Gloria – Werke H. Schulte-Frankenfeld GmbH & Co. v. Internet Development Corporation

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gloria-Werke H. Schulte-Frankenfeld GmbH & Co

v.

Internet Development Corporation and Gloria MacKenzie

Case No. D2002-0056

1. The Parties

(a) Complainant

The Complainant is Gloria-Werke H.Schulte-Frankenfeld GmbH & Co,

a German corporation with its principal place of business at Wadersloh, Germany.

The Complainant is represented by Dr. Rolf Diekmann, Attorney-at-Law

of Lichtenstein, Körner & Partners of Stuttgart, Germany.

(b) Respondent

The person in whose name the disputed domain name is currently registered is

Gloria MacKenzie of Silver Springs, MD, United States of America. A Response

on her behalf was filed by Mr. Ari Goldberger of ESQwire.com Law Firm

of Cherry Hill, NJ, United States of America. However, Gloria MacKenzie was

not the registrant when the Whois record was searched by the Complainant on

November 5, 2001. The registrant for the disputed domain name was

then Internet Development Corporation (IDC) which was shown also as the administrative,

technical and billing contact. The only physical address then given was the

State of Maryland, United States of America. A telephone number and an email

address <warren@warren.com> were provided. IDC was replaced as Registrant

on January 22, 2002 by Gloria MacKenzie for whom a street address

and other contact details were given.

This was the same date as that on which the Complaint had been received by

World Intellectual Property Organization Arbitration and Mediation Center ("the

Center") from the Complainant. A copy of the Complaint was sent to IDC

by the Complainant on that day also. A copy was not sent to the Registrar. On

February 8, 2002, the Registrar advised The Center that there had

not been any change of registrant and that Gloria MacKenzie and IDC are

"the same entity with different representative names". That advice

was a simple ‘yes’ to an inquiry in those words from the WIPO Case Manager.

The Registrar had responded on February 7, 2002 to the Case Manager’s

inquiry whether there had been a change of registrant on January 22, 2002,

to a different entity or individual and when that transfer had been requested

and approved. The Case Manager asked for a telephone number to enable further

discussions. Such number was not given and the Case Manager’s attempts to telephone

the relevant person at the Registrar’s office were unsuccessful. The Registrar’s

reply of February 7, 2002, states: "That is EXACTLY what I provided

to you. There was NO transfer. The person changed updated their contact information

on 1/22/02. Just have the Complainant file an addendum … maybe I don’t understand

what the problem is?"

The Complainant discovered on January 23, 2002, that the Registrar

had changed the name of the registrant. The Complainant submitted that this

action was a clear case of ‘cyberflying’ and sought to file an amendment to

its Complaint, seeking, if necessary, the addition of Gloria MacKenzie as a

Respondent.

A thorough account of the numerous interactions in this area can be found in

the dissenting opinion of one of the Panelists.

On February 11, 2002, Mr. Goldberger asserted to The Center that Gloria MacKenzie

was neither a contact nor an affiliate of IDC which had been but a host for

the domain name <gloria.com>. This name had been inadvertently registered

in the name of IDC when IDC had changed Registrars for several domain names

which it hosted on behalf of clients. Prior to this event, the disputed domain

name had been registered since 1995 in the name of Gloria MacKenzie who is still

the owner. The change in the name of the registrant was said to be merely action

to correct a mistake, initiated by Warren Weitzman, who operates IDC and

who is the "Warren" of <Warren.com>. Affidavits from him and

from Gloria MacKenzie were filed to support these allegations.

The Panel is concerned with the actions of the Registrar in registering a change

of registrant and/or of Mr. Weitzman in procuring the change with apparent ease,

at a time when at least Mr. Weitzman knew of a pending Complaint under the Policy.

See paragraph 8 (a) of the Policy. If the Registrar was unaware of

the pending complaint, then Mr. Weitzman should have informed it.

In Enterprises, Inc. v John Zuccarini, Cupcake City and Cupcake Patrol,

WIPO Case No. D2001-0489, the Panel said:

Under the Policy, which forms part of the registration agreement, a registrant

may not transfer a domain name registration to another holder [par.8(a)] or

another registrar [paragraph 8(b)] during a pending proceeding under the Policy

or for 15 business days after its conclusion.

A complaint is initiated by the trademark owner sending a properly constituted

complaint to any Provider approved by ICANN -–Rule 3(a). A copy must already

have been sent to the respondent by the complainant – Rule 3(xii). The date

of commencement of the proceeding is the date on which the Provider completes

its responsibilities in connection with forwarding a copy of the complaint to

the respondent (after checking all the formalities, which can take several days)

– Rule 4(c).

Thus a quick-witted respondent might seek to escape the jurisdiction of the

panel by transferring the domain name to a new holder or to a new registrar

after receipt of the copy of the complaint but before the formal commencement

of the proceeding. Both situations arose in British Broadcasting Corporation

v Data Art Corporation/Stoneybrook, WIPO

Case No. D2000-0683 [<bbcnews.com>], in which the panel 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".

In that case, the transferee of the domain name was an associate of the respondent

who had knowledge of the complaint before the transfer took place. The panel

held that neither the change of registrant nor of registrar affected the proceedings.

In the event, the new registrar was directed to transfer the domain name <bbcnews.com>

to the BBC.

In this case, after receiving the complaint, Mr. Zuccarini transferred three

of the Disputed Domain Names to a different registrar and into his own name.

The panel finds these circumstances identical to those in the BBC case and that

neither the change of registrant nor or registrar affects these proceedings."

To similar effect is the decision in AT & T Corp v. W.N.A. (with

various aliases) (WIPO Case No. D2001-1160).

In that case a transfer order was made against both the registrant at the time

the Complaint was received and the registrant to whom the name was transferred

shortly thereafter. The same Registrar was involved as is in the present case.

The Panel is also concerned at the Registrar’s rather unsatisfactory answers

to inquiries made by The Center concerning the transfer. The Panel considers

that the co-operation of the Registrar in dealing with the Center’s inquiries

was less than ideal. Further detail can be found in the dissenting opinion.

However, the Panel, at the outset of the decision, should decide who is the

primary Respondent. The Panel considers that IDC must be, on the basis that

it was the registrant at the time when Complainant filed its Complaint. Because

of the knowledge of the pending complaint of the person controlling IDC, Mr.

Weitzman, the registration on January 22, 2002, to Gloria MacKenzie

cannot be recognized by the Panel because of the ‘cyberflying’ principles quoted

from the WIPO decision above.

The register must be taken as reflecting the correct identity of the registrant

of a domain name. There can be no room for a bare trustee or a nominee or an

agent holding on behalf of a beneficiary or principal, so far as third parties

are concerned. Like shipping and land registers operating in many common law

jurisdictions under the "Torrens System", the register must be

taken at its face value. However, because of the transfer to Gloria MacKenzie,

a majority of the Panel considers that she should also be joined as a Respondent,

being an interested party. The majority considers that she has consented to

this course.

Accordingly, the majority of the Panel considers that the correct Respondents

are IDC and Gloria MacKenzie and grants the Complainant’s request to join Gloria

MacKenzie as a Respondent.

2. The Domain Name and Registrar

The domain name at issue is <gloria.com>. The domain name is registered

with eNom, Inc. of Redmond, WA, United States of America ("the Registrar").

3. Procedural History

The Complaint submitted by the Complainant was received on January 22, 2002,

(electronic version) and January 22, 2002, (hard copy) by the Center.

An Addendum was made to the Complaint before any dispatch to the Respondent.

