In the recent UDRP decision Chan Luu Inc. v. A. Robinson Jewel et al, a WIPO Panel was faced with a complaint brought over multiple domain names each with different identifying WHOIS information. The domains all included the CHAN LUU mark in various forms and resolved to sites which referenced the mark and CHAN LUU fashion products.
Although paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “UDRP Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”, the Panel allowed the action to proceed based on circumstantial evidence which indicated that the respondents were in fact the same individual.
The decision reflects an effort to interpret UDRP Policy in order to prevent cyber-squatters from using aliases and fake WHOIS information to frustrate trademark holders by making it more expensive and time consuming for them to protect their marks.
In making its decision the Panel explained that it may look beyond the listed name in a respondent’s WHOIS information in order to prove that a single domain holder owns and operates multiple domains. The Panel focused on the fact that each of the respondents owned web addresses that resolved to sites hosted by webservers from the same “dedicated IP block,” ostensibly from domains all originally within the control of a particular registrar, and which were assigned to the same web host. The Panel also relied on the fact that the e-mail addresses in the WHOIS record for each disputed domain name ended in either “teleworm.us” or “dayrep.com,” components of e-mail addresses created by www.fakenamegenerator.com, a site complainant alleged the respondent used in registering the domains. Finally, the Panel pointed out that each respondent domain listed “New York 10001” as the address included with its WHOIS information.
The decision is important for brand owners to be aware of in terms of making sure that they look beyond the plain or listed information in a WHOIS report when they suspect that there is an effort by a cyber-squatter to use the literal UDRP Rules to try and squat on multiple domain names. Evidence that the respondent is really one person or company, even if not dispositive, can be effectively used to streamline UDRP practice and move against cyber-squatters quickly and more effectively...