ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Gerald Mikkelson, a sole proprietor doing business as Agent Host Co (formerly doing business as Internet Host Corporation), of 1701 East 8th Street #259, Tempe, Arizona filed a complaint against Host Dot Com Investments of 159 Centre Street, Nutley, New Jersey 07110 requesting the transfer of the "HOST.COM" domain name.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 24, 2000. The hardcopy of the Complaint Form and annexes were received on September 11, 2000. Payment was received on September 5, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Tucows.Com, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on August 24, 2000. The requested information was received on August 25, 2000.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on September 12, 2000. This date is the official commencement date of the administrative proceeding.
The emails to the email@example.com and to the administrative contact were not returned.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
On October 4, 2000, the Clerk's Office notified the Respondent and the Complainant of the failure of the former to respond to the complaint. It also informed the parties that according to ICANN Rules Art. 5 (ix)(e) "If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
On October 4, 2000, the Clerk's Office contacted Mr. Houston Putnam Lowry, and requested that he act as the sole Panelist in this case.
On October 4, 2000, Mr. Houston Putnam Lowry, agreed to act as the sole Panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 5, 2000, the Clerk's Office forwarded a user name to Mr. Houston Putnam Lowry, allowing him to access the Complaint Form, and the evidence through eResolution's Automated Docket Management System.
On October 5, 2000, the parties were notified that Mr. Houston Putnam Lowry had been appointed and that a decision was to be, save exceptional circumstances, handed down on or before October 18, 2000.
On October 6, 2000, Mr. Houston Putnam Lowry requested additional information from the parties pursuant to Rule 12. The deadline for providing this information was October 13, 2000 by the close of business and the deadline for the decision was not extended. Only the Complainant responded to the request for additional information.
3. Factual Background
Internet Host Corporation established the host.com domain name in August 1994 (Complaint). The administrative contact for the domain was Gerald Mikkelson with an email address JLM@PRIMENET.COM. The billing contact was Gerald Mikkelson. Gerald Mikkelson's physical mailing address was the same as the physical address for Internet Host Corporation. The domain name fees were paid (at least for August 22, 1998 through August 22, 1999) by Gerald Mikkelson's visa credit card. The domain name was used by Internet Host Corporation until June 1, 2000.
Interesting things began to happen in late May 2000. On May 24, 2000, DNSMASTER@JSPNETWORK.COM (not a genuine address) tried to change the authentication scheme for the domain name. The administrative contact, technical contact and billing contact were requested to be changed to NIC handle RSC101. This email also requested the domain name servers be changed to NS.SERVER7.SPEEDYSERVERS.COM. This did not work.
Not being discouraged, a new forged email was sent apparently from JLM@PRIMENET.COM on May 29, 2000 requesting the address for the organization using the domain name be changed to Lakewood, California. The administrative, technical and billing contacts were requested to be changed JN588-ORG. The domain name server was requested to be changed to NS3.JSPNETWORK.NET. These change were approved by a second forged email from JLM@PRIMENET.COM.
The Respondent's NIC handle JN588-ORG resolves to ADMIN@JSPNETWORK.COM. JSP Network.com's administrative contact and billing contact (NIC handle JN568-ORG) resolves to JONTOR20001@YAHOO.COM. The Panelist notes such addresses are not customarily used by legitimate businesses with web sites.
4. Parties' Contentions
Complainant contends Complainant's domain name was transferred without authorization by a person or persons unknown. Complainant further claims Respondent's contact information is false in an attempt to conceal Respondent's true identity.
Respondent has failed to respond to any of the allegations. This means Complainant's allegations are uncontested. A claimant still needs to make out a prima facie case because Panelists do not render default awards simply because the Respondent fails to respond, ICANN Rule 5(ix)(e).
