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December 1, 2010 / Nate Harris

Panel Boots ECCO Complaint For Failure to Name “Underlying Registrant”

Summary of ECCO sko A/S v. Protected Domain Services
(WIPO Case No. D2010-1449)

Filed: September 2, 2010; Decided: November 18, 2010 (Panelist: Charné Le Roux)

Disputed domain name: <eccodiscount.com>

eccodiscount.com

 

 

The Parties

According to Google [the decision doesn’t say],Complainant ECCO sko A/S (“Ecco”) is a famous clothing/shoe seller that owns registrations for the mark ECCO in more than 100 countries, and owns several domain names incorporating the mark ECCO.

Respondent Protected Domain Services (“PDS”) is an “independent commercial privacy service” that claims to have no ownership interest in the disputed domain; rather, it simply registered the disputed domain on behalf of the true registrant, who it says is Phalanx SEO Services (“Phalanx”). When PDS received the complaint, it informed Ecco of Phalanx’s true identity, but Ecco did not amend its complaint to name Phalanx as the respondent, as would be typical in cases involving privacy services. Accordingly, PDS argues, the complaint should be dismissed.

Nevertheless, Phalanx did informally respond to the complaint, asserting a fair use defense on the ground that the disputed domain name “is used to trade in licensed ECCO branded merchandise under an affiliate agreement under Amazon.com.”

The Proper Respondent

Before addressing the substantive issues raised in the complaint, the Panel considers whether the proper party has been identified as the Respondent. It notes that there are instances where privacy services fail to respond, or delay in providing the correct contact information for the true registrant. That was not the case here, however:

In this matter and on the basis that . . .the privacy service provided the correct underlying registrant information without undue delay . . . this Panel finds that the named Respondent is not the registrant of the Disputed Domain Name and can thus not be considered the proper Respondent for purposes of the application of the Policy. Since the underlying Registrant has not been nominated by the Complainant as a respondent and is therefore not a proper respondent party to these proceedings, an analysis of the merits and a finding with respect to the conduct of the underlying Registrant can not be made.

Decision

The Panel denies transfer of the disputed domain to Ecco. However, “[a] decision is being made on the procedural aspects of the Complaint only, which does not as such preclude the Complainant from filing a subsequent complaint with the Center in respect of the Disputed Domain Name.”

Commentary

As a policy matter, I think it’s absurd to require the complainant to amend its complaint to name a “true registrant” who chose to use a privacy service. I have no problem with privacy services, but the Policy should require respondents who choose to use one to intervene in the proceeding or otherwise “step forward” or else lose their domain. Under the current approach, what incentive is there for a privacy service to provide the true identity of a registrant? Basically, they are being asked to give out information about a paying customer so that the complainant can make them an ex-paying customer.

If, on the other hand, the complainant is allowed proceed against the named registrant (i.e., the privacy service), privacy services would be motivated to promptly notify their customers to intervene, or else face angry “true registrants” who find out later that they’ve lost the disputed domain.” Why not put the burden of identifying the proper respondent where it belongs– on the party who chose to conceal its identify with a privacy service?

For what it’s worth, the Respondent’s “fair use” defense here doesn’t hold water. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that a reseller, even an unauthorized one, may have a right or legitimate interest in a domain, but only if it “accurately disclos[es] the registrant’s relationship with the trademark owner.” That’s not the case here. The site pointed to by the disputed domain says “Welcome to Ecco Shoes!” It says “WorldMap – ecco.com – International | ecco.com | ECCO is a global leader in innovative comfort footwear for men, ladies and kids. Founded in Denmark in 1963.” Of course, none of those links to the real Ecco website work. A page with the heading “About Ecco Shoes” says that “Ecco Shoes was created to be the best internet resource for Ecco.”  Clearly, this is not a “fair use” of the ECCO mark.

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