Bitwarden, Inc. v. Milen Radumilo
Claim Number: FA2108001960964
Complainant is Bitwarden, Inc. (“Complainant”), represented by Christine B. Redfield of Redfield IP PC, California, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <biwarden.com>, registered with Tucows Domains Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2021; the Forum received payment on August 24, 2021.
On August 24, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <biwarden.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 August 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2021 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@biwarden.com. Also on August 25, 2021, 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 September 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Bitwarden, Inc., operates a password management and security software company. Complainant owns rights in the BITWARDEN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 5,580,631, registered Oct. 9, 2018). Respondent’s <biwarden.com>[i] domain name is confusingly similar to Complainant’s BITWARDEN mark as it contains a misspelling of Complainant’s mark – the deletion of the letter “t.”
2. Respondent lacks rights and legitimate interests in the <biwarden.com> domain name as it is not commonly known by the domain name and is neither an authorized user nor licensee of the BITWARDEN mark.
3. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the domain name to distribute malware to Internet users’ devices.
4. Respondent registered and uses the <biwarden.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract commercial gain by creating a likelihood of confusion as to the sponsorship of the domain.
5. Respondent uses the domain name to distribute malware to Internet users’ devices.
6. Respondent also engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BITWARDEN mark. Respondent’s domain name is confusingly similar to Complainant’s BITWARDEN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <biwarden.com> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant has rights in the BITWARDEN mark through its registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 5,580,631, registered Oct. 9, 2018). The Panel therefore finds Complainant has rights in the BITWARDEN mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <biwarden.com> domain name is confusingly similar to Complainant’s BITWARDEN mark as it contains a misspelling of Complainant’s mark--the deletion of the letter “t.” The deletion of one letter of a mark in a domain name does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Thus, the <biwarden.com> domain name is confusingly similar to Complainant’s BITWARDEN mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <biwarden.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <biwarden.com> domain name as it is not commonly known by the domain name and is neither an authorized user nor licensee of the BITWARDEN mark. When a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Milen Radumilo” as the registrant of the <biwarden.com> domain name. The Panel therefore finds Respondent is not commonly known by the <biwarden.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <biwarden.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead uses the domain name in furtherance of malware distribution. Such use does amount to either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing the <biwarden.com> domain name is used in connection with a website that offers to redirect unsuspecting visitors to a “safe” browsing tool and experience which Complainant argues, without contradiction, results in the installation of malware on the computers of visitors to the website in attempts to phish for internet users' personal information and distribute malware. Thus, the Panel holds Respondent does not use the <biwarden.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <biwarden.com> domain name in bad faith because Respondent uses the domain name to disrupt Complainant’s business and attract Internet users for commercial gain. Nothing in the record contradicts this assertion. Use of a domain name incorporating the mark of another to attract users to a respondent’s website where it disseminates malware by creating confusion as to the websites affiliation with a complainant may be considered evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, the <biwarden.com> domain name is nearly identical to Complainant’s mark, and directs users to Respondent’s website where Internet users may inadvertently install malware onto their devices, which may lead to commercial gain for Respondent. The Panel may therefore find Respondent registered and uses the <biwarden.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complainant maintains that the <biwarden.com> domain name constitutes typosquatting. Typosquatting, or introducing typographical errors to a domain name, may constitute bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant argues Respondent engaged in typosquatting as the <biwarden.com> domain name contains a misspelling of Complainant’s mark – the deletion of the letter “t.” The Panel agrees that the <biwarden.com> domain name qualifies as typosquatting, it may find bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has 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 <biwarden.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 30, 2021
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