Domain Name Panelists Meeting October 20, Registrars and the UDRP – registrars as registrants, and other conundrums Peter L. Michaelson, Esq. Michaelson & Associates Shrewsbury, New Jersey USA

Peter L. Michaelson, WIPO 2008 Panelists Meeting REGISTRAR = REGISTRANT NAF supplemental rule 1 Definitions 1(d).“The Holder of a Domain Name Registration”... means the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum; and once the registrar has verified registration, is limited to the single person or entity as verified by the registrar. WIPO supplemental rule 2 Definitions 2. Any term defined in the Rules shall have the same meaning in these Supplemental Rules. 2 ICANN UDRP Rule 1 Definition: Respondent means the holder of a domain-name registration against which a complaint is initiated

Peter L. Michaelson, WIPO 2008 Panelists Meeting 3 Cases 1.Nicholas V. Perricone, MD et al v. Compana LLC, NAF Case No. FA (December 13, 2006) 2.Paxar Americas, Inc. v. eNom, Inc., NAF Case No. FA (June 22, 2007) 3.Davis Vision, Inc. v. Demand Domains, Inc., NAF Case No. FA (March 26, 2008) 4.Pernod Ricard v. Tucows.com Co., WIPO Case No. D (August 21, 2008)

Peter L. Michaelson, WIPO 2008 Panelists Meeting Perricone v. Compana (NAF) Facts  Respondent registers "domain names which incorporate common words, descriptive and generic terms to which it believes no single party has exclusive rights"  Complainant, a well-known US dermatologist, sells skin care and related products under marks that include the term "PERRICONE" both through major high-end stores and on-line  Registrar registered disputed name on 24 Jan 2003, after expiration of original registration, believing "perricone" to be a common surname for use with a vanity service  Respondent operated websites addressed by disputed name which provided sponsored links for, inter alia, skin care products, some links lead to third-party sites offering products competitive with Complainant's and through which Respondent receives click- through income, and other such links lead to Complainant's site 4

Peter L. Michaelson, WIPO 2008 Panelists Meeting Result: Transfer  Panel found confusing similarity between name and Complainant's marks  Respondent has no rights and legitimate interests in the name because its use of name, to direct Internet viewers to website offering products competitive with Complainant, does not constitute a bona fide offering of goods or services  Bad faith found since Respondent financially benefits, through receipt of click-through revenue, from the confusion it intentionally causes to Internet users  DECISION DID NOT ADDRESS WHETHER A REGISTRAR CAN BE LIABLE AS A REGISTRANT, MERELY ASSUMES IT CAN BE AND SIMPLY TREATS RESPONDENT AS SUCH 5 Perricone v. Compana (NAF)

Peter L. Michaelson, WIPO 2008 Panelists Meeting Paxar Americas v. eNom (NAF) Facts  Since 1920s, Complainant has been marketing and selling goods and services in labeling industry under its "MONARCH" marks  Respondent registered disputed name on 24 October 2006 due to non-payment of registration fee by original registrant and claimed, at that time, it had no knowledge of Complainant's marks  Respondent operated website addressed by disputed name which, through its home page and a lower-level page, provided sponsored links to third-party sites offering products directly competitive with Complainant's and for which Respondent receives click-through revenue 6

Peter L. Michaelson, WIPO 2008 Panelists Meeting Paxar Americas v. eNom (NAF) Result: Transfer  As a threshold issue, Panel (PLM) addressed issue of Registrar liability: Can a registrar in general be a respondent? Is Enom a proper respondent?  Yes. Panel stated:  "If a registrar were solely acting as an agent of a third ‑ party registrant in registering a domain name, then the registrar would not be the registrant of that name and hence would not be a "Holder of a Domain Name Registration" and thus could not under Supplemental Rule 1(b) be a respondent in a UDRP action. Hence, an ICANN administrative panel would have no jurisdiction over alleged improprieties associated merely with its acts in registering names for others. (decision, page 10) 7

Peter L. Michaelson, WIPO 2008 Panelists Meeting  "However, where the registrar's conduct with respect to a domain name expands beyond performing mere administerial duties in accepting and implementing name registration for another into registration and use by itself, then its role changes from that of a mere registrar to that of an owner ‑ user. Such a change, which in fact occurred here, exposes the registrar to the full force and effect of the Policy by virtue of the registrar having then become a "Holder of a Domain Name Registration" and then verified as such. Here, Registrar Enom satisfies both prongs of Supplemental Rule 1(b) and thus is a proper respondent....  In such instances where a registrar becomes an owner ‑ user, no deference whatsoever is attributed to a registrar's coordinate role as being the actual registrar of the disputed name itself. The registrar faces the exact same scrutiny and liability under the Policy for its conduct as would any domain name registrant. " (Ibid) 8 Paxar Americas v. eNom (NAF)