On January 24, 2002, a request for Registrar verification was transmitted by

the Center to the Registrar, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant

as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain name at issue is registered with the Registrar.

- Confirm that the person identified as the Respondent is the current registrant

of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s),

facsimile number(s), email address(es), available in the Registrar’s WHOIS database

for the registrant of the disputed domain name, the technical contact, the administrative

contact and the building contact for the domain name.

- Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

- Indicate the current status of the domain name.

- Indicate the specific language of the registration agreement used by the

registrant.

- Indicate whether the registrant has submitted in its Registration Agreement

to the jurisdiction at the location of the principal office of the Registrar

for court adjudication of disputes concerning or arising from the use of the

disputed domain name.

By email dated January 24, 2001, the Registrar advised the Center as follows:

- It had not received a copy of the Complaint from the Complainant.

- It is the Registrar of the domain name registration <gloria.com>.

- IDC is not shown as the "current registrant" of the domain name.

Gloria MacKenzie is shown as the domain name registrant, administrative,

technical and billing contact. A street address in the State of Maryland was

provided for her.

- The UDRP applies to the domain name.

- The domain name registration is currently on "lock"

- English is the language of the Registration Agreement.

-- The Registration Agreement was submitted to the jurisdiction of the principal

office of the Registrar.

The Registrar has currently incorporated in its agreements the policy for Uniform

Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned

Names and Numbers (the "Policy").

The Registrar advised that the domain name in question is on "lock".

Neither Respondent has sought to terminate the agreement with the Registrar.

Accordingly, the Respondents are bound by the provisions of the Policy. The

Respondents have not challenged the jurisdiction of the Panel.

The Complainant filed an Addendum to its Complaint on February 14, 2002,

(email) and February 18, 2002 (hard copy).

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"),

the Center on February 19, 2002, transmitted by post-courier, fax

and by email a notification of the Complaint, Addendum to Complaint and Commencement

of Administrative Proceedings to IDC to:

(a) Gloria MacKenzie at her Maryland address;

(b) Mr. Weitzman at his Maryland address;

(c) Mr. Goldberger’s email address;

(d) Mr. Weitzman’s email address (i.e. <warren@warren.com>, the only

address given for IDC before the change in registrant on January 22, 2002);

(e) <gloria@gloria.com>.

A copy of the Complaint and Addendum was also emailed to the Registrar and

ICANN. The addressee was "Internet Development Corporation a/k/a Gloria

MacKenzie".

The Complainant elected to have its Complaint resolved by a one-person panel.

The Respondent sought a three-person panel. Both parties have paid the required

amounts to Center.

The addressees were advised that a Response to the Complaint was required within

20 calendar days and that any Response should be communicated, in accordance

with the Rules, by four sets of hard copy and by email.

A Response was filed by email on March 11, 2002, and by hard copy of March 12, 2002,

under the name of Gloria MacKenzie and not under the name of IDC. Because Mr. Goldberger

filed an affidavit from Mr. Weitzman and referred in the Response to the

situation should IDC be the correct Respondent, the Panel assumes that he acts

for IDC/Mr. Weitzman as well as for Gloria MacKenzie and that he sees no conflict

of interest in acting for them all. In fairness to both Respondents, the Panel

has considered all the material filed in the name of Gloria MacKenzie. The Panel

concludes from a consideration of all relevant material that she has consented

to being joined as a Respondent.

The Center invited the Honorable Sir Ian Barker QC of Auckland,

New Zealand to serve as Presiding Panelist in the case. It also invited

Mr. Milton Mueller of Syracuse, NY, United States of America and Mr. Cecil O.D.

Branson QC. of Salt Spring Island, BC, Canada to be Co-Panelists. It transmitted

to all Panelists a Statement of Acceptance and requested a Declaration of Impartiality

and Independence.

All Panelists duly advised acceptance and forwarded to the Center an executed

declaration of impartiality and independence. The Panel finds that the Administrative

Panel was properly constituted in accordance with the Rules and the Supplemental

Rules.

On April 4, 2002, the Center forwarded to the Panel by courier the relevant

submissions and the record. In terms of Rule 5(b), in the absence of exceptional

circumstances, the Panel is required to forward its decision by April 18, 2002.

Because of the difficult nature of this case, the Panel’s decision has been

delayed to April 25, 2002.

The Panel has independently determined and agrees with the assessment of the

Center that the Complaint meets the formal requirements of the Rules and the

Supplemental Rules.

4. Factual Background

The Complainant is a manufacturer of portable fire extinguishers and systems,

garden tools and appliances, in particular, sprayers for water and other fluids.

Founded in 1945, it has customers in more than one hundred countries. It has

trademark registrations in numerous countries including the United States (Federal

trademark 1142729, registered February 5, 1985). Its trademarks extend

to European countries, Latin America, Middle East, Asia, Africa and the Pacific.

According to the Response, the word ‘Gloria’ is incorporated in 94 active and

pending US trade mark registrations: the Internet search engine Google yielded

2.4 million pages on the Internet containing the name ‘Gloria’. From an Internet

yellow pages directory search, there are a 100 businesses in the US incorporating

the word.

The disputed domain name resolves to a web-site greeting of two pop-up screens

loaded with advertising from an online shop and a credit card company. The pop-up

screens are automatically sent to the Windows taskbar at the bottom of the screen:

the user has to open and maximize these screens one by one in order to remove

them. There is an advertisement indicating that <www.gloria.com> is undergoing

development. For development information only, call 301 980111" (the telephone

number given for IDC in the Whois information referred to earlier). There is

more advertising linked to online shops and a list of links headed "The

site has not yet been developed – try searching the Internet on these popular

categories".

In June 2000, the Complainant emailed the Respondent to see whether the name

could be acquired. Mr. Weitzman replied that the domain name was registered

to Gloria MacKenzie but "although she plans on developing this in

the future … she would sell it to you if you offered her enough. Please feel

free to make an offer on sale or lease". On July 5, 2000, Mr. Weitzman

offered to sell the name for a purchase price of $100,000 or grant 3-year lease

for $500 each month under the condition that Gloria MacKenzie could use

the name for emails. On November 9, 2001, Mr. Weitzman again

confirmed Ms MacKenzie’s willingness to sell but would not change his conditions.

He stated "gloria.com is a premium domain name and it gets millions of

unique visitors we have no intention of giving it away".

It seems that the transfer of Registrars took place on February 9, 2000,

from the Whois information (Annex 1 of the Complaint). The Complainant alleged

that this date was November 28, 2000, but no documentary proof was

offered. Mr. Weitzman'’ affidavit says the transfer when the name of the

registrant mistakenly became IDC took place in February 2000.

5. Parties’ Contentions

Complainant

That the domain name is identical to the Complainant’s registered mark. Respondent

has no legitimate rights to or interest in the name. She was given none by the

Complainant.

Gloria MacKenzie is a front for Mr. Weitzman or alternatively she must be liable

for his conduct as her agent. His conduct indicates both lack of legitimacy

plus bad faith use and registration for the following reasons:

Mr. Weitzman is an active cybersquatter with about 750 domain names registered

which he holds to sell at a price beyond registration costs. A list of these

domain names is secretly stored on the web-site corresponding to each name,

e.g. under <gloria.com/statsreferrer.html> the Respondent lists a number

of users sent from one of his domain names (e.g. <gloria.com>) to another.

