“Given the human capacity for mischief in all its forms” (said one Panel) “the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties,” Worldcom Exchange, Inc v. Wei.com, Inc., D2004-0955 (WIPO January 5, 2005) (<wei.com>). There are three acts that are presumptively abusive, namely pointing or threatening to point the disputed domain name to a website featuring “adult content”, extorting money to return a domain name fraudulently transferred (allegedly by someone other than the respondent who obtained it in good faith) and phishing.
In Motorola Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000) the Respondent threatened to “use the domain to host an ‘adult sex site’.” The majority noted that “actions that create, or tend to create, violations of the law can hardly be considered to be ‘bona fide’.” In Carso S.A. de C.V. v. RusliCyber.com and Trisakti University, Mr. Ahmad Rusli, D2008-1767 (WIPO January 5, 2009) when the Complainant decided did not respond to Respondent’s communication to talk about the domain name Respondent in retaliation threatened to divert traffic to an “unpredictable destination.” The Respondent’s explanation was that the threat “was just a way another ‘method’ to attract the Complainant’s attention.”
Gryphon Internet, LLC v. thank you corp. / Jon Shakur, FA1108001405610 (Nat. Arb. Forum October 11, 2011) combines threats and fraudulent acquisition. The Respondent’s (alleged) innocent purpose was to “use [the domain name] for a web site for pets and rare animal species.” It provided no evidence of this intention. Complainant’s proof was persuasive that until August 2011 the site was a thriving business when it was attacked and stolen. In response to the proceedings the Respondent threatened to point the name to adult content.
In cases that raise these issues Panels have consistently ruled that the complainant is entitled to relief. Although fraudulent transfer is not listed as an act of bad faith, paragraph 4(b) makes it clear that subparagraphs (i) through (iv) are nonexclusive examples of bad faith acts. The Panel in Gryphon cites Worldcom Exch. (above) in which the earlier Panel noted that the “Complainant seeks to expand the territory of bad faith, presenting a new type of abusive conduct on the part of the Respondent, one that on its face cries out for relief: the hijacking of a domain name through the manipulation of password access.” It is an example of cybersquatting, in effect, expanding to include abusive conduct.
Hijacking combined with threats strengthens a negative inference about a respondent’s intention in acquiring a domain name. Although the Respondent in Gryphon denied sending e-mails requesting money – a violation of paragraph 4(b)(i) – it admitted that it owned the address that sent the e-mail. That, and the e-mail to the Provider about adult content “clearly intended to portray that if the Respondent [did] not get his own way the business operated at the site [would] be damaged.” The language of extortion is inconsistent with a claim of innocence. Whether a respondent likely gained control or was given control of a fraudulently transferred domain name or even innocently acquired it from a hijacker it will be forfeited to the trademark holder.
Paragraph 4 (b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant the owner of the trade mark in question for valuable consideration in excess of documented out of pocket costs. The Respondent has not produced any evidence that it has paid any sum for the Domain Name and yet the Complainant has produced evidence by way of documents that the Domain Name was stolen.
Although the Respondent in Gryphon denies that it sent the e-mails to the Complainant requesting money for the Domain Name, it clearly threatened to point the domain name to adult content to cause damage to the business on the site. The Respondent admitted that it owned the e-mail address that sent the threatening e-mail. It was “clearly intended to portray that if the Respondent does not get his own way the business operated at the site will be damaged with the clear implication that the Respondent did not believe he really owned or was entitled to that business or site connected to the Domain Name.” As such the communication speaks in the language of extortion. Based on this evidence alone the Panelist was able to decide that the Respondent acquired the Domain Name and was using it in bad faith.