Kaspersky Lab Zao v. uPort Inc.
Claim Number: FA1006001328687
Complainant is Kaspersky Lab Zao (“Complainant”), represented by Maulin
V. Shah, of UDRPro, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <akspersky.com>, <kaseprsky.com> and <aspersky.com>, registered with Wild West Domain, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2010.
On June 7, 2010, Wild West Domain, Inc. confirmed by e-mail to the National Arbitration Forum that the <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names are registered with Wild West Domain, Inc. and that Respondent is the current registrant of the names. Wild West Domain, Inc. has verified that Respondent is bound by the Wild West Domain, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2010 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@akspersky.com, postmaster@kaseprsky.com and postmaster@aspersky.com by e-mail. Also on June 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names are confusingly similar to Complainant’s KASPERSKY mark.
2. Respondent does not have any rights or legitimate interests in the <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names.
3. Respondent registered and used the <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kaspersky Lab Zao, is a developer of anti-virus and anti-spam software for personal computers, as well as a provider of IT security solutions for protecting business and enterprise networks. Complainant owns several trademark registrations for its KASPERSKY mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,818,639 issued March 2, 2004) and the European Union Office for the Harmonization of the Internal Marketplace (“OHIM”) (e.g., Reg. No. 1,605,955 issued April 26, 2002).
Respondent registered the <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names on August 10, 2006. Respondent’s disputed domain names do not currently resolve to active websites but are forwarded to the third-party website <srvko.net>, which resolves to an error page stating “server not found.”
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has submitted evidence to show that it owns several trademark registrations for its KASPERSKY mark with the USPTO (e.g., Reg. No. 2,818,639 issued March 2, 2004) and OHIM (e.g., Reg. No. 1,605,955 issued April 26, 2002). The Panel finds that Complainant has established rights in its mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and OHIM. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant argues that the <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names are confusingly similar to its KASPERSKY mark. Complainant notes that all of the disputed domain names contain a misspelled version of its mark by either transposing the letters of its mark or deleting the letter “k” from its mark and adding the generic top-level domain (“gTLD”) “.com” to its mark. Complainant contends that the above noted changes are not sufficient to distinguish Respondent’s disputed domain names from Complainant’s mark. The Panel agrees and finds that Respondent’s <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names are confusingly similar to Complainant’s KASPERSKY mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights and legitimate interests in the <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information, provided by Complainant, lists the
registrant of the domain names as “uPort Inc.”
Respondent fails to offer evidence refuting this information or
Complainant’s assertions, and showing that Respondent is commonly known by the <akspersky.com>, <kaseprsky.com>
and <aspersky.com> domain names. There is no other evidence on
the record that indicates Respondent is commonly known by the disputed domain
names. Complainant further asserts that
Respondent is not authorized or licensed to use the KASPERSKY mark. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there was
no evidence in the record indicating that the respondent was commonly known by
the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com>
domain name based on all evidence in the record, and the respondent did not
counter this argument in its response).
Complainant contends that Respondent previously used the <aspersky.com> domain name to resolve to a website that featured sponsored third-party links to non-competing commercial websites. Complainant argues that Respondent’s previous use of the <aspersky.com> domain name is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent’s previous use of the <aspersky.com> domain name to display non-competing third-party links, presumably for financial gain, is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant further contends that Respondent has failed to
make an active use of the disputed domain names by not connecting the disputed
domain names to active websites.
Complainant submitted evidence to show that Respondent is redirecting
Internet users to the third-party website located at <srvko.net>, which
resolves to an error page stating “server not found.” The Panel finds that Respondent’s failure to
make an active use of the <akspersky.com>, <kaseprsky.com>
and <aspersky.com> domain names is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Hewlett-Packard Co. v. Shemesh,
FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure
to make an active use] of a domain name that is identical to Complainant’s mark
is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶
4(c)(iii).”); see also Thermo
Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding
that the respondent’s non-use of the disputed domain names demonstrates that
the respondent is not using the disputed domain names for a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s website by using common misspellings of the
Complainant’s KASPERSKY mark. The Panel
finds that Respondent’s engagement in what is commonly referred to as
typosquatting is evidence that Respondent lacks any rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and use
of the <akspersky.com>, <kaseprsky.com>
and <aspersky.com> domain names is evidence of Respondent’s
bad faith registration and use under Policy ¶ 4(b)(ii). The Panel agrees and finds that Respondent’s
registration of three trademark infringing domain names on the same day
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept.
8, 2000) (finding that one instance of registration of several infringing
domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also
EPA European Pressphoto Agency B.V. v.
Further Complainant
argues that until January 29, 2007, Respondent’s <aspersky.com> domain name resolved to a website that
featured sponsored third-party links to non-competing commercial websites. Complainant argues that such use, presumably
to collect click-through fees, is evidence that Respondent registered and used
the disputed domain name in bad faith under Policy ¶ 4(b)(iv). The Panel finds that Respondent registered
and used the <aspersky.com>
domain name in bad faith under Policy ¶ 4(b)(iv) by displaying various
third-party links to businesses and websites unrelated to Complainant,
presumably for financial gain. See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For
Lastly, Complainant contends that since at least January 29,
2007 Respondent has not connected the <akspersky.com>, <kaseprsky.com>
and <aspersky.com> domain names to active websites. Complainant alleges that Respondent has
redirected the disputed domain names to the third-party <srvko.net>
domain name which resolves to an error page stating “server not found.” Complainant argues that Respondent’s failure
to make an active use of the disputed domain names is further evidence of
Respondent’s bad faith registration and use.
The Panel agrees and finds that Respondent registered and is using the
disputed domain names in bad faith under Policy ¶ 4(a)(iii)
where Respondent has failed to make an active use of the disputed domain
names. See Pirelli & C. S.p.A. v.
The Panel finds that Complainant has satisfied the elements of 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 <akspersky.com>, <kaseprsky.com> and <aspersky.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 12, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum