that the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the registration to the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name. Finally, the Complainant argued that the Respondent presumably received referral fees from advertisers and thus, by incorporating the Complainant’s trade mark within his confusingly similar Domain Name, the Respondent created a likelihood of confusion as to the affiliation and endorsement of the Domain Name and corresponding website.
The Respondent countered that the Domain Name had neither been registered nor used in bad faith. The Respondent stated that he had never heard of the Complainant until he was notified of the UDRP Complaint against him by the registrar. Finally, the Respondent asserted that the Domain Name was held by the registrar as an "automatically generated parked placeholder web page for a domain that is not yet attached to an active website".
The Respondent further asserted that this was a proper case of Reverse Domain Name Hijacking, in particular because his identity and location could have been readily ascertained from the present occupants of the two addresses visited by the Complainant's investigators and also because the Complainant had waited fifteen years before filing the Complaint.
The Panel acknowledged that the evidence provided by the Respondent was sufficient, pursuant to the Policy, to demonstrate that the Respondent had a legitimate interest in the Domain Name and thus that the Complaint must be dismissed. However, the Panel still decided to consider the bad faith element in order to address the Respondent's claim of Reverse Domain Name Hijacking.
In the Panel's view, given that (i) the address provided at the time of registration of the Domain Name was genuine; (ii) the Domain Name reflected the Respondent's own name; and (iii) the Domain Name was registered years before the Complainant registered its KIRKPATRICK trade mark, there was no evidence that the Domain Name had been registered in bad faith. In these circumstances, the Panel found it unnecessary to consider the question of bad faith use.
The Panel reminded the parties that Reverse Domain Name Hijacking is defined as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name" and that, to prevail on such a claim, a respondent must show that the complainant knew of the respondent's unassailable right or legitimate interest in the domain name in question or the clear lack of bad faith registration and use and still brought the complaint in bad faith. According to the Panel in this case, the Complainant had not been shown to have been aware of the fatal flaw in its case, namely that the Respondent was a real person.
This case shows the difficulties one can encounter in using the UDRP as an arm against a registrant who is not clearly a cybersquatter, and the need to prepare one’s case thoroughly, as a well drafted reasoned and credible response can go a long way to preventing a transfer. Whilst there is no need for a complainant to have a registered trade mark at the time of the registration of the domain name, the fact that the complainant did not can be a significant factor in the consideration of whether or not there is genuine bad faith registration or use.
Also, this case highlights the importance of the second element of the UDRP, namely the absence of rights or legitimate interests of the respondent in the domain name in question. Although, as mentioned above, a complainant is only expected to make out a prima facie case that the respondent lacks rights or legitimate interests, due to the fact that the name Kirkpatrick is a relatively common surname and company name, this case called for particularly careful preparation and indeed from the outset was a difficult case to win.
The Complainant could perhaps have further investigated the possibility that the Respondent's surname was indeed Kirkpatrick. One solution might have been to contact the registrar, inform them that the contact details indicated in the WHOIS for the Domain Name did not appear to be accurate in violation of the domain name registration agreement and ask them to obtain updated contact details for the Respondent. The Respondent stated that he only became aware of the Complaint when notified by the registrar, which interestingly suggests either that the registrar held additional contact details for the Respondent - often the case as a registrar will always ensure they have good information for billing purposes - or that the Complainant failed to send the cease and desist letter by email (which is always advisable), only regular postal mail.
The decision is available at: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0767