Kaspersky Lab Zao v. Tarsim Rayaneh enginiring Co.
Claim Number: FA1011001356035
Complainant is Kapersky Lab Zao (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is Tarsim Rayaneh enginiring Co. (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kasperskyme.com>, registered with TUCOWS, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2010; the National Arbitration Forum received payment on November 2, 2010.
On November 3, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <kasperskyme.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 November 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@kasperskyme.com. Also on November 4, 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 November 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant develops anti-virus and anti-spam software, as well as providing security solutions for protecting business and enterprise computer networks.
Complainant operates this business under the KASPERSKY service mark and trademark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,818,639, issued March 2, 2004).
Respondent registered the disputed domain name <kasperskyme.com> February 1, 2007.
The disputed domain name is inactive and resolves to a “server not found” message.
Respondent’s <kasperskyme.com> domain name is confusingly similar to Complainant’s KASPERSKY mark.
Respondent does not have any rights to or legitimate interests in the domain name <kasperskyme.com>.
Respondent registered and uses the <kasperskyme.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has, for purposes of the Policy, sufficient rights in the KASPERSKY mark by virtue of its registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Complainant need not possess rights in its mark in Respondent’s country in order to pursue this claim; it merely need to show that it holds rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
The disputed domain name is confusingly similar to the Complainant’s KASPERSKY trademark because it incorporates the entire mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.
The addition of the word “me” to the mark in forming the domain name fails to distinguish the domain name from the mark. “Me” is a generic term and other panels have held that such terms do not distinguish a domain name from a preexisting trademark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to a complainant’s ICQ mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to a Complainant’s trade name and trademark NIIT”).
Similarly, the addition of the generic-top-level domain (“gTLD”) “.com” also fails to distinguish the domain name from the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the disputed domain name <kasperskyme.com> is confusingly similar to Complainant’s KASPERSKY mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <kasperskyme.com> domain name. Once Complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate certain circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In light of the evidence presented, we are satisfied that Complainant has made out a sufficient prima facie case under this head of the Policy. And, because Respondent has failed to respond to the Complaint filed herein, we may presume that Respondent does not have rights to or legitimate interests in the <kasperskyme.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent failed to respond to the allegations of a complaint). Nonetheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that there is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Moreover, the WHOIS information for the disputed domain name indicates that Respondent is known as “Tarsim Rayaneh enginiring [sic] Co.”, which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the domain names <shoredurometer.com> and <shoredurometers.com> because the pertinent WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names in dispute); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com> where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to complainant’s allegation that Respondent’s has not used the domain name, and that the domain name resolves to an error message displaying “server not found.” Respondent’s lack of use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that a respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that that respondent might be capable of doing otherwise).
The Panel thus finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The examples of bad faith registration and use of domain names prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation by way of enumeration, that are evidence of registration and use of a domain name in bad faith) Thus, we may find bad faith beyond the perimeters of Policy ¶ 4(b). See also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000):
[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
Respondent fails to make an active use of the disputed domain name. The domain name resolves to a “server not found” error message. Respondent’s failure to make an active use of the contested domain name is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel accordingly finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <kasperskyme.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 13, 2010
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