WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gloria-Werke H. Schulte-Frankenfeld GmbH & Co
Internet Development Corporation and Gloria MacKenzie
Case No. D2002-0056
1. The Parties
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.
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 <firstname.lastname@example.org> 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 â€˜yesâ€™ to an inquiry in those words from the WIPO Case Manager. The Registrar had responded on February 7, 2002 to the Case Managerâ€™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 Managerâ€™s attempts to telephone the relevant person at the Registrarâ€™s office were unsuccessful. The Registrarâ€™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 â€¦ maybe I donâ€™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 â€˜cyberflyingâ€™ 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 -â€“Rule 3(a). A copy must already have been sent to the respondent by the complainant â€“ 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) â€“ 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 Registrarâ€™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 Centerâ€™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 â€˜cyberflyingâ€™ 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 Complainantâ€™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 Registrarâ€™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. Goldbergerâ€™s email address;
(d) Mr. Weitzmanâ€™s email address (i.e. <email@example.com>, the only address given for IDC before the change in registrant on January 22, 2002);
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 Panelâ€™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 â€˜Gloriaâ€™ 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 â€˜Gloriaâ€™. 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 â€“ 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 â€¦ 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 MacKenzieâ€™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’â€™ affidavit says the transfer when the name of the registrant mistakenly became IDC took place in February 2000.
5. Partiesâ€™ Contentions
That the domain name is identical to the Complainantâ€™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 (â€˜typosquattingâ€™). 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. Weitzmanâ€™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 â€˜cyberflyingâ€™ 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 Registrarâ€™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 registrantâ€™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 IDCâ€™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.
IDC is not the correct Respondent but merely a third party domain name hosting service which has been in operation since 1999. From 1995 â€“ 1999, it operated under the name justnet.inc., which took over the management of Gloria MacKenzieâ€™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, IDCâ€™s contact information was inadvertently used by eNom, Inc. as registrant information. Mr. Weitzmann refers to correspondence between eNom, Inc.â€™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 â€˜cyberflyingâ€™. 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 â€˜gloriaâ€™ 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 Complainantâ€™s mark at the time of registration in 1995. In any event, gloria is a common girlâ€™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 womenâ€™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 “sheâ€™d sell it to you”. Complainant has wrongly disrupted Gloria MacKenzieâ€™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 â€˜cyberflyingâ€™ 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 Complainantâ€™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 MacKenzieâ€™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 Complainantâ€™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 Respondentâ€™s submissions is apposite. The inferences to be drawn from
(a) Mr. Weitzmanâ€™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 Complainantâ€™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 partiesâ€™ conduct. IDCâ€™s action in arranging for the registration to be changed on January 22, 2002, was wrong for the reasons given earlier.
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
Mr. Milton Mueller
Dated: April 26, 2002
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 Complainantâ€™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?
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, 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.”
“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.”
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.”
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.”
On February 9, 2002, the Center with a copy to < mailto:firstname.lastname@example.org advises Dr. Diekmann “The Registrar has confirmed us that there has not been any change of the Registrant recently, 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. â€¦ The appropriate Respondent is Gloria MacKenzie since she is the Registrant as of the time WIPO conducted its Compliance Review.
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.” 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.” 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.” 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 (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. Goldbergerâ€™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:
â€žWEITZMAN, WARREN (WW257-ARIN) <mailto:email@example.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 â€˜Gloriaâ€™.
(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.
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) .” 
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 canâ€™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.
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