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Recognizing the Rights of a Beneficial Owner of Domain Name Held In Another’s Name

Concealing the identity of the beneficial owner of a domain name is perfectly legal. There is no prohibition for using masking services to protect one’s privacy. In any event, the beneficial owner’s identity is ordinarily (although not always) disclosed prior to the Provider forwarding the complaint and record to the Panel. The qualification “not always” applies to defaulting proxies. Insisting on anonymity carries a strong negative inference that the respondent’s intention for registering the disputed domain name was to take advantage of the complainant’s trademark. Sometimes, the complainant is aware of the beneficial owner’s name and contact information, evidenced by pre-arbitration correspondence. This was the case in Akris Prêt-à-Porter AG v. Fresh Enterprise Limited and Andrew Kris, D2011-0366 (WIPO April 22, 2011).

If “foul intent” is alleged it has to be proved. For example, in The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC., D2009-0057 (WIPO March 24, 2009) (<jenniferlopez.net> and jenniferlopez.org) the Panel held that the Respondent’s “manipulations are “strongly evocative of cyberflight, and appear to have been calculated to obstruct or delay this proceeding under the Policy.” Manipulations refer, for example, to inaccurate information on the Whois database which is a violation of the respondent’s registration agreement and suggests obstruction.

The main question when the “first respondent” relies on the testimony of the “second respondent” is whether the first respondent, the proxy can rely on its principal’s testimony. The Panel found that it could:

Having reviewed the evidence provided by the Respondents, the Panel finds it more likely than not that the Second Respondent, Mr. Andrew Kris, registered the disputed domain name because it is comprised of the first letter of his first (given) and his last name, and that the Second Respondent has used the disputed domain name in connection with a bona fide offering of goods and services, namely business process outsourcing and shared services, before notice of the dispute, which, according to the evidence provided by the Respondents, must have been clear to the Complainant based on the fact that the Complainant had been in touch with the Second Respondent for many years re the acquisition of the disputed domain name.

Ordinarily, transfer is equivalent to new registration, which would defeat the beneficial owner regardless of the argument that the beneficial owner acquired the domain name prior to the complainant’s trademark. In ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009) the domain name holder, the “first” respondent was a transferee, as is the respondent in Akris. However, the cases are distinguishable. There is a critical difference between ehotel and Akris which the Akris Panel explains as follows:

the use of the disputed domain name has in the present case not significantly changed since the disputed domain name was first registered by the Second Respondent in 1998 – it has always been used in connection with the Second Respondent’s business.

Where (quoting Akris) the transfer from the beneficial owner to another is “not accomplished to conceal the Second Respondent’s identity, i.e. to frustrate assessment of liability in relation to the registration or use of the domain name)” and the “evidence clearly establishes an unbroken chain of underlying ownership by the Second Respondent” it will not be regarded as a new registration to support forfeiture.

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