The Respondent owns or controls hundreds of four letter domain names which are

acronyms of international organizations, universities, public organizations,

Spanish translations of well-known web-sites, names of shopping malls as well

as minor variations to well-known trademarks (‘typosquatting’). The Respondent

is not complying with his obligations to provide information and his whereabouts

in his registration particulars. The initial Whois inquiry showed IDC as the

Respondent with an address only in a state, no street address and no contact

person other than an email address and a telephone number. IDC is not shown

to be a registered company or business name. Mr. Weitzman has full control over

Gloria MacKenzie whom he is using as a pawn in his game of cybersquatting.

Mr. Weitzman’s modus operandi has been discussed in an NAF Case, Montgomery

Mall Associates Limited v. Smirk Inc (FAO 10400097042).

The contested domain name used is for the benefit of Mr. Weitzman, even though

he pretends that the current registrant uses the domain names for her private

email address. There is nothing to support this allegation.

The Respondent is guilty of ‘cyberflying’ i.e. changing/transferring a domain

name subsequent to receiving notice of a complaint. The registration to IDC

took place without Gloria MacKenzie being involved or even informed. Mr. Weitzman

used his access to the Registrar’s database to change the name. Because Mr.

Weitzman is an experienced cybersquatter, owing hundreds of domain names, it

is beyond belief that such a person assumed the ownership of a highly valuable

asset by mistake as alleged, and that the registration was changed from that

of Gloria MacKenzie through error or inadvertence. The relevant registration

must be that shown as at the date of filing of the Complaint. Subsequent transfers

of disputed domain names or transfers of registrant’s business should be ignored.

There are numerous WIPO decisions to this effect.

This case is distinguishable from those decisions where panels have refused

to transfer domain names because generic names or terms have been involved.

For example in Rusconi Editore SDA v. Freeview Publishing Inc, WIPO

Case No. D2001-0875, <donna.com>, the Respondent was a developer who

had designed web-sites and acquired names one by one. He could not have known

about the registration at the time he acquired the domain name. Here, the Complainant

alleges that the Respondent acquired the domain name when he had already received

requests from the Complainant to transfer the name in which the Complainant

asserted its rights. Mr. Weitzman could easily have learned about the US trademarks

by search so that he had constructive knowledge from the beginning. The information

supplied to the Registrar also distinguishes the case from the <donna.com>

case.

The registration was in bad faith because of IDC’s actions and because the

parties were affiliated. There was a close business relationship between Mr.

Weitzman or his company and Gloria MacKenzie which is enough to taint Gloria

MacKenzie with his conduct. In 1995 there was bad faith because there was never

any intention to build a legitimate web-site for the name; from the beginning,

its use was for cybersquatting activities.

Respondent

IDC is not the correct Respondent but merely a third party domain name hosting

service which has been in operation since 1999. From 1995 – 1999, it operated

under the name justnet.inc., which took over the management of Gloria MacKenzie’s

domain name after she first registered it on September 14, 1995.

IDC currently hosts over 1,000 domain names for third-party registrants. In

February 2000, Mr. Weitzman transferred registration of all domain names

that IDC was hosting for third parties including <gloria.com> from Network

Solutions Inc. (NSI) to eNom, Inc. When the transfer took place, IDC’s contact

information was inadvertently used by eNom, Inc. as registrant information.

Mr. Weitzmann refers to correspondence between eNom, Inc.’s transfer manager

and himself. Prior to the change of Registrars, Ms. MacKenzie was listed

as registrant with NSI, the previous Registrar. Until the filing of the Complaint,

Ms. MacKenzie was unaware that IDC and not herself was listed as the registrant.

This is not a case of ‘cyberflying’. The above allegations are supported by

affidavits from both Mr. Weitzman and Ms. MacKenzie.

The business of dealing in domain names and/or hosting them is a legitimate

business.

Paragraph 4(c)(ii) of the Policy applies. The name ‘gloria’ is that by which

Ms. MacKenzie is commonly known. She also uses the name for her email address

which is a non-commercial use which establishes rights under paragraph 4(c)(iii)

of the Policy.

There is no evidence that registration was in bad faith and that Ms. MacKenzie

should be deemed to have known of the Complainant’s mark at the time of registration

in 1995. In any event, gloria is a common girl’s name to which the Complainant

cannot hope to have exclusive rights. The equitable doctrine of laches applies

to defeat the Complaint.

Mr. Weitzmann was acting on behalf of Ms. MacKenzie in the negotiations with

the Complainant about selling the name. She was never contacted personally but

Mr. Weitzman presumed that she would be interested in a good offer.

Respondent relies on the statement of the Panel in the <donna.com> case

(supra).

"Donna is commonly used as a women’s name in English. Despite having registered

trademarks for that word in particular classes, the Complainant does not have

exclusive rights to this common word."

There is no evidence that Ms. MacKenzie had ever heard of Complainant in 1995

when she registered the domain. Its business is based in Germany: there is no

evidence that it is well known in the United States.

The Complainant has engaged in reverse domain hijacking and has brought the

Complaint in bad faith. This is because the Complainant, when dealing with Mr. Weitzman,

must have known that the name was owned by Ms. MacKenzie because Mr. Weitzman

stated "she’d sell it to you". Complainant has wrongly disrupted Gloria MacKenzie’s

life and caused her substantial hardship and the expense of fighting a massive

corporation. The Panel is asked to issue a strong rebuke to the Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no legitimate rights or interests in respect of the

domain name; and

- The domain name has been registered and used in bad faith.

As noted earlier, the Panel must consider the applicability of the criteria

under the Policy at the time when registration was put into the name of IDC

on February 9, 2000. It accepts the ‘cyberflying’ allegations surrounding

the registration to Gloria MacKenzie on January 22, 2002. That transfer

should not have been made when Mr. Weitzman knew of the filing of a Complaint.

The Panel considers that the disputed domain name is identical to the Complainant’s

registered marks. The first criterion is proved.

The second criterion is also established because IDC has no legitimate rights

or interest in respect of the domain name. Complainant gave it none. The situation

would have been different had Gloria MacKenzie’s situation been the only one

to consider.

This case turns on whether there is sufficient factual material for the Panel

to infer that in February 2000, IDC knew or ought to have known of the

fame of the Complainant’s mark. Although there was then a United States trademark

registration, it was for a product not proved to have been well known in the

United States at the time. The word Gloria is a common name for women. The majority

does not consider this to be one of those cases where the Panel should infer

that the registrant should have conducted a trademark search before registering.

The Complainant has produced no evidence of its operations in the United States

in 2000 apart from the registration of the trademark. There is no evidence

provided by the Complainant that it had then an extensive presence in the United

States or that it had any sizeable sales in that country. Basically, this is

another case of a trademark owner in country A expecting that a domain name

registrant in country B would have heard of its mark at the date of registration.

The majority of the Panel is unable to make that deduction. Accordingly it is

unnecessary for the majority to deal with the other aspects of this claim, because

the Complainant has failed to prove bad faith registration by Respondent.

The Panel declines to consider the NAF case involving Mr. Weitzman. Each case

under the Policy must be considered on the facts presented to the particular

Panel which may not be the facts presented to another Panel.

The majority of the Panel considers this case very similar to the <donna.com>

case (supra).

The quotation from that case mentioned in the summary of the Respondent’s submissions

is apposite. The inferences to be drawn from

(a) Mr. Weitzman’s activities as a dealer in and host of domain names, and

(b) the lack of contact information for IDC in the Whois

are insufficient to overcome the lack of evidence of the fame of the Complainant’s

mark in the US at the relevant time. These inferences might have been more persuasive

if the domain name had not been a common personal name and, as such, a commodity

greatly to be desired by those dealing in domain names.