5. Discussion and Findings
The Complainant is proceeding pro se in this matter. While reviewing the complaint, there were a number of inconsistencies apparent to the Panelist. In particular, it was not clear what the relationship was between Gerald Mikkelson, Agent Host Co and Internet Host Corporation. Rather than assume what the allegations were or dismiss the case for failure to state sufficient facts to justify relief, the Panelist requested further information from the parties pursuant to ICANN Rule 12. While other Panelists have discouraged such procedures on the grounds a complainant should bear the burden of proving its case1, allowing a pro se party (or parties) to respond to an Panelist's concerns actually promotes efficiency in the process because it eliminates the need for a second, or even possibly a third, case. The subsequent information made it clear Gerald Mikkelson is a sole proprietor who does business as Agent Host Co and used to do business as Internet Host Corporation.2
This appears to be a case of first impression because it involves the use of a forged (or spoofed) email to steal a domain name from its rightful owner. The Panelist could not find any other cases on point in the ICANN list of proceedings despite a fairly extensive search. The Complainant did not draw the Panelist's attention to any such cases either. The closest reported case involved a web designer who transferred a domain name from the owner to the web designer.3 However, the web designer appeared to be the technical contact for the domain name under the facts of that case.
In order to obtain relief under the Uniform Domain Name Dispute Resolution Policy adopted on August 26, 1999 (and effective January 3, 2000 under the facts of this case), a complaining party must prove ALL of the following to be entitled to relief in this process:4
(i) the respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
A. The Respondent's Domain Name Is Identical Or Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights.
The domain name is identical under the facts of this case. Complainant did business at the domain name HOST.COM. The Respondent now owns the same domain name. This situation will certainly cause confusion.
B. The Respondent Has No Rights Or Legitimate Interests In Respect Of The Domain Name.
A thief does not have good title to what he steals, nor can a thief pass good title to another. The Respondent has made no claim to have any rights or legitimate interests with respect to the HOST.COM domain name. None of the standard indicia demonstrating rights to a domain name described in the ICANN Uniform Domain Name Dispute Resolution Policy Article 4(c) appear to be present in this case:
(i) before any notice to respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panelist was unable to find any other factors which showed Respondent has any rights or legitimate interest to the HOST.COM domain name.
C. The Respondent's Domain Name Has Been Registered And Is Being Used In Bad Faith.
Under ICANN Uniform Domain Name Dispute Resolution Policy Article 4(b), the following non-exclusive factors indicate registration and use of a domain name in bad faith:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product or service on respondent's web site or location.
There is no evidence in this case of a commercial or competitive relationship between the Complainant and the Respondent. The Panelist does not know the parties' area of business. Therefore, most of the factors described above are not applicable. There is no evidence of a pattern on Respondent's part. We must look beyond this list of non-exclusive factors to determine if there is bad faith.
"Bad faith" is defined in Black's Law Dictionary 7th edition at page 134 as: "1. Dishonesty of belief or purpose..". In Halsey v. Brotherhood (1881), 19 Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala fides stated that the task of the Court was to consider "whether there is anything to show that what the defendant stated was stated without reasonable and probable cause".
Providing false contact information constitutes 'bad faith' as defined by the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d)(1)(B)(i)(VII). Other cases have agreed.5 It would also be difficult to say a thief acts other than in bad faith. While other cases have had difficulty in determining if the initial registration was in bad faith, that is very clear under the present circumstances. The continued possession of the domain name, under the special circumstances of this case, also clearly demonstrates the domain name is being used in bad faith.
For the foregoing reasons, the HOST.COM domain name shall be transferred back to Gerald Mikkelson d/b/a Agent Host Co.
Dated at Meriden, Connecticut USA on this 16th day of October, 2000
(s) Houston Putnam Lowry
1. GA Modefine v. Sparco P/L, WIPO D2000-0419.
2. It is unusual for a sole proprietor to use the word "Corporation" in his trade name. However, that is what happened here.
3. Loaiza v LatinoWeb.com, NAF-0094190.
4. ICANN Uniform Dispute Resolution Policy Article 4(a).
5. Home Director v. HomeDirector, WIPO D2000-0111.