In a one panel WIPO decision ordering the transfer of the domain, ShoeZone.com to the holder of a UK trademark, the use of Moniker.com privacy service on its registration was found to be an indication of bad faith of the domain holder
Basically the owner of the trademark chased the domain for years, first unsuccessfully attempting to buying it from Footstar in 2003, who was using the site to sell footwear and then again in 2006 from Novus who acquired the domain from Footstar and again was operating a footwear site.
In May of this year the site turned into a parking page and the trademark holder filed this WIPO action.
In finding bad faith on the domain holders part, the panelist said:
“””Two additional factors reinforce the Panel’s conclusion that the Respondent has been guilty of bad faith registration and use.””
“”First, the Respondent has failed to file any Response. A bona fide respondent, operating a genuine business or carrying on some other legitimate activity through a website at a disputed domain name, could have been expected to file a Response explaining its position. The Respondent has not done so.”””
“””Secondly, the Respondent’s use of the privacy service is at least consistent with bad faith. A respondent’s use of a privacy service is likely to cause a complainant some delay while it endeavors to ascertain details of the true respondent to its prospective complaint, and the respondent continues to derive click-through revenue during that period of delay.”””
I have seen plenty of decisions where the domain holder files no answer and still wins. Yet here the panelist finds that by not filing an answer you are guilty of “Bad Faith”.
We know that trademark groups pushing for the new Uniform Rapid Suspension (URS) wants to accomplish exactly this; shift the burden of proof from the one filing the complaint to the domain holder, but that is not in place yet.
Second if just having privacy on your registration, is going to be found to be an indication of bad faith, then it may force domainers who use privacy to remove it or risk the increased chance of losing their domains in such an action.
I’m sure the panelist would not have found privacy to be an indication of bad faith if it was going to say a MarkMonitor privacy service rather than a Moniker.com privacy service.