The Panel also considers that the equitable doctrine of laches has no application

in this case. Clearly, the greater the interval between registration and challenge

to registration, the harder it will be for a Complainant to prove bad faith

at the time of registration. Here the relevant date of registration (February 9, 2000)

is less than two years before the filing of the Complaint.

7. Reverse Domain Name Hijacking

The Panel does not consider that this is an appropriate case for making a declaration

in this regard. The Complainant was justified in making a claim when it encountered

on search a bewildering lack of registrant information. The only address given

was the state of Maryland and no street address was given. Whether this lack

of information was the fault of the Registrar or of Mr. Weitzman in changing

Registrars or of Gloria MacKenzie does not matter: rather, it was an incentive

to the Complainant to bring the proceedings. Besides, Complainant had a long-standing

registered trademark in the US.

In one recent case where reverse domain name hijacking was declared, the Complainant

did not have a trademark in the country where the domain name was registered.

See Supremo n.v./s.a. v. Rao Tella, WIPO

Case No. D2001-1357.

Further, since an application for such a declaration is a discretionary remedy,

the Panel should look at the parties’ conduct. IDC’s action in arranging for

the registration to be changed on January 22, 2002, was wrong for

the reasons given earlier.

8. Decision

The majority of the Panel considers that the complaint should be dismissed

and makes no order for the transfer of the domain name <gloria.com>. The

Panel declines to make a declaration of reverse domain name hijacking against

the Complainant.

Hon. Sir Ian Barker QC

Presiding Panelist

Mr. Milton Mueller

Panelist (Concurring)

Dated: April 26, 2002

Dissenting Opinion

Introduction

There are two aspects of the majority decision in this case with which I do

not agree. The first is the addition of Gloria MacKenzie as a Respondent. The

second is failure to find bad faith registration of the domain name <gloria.com>.

Who is a Respondent?

While I agree with the concerns of my fellow Panelists that the combined acts

of the Registrar and/or of Mr. Weitzman in procuring the change of name with

apparent ease, at a time when at least Mr. Weitzman knew of a pending complaint

under the Policy, unlike them I believe that we must go into details of what

transpired here before an informed decision can be reached as to the proper

Respondent in this case. This exercise may assist in the avoidance of a repeat

of such action.

On January 22, 2002, the Complaint was received by the Center and by the only

Respondent named therein, Internet Development Corporation("IDC").

Subsequent to this, the Registrar altered the Registry entry by substituting

Gloria MacKenzie in place of IDC. The Complainant’s counsel, Dr. Diekmann performed

a check search of the registration on January 23, 2002, and discovered

this change. He immediately objected, and attempted to have the situation clarified.

He suggested to the Center that the Respondent had used the short period of

time which elapsed between the receipt of the Complaint and the announcement

of the arbitration proceedings to manipulate the WHOIS record, and said "My

question is now, whether we have to change the Respondent in our Complaint and

how this is to be done."

On January 24, 2002, a request for Registrar verification was transmitted by

the Center to the Registrar, requesting it verify the several items as mentioned

in the page 4 of the majority decision. By email dated January 24, 2001,

the Registrar provided the Center with requested information as specified in

page 5 of the majority decision.

The next day, January 25, 2002 the Center advised Dr. Diekmann that the concerned

Registrar had verified that the Respondent for this case was Gloria MacKenzie,

and asked for complaint amendment accordingly. That same day, Dr. Diekmann

sent a lengthy e-mail to WIPO alleging "cyberflying" as the reason for the change

and advised that he had sent an e-mail and spoke to someone there and apparently

had not received a satisfactory response. He alleged manipulation of the

WHOIS records after the Complaint was filed and that the prior owner IDC was

replaced by Gloria MacKenzie. He concluded by saying: "In order to decide

whether the prior registrant has to be reinstalled and whether the new registrant

has to be a party in the proceedings I need to know very soon:

- who did the changes?

- when exactly the changes took place?

- whether Mr. Warren Weitzman (Internet Development Corporation) is able to

change the WHOIS records by himself?[1]

Thank you in advance for your help."

As Dr. Diekmann says, "Unfortunately, the Registrar refused to render any information."

He also mentions receiving an e-mail that day (January 25, 2002) from

the Registrar as follows:

"We must let the UDRP proceedings take its course. We received the

request for verification today, so I believe you will have to file an amendment

indicating the new registrant as the Respondent. The name has been placed

on Registrar Lock in accordance with the UDRP[2],

so I would anticipate no further changes." Dr. Diekmann said to WIPO:

"It might be useful to remind the Registrar that it is to co-operate with

the Center and to give truthful and complete information irrespective of its

flourishing business relationship with the original Respondent in this case.

The registrar must not side with the Respondent and must not allow manipulation

or deletion of data within the WHOIS record. It is unacceptable, therefore,

that the online WHOIS record as available from the Registrar does not even reflect

the date of the most recent update (the change of Registrant). In our

view, there are just two possible explanations for this: either the Registrar

allows the original Respondent -- its customer and the current Registrant's

representative for years to manipulate the WHOIS data as he pleases or the Registrar

was involved in this act of "Cyberflying" and was instrumental in an attempt

to cover-up by preventing the most recent update to appear in a WHOIS record."

He concluded:

"In order to determine when the change of ownership exactly occurred (by hour

and minute) we respectfully ask the Center to inquire into this matter again.

Also please let us know when exactly the e-mail with the Complaint was received

by the Center."

On January 31, 2002, the Center received an e-mail from Mr. Goldberger stating,

"I represent the Respondent in the above-filed action. Please notify me

when the official notice of Complaint is transmitted and kindly copy me."[3]

On February 1, 2002, the Center e-mailed eNom, about Dr. Diekmann's allegations,

reminding it that under paragraph 8(a) of the Policy a Domain Name may not be

transferred during an Administrative Proceeding and that "under that paragraph,

the Registrar reserves the right to cancel any transfer of a Domain Name registration

that is done in violation of that paragraph." The Center asked for confirmation

of the date of the transfer, particularly if it was on or after January 22, 2002,

and requested the Registrar to consider cancellation of that transfer in the

event the transfer occurred on or after January 22, 2002, in violation

of paragraph 8(a) of the Policy.

Minutes later the Center e-mailed Dr. Diekmann advising that "it would investigate

his assertions with the concerned Registrar" and "if the registration details

were changed after the receipt of the Complaint by the Center (January 22, 2002)

we will invite the Registrar to exercise its discretion, under para. 8(a) of

the Policy to cancel that transfer (in order to reinstate the original Respondent,

Internet Development Corporation). The Center will advise the parties once it

has confirmed these details with the concerned Registrar."

Despite the repeated requests for precise details, the Registrar responded

on February 6 as follows:

"the name was locked upon our receipt of the request for registrar verification.

The WHOIS data reflects the same contact information now as it did at the time

of our verification. A copy of the Complaint was not received from the

Complainant (as noted in our response) prior to the request for verification."[4]

The next day, February 7, 2002, the Center by URGENT e-mail asked the Registrar

"could you kindly confirm the date on which the registration of the domain was

transferred from 'Internet Development Corp.' to 'Gloria MacKenzie' for this

case?" At 4:26pm, the Registrar's response to these urgent specific requests

came back:

"It had only a billing contact listed up until 1/22/02. On 2002-01-22

07:53:49.400 there was a Registrant, Aux[sic] Billing, and Technical

contacts added. These contacts are what you see on the domain right now.

It is still in the same account, just a different contact information."

Still not satisfied, the Center at 5:56 on the 7th wrote "The Complainant's

evidence proves that the Domain Name gloria.com had been registered with 'Internet

Development Corporation' (printout of WHOIS search dated January 19, 2002,

and December 26, 2001, with different contact details and e-mail addresses.)