Peter L. Michaelson, WIPO 2008 Panelists Meeting Respondent did not contest issues of confusing similarity, and rights or legitimate interests Bad faith found from use of name to intentionally cause and exploit user confusion by directing users to Respondent's website which provided sponsored links to third-party sites offering products directly competitive with Complainant and through which Respondent receives click-through revenue  "Thus, it stands to reason that Respondent Enom could have chosen not to exploit the name, but here, in furtherance of its own benefit whether pecuniary or otherwise, it did not do so and since it did not then it must fully accept all the risks associated with what it actually did ‑‑ one of those risks being exposure to the Policy. Therefore, Respondent Enom's actions, in using the name as it did to both cause user confusion and exploit that confusion for its own benefit, were both intentional and continuing, clearly evidencing bad faith under paragraph 4(b)(iv) of the Policy." (decision, page 11) 9 Paxar Americas v. eNom (NAF)

Peter L. Michaelson, WIPO 2008 Panelists Meeting Davis Vision v. Demand Domains (NAF) Facts  Very similar to Paxar Americas, Demand Domains is related to Enom (either a subsidiary or division)  Since 1991, Complainant has been marketing and selling vision care benefit programs under its "DAVISVISION" mark  Respondent registrar registered disputed name on 5 June 2002 due to presumably non- payment of registration fee by original registrant and claimed, at that time, it had no knowledge of Complainant's mark  Respondent operated website addressed by disputed name which, through its home page, provided categories of links including, e.g., "vision insurance", which directed users to sub- pages containing sponsored links to third-party sites offering products directly competitive with Complainant and for which Respondent receives click-through revenue 10

Peter L. Michaelson, WIPO 2008 Panelists Meeting Davis Vision v. Demand Domains (NAF) Result: Transfer  Same reasoning by Panel (PLM) as in Paxar Americas decision  "In spite of the earlier Paxar Americas decision which castigated the respondent-registrar’s conduct -- of which its present conduct complained of here is for all intents and purposes no different, Respondent-registrar eNom continued exploiting domain names it has acquired as owner-user to the detriment of legitimate rights holders." (decision, page 9)  "Consequently, this Panel, rather than simply citing to its analysis in that decision, will, for the purpose of emphasizing its sharp disdain for the rather egregious conduct involved both here and there will repeat, verbatim, pertinent portions of that analysis which apply with equal vigor here... with the hope and expectation that Respondent ‑ registrar eNom... will now finally and wisely heed the dictates of that decision... by implementing appropriate and sufficient steps to immediately cease this conduct with respect to other domain names....." (Id at p. 9-10) 11

Peter L. Michaelson, WIPO 2008 Panelists Meeting Pernod Ricard v. Tucows.com Co. (WIPO) 12 Facts  Since 1932, Complainant, a French based global spirits manufacturer and distributor, has been producing and selling an anise-flavored liquor worldwide under its mark "RICARD"  Mailbank (acquired by Respondent in June 2006) registered disputed name on 30 May 1996 as an address for use with vanity service; Mailbank claimed that prior to its acquisition it had surname domain name registrations [surname.gTLD] for >70% of surnames then listed in US census data  Respondent also operated website addressed by disputed name which provided a list of sponsored links, for which Respondent received click-through revenue, to third-party sites, some of which offered liquors directly competitive with Complainant's; links were automatically selected by an "advertising algorithm"

Peter L. Michaelson, WIPO 2008 Panelists Meeting Pernod Ricard v. Tucows.com Co. (WIPO) 13 Result: Transfer  Under ICANN UDRP Rule 1 and consistent with Davis Vision and Paxar Americas, Panel (PLM presiding) found registrar's conduct extended beyond "mere administerial duties in accepting an implementing name registration" into "registration and use by itself of name" and also since registrar was verified as registrant, it was subject to UDRP  Panel found confusing similarity between name and Complainant's mark  Respondent has no rights and legitimate interests in the name because its use of name, apart from vanity address, to direct Internet viewers to website providing third-party links to products competitive with Complainant and for which Complainant derives revenue does not constitute a bona fide offering of goods or services

Peter L. Michaelson, WIPO 2008 Panelists Meeting Pernod Ricard v. Tucows.com Co. (WIPO)  Similarly bad faith found as Respondent's use of name extended beyond just vanity service to address of website through which Respondent intentionally caused, exploited and financially benefited from consumer confusion by offering products competitive with that of Complainant  "It is patently clear that the Respondent does not use the disputed domain name solely with a vanity service. The domain name is the address of a web portal which displays a list of sponsored links to third ‑ party websites and through which the Respondent receives revenue.... The Respondent’s website appears to operate primarily as a landing page, providing access to the sponsored third party sites. Various ones of these links have been to websites offering products competitive with the Complainant’s anise flavored beverage.... Hence, when the facts of record are assessed in their entirety, the Panel finds that the Respondent registered the disputed domain name to exploit its potential to generate user confusion with the Complainant’s RICARD Marks for the Respondent’s eventual financial benefit. " (decision, page 14) 14

Peter L. Michaelson, WIPO 2008 Panelists Meeting The bottom line: BE AWARE!  Registrars are increasingly engaging in conduct consistent with domain name ownership, i.e., beyond mere administerial duties in accepting and implementing name registration for another, to exploit and monetize their domain names for which they are fully subject, as registrants, to UDRP  Hence, ICANN panels need to be vigilant of and scrutinize such conduct for UDRP violations 15