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Transferring a Domain Name to another Holder or another Registrar to Evade the Consequences of a UDRP Proceeding

Domain names registered in good faith are freely marketable, but the Policy contains injunctive commands prohibiting transfer to “another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days … after such proceeding is concluded” [Paragraph 8(a) of the Policy.] Paragraph 8(b) prohibits “transfer[ring] your domain name registration to another registrar” during the same period. Any attempt to evade the consequences of a UDRP proceeding by transferring registration of the disputed domain name after the administrative proceeding has commenced constitutes “cyberflying.”

“ ‘Cyberflying’ is the term used to describe an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint,” Pandora Jewelry, LLC v. wutianhao, D2010-0286 (WIPO April 19, 2010). It also describes a “quick-witted respondent seek[ing] to escape the jurisdiction of the panel,” Enterprises, Inc. v John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO June 19, 2001), citing British Broadcasting Corporation v Data Art Corporation/Stoneybrook, D2000-0683 (WIPO September 20, 2000) [<bbcnews.com>]. The Panel in British Broadcasting said:

To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon of cyberflying, where a registrant of a domain name dispute case systematically transfers the domain name to a different registrant to disrupt the proceeding.

The proceeding is not affected (that is, does not stay or otherwise interfere with the schedule) by either a change of registrar or registrant, although it raises as an issue the proper party respondent. A transferee being an interested party is properly named and implicitly “has consented to this course,” Gloria-Werke H. Schulte-Frankenfeld GmbH & Co v. Internet Development Corporation and Gloria MacKenzie, D2002-0056 (WIPO April 26, 22) (<gloria.com>). In AT & T Corp v. W.N.A. (with various aliases), D2001-1160 (WIPO November 16, 2001) the Panel included in its transfer order both the registrant at the time the complaint was received and the registrant to whom the name was transferred shortly thereafter. As with proxy and privacy services, it is appropriate to name both.

Evidence of cyberflying is based on information recorded in the WhoIs data. “The Complainant cannot be expected to be aware of any such change in the registration if such change to WhoIs data has not been recorded,” Isoterm AS v. BusinessService Ltd and FirmaOnline Ltd., D2009-1376 (WIPO April 19, 2010). It is therefore irrelevant that the alleged transfer was arranged prior to the commencement of the proceeding although not recorded. A change of registration on the same day the transferor received complainant’s email notification of the complaint is prima facie evidence of bad faith. Pologne 4 S.P.A. v Carrent Bank-Promotuls, SA. Inc./ Esidro Fentis A/K/A Alex Bars, D2004-0830 (WIPO December 2, 2004). In Sutton Group Financial Services Ltd. and Sutton Group Realty Services, Inc. v. Bill Rodger, 2005-0126 (WIPO June 27, 2005) the Respondent alleged that it had sold the domain name in dispute, but the facts disclosed that the transferee company was not incorporated until after the proceeding was commenced.

The consensus is that “if one party acts in concert or conspires with another to avoid the effect of the Policy, that person’s bad faith should be imputed to the other with regard to that conduct,” XM Satellite Radio Inc. v. Michael Bakker, FA0612000861120 (Nat. Arb. Forum February 27, 2007). Although, in this particular case the Respondent’s subsequent de novo action in The Regional Court in Cologne resulted in a ruling that “[a]s the (US based) Complainant did not have any trademark rights for ‘XM’ in Germany (where both the Respondent and the Registrar were located) the court rejected any claims under applicable trademark law.”

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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