Please inform us whether there had been a change of Registrant as of January 22, 2002,

to a different entity or individual, and when that transfer had been requested

and approved. Thank you, and we would also appreciate if you could provide

us with your telephone number so that I may call you for further discussion

on this."

The final e-mail of the day, at 6:10pm from the Registrar reads: "that

is EXACTLY what I provided to you. there was NO transfer. the person

changed updated their contact information on 1/22/02. just have the complainant

file an addendum ... maybe I don't understand what the problem is?"

At 12:48am on February 8, 2002, the Center replies "Thank you. I take

it that the Internet Development Corp. and Gloria MacKenzie are the same and

one entity with different representative names." The answer comes back

from the Registrar at 7:56pm "yes". It should also be noted that the Center

has a handwritten note at this time that "telephone calls to Registrar numerously

failed."

Also on February 8, 2002, Mr. Goldberger again advised the Center "I represent

Respondent in the above referenced proceeding. Would you be kind enough

to update me on the status of the compliance review of the Complaint. I would

also appreciate if you could notify me of the official commencement date and

complaint notification. Thank you very much."[5]

On February 9, 2002, the Center with a copy to < mailto:ag@esqwire.com[6]

advises Dr. Diekmann "The Registrar has confirmed us that there has not

been any change of the Registrant recently[7],

and that the current Registrant 'Gloria MacKenzie' is simply the different name

contact point for the entity 'Internet Development Corporation' as they represent

the same. Therefore, the Complainant is requested to add that contact

detail in the Respondent information section as an addendum to the original

Complaint already submitted, and then we shall shortly commence with the proceeding

upon its receipt." This prompts email from Mr. Goldberger to the Center "for

the record Gloria MacKenzie is NOT a contact of affiliate of Internet Development

Corporation. The Registrar is not a source for this information. … The appropriate

Respondent is Gloria MacKenzie since she is the Registrant as of the

time WIPO conducted its Compliance Review.[8]

On February 11, 2002, Dr. Diekmann respectfully asks the Center to consider this

matter again, giving a number of reasons in support including the change in the

registry information. He asserts that "the Registrant is the one who

qualifies as the Respondent and it must not be changed during the proceedings

... the Complainant does not accept the suggestion that the Respondent and the

current Registrant are the same. There is overwhelming evidence to the contrary.

... Gloria MacKenzie, the purported Registrant, has never been active under the

trade name 'Internet Development.' She is, therefore, not the Respondent."

The Center responds the same day and confirms that the argument in Dr. Diekmann's

lengthy e-mail of that day "will be brought to the Panel when duly appointed

later in the proceedings. In the meantime, please note that the Center does not

have the authority to question the veracity of the Registrar's verification, and

should you wish to bring up any dispute with them, it should be dealt directly

with the concerned Registrar."[9]

And in order for us to continue with our proceeding, the Respondent named in

the Complaint must correspond to the Registrant currently registered for the domain

name, as notified to the Center by the Registrar, namely "Gloria MacKenzie."[10]

All your arguments regarding the relationship between the Internet Development

Corporation and Gloria MacKenzie can be included in the addendum, as requested

previously." There is also a p.s. to this communication "Kindly note that the

Respondent is represented by Mr. Ari Goldberger (<mailto:ag@ESQwire.com >)

in this case and that all communications by a Party to the Center should be copied

to the other Party, pursuant to para. 2(h) of Rules for Uniform Domain Name Resolution

Policy. UDNRP.[11]" Dr. Diekmann asked "Please

let me know in what position this addressee is acting and how he became involved

in the present proceeding. Thank you!"

On February 13, 2002, Dr. Diekmann sends to the Center "an amendment to the

Complaint as requested" and points out that "we have not replaced the

original Respondent but added the current Registrant's name because, as the

Registrar stated this name is in reality the original Respondent. Only in

connection with the subsidiary request we added a second Respondent. We hope

this is sufficient because the current Registrant is now reflected in the name

of the Respondent." It is clear to this Panel that this and earlier e-mails

from the Registrar and the Center telling Dr. Diekmann what must be done

on behalf of the Complainant before the matter can proceed is the only reason

that he provided the supplementary Complaint. He continues to insist that

the only respondent ought to be IDC, but that it may well be the case that IDC

and Gloria MacKenzie are either one and the same or at least in cohoots, but

that, if it is necessary for the matter to proceed, he is only then prepared

to add a second Respondent. Indeed, the style of cause says "Internet Development

Corporation a/k/a Gloria MacKenzie." How can it be said that the

Complainant seeks relief against Gloria MacKenzie alone?

On February 19, 2002 the Center sends the Notification of Complaint and Commencement

of Administrative Proceeding with Complaint Transmittal Coversheet and the Supplementary

Complaint to Mr. Goldberger. He elects to have this matter decided by

a three-member Panel, and files a Response on March 12, 2002, on behalf

of Gloria MacKenzie. Immediately Dr. Diekmann communicates with the

Center advising that:

"1. There is no timely Response from Internet Development Corporation, the

Respondent in this proceeding. The Response received yesterday was not

filed on behalf of this company. We respectfully ask the Center to issue

a Notification of Respondent Default[12]

(Rules para.5a,d).

2. We respectfully ask that the Response filed on behalf of Gloria MacKenzie

and the requests made therein be disregarded as she is, at least at this stage,

not a party to this Administrative Proceeding. According to the Registrar

Confirmation Internet Development Corporation is still registrant, just acting

under a different name. The Response does not refute this fact.

3. In [his affidavit] Mr. Weitzman admits having manipulated ("corrected")

the WHOIS information after he had received the Complaint. If a new Registrant

were accepted at all, this would be a case of Cyberflying. The original

Respondent, at least in the view of a majority of previous Administrative Panels,

does not have to be replaced by another Respondent to reflect a change of Registrant."

This is confirmation that the Complainant has never accepted Gloria MacKenzie

as a Respondent in this case as this is the only reasonable conclusion that

one can draw from the request on its behalf to the Center to issue a Notification

of Respondent Default. The supplementary Complaint filed by the Complainant

says that the first request is that:

"(a) That the registration of the contested Domain Name be transferred

from the named Respondent and the current registrant, as explained in the original

Complaint;

(b) That pursuant to para.8(a) of the Policy the Domain Name registration to

the current registrant which occurred after the original Complaint was filed

be cancelled. It is my view that under the circumstances, as related above,

this is the proper request to make and that our first responsibility is to consider

it.

(c) The request that the Center said would be forwarded to us was that a Notification

of Respondent Default be made for the reasons stated by Dr. Diekmann. (The Center

responded to Dr. Diekmann that same day, acknowledging receipt of the Response

and related communication saying, "we hereby confirm that your request will

be forwarded to the Panel when duly appointed.")"

The Complainant deals with this issue in the supplemental Complaint as follows:

After referring to Mr. Goldberger’s email of February 11, 2002, which

first raised the allegation that "Internet Development Corporation is a

host for the domain name Gloria.com which had been inadvertently left in the

name of Internet Development Corporation when it transferred a number of domain

names on behalf of its clients to the Registrar Enom," the supplemental

Complaint lays out what happened.

"On 13th February the Complainant asked the Registrar to cancel

the change of Registrant under para. 8 (a) of the policy but no reply was received

so far.

Annex 32: e-mail of 13th Feb. from Complainant to Registrar

(2) While the Respondent and the second Respondent are distinct in that they

represent different individuals the Respondent used the name and address of

the second respondent as a sham identity to falsify a legitimate interest in

the domain name.

