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Masking Identity with Proxy/Privacy Services

No censure attaches to having domain names registered by proxy/privacy services. However, while the practice has become routine for protecting privacy and sensitive information, registering in the name of a proxy is still taken into account in assessing intention, and even circumstantial evidence without contradiction or explanation can tip the scale in complainant’s favor. Registrations viewed as evasions of identity are more likely to be read against respondents on the proposition that concealing one piece of information is presumptive evidence of concealing other pieces; but registration by proxy is inconsequential in proving bad faith when the beneficial holder appears and defends its registration.

We see this in Etihad Airways v. Whoisguard, Protected, Whoisguard, Inc / Hamza Ali, D2016-0615 (WIPO July 3, 2016) in which Respondent’s explanation why he added a “v” to the trademark ETIHAD was persuasive and the Panel dismissed the complaint. In Percipient, LLC v. Admin, D2016-0285 (WIPO May 6, 2016) the Panel explained that “[i]n certain circumstances, paragraph 4(b)(iv) may assist a complainant where it is unclear why a domain name was registered [ ] and then opportunistically used to attract Internet users by creating a likelihood of confusion with the complainant’s trademark. But that is not the situation here.”

The consensus on this issue is reported in WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview) paragraph 3.9 (Can use of a privacy or proxy registration service form a basis for finding bad faith?). Yes, but:

Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.

The “not in and of itself” phrasing sublimates the skeptical attitude toward the services when first introduced, with some panelists at that time expressing hostility to high-volume registrants using automatic programs to snap up domain names.

While the hostility to the services has softened significantly since 2006 the reasoning for the skepticism continues to be pertinent: if automated acquisitions substituted as an excuse then turning a blind eye to trademark rights would be the “perfect shield for abusive registrations,” Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, D2009-0320 (WIPO May 8 2009). The concern is realized in such cases as Pankas A/S v. Yunkook Jung, CAC 101240 (ADR.eu August 22, 2016) (<pankas.com>) where Respondent “offer[ed] to sell the Domain Name to the Complainant . . . within days of the lapse of the Complainant’s registration and virtually at the same time as the Respondent registered it in the name of a proxy service and offered it for sale on the website.”

Willful blindness is an occupational hazard for the ultra-hooverer, but curable with appropriate algorithmic coding; that’s why it is not much seen. The WIPO Overview continues with other examples of bad faith which include: “registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the ‘true’ or ‘underlying’ registrant (possibly including that registrants’ actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith.”

Putting aside the “may be’s”, bad faith based on use of proxy/privacy services is practically assured in disputes where respondents default in appearance and there is no proffered explanation, or the proxy service appears without its client declaring it has given notice to the beneficial holder who defaults. F. Hoffmann-La Roche AG v. Hostmaster, NIC.UA LLC / Svetlana Golovina, D2016-1301 (WIPO August 26, 2016) (<drugsvalium>).

The question to be answered in these cases is whether the registration was made to conceal an underlying owner’s identity solely for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.

In arbitrations generally and in the UDRP in particular default is not an admission of liability as it would be in a court of competent jurisdiction. While the procedural rules governing default in arbitration favor respondent by burdening complainant with proving its case respondent’s silence through absence has fatal consequences. What I mean by this is that if there’s no explanation in the record to counter complainants’ allegations then panelists will make their decisions on complainant-created records. Failure to respond; even remaining silent on particular issues (a factor equally applicable to complainants) will most likely result in an adverse inference against the party with the burden of proof or persuasion. This is certainly the case involving well-known trademarks; less so for trademarks on the lower rung of protectability composed of common words and descriptive phrases raised to trademark status for their acquired distinctiveness, but here too silence probably neutralizes this advantage.

Some of the consequences of silence are illustrated in recent cases, notable more for panelists’ certainty than subtle reasoning, even though the decisions are right. In Enterprise Holdings, Inc. v. Pinnacle Investment Group, LLC / Erik Day, FA1607001684948 (Forum August 25, 2016) (<dealerenterprise.com>) for example the Panel held that using a privacy service in a “commercial context [without disclosing identity] . . raises a rebuttable presumption of bad faith” citing a number of earlier cases for the proposition. The Panel concluded its assessment by noting it was “comfortable finding bad faith registration and use on those grounds alone.” Although there is support for infringement a benign even innocent reason for the domain name is not unimaginable, but silence seals the infringement. The word “dealer” is descriptive of Complainant’s licensees’ business (the selling of used rental cars).” Infringement is found in the juxtaposition of “enterprise” and “dealer” thereby making implicit reference to Complainant’s business; even if the contention could have been rebutted, it wasn’t!

Silence is in fact noisily persuasive in assessing bad faith. This was the principal point in Humble Bundle, Inc. v. Domain Admin, Whois Privacy Corp., D2016-0914 (WIPO June 21, 2016) (<humble-bundle.net>). The Panel noted that

Respondent has chosen not to engage with the administrative proceeding to any extent. It has neither provided any explanation for the coincidence between its selection of the “humble bundle” name for the disputed domain name nor for its use of such name for a computer games website with similarities to that of the Complainant, nor for its continued concealment behind an apparent privacy service.

And that for this reason

[g]iven the severity of the malware allegation … [it is] appropriate to draw an adverse inference from the Respondent’s silence . . . and [the Panel] considers that in the circumstances of this case such silence is a further indication of registration and use in bad faith.”

The same result is reached in Capital One Financial Corp. v. Domain MANAGER / Domain Brokers, FA1607001684339 (Forum August 22, 2016) (<capitalonebank.com>) in which the only surprise is how long Complainant waited to bring the proceedings; ten years.

To be noted in all these cases are the compositions of the infringing domain names. They all include in whole or part distinctive elements of Complainants’ trademarks with established presences in the marketplace. Only where the domain name is so obviously common or descriptive or the use fair (as with anonymous criticism or the manner in which the domain name is being used) is there any acknowledging of legitimacy, which of course is how it should be.

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. He is the author of a treatise on Trademarks, Domain Names, and Cybersquatting, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy. A Second Edition of the treatise was published July 2019 and is available from Amazon or from the publisher, Legal Corner Press (LCP). For inquiries to LCP write to .(JavaScript must be enabled to view this email address) or Mr. Levine at .(JavaScript must be enabled to view this email address).

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