Chronicle Security Ireland Limited v. Milen Radumilo
Claim Number: FA1910001867326
Complainant is Chronicle Security Ireland Limited (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Milen Radumilo (“Respondent”), Barbados.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <virüstotal.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2019; the Forum received payment on October 17, 2019.
On October 18, 2019, eNom, LLC confirmed by e-mail to the Forum that the <virüstotal.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@virüstotal.com. Also on October 28, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides products and services that enable users to upload software or enter Uniform Resource Locators (“URLS”) – i.e. web addresses – and scan them for virus and malware threats through a broad array of antivirus products and online scan engines. Complainant has rights in the VIRUSTOTAL mark through a trademark assignment with Google, the original registrant of the mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,235,699, registered Jul. 4, 2017). Respondent’s <virüstotal.com> domain name is confusingly similar to Complainant’s VIRUSTOTAL mark as the name incorporates the mark in its entirety, merely adding a diaeresis to the letter “u” to create the letter “ü.”
Respondent has no rights or legitimate interests in the <virüstotal.com> domain name. Respondent is not authorized to use Complainant’s VIRUSTOTAL mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users through a revolving services of third-level domain names that resolve to pay-per-click services featuring the VIRUSTOTAL mark and links to competitors. Furthermore, Respondent attempts to sell the disputed domain name.
Respondent registered and uses the <virüstotal.com> domain name in bad faith. Respondent attempts to sell the disputed domain name for more than out-of-pocket costs. Respondent also has demonstrated a pattern of bad faith registration as it has a history of adverse UDRP cases against it. Furthermore, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it profits from competing pay-per-click links. Finally, Respondent had actual knowledge of Complainant’s rights in the VIRUSTOTAL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <virüstotal.com> domain name was registered on September 30, 2019.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: International Domain Name
The domain name in dispute, <virüstotal.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--virstotal-s9a.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the <xn--virstotal-s9a.com> properly in the <virüstotal.com> domain name, it first had to encode it into the <xn--virstotal-s9a.com> domain name.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the <virüstotal.com> domain name is the same as its PUNYCODE translation, <xn--virstotal-s9a.com>, for purposes of this proceeding.
Complainant claims rights in the VIRUSTOTAL mark based upon registration of the mark with the USPTO (e.g., Reg. No. 5,235,699, registered Jul. 4, 2017). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Furthermore, evidence that a mark has been assigned to the complainant from the original, third-party registrant may also suffice to establish rights in a mark. See Golden Door Properties, LLC v. Golden Beauty / goldendoorsalon, FA 1668748 (Forum May 7, 2016) (finding rights in the GOLDEN DOOR mark where Complainant provided evidence of assignment of the mark, naming Complainant as assignee). Complainant further produces evidence that the VIRUSTOTAL mark was assigned to Complainant’s previously named entity, “Rotuna Limited,” and also provides a certificate of corporation name change from Rotuna Limited to its current name, “Chronicle Security Ireland Limited” dated February 7, 2018. The Panel therefore holds that Complainant’s registration of the VIRUSTOTAL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <virüstotal.com> domain name is confusingly similar to the VIRUSTOTAL mark, as the name incorporates the mark in its entirety, merely adding a diaeresis to the letter “u” to create the letter “ü.” Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1723952 (Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”). The Panel therefore determines that the <virüstotal.com> domain name is confusingly similar to the VIRUSTOTAL mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <virüstotal.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the VIRUSTOTAL mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. The WHOIS information of record identifies the registrant of the at-issue domain name as “Milen Radumilo,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <virüstotal.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <virüstotal.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that Respondent uses the disputed domain name to redirect users through a revolving services of third-level domain names that resolve to pay-per-click services featuring the VIRUSTOTAL mark and links to competitors. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”). Complainant contends, and Respondent does not dispute, that the domain name resolves to a series of websites that display the VIRUSTOTAL mark in connection with pay-per-click links, some of which send users to competitor’s websites. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <virüstotal.com>domain name.
Complainant asserts that Respondent’s attempts to offer the <virüstotal.com> domain name for sale further indicates it does not have rights or legitimate interests in the name. A respondent’s offer to sell a domain name to the general public can indicate the respondent lacks rights and legitimate interests in the name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots from Sedo which lists the disputed domain name for a minimum offer of $688.00. The Panel therefore finds that Respondent lacks rights and legitimate interests in the <virüstotal.com> domain name per Policy ¶ 4(a)(ii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s only purpose in registering the <virüstotal.com> domain name was to gain commercially from the sale of the same, indicating its registration and use of the name in bad faith. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith registration and use per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Complainant contends that given its longstanding trademark registration of the VIRUSTOTAL mark, and Respondent’s current use of the domain name to offer to sell the name, it is evident that Respondent’s purpose for registering and using the domain name was and is to sell the name for a profit. The Panel finds that this constitutes evidence that Respondent has registered and used the <virüstotal.com> domain name in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent’s registration of the <virüstotal.com> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant includes a list of prior UDRP cases where Respondent, Milen Radumilo, has been ordered to transfer ownership of domain names. The Panel finds that this constitutes evidence that the registration and use of the <virüstotal.com> domain name is part of a pattern and shows that Respondent has engaged in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends that Respondent’s bad faith is indicated by its use of the <virüstotal.com> domain name to link to third party websites, some of which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends, and Respondent does not dispute, that the domain name resolves to a webpage displaying links to third party websites, some of which belong to competitors of Complainant. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <virüstotal.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 3, 2019
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