The Respondent has pushed the second Respondent to the front to disrupt

these proceedings and to force the Complainant to accept a different Respondent

with a possible different legal position regarding the disputed domain name.

The respondent wants to have the first name of the second respondent introduced

as an argument against the Complainant, an argument not available to the Respondent

himself.

(3) The Respondent is a phony Corporation and the alter ego of Mr. Warren Weitzman

of Bethesda, Md., as we have already suspected. Subsequent to filing the Complaint

we found In the ARIN whois record the following entry:

„WEITZMAN, WARREN (WW257-ARIN) <mailto:warren@warren.com> Internet Development,

7107 THOMAS BRANCH DR, BETHESDA, MD 20817, 301-469-9444, Record last updated

on 06-Dec-2001, Database last updated on 10-Feb-2002 19:55:25 EDT."

Annex 33: Print out from the ARIN whois database

Mr. Weitzmann did not give this full information in the whois record for the

contested domain name. By using the Internet Development "Corporation",

whose address and contact data are withheld, he avoids revealing his true identity

to evade proceedings like the present one. In addition, he apparently has the

means to change the Registrant information as he pleases so as to disrupt any

proceedings initiated against him

(4) The second respondent is merely a pawn in the Respondent´s game of Cybersquatting.

We have already shown that Respondent had had full control over the contested

domain name (Complaint sub 5 a cc) ever since it was first registered.

The respondent still remains in control:

- The website to which the contested domain name resolves has been slightly

changed but the characteristics remain the same. Still the user is invited to

call the Respondent (not the second Respondent) for information on "development"

(i.e. sale, cf. Complaint, p. 14) of the domain name. The only significant change

is the removal of the pop-up screens (Annex 21). This shall make the website

appear less obtrusive.

The Registrar, who has registered hundreds of domain names for the Respondent

and is thus familiar with his business tactics confirmed that the current Registrant

represents none other than the Respondent himself. There was some criticism

from the complainant in his statement to the Center as to the Registrar´s role

in this case. Whereas this criticism is warranted with regard to the Registrar

withholding information as to when exactly the change of Registrant took place

and permitting changes in the Registrant information, there is without doubt

truth in what the Registrar confirmed: The second Respondent is a disguise for

the Respondent who seeks to pretend a legitimate interest in the first name

‘Gloria’.

Legal Discussion

(1) Who qualifies as Respondent in this Case

a) No Change of Registrant so far

If the statement given by the Registrar is true, nothing has changed with regard

to the Respondent, only the name is different. We respectfully ask the Panel

therefore to render its decision against the Respondent but to clarify that

the decision is directed against the Respondent under his current name (that

of the second respondent).

Possibly, our criticism against the Registrar in our previous statement to

the Center was partly due to a misinterpretation of the Registrar´s statement

as it was reported to us by the Center. We now understand that the Registrar

confirmed that the Respondent remained the Registrant but only chose a different

disguise, i.e. the name and address of the second Respondent.

Although it is unacceptable that a Registrar allows its customer to cause confusion

by acting under fake or other people´s identity the blame is on the Respondent

for Hijacking the identity of the second respondent at the risk that this person,

if she exists, is inadvertently thrown into legal proceedings. This is, once

more, evidence for the Respondent´s recklessness and malicious intent.

In any case, such a unknowing Registrant would not qualify as a Respondent

if only for the reason that she entered no Registration agreement (Annex 2)

with the Registrar thus not accepting the Center´s jurisdiction. Rather, the

original Respondent remains in this position, even though the Panel is respectfully

asked to state that the decision affects the Respondent both under his previous

and his current name.

b) Cyberflying

aa) Possible Change of Registrant/Ownership

The transfer of contested domain names by Respondents subsequent to receiving

notice of a Complaint is known as "Cyberflying". The Panels have unanimously

condemned such attempts to evade jurisdiction as a violation of para. 8(a) of

the Policy even where the change of Registrar took place prior to the formal

commencement of the proceedings (cf. British Broadcasting Corporation v.

Data Art Corporation / Stoneybrook, WIPO

Case No. D2000-0683; Wal-Mart Stores, Inc. v. James Cann and Save Family

Businesses Panel, WIPO Case No. D2000-0830;

Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO

Case No. D2000-1631; Kabushiki Kaisha Isetan v. Stars Web International

and Isetan, Inc., WIPO Case No. D2001-0732;

AT&T Corp. v. W.N.A., a/k/a "Worldwide Network of Attornies" Farouk

al Khalifa a/k/a Jaye Rayes and "World of Nettie Atteberry", WIPO

Case No. D2001-1160).

If the second Respondent is to be distinguished from the Respondent, and not

just a different name, we have before us a case of "Cyberflying" even

though the time of name change can not exactly be determined (cf. the Administrative

Panel decision in AT&T Corp. v. W.N.A., a/k/a "Worldwide Network of

Attornies" Farouk al Khalifa a/k/a Jaye Rayes and "World of Nettie

Atteberry", WIPO Case No. D2001-1160,

in which the same Registrar as here was involved and which bears some resemblance

to the present case).

The accurate date and time of the name change is irrelevant, however. The purported

change of Registrants obviously took place without the second Respondent being

involved or even being informed. The Counsel for the Respondent even states

that the second Respondent did not know she was no longer Registrant of the

Domain Name.

The Respondent simply used his access to the Registrar´s database to change

the Names. When the second Respondent now enters this Arbitration proceeding,

for instance through duly authorised counsel, she confirms and thus renders

complete this act of transfer and at the same time accepts the Panel´s jurisdiction

(cf. AT&T Corp. v. W.N.A., a/k/a "Worldwide Network of Attornies"

Farouk al Khalifa a/k/a Jaye Rayes and "World of Nettie Atteberry",

WIPO Case No. D2001-1160). Before that

the transfer is a mere formal act of name-replacement, irrelevant for the ownership

of the domain name. The confirmation and thus completion of the transfer to

the second Respondent has not occurred so far. As far as we know the second

Respondent is not represented in this proceeding (according to the Center´s

information the Counsel Ari Goldberger is representing the Respondent)

." [13]

IDC could have filed a Response. For reasons it thought advantageous it took

the high ground and obdurately refused to be a party to this proceeding.

It turns out that the Respondent IDC was incorrect. The law does not allow

a party to approbate and reprobate. How can this be used to its disadvantage?

To do so encourages similar tactics in the future.

The confusion of the Center is, when administering the file, not surprising

given the information provided by the Registrar, by both the Respondent (IDC)

and on behalf of the putative Respondent (Gloria MacKenzie). No finding

is made, nor need be made, as to whether the confusion referred to was brought

about intentionally. At some point in time the Registrar, Ms. MacKenzie and

counsel all seem to have been uncertain. This can’t be said of IDC.

The consequences of a failure to file a Response within 20 days of the date

of commencement of the Administrative Proceeding is found in Rule 5(e) which

states that if a Respondent does not submit a Response, in the absence of exceptional

circumstances, the Panel shall decide the dispute based upon the Complaint.

Any exceptional circumstances in this case are to the discredit of the Respondent.

Bad Faith

The second area where I disagree with my colleagues is bad faith registration

and use of the domain name by the Respondent .

A complainant is often at a disadvantage in proceeding under the URDP, to having

to plead its case with no right of reply, without knowing what defences will

be put forward, and absent any pre-hearing discovery. These may be overcome

where, under Rule 12 (a), a Panel requests further statements or documents from

either of the parties. This Rule is used sparingly by Panels and in my

opinion is not apposite in this case.

