There are many situations in which one division of a company will register domain names on its own and without telling its legal team or other company departments.  Maybe an eager marketing person grabs a domain to use for a particular promotion or a brand manager decides to be proactive and register a name for a new product.  In some cases, the domain is registered to the employee personally and in others incorrect or non-standard company information is used.  All of this creates confusion for those within the company who are tasked with enforcing trademark rights against cybersquatting (often the legal team).  Sometimes they are alerted to these domains after-the-fact, but sometimes they never learn of them and wind up taking enforcement action against a domain that is effectively within the company’s control.

A Whois Whodunnit

An astute FairWinds staff member recently brought to my attention a recent UDRP case which, on the surface, didn’t make sense.  The Complainant is Vail Trademarks, Inc. and the Respondent is listed as Eric Hernandez / Vail Associates Inc.  According to a Federal Securities and Exchange Commission website, both of these named companies are, or used to be, subsidiaries of the parent Vail Resorts, Inc.  It looked like one part of the company was filing an action against another part of the company over the domain.  Perhaps Mr. Hernandez fit into one of the scenarios mentioned above and jumped the gun in registering the disputed domain name?  Or could it have been that the named entity was sold off but the domain was registered while it still used the Vail Associates name?  There are many possibilities here.

Unfortunately, the written UDRP opinion doesn’t discuss the relationship between the parties.  In its examination of the second UDRP element (rights or legitimate interests) the Panel notes that the “WHOIS information indicates that Respondent’s organization is ‘Vail Associates Inc.’, which resembles the disputed domain name…[vailresort.org]” but then he goes on to say that Respondent’s failure to respond to the Complaint leaves an absence of any evidence showing that Respondent was commonly known by the disputed domain name.  No further detail is given in the Panel’s discussion of the UDRP’s bad faith element but does mention that the “domain name appears to resolve to a website that is virtually identical to Complainant’s legitimate” website.

So if you’re an experienced UDRP practitioner, or perhaps a avid fan of murder mysteries, you’ll quickly realize that the facts of this case lead to one, inescapable conclusion.  The Respondent listed false information in the Whois record when it registered the disputed domain name.  This explains why the Complainant is not actually going after a current or former sibling company and also why the Panelist didn’t discuss the lack of any relationship between the parties.  Doing so would have been pure speculation.  However, while Panels should avoid such taboo areas, I am not so constrained in this blog.

A Case of Whois Fraud

My own conclusion of the Respondent’s Whois fraud is based on a few points including his listing of a hotmail.com email address and a non-existent street address in the same town as the Complainant.  Since the full text of UDRP complaints are not usually published we can’t tell if the Complainant pointed out these facts to the Panel but, if it did, I feel the Panel would have been within its authority to reference them.  There is a line of UDRP cases holding that providing false Whois information can support a finding that the Respondent acted in bad faith.

So today’s lesson is that cybersquatters aren’t always who they appear to be.  While, on the surface, they may give the impression of a legitimate entity, once you dig into the facts a bit it may become clear that they are, in reality, just a slightly more clever wolf who is trying to avoid getting caught by wearing sheep’s clothing

Steve Levy

Steve Levy

Senior Advisor at FairWinds Partners
It can be difficult tackling domain name and social media infringement without the right expertise. Steve covers UDRP cases, URS cases, and all other acronyms and topics related to cybersquatting and usersquatting.
Steve Levy
UDRP Spotlight – A “Vail” of Whois Fraud

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