Panels have, particularly when considering para 4(a)(ii), required a Complainant

to provide only a prima facie case in the first instance. If this

is done, the Respondent is then called upon to provide sufficient credible evidence

to prove the contrary. An example where this approach is taken is in the

rights to a legitimate interest in the Domain Name which depend upon facts substantially

within the knowledge of the Respondent. This occurs even though the Complainant

in ICANN proceedings must show on a preponderance of the evidence that the ultimate

element necessary to obtain the relief in question have been proved. Proof of

bad faith depends on material facts being found. The Party who asserts a material

fact which is not self-evident has the onus of proving that fact. (See

Leonard Asper v. Communication X Inc. WIPO

Case No. D2001-0539). The party who has the means of proof of

a material fact in issue available to it, and which is not reasonably available

to a party adverse in interest in respect of the material fact has the onus

of proving that fact. All evidence, which is rationally probative of a

material fact in issue, is relevant and therefore admissible, no matter what

may be its weight. Facts may be proven by direct or circumstantial evidence.

Direct evidence can be personal observation, a form of knowledge, or a document

which directly establishes the fact. It was said in Madonna Ciccone,

p/k/a Madonna v. Dan Parisi and 'Madonna.com', WIPO

Case No. D2000-0847, that the role of the Panel is to make findings of fact

as best it can, based on the evidence presented provided the matters at issue

are within the scope of the Policy. As para.4(c) of the Policy expressly

directs Respondents' attention to para. 5 of the Rules, which mandates that

a "Response ... shall [inter alia] [r]espond specifically to the statements

and allegations contained in the Complaint ...", it is incumbent upon the Respondent

to meet the bad faith allegations of Complainant with specific and concrete

facts. (See Senco Products, Inc. v. Camp Creek Co., Inc. WIPO

Case No. D2000-0590.)

While it is correct to say that the business of dealing in domain names and/or

hosting them is a legitimate business, the Complainant through technological

sleuthing has provided evidence of a scheme which is not a legitimate business.

From the approximately 1,000 names including <gloria.com> then registered

in the name of Gloria MacKenzie, there are hundreds of four-letter domain names

which are acronyms of international organizations, universities, public organizations,

Spanish translations of well-known web-sites, names of shopping malls as well

as minor variations to well-known trademarks ('typosquatting'). A visitor

to <gloria.com> would be 'mousetrapped', (which is well-known to be a

substantial source of income for cybersquatters,) and involuntarily diverted

to pornographic sites. Such activity has frequently been branded as bad

faith by Panels. In support of those allegations the Complainant has produced

an abundance of evidence to which the Respondent in this case has not responded.

No explanations are given for this conduct, even if we look at the Response

filed on behalf of Ms. MacKenzie it is not there.

The Respondent created artificial traffic on his web-sites which both increased

the market value of his domain names and his profits from advertising which

are related to the number of generated clicks. The statistics relating to this

artificial traffic were shown in Annex 19 to the Complaint - the web-site <http://www.gloria.com/stats>.

Complainant also provided (Annex 25) a print-out from the Internet Archive source

code which showed the domain names to which the contested domain name referred

‘http://web.archive.org/web/*sa_/http://www.gloria.com.’ Most of the web-sites

to which the user was referred contained offers to purchase the respective domain

name. Even on rare occasions when the contested domain name referred to

itself, again, without genuine content, there was a sales offer.

For instance, on November 28, 1999, the user who visited http://www.gloria.com

was referred to a web page headed: "domain name sale" and then automatically

carried on to another web-site headed: "If you are interested

in the purchase of the domain you requested, please email us: <mailto:warren@warren.com>"

Through a link "Domain info" the user was referred to a page with the following

text: "Inquiries regarding the purchase of lease of the domain

name you originally requested should be directed to Warren at (301)980-1111."

The contested domain name also referred to a web-site ‘http://www.grunk.com’,

offering pornographic pictures and live shows. In the meantime this web-site

is one and the same as the contested domain name and all the others refer to.

My colleagues have found the inferences to be drawn from Mr. Weitzmann activities

as a dealer in and host of domain names and the lack of contact information

to be insufficient to overcome the lack of evidence of the fame of the Complainant’s

mark in the U.S. at the relevant time. I find otherwise. Granted, the mark is

weak, but this doesn’t mean that the Complainant must lose. All material evidence

must be weighed to determine bad faith registration and use. In the case such

as the one involving <donna.com>, the material facts were that the site

was and had been unused, that the name had been registered by the Respondent

specifically as part of an income sharing arrangements to develop the site,

negotiated some months before contact by the Complainant, and the Panel made

a specific finding that "there was no evidence of bad faith at all,"

by which it must have meant as to registration and use. The United States trademark

law has specific constructive notice provisions, the effect of which is to deny

lack of actual knowledge as a defence, making it unnecessary to find actual

knowledge that in finding bad faith registration and use. See J.Crew International,

Inc v. Crew.com, WIPO Case No. D2000-0054

where the name in question <crew.com> was a very generic one. We don’t

know in this case whether IDC did a search or not. If he had it would have revealed

a 50 registered marks as shown in exhibit 7 to the Response.

I suggest that a proportionality test should be applied to this issue. A balancing

of the weakness of Complainant’s mark here against the perfidy exhibited in

the conduct on the part of the Respondent in this case obliges me to find that

the scales weigh more heavily in favour of the Complainant. The notorious machinations

of IDC have been demonstrated by the sleuthing of Dr. Diekmann who has proved

to my satisfaction that we have an extremely sophisticated cybersquatter, and

cyberflyer here. In cases involving sophisticated uses of the internet, Panels

have required a higher duty of inquiry. An example is the <crew.com> case,

above, where the Panel said that sophisticated users who elect to ignore reality

by not searching will be held to have acted otherwise than in good faith registration

and use. " I agree with the Cautionary Comments of the Panel" where

they disavowed any obligation of subsequent Panels to hold that in every case

a Registrant should be charged with conducting a detailed investigation, only

in the unique circumstances and facts of that, or other similar cases. It is

my view that our case is a similar case.

Mr. Weitzman's affidavit addresses the, so called, "error" in para

3 of his affidavit where he says "when the transfer took place, e.Nom erroneously

used the contact information of IDC for all of the transferred domain names,

including gloria.com . He also admits that it was after the Complaint

was filed, that "I corrected the registration of gloria.com with e.Nom,

so that it now correctly reflects that Ms. MacKenzie is the registrant."

If it was an "error", why did not Mr.Weitzman reverse all of the other Domain

Names "erroneously" put in the name of the Respondent in this case

in February 2000? That this so called "error" was not made by

the Registrar is demonstrated in an e-mail from Mr. Weitzman to the Registrar

sent on February 9, 2002, where he says "It is our recollection that

when transferred in, the registration information became that of my default

info., which would have me as the registrant, not the one who originally held

the registration." Nothing about any error, much less the error being attributed

to e.Nom.com. With respect, the only "error" proven seems to this Panelist to

be that of the Respondent, and a deliberate one at that.

As the Respondent has not filed a Response nor participated in any other manner

in this proceeding, it is in default, and as such has failed to negate any of

the assertions by the Complainant with respect of which there is prima facie

proof. The assertions made in the Complaint are as follows:

1. The Respondent was aware of Complainant’s trade name and trademark and desire

to obtain the domain name when he registered it.

2. Obviously, Respondent registered the domain name for just the reason he

uses it to date; to offer it for sale and to profit from third parties’ advertising

he makes available through his domain names. The user who happens to enter one

of Respondent’s phony web sites is showered with pop-up screens and thus prevented

from leaving a web-site he originally did not wish to visit. His plan is to

attract and to trap users who hope to find information from the legitimate owner

of the "gloria" trademark.

3. There are no preparations of developing a legitimate web-site for the contested

domain name one of the other over 750 domain names Respondent has registered

or are under his control.

4. Lack of use and, based on the circumstances, constitute a case of bad faith

registration and use (Telstra v. Nuclear Marshmallows, WIPO

Case No. D2000-0003).

5. The name was registered to sell it to the Complainant at a price in excess

of the Respondent’s out of pocket costs.(para.4(b)(i) UDRP) Offering the domain

name for sale on-line directly to Complainant.

6. Contrary to para. 4(b)(ii) Respondent registered the domain name when he

knew about Complainant and her desire to register the domain name. Although

Ms. MacKenzie had given up the name, he registered it for himself to prevent

Complainant from registering it. His numerous domain names and cybersquatting

activities show that he is engaged in a pattern of such conduct.

7. It is also a case of para 4(b)(iv) UDRP because Respondent intentionally

attempts to attract users to the web-site to profit from the advertisement deals

he maintains with third parties.

8. Incomplete and false information particularly as to contact details when

the registration is done is bad faith.

Like my colleagues, I believe that the material registration date is February 2000.

I cannot conceive of any plausible reason for the registrations being transferred

into the name of the Respondent in February 2000 other than to enhance

the profitability of the Respondent's deceitful scheme whereby more innocent

guests will be, to their detriment, treated in the manner demonstrated here

to the commercial gain of the Respondent. This is the only plausible reason

I can conceive of being consistent with the Respondent's desperate attempt to

replace Ms. MacKenzie as the Registrant. When, getting notice of the Complaint

in this case, he realizes that a member of his stable might be released by reason

that the Respondent IDC will not be able to demonstrate any legitimate rights

or interest in the Domain Name.

With or without the aid of the response by the putative Respondent there is

no denial of the facts on which the second assertion above is premised. Numerous

Panels have consistently found that precisely this modus operandi, the major

purveyor of which is John Zuccarini, amounts to bad faith registration

and use. A number of Panels have held that where the Respondent's main business

activity consists of the sale of Domain Names incorporating famous names or

trademarks and it makes a business of registering famous trademarks with a view

to selling them may be sufficient evidence of bad faith pursuant to Article

4(a)(iii). See Riello S.p.A. v. Domain Name Clearing Co. LLC, WIPO

Case No. D2001-1046, citing Guerlain SA v. Peikang, WIPO

Case No. D2000-0055; Parfums Christian Dior v. Javier Garcia Quintas

and ChristianDior.net, WIPO Case No. D2000-0026.

It has also been held that a Panel may infer that the Domain Name was registered

for the primary purpose of selling, renting or otherwise transferring it to

a third party with an interest in that Name where (i) the Respondent offered

to sell the Domain Name to the Complainant as soon as contacted by the Complainant.

See William Hill Organization Ltd. v. Lisa Janes Stratton, WIPO

Case No. D2000-0827. Also, a Respondent taking deliberate steps to ensure

that its true identity cannot be determined and a communication with it cannot

be made, has been found to be evidence of bad faith.

I am appreciative of the possible apprehension of any fair-minded adjudicator

in drawing adverse inferences of guilty conduct at an earlier time by pointing

to later conduct. However, I suggest that when, as here, the standard of proof

is a preponderance of the evidence, and the evidence in question involves the

intent of a party who has every opportunity to respond, such apprehension must

be abated. This is particularly the case here due to the effect of the Rule

5(e). Further, in this case, if the affidavits of Ms. MacKenzie and Mr.

Weitzman are to be resorted to, the fact that it did not address this subject

which was clearly in issue, should also be considered. IDC was able to, and

did use, the Domain Name <Gloria.com> in bad faith prior to it being registered

in its name in February 2000, even though it was then registered to Ms. MacKenzie.

IDC continued to use this name after January 2000 for the same bad faith

purposes, but with greater control over it now that it was registered in the

Respondent’s name. With bad faith use before and bad faith use after, I would

think it proved that the intermediate change in registration was made with the

intention of continuing that use and is therefore bad faith registration in

February 2000. Any possible doubt one might have about this reasoning must

be removed by the evidence of the Respondent’s actions in January 2002

when it appeared that he was in danger of losing a profitable name. Nor should

it be forgotten that his ability to transfer the name back to Ms. MacKenzie

without having to deal with the registrar was made possible through the way

he managed the February 2000 registration. Circumstantial evidence is frequently

used in ICANN domain name cases and it has long been an evidentiary principle

that the existence of a thing or a state of affairs at the material time may

be proved by facts showing the existence at an earlier point of time where this

is sometimes referred to as the presumption of continuance. Evidence of motive

is admissible in civil cases to assist in explaining a subsequent act. Looking

the other way, circumstances occurring subsequent in time to the fact which

is to be proved may be relied on to prove that fact. Intention at the time an

act is done is often proved by the subsequent conduct of the actor. We have

all three here – prior, at the time of registration and subsequent conduct here.

My strongest disagreement with the majority decision is its benign treatment

of the "cyberflying": that it finds to have occurred here. The incidence

of this invidious practice, which has been increasing expedientially of late,

takes place almost always with the intention of illegally interfering with the

due process of a dispute resolution mechanism which he Respondent had agreed

to abide by when obtaining the right to use its domain name. My strongly held

view is the that the conduct which we have seen here is proof that, when entering

into this agreement, in February 2000, the Respondent’s intention to follow

the rules was limited to those instances where it was not disadvantageous to

it. That is why he made it so easy to manipulate the Register in the covert

manner we see here. I would be hard put to think of a more serious example of

bad faith registration in that it contemplates harm not only to the Complainant

here but to any other person with potential claims under the ICANN Policy against

the hundreds of names under the control of IDC.

My decision is that the domain name <gloria.com> be transferred to the

Complainant.

Cecil O.D. Branson, Q.C.

Dissenting Panelist

Dated: April 26, 2002

1. It eventually turns out he was correct

in this.

2 . This is incorrect, the Registrar must

speak from the commencement of the proceedings which occurs when the Complaint

is filed.

3. At this time, the Respondent was (and

in this Panel's opinion still is) IDC.

4. It might be a good idea in future for

the Notice of Verification to show the time of receipt of the Complaint, which

is when the proceeding commences.

5. The only Respondent on the record at this

point is IDC. The Complainant was still not aware of Mr. Goldberger's involvement.

6. Dr. Diekmann had no idea who this was

at this time.

7. The Center earlier had told Dr. Diekmann

"If the registration details were changed after the receipt of the Complaint

by the Center would invite the Registrar to cancel the transfer. Yet (not to

Dr. Diekmann's knowledge) the Registrar had notified the Center that "the name

was locked upon our receipt of the Request for Registrar Verification." Another

fact not known to Dr. Diekmann.

8. This conclusion is not correct.

9. What the Complainant did not know was

that the Registrar had already been asked to consider reversing the change.

10. This explains why Dr. Diekmann felt

that he had to add Gloria MacKenzie in some way to his Complaint; otherwise,

it would be dismissed at this stage.

11. This was the first time Dr. Diekmann

had been advised of Mr. Goldberger's involvement in the case. As the Respondent

of record still was only IDC, the reference in the p.s. to "the Respondent"

would be thought by Dr. Diekmann to mean IDC and probably the same could be

said of the Center. This is confirmed by what the supplemental Complaint says

on page 6.

12. Complainant has never received a response

to this request.

13. This confirms what I concluded at footnote

11.